Decision for dispute CAC-UDRP-106002

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name <foncia-inv.com>.

The Complainant owns the following trademark registrations for “FONCIA”:

- International trademark n° 941 643, FONCIA, registered in 2007;

- European trademark n° 1470210, FONCIA, registered in 2001;

- European trademark n°17987683, FONCIA GROUPE + logo, registered in 2019;

- International trademark logo n° 017980107 registered in 2019.

The Complainant also owns various domain names, such as <emeria.eu> owned since July 27, 2021 and <fr.foncia.com> owned since December 11, 1998.

The Complainant, EMERIA EUROPE (formerly called FONCIA GROUPE) is a French company, and the world’s leading provider in real estate services, providing services to both individuals and businesses. EMERIA EUROPE assists residential and commercial customers at each stage of their property journey with competitive and comprehensive service offerings. EMERIA group provides end-to-end assistance, from managing individual apartments and building areas jointly owned by apartment owners through our lease management and joint property management business lines, respectively, to providing renting, brokerage and digital and ancillary services such as insurance brokerage, technical diagnostics, and distribution and energy brokerage offerings through our other business lines.

EMERIA group’s residential real estate services businesses are the leader in France, operating under the FONCIA brand through a unique network of over 500 branches. EMERIA group also holds leading positions in Switzerland, Germany and the UK and have strong presence in Belgium, Luxembourg, the Netherlands and Portugal where the company operates under various brands through a network of over 200 branches. It represents 17,000 employees in 8 countries, over 700 branches that correspond to €1.5bn revenue.

The disputed domain name <foncia-inv.com> was registered on March 9, 2023, and resolves to parking page with commercial links. Additionally, the disputed domain name has been subject to many phishing attempts.

COMPLAINANT:

• The disputed domain name is identical or confusingly similar to the protected mark

As regards the first element of the Policy, the Complainant supports that the disputed domain name is confusingly similar to its FONCIA trademark, as it incorporates the trademark in its entirety.

According to the Complainant, the addition of the "inv" as "investment" to the trademark FONCIA is not sufficient to escape the finding that the disputed domain name is confusingly similar to the trademark FONCIA.

Finally, it is well established that the addition of the gTLD “.com” should be disregarded when assessing similarity as it is a standard registration requirement (See section 1.11, WIPO Overview 3.0, SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services, WIPO Case No. D2015-0565).

Therefore, the Complainant concludes that the disputed domain name is confusingly similar to the Complainant's trademark FONCIA.

• Respondent does not have any rights or legitimate interest in the disputed domain name

As regards the second element of the Policy, the Complainant denies that the Respondent has been authorized to use the trademark FONCIA in the disputed domain name. According to the Complainant, the Respondent is not known by the Complainant and has never been affiliated with the Complainant nor authorized by the Complainant in any way to use the FONCIA trademark.

Furthermore, the disputed domain name resolves to a parking page with commercial links. The Complainant considers that the current use of the disputed domain name does not represent a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain name.

Moreover, according to the Complainant, the Respondent deliberately created addresses linked to the disputed domain name. The disputed domain name has thus been used in a very organized fraudulent e-mail scheme which cannot confer rights or legitimate interests on the Respondent.

Therefore, the Complainant contends that the Respondent has no right nor legitimate interest in respect of the disputed domain name.

• The disputed domain name has been registered and is being used in bad faith

As regards the third element of the Policy, the Complainant contends that the Respondent has registered the disputed domain name and uses it in bad faith.

Given the distinctiveness of the Complainant's trademarks and worldwide reputation, the Complainant argues that it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant's trademark.

Furthermore, the disputed domain name resolves to a parking page with commercial links. It is reasonable to infer that the Respondent earns pay-per-click revenue in relation to such sponsored links. The Complainant thus contends the Respondent has attempt to attract Internet users for commercial gain to his own website thanks to the Complainant’s trademark for its own commercial gain, which is evidence of bad faith.

Finally, the Complainant contends that the disputed domain name has been used to activate MX e-mail servers with IP addresses to send fraudulent e-mails to third parties in view of investing in financial products and in real estate investments in order to raise money illegally in a phishing scheme.

On these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.

RESPONDENT:

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. 

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown 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).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

The UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN) (the “Policy”) provides that complainant must prove each of the following to obtain transfer or cancellation of the domain name:

1. that respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

2. that respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.


1) The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights

The Panel is satisfied that the Complainant is the owner of international and European trademark registrations for FONCIA that predate the disputed domain name registration.

The disputed domain name comprises the Complainant’s well-known trademark FONCIA with the addition of "inv" as "investment" to the trademark FONCIA. The most distinctive part of the disputed domain name is the Complainant’s mark, FONCIA. In the Panel's view, the addition of the term "inv" increases rather than excludes the risk of confusion for the public. It in any way does not change the overall impression of the designation as being connected to the Complainant's trademark FONCIA.

Furthermore, the addition of a purely generic top-level domain (“gTLD”) ".com" does not, according to the Panel, add any distinctiveness or prevent the disputed domain name from being confusingly similar to the Complainant’s trademark FONCIA. Previous UDRP panels have also held that the gTLD is not to be considered when assessing whether a domain name is identical or confusingly similar to a trademark. See, e.g., Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) or Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

As a consequence, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, for the purposes of the first element of the Policy.


2) The Respondent lacks rights or legitimate interests in the disputed domain name

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP (see WIPO Overview 2.0, paragraph 2.1).

The Panel finds that the Respondent does not have a legal right to use the term "FONCIA” as part of its disputed domain name. The Respondent is not in any way affiliated with the Complainant, nor is it authorized to register the disputed domain name. The Panel agrees with the Complainant that the Respondent is not commonly known by the disputed domain name or has legitimate interest over the disputed domain name. 

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain name. The Respondent failed to file a Response in which it could have provided evidence in support of its rights or legitimate interests. The Respondent is not commonly known by the disputed domain name and has not been authorised by the Complainant to use the term "FONCIA". Therefore, all these circumstances are sufficient to establish a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name.

Thus, the Panel believes that the Respondent lacks rights or legitimate interests in the disputed domain name for the purposes of the second element of the Policy.


3) The disputed domain name has been registered and is being used in bad faith

The Panel agrees with the Complainant that its trademark FONCIA is distinctive and well-known. The Complainant’s well-known trademark FONCIA predates the registration of the disputed domain name. The Panel finds that there appears no reason why the Respondent would register the Complainant's trademark as part of the disputed domain name, other than to create the impression that it is connected to the Complainant's business. Given the distinctiveness of the Complainant's trademark, it is reasonable to infer that the Respondent has registered the disputed domain name with full knowledge of the Complainant's trademark. 

The fact that the Respondent has registered the disputed domain name that is confusingly similar to Complainant´s trademark indicates and in the absence of any evidence contrary (or any administratively compliant response at all) being put forward by the Respondent, that the Respondent, according to this Panel, had knowledge of the Complainant’s trademark and that it had such knowledge before the registration and use of the disputed domain name. Moreover, the disputed domain name has been used to activate MX e-mail servers with IP addresses to send fraudulent e-mails to third parties in view of investing in financial products and in real estate investments in order to raise money illegally in a phishing scheme, which in the Panel's view may strongly suggest evidence of the Respondent's bad faith.

Accordingly, the Panel concludes that the Complainant has satisfied the third element of the Policy, that is that the Respondent's registration and use of the disputed domain name in bad faith.