WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Coopérative U Enseigne v. franck gauthier

Case No. D2021-4122

1. The Parties

The Complainant is Coopérative U Enseigne, France, represented by Plasseraud IP, France.

The Respondent is franck gauthier, France.

2. The Domain Name and Registrar

The disputed domain name <systeme-u-coop.com> (the “Domain Name”) is registered with Key-Systems GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2021. On December 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 10, 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 December 10, 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 December 14, 2021. On December 15, 2021, the Center received an informal communication from the administrative / technical contact.

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 December 16, 2021.

On December 16, 2021, the Center received an informal communication from the administrative / technical contact. On December 21, 2021, the Center received another communication from the administrative / technical contact.

In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment.

The Center appointed Vincent Denoyelle as the sole panelist in this matter on January 12, 2022. 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 following facts are based on the submissions in the Complaint and the Annexes to the Complaint.

The Complainant is a French retailers' cooperative with several hundred members.

The Complainant is the owner of several trade marks for LE SYSTEME U including the following:

- French Trade Mark LE SYSTEME U No. 1233653, filed on April 19, 1983 and registered in classes 1; 2; 3; 4; 5; 6; 7; 8; 9; 10; 11; 12; 13; 14; 15; 16; 17; 18; 19; 20; 21; 22; 23; 24; 25; 26; 27; 28; 29; 30; 31; 32; 33; 34; 35; 36; 37; 38; 39; 40; 41; 42; 43; 44 and 45.

The Complainant is also the owner of several domain names reflecting its trade mark including <systeme‑u.fr>.

The Domain Name was registered on September 14, 2021, and used to send fraudulent emails impersonating the Complainant with a view to defrauding genuine suppliers of the Complainant. At the time of the Decision, access to the website associated with the Domain Name was blocked when the Panel tried to access it.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the LE SYSTEME U trade mark in which the Complainant has rights as the Domain Name incorporates the dominant element of the LE SYSTEME U trade mark with the omission of the term “le” and the addition of an hyphen “-“ and the term “coop” and that this does not prevent the likelihood of confusion between the Domain Name and the Complainant’s trade mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant contends that the Respondent is not commonly known by the Domain Name and, further to a trade mark search carried out by the Complainant, the Respondent does not hold any trade mark registration corresponding to the Domain Name. In addition, the Complainant asserts that no license or authorisation has been granted to the Respondent to register or use the Domain Name. Finally, the Complainant submits that the use of the Domain Name to facilitate fraudulent activities and impersonate the Complainant cannot be considered bona fide, legitimate or fair.

The Complainant contends that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trade mark and the Respondent could not have ignored the Complainant’s trade mark LE SYSTEME U and that it registered the Domain Name in bad faith. The Complainant points to the use by the Respondent of incorrect registration data as a further indication of bad faith on the part of the Respondent. The Complainant also alleges that the Respondent is using the Domain Name in bad faith as the Complainant provided evidence showing that the Domain Name was used to send fraudulent emails impersonating the Complainant with a view to defrauding genuine suppliers of the Complainant. In addition, the Complainant refers to a previous transfer decision under the Policy where the Respondent was named as the respondent and where the facts were of a similar nature as those in the present case. The Complainant thus considers 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

In order to prevail the Complainant must substantiate that the three elements of paragraph 4(a) of the Policy have been met, namely:

(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.

In the case of default by a party, as is the case here, paragraph 14(b) of the Rules makes it clear that if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

In the absence of a Response from the Respondent whereby the Respondent did not object to any of the contentions from the Complainant, the Panel will have to base its decision on the basis of the Complaint and supporting Annexes.

A. Identical or Confusingly Similar

In light of the evidence provided by the Complainant, the Panel is satisfied that the Complainant has substantiated that it holds valid trade mark rights in LE SYSTEME U, which is reproduced almost in its entirety in the Domain Name.

The second point that has to be considered is whether the Domain Name is identical or confusingly similar to the trade mark LE SYSTEME U in which the Complainant has rights.

At the second level, the Domain Name incorporates the Complainant’s LE SYSTEME U trade mark with the omission of the term “le” and the addition of two hyphens “-“ and the term “coop”. The omission of the term “le” and the addition of the hyphens and the term “coop” do not prevent a finding of confusing similarity between the Complainant’s trade mark and the Domain Name.

Then there is the addition of the generic Top-Level-Domain (“gTLD”) “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element of confusing similarity test.

Thus, the Panel finds that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out relevant circumstances that could demonstrate that a respondent has rights or legitimate interests in a domain name, namely:

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 [the respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to [the respondent] of the dispute, [the respondent’s] 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) [the respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [the respondent] ha[s] acquired no trade mark or service mark rights; or

(iii) [the respondent] 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 trade mark or service mark at issue.

Numerous previous panels have found under the UDRP that once the Complainant makes a prima facie showing that the Respondent does not have rights or legitimate interests in the domain name, the burden of production shifts to the Respondent to rebut the showing by providing evidence of its rights or interests in the domain name.

Having reviewed the Complainant’s assertions and evidence, the Panel is satisfied that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name.

The Complainant has stated that it has not licensed or otherwise authorised the Respondent to make any use of its trade mark LE SYSTEME U. There is no indication that the Respondent is commonly known by the Domain Name.

Further, the Complainant has provided clear evidence that the Domain Name was used to send fraudulent emails impersonating the Complainant with a view to defrauding genuine suppliers of the Complainant. As previous panels under the Policy have consistently found, such illegal use can never be considered bona fide, legitimate or fair under the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13.1.

Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a number of relevant non-exhaustive circumstances, which can be deemed to constitute evidence of registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that [the respondent has] registered or acquired [a disputed] 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.

Given the circumstances described in the Complaint and the documentary evidence provided by the Complainant, the Panel finds that the Domain Name was registered in bad faith.

The Domain Name reproduces the dominant part of the LE SYSTEME U trade mark of the Complainant and this cannot be a coincidence given the overall circumstances of the present case including: (i) the goodwill and reputation of the Complainant’s LE SYSTEME U trade mark in France where the Respondent is based, as substantiated by the Complainant, (ii) the fact that the Domain Name was registered relatively recently and many years after the registration of the trade mark LE SYSTEME U and (iii) the choice of the term “coop” (abbreviation of “cooperative”) added to “systeme-u-” in the Domain Name which clearly targets the Complainant and its corporate structure.

Thus, the Panel finds that the Domain Name was registered in bad faith.

As for use of the Domain Name in bad faith, given the circumstances described in the Complaint and the evidence provided by the Complainant, the Panel considers that the Domain Name is used in bad faith.

The Domain Name appears to be passively held at the time of the Decision or at least the Panel was not able to access the associated website as access was blocked when the Panel tried to access it. Passive use itself would not cure the Respondent’s bad faith given the overall circumstances here, specifically the previous use of the Domain Name, the goodwill and reputation of the Complainant’s LE SYSTEME U trade mark, especially in the country where the Respondent appears to be based and the Respondent’s default to file a Response.

In any event, the past use of the Domain Name to send fraudulent emails impersonating the Complainant with a view to defrauding genuine suppliers of the Complainant is very persuasive and clear evidence of the Respondent’s bad faith use of the Domain Name and typically the type of use the Policy is designed to tackle.

The fact that the Respondent chose not to object to the Complainant’s assertions can only reinforce the Panel’s view that the Domain Name is used in bad faith.

In addition, the Complainant points to another recent transfer decision under the Policy (Greenyard NV v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Franck Gauthier, WIPO Case No. D2021-3469) where the name of the respondent is the same as the name of the Respondent in the present case and where the facts were similar to the facts here. In the absence of a response from the Respondent, this is a further circumstance supporting a finding of bad faith on the part of the Respondent.

Finally, this is further supported by the fact that the Respondent provided incorrect registration data for the Domain Name, which, in the circumstances, is an additional indication of the Respondent’s bad faith and intent to use the Domain Name in a way which may be abusive or otherwise detrimental to the Complainant and its rights.

Thus, the Panel finds that the Domain Name has been registered and is also being used 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 <systeme-u-coop.com> be transferred to the Complainant.

Vincent Denoyelle
Sole Panelist
Date: January 25, 2022