WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

JJA v. Super Privacy Service LTD c/o Dynadot / Milen Radumilo

Case No. D2021-2124

1. The Parties

The Complainant is JJA, France, represented by Dennemeyer & Associates S.A., Luxembourg.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America / Milen Radumilo, Romania.

2. The Domain Name and Registrar

The disputed domain name <hesperide.net> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2021. On July 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 5, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 6, 2021.

The Center verified that the Complaint together with the amended 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 July 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2021.

The Center appointed Jon Lang as the sole panelist in this matter on July 30, 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, founded in 1976, is an international company based in France. It develops a complete range of products in the home furnishings and decoration sector. The Complainant is the owner of many trademarks for HESPERIDE, registered worldwide since the 2000s, including the following: International Registration HESPERIDE No. 1044063, registered on January 27, 2021 and European Union Trademark HESPERIDE No. 010379196, registered on April 30, 2012. The HESPERIDE mark is used in connection with garden furniture.

The Complainant also owns numerous domain names, including <hesperide.com> registered on July 31, 2008, and <hesperide.fr> registered on November 25, 2015.

The Domain Name <hesperide.net> was registered on May 1, 2021. Internet users are redirected from the Domain Name, via third party sites, to the Complainant’s official website at “www.hesperide.com”.

5. Parties’ Contentions

A. Complainant

The following is a brief summary of the main assertions of the Complainant.

The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Domain Name is identical to the HESPERIDE trademark in which the Complainant has earlier rights. The Domain Name’s only component is the HESPERIDE trademark. The “.net” extension is not sufficient to distinguish it from the HESPERIDE trademark and from the Complainant’s activity.

The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Respondent has no legitimate right to the name HESPERIDE. The Complainant has not licensed or otherwise authorized the Respondent to use its HESPERIDE trademark or to apply for any domain name incorporating the trademark.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the Domain Name.

The Domain Name was registered and is being used in bad faith.

The Domain Name incorporates the HESPERIDE trademark in its entirety without any distinguishing elements thereby needlessly, and falsely, giving the impression that the website to which the Domain Name directs users is authorized or connected to the Complainant.

The Complainant is well known in its field of activity and the Respondent must have had knowledge of the Complainant’s rights when it registered the Domain Name (as inferred from an extract from a Google search on “hesperide” showing numerous results referring to the Complainant).

Indeed, given the ultimate redirection of Internet users from the Domain Name to the Complainant’s official website at “hesperide.com”, it is obvious that the Respondent was aware of the Complainant's trademark rights in HESPERIDE when the Domain Name was registered, and when the Respondent arranged for its associated Internet traffic to be redirected. The redirection of Internet users in this manner constitutes a bad faith attempt to trade on the goodwill and reputation of the Complainant’s HESPERIDE trademark. The Complainant has never authorized such redirection. Use of the Domain Name to redirect Internet users to the Complainant’s own website only serves to increase customer confusion i.e. that the Domain Name is somehow licensed or controlled by the Complainant when it is not.

The Complainant sent a cease and desist letter and reminders to the Respondent, but has not received any reply.

According to searches conducted on domain name sales platforms, the Domain Name is available for sale.

There is no rationale for the Respondent’s registration of the Domain Name and it was registered and thereafter used in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

The Complainant clearly has rights in the HESPERIDE trademark by virtue of its trademark registrations.

Ignoring the generic Top-Level Domain (“gTLD”) “.net” (which the Panel may do for comparison purposes), the Domain Name consists only of the Complainant’s HESPERIDE trademark. Accordingly, the Panel finds that the Domain Name is identical to the Complainant’s HESPERIDE trademark for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating that it does, in fact, have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Before doing so however, the Panel will consider whether such a finding would, in any way, be inappropriate.

A respondent can show it has rights to, or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name, or that it is 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 in issue.

Here, however, the Respondent is not known by the Domain Name. Further, the only use being made of the Domain Name is to redirect Internet users, via third party sites, to the Complainant’s official website. Such redirection does not amount to a legitimate noncommercial or fair use. Internet users will inevitably be misled into believing that the Domain Name is that of the Complainant and will be redirected to/through third party sites they have no intention of visiting on their way to the Complainant’s official website. Moreover, they will likely be unaware throughout, that the Domain Name has nothing at all to do with the Complainant and that an unknown third party (the Respondent) has control over their route to the Complainant’s website. Moreover, any noncommercial or fair use must be without intent to mislead, but it is likely that such intent was the very reason for registration of the Domain Name in the first place.

A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services (and was doing so before any notice of the dispute). The Domain Name is identical to the Complainant’s HESPERIDE trademark. It clearly suggests that the owner of the Domain Name is the trademark owner or that, at the least, there is some form of affiliation with the trademark owner. Given that in either case, such impression is false, it cannot be said that the Domain Name has been used in connection with any bona fide offering.

There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the analysis above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Policy sets out a number of grounds upon which a finding of bad faith registration and use may be based. It is a non-exhaustive list, but a very useful guide. Sometimes however, panels must have regard to the general principle underlying the bad faith requirement of the Policy, which is generally understood to mean a respondent taking unfair advantage of or otherwise abusing a complainant’s mark. Registering a domain name identical to a trademark in which another has clear and obvious rights, without justification, falls within this general principle underlying bad faith. In fact, using the Domain Name in the manner described above has been found in past UDRP decisions to constitute bad faith. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.1.4, states that “….panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant”.

In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.

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 <hesperide.net> be transferred to the Complainant.

Jon Lang
Sole Panelist
Date: August 13, 2021