RIGHTS
The disputed domain name and the Complainant’s trademarks are nearly identical since both fully incorporate the word elements “SPIE BATIGNOLLES”.
Since the disputed domain name and the Complainant’s trademarks are not identical, the key element investigated and considered by the Panel is whether the disputed domain name consisting also of a term “NORD” is confusingly similar to the Complainant’s trademarks.
The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name. An addition of common, dictionary, generic, or other descriptive terms is typically insufficient to prevent threshold Internet user confusion. Confusing similarity test under the UDRP typically involves a straightforward visual and aural comparison of the trademark with the domain name in question.
Applying the principles described above, the Panel contends that incorporation of a dominant “SPIE BATIGNOLLES” element of Complainant’s trademarks (which standalone enjoys high level of distinctiveness) into the disputed domain name constitutes confusing similarity between Complainant’s trademark and the disputed domain name.
Addition of non-distinctive element – geographical suffix “NORD” ("north" in English) - cannot prevent the association in the eyes of internet consumers between the disputed domain name and the Complainant’s trademarks and thus the likelihood of confusion still exists. On the contrary, it may mislead the internet users that the disputed domain name is somehow related to Complainant's business in Nordic countries.
For sake of completeness, the Panel asserts that the top-level suffix in the disputed domain name (i.e. the “.COM”) must be disregarded under the identity and confusing similarity tests, as it is a necessary technical requirement of registration.
Therefore, the Panel has decided that there is identity in this case, it also concludes that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
NO RIGHTS OR LEGITIMATE INTERESTS
The Complainant’s assertions that the Respondent is not commonly known by the disputed domain name and is not affiliated with nor authorised by the Complainant are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent.
In addition, given the fact that (i) the disputed domain name has not been genuinely used and (ii) in the absence of the Respondent's response, the Panel concludes that there is no indication that the disputed domain name was intended to be used in connection with a bona fide offering of goods or services as required by UDRP.
Also the Panel concurs with the Complainant that the name of Respondent, under which he has registered the disputed domain name (i.e. spie batignolles), is apocryphal and does not correspond to true identity of the Respondent.
Consequently, the evidentiary burden shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name. However, the Respondent failed to provide any information and evidence that it has relevant rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a) (ii) of Policy).
BAD FAITH
The Panel finds it grounded that the Respondent registered and used the disputed domain name in bad faith.
The Respondent has not used the disputed domain name in any genuine manner, however, the Panel concludes (as it has been ruled in many similar cases, as for example Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>, Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, <jupiterscasino.com>, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131, <ladbrokespoker.com>) that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name(s) without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith.
Examples of what may be cumulative circumstances found to be indicative of bad faith include cases in which (i) the Complainant has a well-known trademark and (ii) there is no genuine use (e.g. a mere "parking") of the disputed domain name by the Respondent (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).
The Respondent has not been using the disputed domain name and it remains merely "parked"; also the Panel concludes that Complainant's Trademarks enjoy status of well-known trademarks. Consequently, both conditions for finding of the bad faith under the case law above are duly met.
Based upon the concepts above, which the Panel finds satisfied in this case, even though there is no real use of the disputed domain name, the Panel contends, on the balance of probabilities, that the disputed domain name has been registered and is being used (held) by the Respondent in bad faith.
Thus, the Panel has taken a view that the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy.
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