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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TESSI (S.A) v. Mal Lad

Case No. D2021-0518

1. The Parties

The Complainant is TESSI (S.A), France, represented by ORDIPAT, France.

The Respondent is Mal Lad, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <tessi-ch.com> (the “Domain Name”), is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2021. On February 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 20, 2021, 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 information for the Domain Name.

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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2021.

The Center appointed Tony Willoughby as the sole panelist in this matter on March 26, 2021. 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 is a business services company incorporated in France. It has traded under its TESSI name for more than 40 years. It is the proprietor of various trade mark registrations covering its name including by way of example French Trade Mark Registration No. 3106980 dated June 14, 2001, for various goods and services in classes 9, 35, 36, 37, 38, 39, 41 and 42.

The Complainant is also the registrant of numerous domain names featuring its TESSI name, including the domain name, <tessi.ch> (registered on May 27, 2010).

The Domain Name was registered on December 6, 2020. It is not connected to an active website.

On January 8, 2021, the Respondent sent a fraudulent email in French to a Swiss customer of the Complainant seeking payment of an invoice and providing payment instructions having no connection with any account of the Complainant. The email appeared to be coming from a genuine employee of the Complainant and was addressed to a genuine employee of the Complainant’s customer. The email address for the Complainant’s employee featured the Domain Name instead of the Complainant’s <tessi.ch> domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its TESSI registered trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Domain Name comprises the Complainant’s registered trade mark, followed by a hyphen and the letters “ch” (indicative of Switzerland) and then the generic Top-Level Domain (“gTLD”) “.com” identifier.

Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:

“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

The Complainant’s registered trade mark is readily recognizable in its entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Complainant asserts that it has no connection with the Respondent and has given the Respondent no authorization to use its trade mark. The Complainant has produced evidence to show that about four weeks after registering the Domain Name the Respondent used it for an email address in order to impersonate a Swiss employee of the Complainant in an attempt to defraud a Swiss customer of the Complainant (see Section 4 above).

The Complainant has also produced evidence to show that the Respondent is likely to have provided a false address to the Registrar when registering the Domain Name.

Whether or not that is the case, the use that the Respondent has made of the Domain Name has clearly been fraudulent. On no basis could such a use be said to give rights or legitimate interests in respect of the Domain Name in the hands of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Complainant relies upon sub-paragraph (iv), which provides: “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.”

As can be seen from section 4 above and from Section C above, the Respondent has used the Domain Name to impersonate the Complainant for a fraudulent purpose, namely to defraud a customer of the Complainant. It was clearly intentional. The Panel is in no doubt that the Respondent registered the Domain Name for the purpose for which the Respondent registered it. Clearly, the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of 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 Domain Name, <tessi-ch.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: March 31, 2021

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