The Complainant is Electricité Réseau Distribution France (ERDF) of Paris, France, represented by Alain Bensoussan Avocats, France.
The Respondent is Yankel Blum of Paris, France.
The disputed domain name <erdf-compteur-linky.com> is registered with Register.IT SPA (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2014. On December 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing their contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2015.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on February 5, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The French Regulatory Commission of Energy (CRE) has entrusted ERDF with the large-scale implementation of a smart energy metering system. A new generation electric meter has been created, namely a communicating meter which can send and receive data and orders without the need for the physical presence of a technician. This meter is named “linky”.
ERDF is the owner of the several verbal and figurative LINKY trademarks registered in France: No. 083582682, filed on June 17, 2008, No. 113 854645, filed on August 25, 2011; No. 093701138, filed on December 24, 2009, No. 113854641; filed on August 25, 2011.
Also, ERDF owns the International trademark LINKY No. 1101428, filed on November 7, 2011, which designates notably the European Union among other countries.
On April 14, 2012, the French company Electricité De France transferred to ERDF the ownership of the verbal and figurative ERDF trademarks registered in France: No. 3536019 filed on November 1, 2007; No. 3536020 filed on November 7, 2007.
The disputed domain name <erdf-compteur-linky.com> was registered on June 18, 2014.
The Complainant informs the Panel that ERDF is a wholly owned subsidiary of EDF, which manages the public electricity distribution network for 95% of continental France.
Also, CRE has entrusted the Complainant with the large-scale implementation of a smart energy metering system. The generation electricmetier is named “linky”.
The Complainant states that the disputed domain name is confusingly similar to its famous registered trademarks, ERDF and LINKY. The likelihood of confusion between the disputed domain name and the trademarks arises from the construction of the disputed domain name, which associates the terms
“compteur”, which means in French “electric meters” with the trademarks of the Complainant, ERDF and LINKY.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. Moreover, the Respondent is not making a legitimate or fair commercial use of the domain name. Instead, the Respondent makes a use thereof pursuing to mislead, to divert consumers and to tarnish the trademarks at issue.
The Complainant also contends that the Respondent has registered and used the disputed domain name in bad faith. The Complainant contends that due to the fact that the LINKY and ERDF trademarks are well known, the Respondent was aware of their existence when he had registered the disputed domain name. Also, even if the website is inactive, such passive holding constitutes an act of bad faith.
The Respondent did not reply to the Complainant’s contentions and is therefore in default.
The disputed domain name <erdf-compteur-linky.com> incorporates the ERDF and LINKY trademarks in their entirety. This is sufficient to establish confusing similarity for purposes of the Policy.
The construction of the disputed domain name, which associates the term “compteur” to the ERDF and LINKY trademarks, creates confusion between the Complainant’s trademarks and the disputed domain name. Indeed, the translation of the French word “compteur” into English is “electric meters”, precisely describing the products designated by the LINKY trademark.
That is particularly true where the disputed domain name incorporates a well-known trademark, as in this case. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; PepsiCo Inc. vs. Kieran McGarry, WIPO Case No. D2005-0629, C&A. Veltins GmbH &Co. KG vs. Heller Highwater Inc., WIPO Case No. D2004-0466.
Therefore, the Panel finds that the <erdf-compteur-linky.com> domain name is confusingly similar to the ERDF and LINKY trademarks and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
The Complainant contends that it has not licensed or otherwise authorized the Respondent to use its trademark. The Respondent does not contest such allegation.
There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Therefore, the Panel finds that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services, nor is it making a legitimate noncommercial or fair use of the disputed domain name.
In short, the Complainant has satisfied its burden of providing sufficient evidence to show that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service trademark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the mark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.
The Respondent has not engaged in any of the activities enumerated by the Policy, paragraph 4(b), illustrating the bad faith registration and use. In this case, the Respondent has passively held the disputed domain name, engaging in no activity. However, numerous UDRP panels have held, beginning with Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that inaction by a respondent with regard to a domain name can constitute bad faith use when the respondent has registered the domain name in bad faith and the totality of the circumstances leads to the conclusion that a “[r]espondent’s passive holding amounts to bad faith.” In the same decision, the Panel recognized that inaction in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. See also Autoshop 2 Di Battaglia Ferruccio C. S.N.C. v. Willamette RF Inc., WIPO Case No. D2004-0250.
When considered in the light of Telstra and subsequent cases, Complainant in this case has shown bad faith registration and use by the Respondent. As both the Respondent and the Complainant are residents of France, the Panel is of the opinion that the Respondent was aware of the strong reputation of the ERDF trademark. Also, the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Furthermore, the Complainant’s mark is an arbitrary term or acronym. Nothing in the disputed domain name or in the Respondent’s actions suggest any desire to comment on the Complainant or its products, provide a guide to such products, use the term descriptively, or otherwise engage in any nominative or fair use. Instead, the Respondent incorporated two registered trademarks in the disputed domain name, which makes it impossible for this Panel to conceive of any plausible actual or contemplated good faith use of the disputed domain name.
In light of the facts and circumstances of this particular case, the Panel finds that Respondent has registered and used the domain name in bad faith under the Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <erdf-compteur-linky.com> be transferred to the Complainant.
Nathalie Dreyfus
Sole Panelist
Date: February 17, 2015