WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe IRCEM v. Perfect Privacy, LLC / Milen Radumilo, White & Case
Case No. D2018-2330
1. The Parties
The Complainant is Groupe IRCEM of Roubaix, France, represented by SafeBrands, France.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America (“United States”) / Milen Radumilo, White & Case of Bucharest, Romania.
2. The Domain Name and Registrar
The disputed domain name <wwwircem.com> is registered with Pararescuedomains.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2018. On October 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 17, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 22, 2018.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2018.
The Center appointed Alfred Meijboom as the sole panelist in this matter on November 19, 2018. 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 non-profit organization that was founded in 1973 and manages retirement funds, health care plans and other beneficial programs for individual employees that are predominantly engaged in caring professions. The Complainant has around 500 employees in its service and is headquartered in France.
The Complainant owns several trademarks, including the following registered trademarks for IRCEM:
- French national trademark no 3519318, registered on August 10, 2007 for services in classes 35, 36, 38, 41, 42, 43, 44, and 45;
- French national trademark no 4385300, registered on August 31, 2017 for goods and services in classes 9, 35, 36, 38, 41, 42, 43, 44, and 45 (hereafter the “IRCEM Trademark”).
The disputed domain name was registered on January 24, 2018 through the registrar NameBright. The owner of the disputed domain name at that time was identified as the Hong-Kong based company “China Capital”. The Complainant sent China Capital a letter on February 27, 2018 requesting the transfer of the disputed domain name. After several reminders, a reply was received from the United States firm of Morton and Associates LLP on March 9, 2018 through which the Respondent disputed any trade mark infringement and offered to transfer the disputed domain name against payment of a lump sum.
Before the Complainant could start UDRP proceedings, the disputed domain name was cancelled on April 7, 2018. On the same date, the disputed domain name was registered again via another registrar. This time, the identity of the owner was hidden behind a privacy shield, provided by the WhoIs identity protection service Perfect Privacy, LLC. In May and June 2018 the Complainant sent various emails to the Respondent via the email address listed in the WhoIs register. These emails remained unanswered.
The Respondent Milen Radumilo had been ordered to transfer two other domain names in separate earlier UDRP decisions this year, being Andrey Ternovskiy dba Chatroulette v. Privacy Protection Service, Provided through Communigal Communication Ltd, Perfect Privacy, LLC, Contact Privacy Inc. Customer 0147901156, Contact Privacy Inc. Customer 0150243305, Contact Privacy Inc. Customer 0148620601, Contact Privacy Inc. Customer 0150016370, Contact Privacy Inc. Customer 0148380240, Contact Privacy Inc. Customer 0148620598 / Milen Radumilo, White & Case,
WIPO Case No. D2018-0552 and Michelin Recherche Et Technique S.A v. Milen Radumilo, White & Case,
WIPO Case No. D2018-1527. Further, since 2015, 36 cases in which the respondent was identified as “Milen Radumilo” resulted in the transfer of the disputed domain name to the complainant.
The disputed domain name does currently not direct to a stable website. The user is randomly directed to various types of websites, including a website that offers the disputed domain name for sale via a link and inviting the user to contact the domain name owner directly (through the WhoIs contact information) regarding any “trademark issues”. Besides the offering of the disputed domain name through one of the websites behind the disputed domain name, the disputed domain name is currently also offered for sale on the digital marketplace at “www.sedo.com” for USD 688.
5. Parties’ Contentions
A. Complainant
The Complainant claims that the mark “IRCEM” does not have any meaning in French or in any other language. As such it is not a dictionary word and is highly distinctive for the Complainant’s goods and services. The disputed domain name is identical to the IRCEM Trademark, when the “www” element and the Top-Level Domain (“TLD”) are disregarded. According to the Complainant, placing “www” in front of a trademark is a common cybersquatting practice referred to as “dotsquatting”. Further, the Respondent does not have any rights or legitimate interests in the disputed domain name. On the contrary, given the many UDRP cases the Respondent has lost over the last three years, the Respondent is obviously in the business of registering infringing domain names in the hope of making a profit. The Complainant claims that this is further demonstrated by the fact that one of the websites to which the disputed domain name frequently redirects offers the disputed domain name for sale and the disputed domain name is offered for sale on another (third party) website as well.
Finally, the Respondent has registered and is using the disputed domain name in bad faith. The inclusion of the letters “www” in the disputed domain name is an indicator of registration in bad faith. The disputed domain name was transferred when the Complainant sent its first demand letter to the previous owner in February 2018. This practice, kown as “cyberflight”, is an indicator of bad faith. Further, the Respondent’s track record up to date, the lack of any legitimate offering of goods and services under the disputed domain name, the offering of the disputed domain name for sale, the lack of response to any of the Complainant’s emails and the fact that the Respondent has tried to hide its identity behind a privacy shield are further indicators of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent did not file a Response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the panel may draw appropriate inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel considers the disputed domain name confusingly similar to the IRCEM Trademark. It is established by previous UDRP panels that the generic elements of a URL syntax, such as “www” and “.com” are disregarded in the comparison between a disputed domain name and the trademark in question. Additionally, the inclusion of the prefix “www” in the disputed domain name clearly points to a case of what is sometimes named “typosquatting”. Many browsers will automatically direct an Internet user that omits the dot between “www” and “ircem.com” to the website(s) under the disputed domain name. This is apparently because the browsers will assume the user has intentionally omitted the usual “www” and thus automatically “corrects” the domain name by prepending “www”, thus directing the user to the website “www.wwwircem.com”. Such a specific practice is sometimes referred to as “missing dot typosquatting”. In several UDRP decisions such a practice has been identified as a typical form of “typosquatting” (e.g., Rediff.com India Ltd. v. Laksh Internet Solutions Private Limited,
WIPO Case No. D2008-0804 and Kayak Software Corporation v. Little Birds Ltd, John T.,
WIPO Case No. D2010-1395). This type of typosquatting clearly indicates confusing similarity between the disputed domain name and the IRCEM Trademark.
Consequently, the first element of paragraph 4(a) of the Policy has been met.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455).
According to paragraph 4(c) of the Policy, rights or legitimate interests in the disputed domain name may be demonstrated by showing that (i) before any notice of this dispute, the Respondent used, or demonstrably prepared to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent has been commonly known by the disputed domain name, even if no trademark or service mark rights have been acquired; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the IRCEM Trademark.
The disputed domain name redirects the user randomly to various websites. Sometimes the user is directed to a news website, sometimes to a website that tries to install plugins, and in other instances the user is directed to a website that informs the user that the disputed domain name is for sale. There is no evidence that the Respondent has any legitimate interests in the disputed domain name, neither in connection with a bona fide offering of goods or services (for commercial gain or otherwise), nor because the Respondent is commonly known by (part of) the disputed domain name or has other legitimate interests in the disputed domain name.
The Complainant has further demonstrated that the Respondent has been ordered to transfer two other domain names that were confusingly similar to registered trademarks this year and was most likely also involved in many, if not all of the 36 transfer orders of domain names that have been issued in UDRP cases involving a respondent named “Milen Radumilo” since 2015. It is therefore most likely that the Respondent is an active cybersquatter, in which event a legitimate interest in the domain name in question is seldom, if never, found.
The Panel finds that the Complainant has successfully made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which was not rebutted by the Respondent in absence of a Response. Therefore the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
There are many indications for the Panel to find bad faith in this matter. Firstly, many UDRP panels have found previously that the inclusion of the prefix “www” in a disputed domain name, when followed by an identical trademark is, an indication of registration and use in bad faith. Such is the case in the matter at hand. Further, the IRCEM Trademark was registered more than a decade before the disputed domain name, and is being used intensively by the Complainant, whose fame and repute in France have not been disputed in these proceedings. Given these circumstances, the Panel considers it very likely the disputed domain name was registered with the IRCEM Trademark in mind. The registration of a domain name that knowingly infringes on the trademark rights of another party is a clear example of registration in bad faith.
With regard to the use of the disputed domain name, paragraph 4 (b)(i) of the Policy specifically states that use of bad faith may be found – in short – when the disputed domain name has been registered with the primary purpose of selling the domain name to the complainant or to a competitor for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name. The Complainant has sufficiently demonstrated that the Respondent has offered the disputed domain name for sale through one of the websites to which the disputed domain name redirects and is also offered for sale via at least one third party website for an amount of USD 688, which exceeds the amount for which the disputed domain name is likely to have been registered. In addition, the Complainant also received an offer to buy the disputed domain name from the former owner, China Capital. Although use of the disputed domain name by former owners cannot always be held against successive owners, the Panel finds, given the circumstances surrounding the transfer of the disputed domain name to the Respondent, that this is not the case in this matter.
Further, given that it seems that the Respondent is a well-known cybersquatter, the lack of any rights or legitimate interests of the Respondent in the disputed domain name, the attempts by the Respondent to hide its identity behind a privacy shield and the absence of any response by the Respondent to the Complainant’s emails are all indicators of use in bad faith.
Given the absence of a response of the Respondent in these proceedings in which all of these circumstances may be rebutted, the Panel finds that the disputed domain name has been registered and is being or has been used in bad faith. Accordingly, the Complainant has also satisfied the third requirement 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 name <wwwircem.com> be transferred to the Complainant.
Alfred Meijboom
Sole Panelist
Date: December 3, 2018
