Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain name, the Complainant must prove that each of the following elements is present:
(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.
1) The Complainant has established to be the owner of the trademark "3SHAPE" at least since October 2012. The Complainant's trademark is registered well before the registration of the disputed domain name (June 1, 2018). The Panel notes that the consensus view in previous UDRP panel decisions is that in determining confusing similarity under paragraph 4(a) of the Policy, the generic Top-Level Domain (“gTLD”) suffix (“.com” in this particular instance) should be totally disregarded. Therefore the comparison has to be made between the signs "3SHAPE" on the one side and "3SHAPETAIWAN" on the other side. The disputed domain name incorporates the Complainant's trademark "3SHAPE" coupled with the word TAIWAN. In this respect the Panel notes that many previous panels under the Policy have found that a mere geographic identifier in a domain name (as in the disputed domain name <3shapetaiwan.com>) does not alter the finding of similarity between the domain name in dispute and the previous registered trademark (please see Six Continents Hotels, Inc. v. Sdf fdgg, WIPO Case No. D2004-0384 and Credit Agricole SA v. Frederik Hermansen, CAC Case No. 101249). Accordingly, the Complainant has, to the satisfaction of the Panel, shown that the domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
2) The Complainant provided prima facie evidence that the Respondent does not have rights or legitimate interests in respect of the disputed domain name as it is not commonly known under the disputed domain name and was never authorized to use it by the Complainant. The Respondent, in the absence of any substantial response, has not shown any facts or element to justify prior rights or legitimate interests in the disputed domain name. The Complainant therefore succeeds also on the second element of the Policy.
3) Given the trademark registrations and widespread use of the mark "3SHAPE" by the Complainant, it is highly improbable that the Respondent was unaware of the Complainant’s trade mark "3SHAPE" when it registered the disputed domain name and therefore a finding of bad faith registration seems to be appropriate in the present case. Furthermore, the Panel accepts the Complainant's contentions that the disputed domain name has been used in bad faith under the principles of passive holding. It is consensus view that the lack of an active use of a domain name does not as such prevent a finding of bad faith under the Policy. In such cases, the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to a cease and desist letter sent before the commencement of the proceeding, no response to the complaint, respondent’s concealment of identity and the impossibility of conceiving a good faith use of the domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574;Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131). The Panel is convinced that the trademark is a distinctive and well-known trademark. Furthermore it must be stressed that the Respondent failed to file a Response and therefore did not provide evidence of any actual or contemplated good faith use of the disputed domain name. In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent’s non-use of the disputed domain name equals to use in bad faith (see Amundi Asset Management v. Amundi, CAC Case No. 102288; Accor v. VNT Corporation, CAC Case No. 100004). The Complainant therefore succeeds also on the third element of the Policy.
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