WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dalkia v. Whois Privacy Protection Foundation / Christian Russo, Inter Data Systems GmbH

Case No. D2021-4405

1. The Parties

The Complainant is Dalkia, France, represented by IP Twins SAS, France.

The Respondent is Whois Privacy Protection Foundation, the Netherlands / Christian Russo, Inter Data Systems GmbH, Germany.

2. The Domain Name and Registrar

The disputed domain name <dalkiairsolutions.com> is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2021. On December 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 31, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 4, 2022 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 January 6, 2022.

The Center verified that the Complaint together with the amendment to 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 January 14, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2022.

The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on February 16, 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 Complainant is part of the EDF Group and offers customers expertise in developing, building, and managing innovative, greener, more cost-effective energy solutions to enable the sustainable growth of cities and companies. The Complainant employs 18200 collaborators and provides services to more than 2200 industrial sites, 26000 commercial and service-sector facilities as well as 4800 healthcare facilities. In 2021, the Complainant generated 4,2 billion in revenue.

Dalkia Air Solutions is a subsidiary of the Complainant which specializes in solutions for reducing energy consumption related to pressurized air in production sites.

The Complainant is the owner of numerous registered trademarks worldwide, including but not limited to:

- French Trademark registration DALKIA AIR SOLUTIONS No. 4493346, filed on October 22, 2018;
- French Trademark registration DALKIA No. 98717437, registered on February 11, 1998;
- French Trademark registration DALKIA No. 97709784, registered on December 19, 1997;
- International Trademark registration DALKIA No. 700874, registered on June 19, 1998, designating notably - China, Russian Federation, Germany and United Kingdom; and
- United States registration DALKIA No. 2320375, registered on February 22, 2000.

The Complainant is also holder of numerous domain names incorporating its DALKIA and DALKIA AIR SOLUTIONS trademarks: <dalkia.com>, <dalkia.fr>, <dalkiaairsolutions.com>, <dalkiaairsolutions.fr>, and many others.

The disputed domain name was registered on July 1, 2021, and resolves to a website displaying various advertisements links.

5. Parties’ Contentions

A. Complainant

The Complainant claims that it established rights through registration of the trademarks DALKIA and DALKIA AIR SOLUTIONS. The disputed domain name is confusingly similar because it incorporates the trademarks in their entirety. It only lacks the letter “a” to be identical to the trademark DALKIA AIR SOLUTIONS, too.

The Complainant furthermore alleges that DALKIA has no specific meaning, therefore it is not needed to describe Respondent’s business. To the Complainant’s knowledge no DALKIA registered trademarks exist other than those in the name of the Complainant. The Respondent has no business relationship with the Complainant and does not enjoy any license, partnership, or authorization from the Complainant. In light of this the Respondent should be considered as having no rights or legitimate interests in the disputed domain name.

Finally, the Complainant contends an act of typo squatting due to the usage of the specific combination of DALKIA and “solutions”. The disputed domain name resolves to a website containing pay-per-click (“PPC”) links. The registration and further use of the disputed domain name have been most likely done in the hope and expectation that Internet users searching for the Complainant’s services and products would instead come across the Respondent’s website. Such behavior indicates bad faith use and registration. Therefore, registration and use of the disputed domain name was in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

It has been a consensus view in previous UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s DALKIA and DALKIA AIR SOLUTIONS trademarks, in which the Complainant has established rights through registration and use.

Section 1.9 of the WIPO Overview reads: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.

This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant.

Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”

The Complainant’s trademark DALKIA AIR SOLUTIONS is sufficiently recognizable within the disputed domain name since the difference lies only in the missing letter “a”.

While the Panel notes that this would be sufficient under the first element of the Policy, when compared to the trademarks DALKIA the disputed domain name incorporates the entirety of the Complainant’s trademarks DALKIA by unifying the last letter of the trademarks DALKIA with the first letter of “air solutions”. Section 1.8 of the WIPO Overview 3.0 reads: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” The disputed domain name therefore is also confusingly similar to the Complainant’s trademarks DALKIA.

When evaluating the identity or confusing similarity of the Complainant’s marks to the disputed domain name under paragraph 4(a)(i) of the Policy, generic Top-Level Domains (“gTLDs”) are generally disregarded, irrespective of any ordinary meaning that might be ascribed to the gTLD (see section 1.11 of the WIPO Overview 3.0).

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). The Panel notes that the Respondent did not submit a response.

The Complainant makes its prima facie case by demonstrating without contradiction that it has not authorized or granted a license to the Respondent to use its trademark and that the Respondent has not been commonly known by the disputed domain name.

The disputed domain name resolves a website displaying sponsored links, operated via a PPC system.

Section 2.9 of the WIPO Overview 3.0 states: “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.

Panels have additionally noted that respondent efforts to suppress PPC advertising related to the complainant’s trademark (e.g., through so-called ‘negative keywords’ can mitigate against an inference of targeting the complainant.

Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.

In cases involving a website that is not predominantly a ‘typica’ parked or PPC site (e.g., a blog, forum, or other informational page), where other clear, non-pretextual indicia of respondent rights or legitimate interests are present, some panels have been prepared to accept the incidental limited presence of PPC links as not inconsistent with respondent rights or legitimate interests.”

Due to the high similarity of the disputed domain name and the Complainant’s trademarks, the disputed domain name capitalizes on the reputation and goodwill of the Complainant’s mark and misleads Internet users. The term “dalkia” is a made-up word without meaning and is not a dictionary word, no legitimate interests are therefore indicated. In conclusion, the applied PPC system cannot be considered as bona fide offering or fair use.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The trademark DALKIA is intensively used by the Complainant.

Section 3.2.2 of the WIPO Overview 3.0 reads: “Knew or should have known: Noting the near instantaneous and global reach of the Internet and search engines and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

An online search for the terms “dalkia”, “dalkia air solutions” or “dalki air solutions” would have immediately informed the Respondent of the Complainant’s activities. Accordingly, the Respondent could and should have known that these signs are used as trademarks by the Complainant. Given the similarity and the high distinctiveness of the signs DALKIA and DALKIA AIR SOLUTIONS, it can be assumed that the Respondent was indeed aware of the trademark and even relied on it to profit from the confusion of Internet users. Therefore the registration was made in bad faith.

The disputed domain name resolves to a website that displays various PPC commercial links. According to section 3.5 of the WIPO Overview 3.0 such use can indicate the Respondent’s bad faith. In this specific case, the Respondent uses typo squatting and integration of one of Complainant’s trademarks into the disputed domain name to create a likelihood of confusion and to mislead the Internet users for clicks and to gain commercial revenue by the PPC system.

Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.

The Panel therefore finds that the disputed domain name was registered and used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 <dalkiairsolutions.com> be transferred to the Complainant.

Christian Gassauer-Fleissner
Sole Panelist
Date: March 3, 2022