Complainant is CACEIS (Société Anonyme) of Paris, France, represented by Gevers, European Intellectual Property Architects, Belgium.
Respondent is Wilson Ronald Douglas of Berkhamsted, Hertfordshire, Ireland.
The disputed domain name <caceis.co> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2016. On January 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint on January 22, 2016.
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 Respondent of the Complaint, and the proceedings commenced on January 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 15, 2016. On February 15, 2016, the Center received an email communication from an individual associated with the email address listed in the WhoIs for the disputed domain name, with a name which is somewhat similar to the name of Respondent, who claimed that his contact details had been used fraudulently in this registration (discussed infra).
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 18, 2016. 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.
Complainant is a banking group domiciled in Paris.
Complainant has provided evidence that it is the owner of various registered trademarks relating to the designation “Caceis”, inter alia:
- Word mark CACEIS, Office for Harmonization in the Internal Market (OHIM), Registration No.: 004643573, Registration Date: February 26, 2008.
- Word-/device mark CACEIS, United States Patent and Trademark Office (USPTO), Registration No.: 3616250, Registration Date: May 5, 2009.
The disputed domain name was created on June 22, 2015; by the time of the rendering of this Decision, it redirects to a standardized default page at “www.caceis.co” informing Internet users: “This domain has been redirected”.
Complainant has also provided copies of a number of e-mails using the disputed domain name in a deceptive way which were sent to some of Complainant’s clients, apparently in order to obtain fraud sensitive information.
The Complaint, sent by the Center to Respondent on January 22, 2016 to the contact details provided in the Whois information for the disputed domain name, could not be delivered due to a wrong address and telephone number, although notice to the email address provided in the WhoIs was successful to an apparent unrelated individual. .
Complainant requests that the disputed domain name be transferred to Complainant.
Complainant alleges that the disputed domain name <caceis.co> is identical to its CACEIS trademark, as it identically reproduces the latter.
Moreover, Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name since there are obviously no registered trademarks CACEIS in the name of Respondent nor is he commonly known by the disputed domain name or by the CACEIS trademark; as a result, it is obvious that Respondent has no intention to use the disputed domain name in connection with a bona fide offering of goods or services or to make a legitimate non-commercial or fair use thereof.
Finally, Complainant claims that the disputed domain name was registered and is being used in bad faith since (1) the contact details in the Whois register for the disputed domain name contain an incorrect address and telephone number and (2) using the disputed domain name in a deceptive way for the sending of e-mails to Complainant’s clients clearly demonstrates that Respondent intended to create, in a fraudulent manner, a likelihood of confusion with Complainant as to the source of Respondent’s e-mails and the requests contained therein.
Respondent did not reply to Complainant’s contentions.
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute based upon the Complaint.
The Panel concludes that the disputed domain name <caceis.co> is identical to the CACEIS trademark in which Complainant has shown to have rights. It is obvious that the second level domain name in <caceis.co> is identical to the CACEIS trademark and there is a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2), that the applicable top-level-suffix in a disputed domain name (e.g., “.co”) would usually be disregarded under the identity or confusing similarity test.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate non-commercial of fair use thereof. UDRP panels have generally recognized that using a disputed domain name to redirect e.g. to a parking or landing website may be permissible under some circumstances, but would not of itself confer rights or legitimate interests in the disputed domain name (see WIPO Overview 2.0, paragraph 2.6). This line of argumentation is even more valid if the disputed domain name redirects to a standardized default page as in the case at hand.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations whatsoever, and the circumstances of this case do not otherwise provide the Panel with any basis of finding any Respondent’s rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
Complainant has produced copies of e-mails sent to its clients in a fraudulent manner by making use of the disputed domain name in a deceptive way. In the absence of any indications to the contrary, it is, therefore, reasonable to assume either that the disputed domain name was primarily registered for the purpose of disrupting Complainant’s business (see paragraph 4(b)(iii) of the Policy) or that by using the disputed domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s online location (Policy paragraph 4(b)(iv)). Such circumstances serve as evidence of the registration and use of the disputed domain name in bad faith.
In this context, the Panel has also taken into account that Respondent obviously provided false Whois information since e.g. the Complaint sent to Respondent by the Center on January 22, 2016 could not be delivered due to a wrong address and telephone number, and the related email address is held by an asserted unrelated party.
Therefore, the Panel finds that also the third element under the Policy as set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
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 <caceis.co> be transferred to Complainant.
Stephanie G. Hartung, LL.M.
Sole Panelist
Date: February 29, 2016