WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

OVH SAS v. Serverawy

Case No. D2013-1560

1. The Parties

The Complainant is OVH SAS of Roubaix, France, represented internally.

The Respondent is Serverawy of Egypt.

2. The Domain Name and Registrar

The disputed domain names <4ovh.com> and <4ovh.net> are registered with FastDomain, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2013. On September 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2013.

The Center appointed Adam Taylor as the sole panelist in this matter on October 14, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a French company which has been trading under the name “OVH” since 1999 in the field of website hosting. The Complainant has 16 subsidiaries in various countries. The group has some 700,000 customers.

The Complainant owns an international portfolio of trade marks for “OVH” including Community Trade Mark No. 005370796 dated September 27, 2006, in classes 9, 35, 36, 38, 39, 41 and 42.

The Respondent has been a customer of the Complainant since at least 2011.

The disputed domain names were registered on November 27, 2012.

As of August, 2013, the disputed domain name <4ovh.com> resolved to a website offering web hosting services under the name “My Host”. On August 26, 2013, the disputed domain name <4ovh.com> redirected to Hetzner Online, a direct competitor of the Complainant. (Annex 5 to the Complaint)

There is no evidence that the disputed domain name <4ovh.net> has ever resolved to any website (Annex 5 to the Complaint).

On August 5, 2013, the Complainant sent a cease and desist email to the Respondent. The Respondent responded the same day saying: “What you mean?? I have 4ovh.com and.net. You can buy this domains no problem. Thank you.” (Annex 8 to the Complaint).

There then followed an exchange of emails concluding on August 23, 2013. The gist of the communications was as follows: the Complainant requested deletion of the disputed domain names; the Respondent sought discounted services from the Complainant; the Complainant declined; the Respondent asked for the highest price which the Complainant was willing to pay for the disputed domain names; the Complainant offered USD 20; the Respondent asked for USD 600; the Complainant declined.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The disputed domain names incorporate the Complainant’s trade mark in its entirely.

The addition of the suffix “4” does not prevent confusing similarity.

Rights or Legitimate Interests

The Respondent is not an authorised agent or licensee of the Complainant.

The Respondent is not commonly known by the name “4ovh” or by any of the disputed domain names.

The Respondent has used the disputed domain names for a website offering services similar to those of the Complainant. This use does not amount to a bona fide offering of goods or services.

The Respondent is not making legitimate noncommercial or fair use of the disputed domain names. They have been used to mislead and attract customers to the Respondent’s own website for commercial gain.

Registered and Used in Bad Faith

The Complainant’s trade mark is well-known.

The Respondent was well aware of the trade mark as he is a customer of the Complainant. Therefore, the registration is clearly in bad faith.

The Respondent registered the disputed domain names for sale to the Complainant.

Use of the disputed domain names to sell services identical to those of the Complainant is indicative of intent to deceive customers into believing that the disputed domain names are somehow connected with the Complainant.

The disputed domain names were registered to disrupt the Complainant‘s business.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has rights in the mark OVH by virtue of its registered as well as unregistered trade mark rights deriving from the extensive use of that name.

Paragraph 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that, in itself, the addition of merely generic, descriptive, or geographical wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.

Here, the Complainant’s distinctive trade mark is undoubtedly the dominant component of the disputed domain names and the addition of the numeral “4” is insufficient to avert a finding of confusing similarity.

For the above reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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 […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

The Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name <4ovh.com> to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.

In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, the panel stated that:

“… use which intentionally trades on the fame of another can not constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”

Furthermore, paragraph 4(c)(i) of the Policy does not apply to the disputed domain name <4ovh.net> as there is no evidence that this domain name has ever been used.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply to either of the disputed domain names in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In the Panel’s view, it is obvious that the Respondent registered the disputed domain names with the Complainant’s trade mark in mind. Amongst other things, the Respondent was a customer of the Complainant at the time of registration of the disputed domain names and he has used the disputed domain name <4ovh.com> to offer exactly the same services as the Complainant although there is no other obvious connection between this domain name and the services

Although there is no evidence that the disputed domain name <4ovh.net> has been used, the Respondent’s passive holding of the domain name does not prevent the Panel from finding that, on balance, it registered and used the disputed domain name <4ovh.net> in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003

The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <4ovh.com> and <4ovh.net> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: October 28, 2013