Decision for dispute CAC-UDRP-107974

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the Disputed domain names.

In these proceedings, the Complainants rely on the following trademarks:

- TALEND (word), International Registration No. 1310047, filed on March 25, 2016, in the name of Talend S.A. (one of the Complainants), designating among others Switzerland, where the Respondent is apparently located;

- TALEND (word), International Registration No. 1345814, filed on March 7, 2017, in the name of QlikTech International AB (one of the Complainants), designating among others Switzerland, where the Respondent is apparently located;

- TALEND (word), EUTM No. 014226989, filed on June 9, 2015, in the name of Talend S.A. (one of the Complainants), duly renewed;

- TALEND (word), US Trademark No. 5304787, filed on October 10, 2017, in the name of Talend S.A.S. (one of the Complainants); and

- TALEND (word), Canadian Trademark No. TMA1043311, filed on July 22, 2019, in the name of Talend S.A.S. (one of the Complainants).

It is worth noting that, the Complainants own a few other trademarks in various countries, which have not been cited in these proceedings.

According to information provided by the Complainant and not refuted by the Respondent, the Complainants are both part of the Qlik Tech Group, a large conglomerate in the artificial intelligence, data analytics and business intelligence solutions fields, offering software to businesses worldwide. Through its platform, the QlikTech Group enables businesses to transform raw data into actionable insights, enabling them to gain a deeper understanding of their operations, customers, and market trends. QlikTech International AB was founded in Sweden in 1993, whereas Talend S.A.S. was founded in France in 2005. The latter offers open-source solutions for big data management and data integration and was acquired by the QlikTech Group in 2023, thus expanding its capabilities.

The Complainants own a fair-sized portfolio of trademarks including the wording "TALEND", among which a French national registration dating back to 2005. It also owns quite a few related domain names, like <talend.com> and <talendcloud.com> since April 8, 2005 and August 19, 2014, respectively.

The Disputed domain names <TALENDANSWERS.COM> and <TALENDCOMMUNITY.COM> were registered on January 31, 2024 and March 27, 2024, respectively, by the Respondent, as confirmed by the Registrar.

COMPLAINANTS

The Complainants contend that the Disputed domain names are confusingly similar to their TALEND trademark, as they fully incorporate this trademark. This last element is sufficient to support the finding that the Disputed domain names are confusingly similar to the Complainants’ trademark. Indeed, the mere addition of the descriptive terms “ANSWERS” and “COMMUNITY” to the Complainants’ trademark does not change the overall impression of a most likely connection with the trademark TALEND of the Complainants. Further, as per the Complainants’ allegation, the Complainants have used both of the terms “ANSWERS” and “COMMUNITY” themselves, for their own initiatives that have been embraced by the public. As to the gTLD “.com”, the Complainants suggest that it should be disregarded, as per the usual practice. 

The Complainants maintain that the Respondent lacks rights or legitimate interests in the Disputed domain names because the Complainants are not affiliated with nor have they ever authorised the Respondent to register their trademark as domain names, the Complainants have never licensed their trademark to the Respondent and the Respondent is not known as the Disputed domain names.

According to the Complainants, given the distinctiveness and reputation of their TALEND trademark, the Respondent registered the Disputed domain names with full knowledge of the Complainants’ trademark in an intentionally designed way with the aim to create a likelihood of confusion with the Complainants’ trademarks and domain names, and this is evidence of the fact that the Disputed domain names were registered in bad faith.

With respect to use in bad faith, the Complainants point out that the Respondent had initially used the Disputed domain names for setting pay-per-click parking websites and then has held them passively as inactive websites, both activities being considered by panels as clear indications of bad faith. It is, indeed, impossible to conceive any actual or contemplated use that would not be illegitimate. Last but not least, the Respondent has not replied to the Complainants’ cease and desist letter, despite subsequent reminders.

For all these reasons, the Complainants conclude that the Respondent registered and used the Disputed domain names in bad faith.

RESPONDENT

No administratively compliant Response has been filed.

Before launching itself into the classic threefold test of Paragraph 4(a) of the Policy, the Panel will briefly examine the implicit consolidation request of the two Complainants.

According to WIPO Jurisprudential Review 3.0 (Para. 1.4.1) a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.

In the case at issue, both Complainants, QlikTech International AB and Talend S.A.S., seem to belong to the same QlikTech Group of companies. This is an allegation in the amended complaint, which has not been refuted by the Respondent.

Further, Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation (see Para. 4.11.1, WIPO Jurisprudential Review 3.0).

In the case at issue, the two Complainants do indeed have the same complaint against the Respondent. Therefore, the Panel, considering that this would be equitable and procedurally efficient, hereby permits the consolidation of the two Disputed Domain Names under the same case, with both Complainants.

As to the language of the proceedings, this should clearly be the language of the registration agreement, i.e. English, in accordance with Paragraph 11 of the UDRP Rules.

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The Panel will now proceed with the threefold test of paragraph 4(a) of the Policy.

Firstly, the Complainants have, to the satisfaction of the Panel, shown that the Disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights (within the meaning of paragraph 4(a)(i)of the Policy).

 The Disputed domain names consist of the Complainants’ whole registered trademark (“TALEND”), accompanied by two descriptive words, “ANSWERS” and “COMMUNITY”. Indeed, the mere addition of the said terms to the Disputed domain names is not only it not sufficient to escape the finding that the Disputed domain names are confusingly similar to the trademark of the Complainants, but it actually reinforces the confusion, as these terms relate and point to the Complainants’ own business initiatives, bearing the same names.

As far as the gTLD ".com" is concerned, it is generally recognized that top level domains do not have any bearing in the assessment of identity or confusing similarity, according to paragraph 4(a)(i) of the Policy.

Hence, the Panel is satisfied that the first requirement under the Policy is met.

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

Since proving a negative fact is almost impossible, Panelists in UDRP proceedings have generally agreed that it is sufficient for the complainant to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name to shift the burden of proof to the respondent.

In the case at issue, the Complainants argued that it had never authorised the Respondent to register the TALEND trademark in domain names, and that they had never licensed their trademark to the Respondent.

Furthermore, the Disputed domain names nowadays resolve to inactive websites that the Respondent holds passively, and previously the same Disputed domain names were used by the Respondent as parking pay-per-click websites. Therefore, the Respondent cannot demonstrate any use of the Disputed domain names in connection with a bona fide offering of goods and services or a legitimate non-commercial or fair use of the Disputed domain names.

Finally, there is no other evidence in the case file that could demonstrate that the Respondent has been commonly known by the Disputed domain names.

In view of the foregoing, the Panel is satisfied that the Complainants have established a prima facie case that the Respondent lacks rights and legitimate interests in the Disputed domain names. In order to rebut the Complainants’ arguments, the Respondent had the possibility to make his own defense. However, the Respondent has chosen not to file a Response.

Therefore the Panel is satisfied that also the second requirement under the Policy is met.

The Complainants have, to the satisfaction of the Panel, shown the Disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).

As far as registration in bad faith is concerned, given the reputation of the Complainants’ trademark, also in the country where the Respondent is located, and the fact that the Disputed domain names fully incorporate this trademark (even accompanied by two descriptive terms), it is quite evident that, at the time of the registration of the Disputed domain names, the Respondent was well aware of the Complainants’ trademark. The registration as a domain name of a third party's well-known trademark with full knowledge of the fact that the rights over this trademark belong to a third party amounts to registration in bad faith.

With respect to use in bad faith, the Disputed domain names nowadays resolve to inactive websites that the Respondent holds passively, while previously the same Disputed domain names were used by the Respondent as parking pay-per-click websites. Such fraudulent use of a domain name shows bad faith under some circumstances, such as when the complainant’s trademark has such a strong reputation that it is widely known, and when it is impossible to conceive any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate. This fact is to be combined with the full incorporation of the complainant’s reputable trademark in the disputed domain name. These are the circumstances that apply in the case at issue, to a fair extent. The trademark TALEND enjoys wide and extensive reputation in the data management software industry. Therefore, it is impossible to conceive any plausible active use of the Disputed domain names that would be legitimate. This conclusion is further reinforced by the intentional use of the descriptive words “ANSWERS” and “COMMUNITY” by the Respondent, as these terms relate and point to Complainants’ established business initiatives bearing the same names combined with their trademark “TALEND”.

Therefore the Panel finds it clear that the Disputed domain names were used in bad faith.

For all circumstances mentioned above, the Panel is satisfied that also the third requirement under the Policy is satisfied.

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 Disputed domain names incorporate the Complainants’ trademark, accompanied by descriptive terms relating to the Complainants’ business. The Disputed domain names are therefore confusingly similar to the Complainants’ trademark.

The Respondent was not authorised to include the Complainants’ trademark in the Disputed domain names, and the Complainants never licensed their trademark to the Respondent. The Respondent is not using the Disputed domain names in connection with a bona fide offering of goods or services, or a legitimate non-commercial or fair use.

The Respondent registered the Disputed domain names with full knowledge of the Complainants’ well-known trademark. His passive holding of the inactive Disputed domain names is in bad faith, as there is no conceivable use of the Disputed domain names that could amount to a legitimate use.