FIRST CONDITION
It is commonly accepted that the first condition functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. It this comparison, the cc- or g- TLD is usually not taken into account.
The disputed domain name includes entirely an important part ("SPIE", the word "BATIGNOLLES" being less distinctive since it refers to an area of Paris close to the place where the history of the Complainant originally began) of the Complainant’s trademark, with the adjunction of the generic word "fondations". The Panel is of the opinion that in a situation where the Complainant’s trademark is entirely included in the disputed domain name, the adjunction of generic terms does not generally change the assessment as far as the first condition is concerned. (see also WIPO, Swiss Re, No. D2014-1873). It is even more the case in a situation like the one in this case, where this generic term refers to the activity of the Respondent.
First condition is satisfied.
SECOND CONDITION
The Panel has 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.
The Complainant claims, without being contradicted, that:
- The Respondent is not identified in the WHOIS database as the disputed domain name;
- The Complainant has not licensed or authorized the Respondent to register or use the disputed domain name;
- There is no evidence that the Respondent is known by the disputed domain name or owns any corresponding registered trademarks;
- The disputed domain name is offered for sale for a minimum offer of 250 USD; and
- The disputed domain resolves to random pages including a parking page with commercial links.
The Respondent has chosen not to answer to the Complaint.
Based on the elements presented by Complainant, the Panel finds that the second condition is satisfied.
THIRD CONDITION
The disputed domain name incorporates nearly entirely the Complainant’s trademark. In the absence of any credible explanation, such incorporation appears as a direct reference to the Complainant’s trademark. There is no apparent plausible reason for the Respondent to register the domain name, except its probable intention of taking advantage of the distinctiveness of the Complainant's trademark.
It is therefore prima facie highly probable that the Respondent registered and used the disputed domain name having the Complainant in mind, and acted in order to attract traffic by using the notoriety of the Complainant in order to make money when a visitor clicks on the commercial links inserted on the Respondent's website and/or to have an opportunity to sell the disputed domain name to the Complainant.
The Respondent has chosen not to answer to the complaint.
Based on the elements presented by Complainant, the Panel finds that the third condition is satisfied.
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