WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Corum Asset Management v. Domain Admin, Whois Privacy Corp.

Case No. D2017-0151

1. The Parties

The Complainant is Corum Asset Management of Paris, France, represented by Gide Loyrette Nouel, France.

The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, the Bahamas.

2. The Domain Name and Registrar

The disputed domain name <corum.pro> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2017. On January 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2017.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on March 17, 2017. 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.

4. Factual Background

The Complainant, Corum Asset Management, is a company active in financial and real estate investment as well as in financial and real estate management for third parties. It has been registered under French law since 2011. The company runs a real estate fund called SCPI Corum Convictions.

The Complainant submitted evidence that it holds trademark rights for CORUM in the European Union for services in class 36, including two European Union word marks CORUM, registered on November 10, 1998 under No. 398388 and on September 17, 2015 under No. 14178156; it also submitted evidence that it owns the French trademark CORUM CONVICTIONS for services in class 36, registered on July 5, 2013 under No. 3902720 (altogether referred to as “the Trademarks”).

The Complainant also filed evidence that it carries out its activities on websites with the domain names <corum-am.com> and <corum.fr>, which have been registered since March 4, 2011 and January 9, 2012, respectively.

The disputed domain name <corum.pro> was registered on August 29, 2016, well after the Complainant secured rights to the Trademarks. The website at the disputed domain name at the time of filing the Complaint attempted to replicate elements of the Complainant’s websites.

The Complainant contacted the Respondent on December 2, 2016 to obtain the identity and the details of the true registrant of the disputed domain name but did not receive any reply.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant contends that the disputed domain name is identical to one of its registered rights.

The Complainant asserts that the disputed domain name incorporates in its entirety the Complainant’s CORUM Trademarks, thereby infringing them.

The Complainant further asserts that the title of the website corresponding to the disputed domain name is “Corum.pro Le site de la SCPI Corum Convictions” and that this incorporates in its entirety the Complainant’s Trademark CORUM CONVICTIONS.

The Complainant submits that the disputed domain name is in French and targets the French public of the Complainant.

The Complainant asserts that the use of the word “Corum” in the disputed domain name creates a likelihood of confusion in the minds of consumers.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that it has rights in the Trademarks CORUM and CORUM CONVICTIONS and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that the Respondent does not own any rights in trademarks, names or signs that correspond to the word “Corum”.

The Complainant further affirms that it has not granted any license nor consented to the use by the Respondent of the Trademarks or the disputed domain name.

The Complainant asserts that the activity of the Respondent is to register domain names for holders who remain anonymous.

The Complainant affirms that three complaints were successfully filed against the Respondent in 2016.

The Complainant further contends that the fact that the Respondent did not reply to its attempt to make contact proves its bad faith, as the Respondent was aware that it was not allowed to register domain names corresponding to a third party’s trademarks.

The Complainant submits that the Respondent pretends to offer services of the Complainant through the disputed domain name. Moreover, the Complainant asserts that the Respondent has tried to replicate the graphic chart of the Complainant’s website and used the title “Corum.pro Le site de la SCPI Corum Convictions”, in order to look like the Complainant or at least an affiliated company. The Complainant therefore affirms that the Respondent’s use of the Trademarks is likely to confuse users and lead them to believe that the website linked to the disputed domain name belongs to the Complainant. According to the Complainant, the Respondent has intentionally attempted to attract users for commercial gain. Therefore, the Complainant submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or making a legitimate noncommercial or fair use of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

In order to establish the first element of the Policy, the Complainant is required to prove the following: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to CORUM and CORUM CONVICTIONS.

Secondly, the disputed domain name fully incorporates the Complainant’s CORUM Trademarks in which the Complainant has exclusive rights.

Thirdly, this Panel finds, similarly to other UDRP panels (see Deezer SA v. Yogi Lama, Buddha Tunes Ltd, WIPO Case No. D2015-1898; Telefonaktiebolaget L M Ericsson v. Ericsson, John, WIPO Case No. D2010-0705; Fnac v. Production Cosmopolite, WIPO Case No. D2010-1538), that the addition of the generic Top-Level Domain (“gTLD”) “.pro” to the disputed domain name can be disregarded for the purposes of comparison as it is a technical requirement for registration. In the present case, it does not constitute an element so as to avoid identity with the Complainant’s Trademarks for the purposes of the Policy.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is identical to the Complainant’s CORUM Trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

There is no evidence that the Respondent is commonly known by the name “Corum” or is in any way affiliated with the Complainant or authorized or licensed to use the trademark or to seek registration of any domain name incorporating the Trademarks.

Moreover, in addition to the evidence of prior use as detailed above and as submitted by the Complainant, this Panel has examined the website linked to the disputed domain name and found that, at the moment of examination, the website did not show any particular activities, except for a blank page with the heading “Corum - Coordinated Recurrent Unit Management - ”. This Panel therefore finds that there is no evidence that the Respondent has used, or undertaken any preparations to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith.”

First of all, with regard to the Respondent’s registration of the disputed domain name, this Panel believes, after having reviewed the evidence presented by the Complainant, that the Respondent must have known and been aware of the Complainant’s rights on the prior Trademarks and the associated products and services at the time of registration of the disputed domain name.

Moreover, this Panel has considered the Complainant’s statements and evidence regarding the Respondent’s use of the disputed domain name. As stated by the Complainant, and substantiated in evidence, the Respondent appears to have used the disputed domain name to confuse users and mislead them into believing that it belonged to the Complainant. The lack of present activities on the website identified by this Panel does not prevent a finding of bad faith in the circumstances of this case (similarly, see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Westdeutsche Lotterie GmbH & Co. OHG v. WhoIs Privacy Corp, WIPO Case No. D2016-1785). Rather, the change of use after notice of the Complaint may further support a finding of bad faith. See Breitling SA v. Jaylee Greta, WIPO Case No. D2016-1544.

In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy.

7. Decision

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 <corum.pro> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: March 31, 2017