The Complainant is Compagnie Financière Tradition SA, Switzerland, represented by SCP Derriennic Associés, France.
The Respondent is Domains By Proxy.Com, United States of America / Claire Fradot, Israel.
The disputed domain name <tradition-clearing.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed in French with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2019. On April 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and 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 April 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain name was English. On April 26, 2019, the Complainant requested French to be the language of the proceeding, to which the Respondent did not reply, and filed an amended Complaint.
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 in both English and French, and the proceedings commenced on May 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2019.
The Center appointed Emre Kerim Yardimci as the sole panelist in this matter on June 17, 2019. 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.
The Complainant is a financial services company offering a wide range of services in the area of capital markets, energy and commodities, equities, fixed income, foreign income, foreign exchange, market data and money markets. The Complainant is listed in the Swiss stock exchange since 1973 with a turnover of 873 million Swiss francs for the financial year 2017.
The Complainant has been using the trademark TRADITION continuously since late 1950 and holds many trade and service mark registrations in several countries, including the International Registration designating France with the number 741446 for TRADITION, registered on August 3, 2000 covering financial services in class 36.
The Complainant’s sister company TRADITION FINANCIAL SERVICES has been the registrant of the domain name <tradition.com> since Mars 26, 2009.
At the time the complaint was filed, the Complainant claims that the website was offering financial services.
The disputed domain name was created on January 8, 2019. At the time the decision is rendered, the disputed domain name resolved to a parking page with pay-per-click links to competing financial services.
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s trademark TRADITION, as it incorporates the trademark in its entirety, and that the addition of the descriptive word “clearing” reinforces the association between the disputed domain name and the Complainant’s trademark.
The Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, mainly because the Complainant has neither licensed nor otherwise authorized the Respondent to use its marks or to apply for or use any domain name incorporating the trademark TRADITION and the Respondent does not appear to be known by the disputed domain name.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant claims that the Respondent is using the disputed domain name for redirecting it to other online sites with the aim to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark and for the purpose of disrupting the Complainant’s business and targeting the Complainant’s trademark. Moreover, according to the Complainant, the fact that the Respondent used a privacy shield to hide its identity and did not reply to the cease and desist letters sent by the Complainant is evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Registrar has confirmed that the registration agreement is in English in this case.
The Complaint was filed in French and the Complainant has requested French to be the language of the proceeding. The Respondent has not objected to the Complainant's request on language of the proceeding and did not submit its Response.
The Panel is familiar with both French and English. Having assessed the Complainant’s communications in French, the Panel however decided in accordance with paragraph 11 of the Rules, the language of proceeding as English in accordance with the language of the registration agreement.
Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a 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.
As there are no exceptional circumstances for the failure of the Respondent to submit a formal Response, the Panel infers that the Respondent does not deny the facts asserted and contentions made by the Complainant. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. As indicated above, the term “TRADITION” is the distinctive part of the Complainant’s trade name since 1959 and the Complainant holds several trademark registrations for TRADITION.
The disputed domain name <tradition-clearing.com> integrates the Complainant's TRADITION trademark as the dominant element of the disputed domain name and the addition of the word “clearing” which is descriptive with respect to the financial services, the sector in which Complainant operates, does not prevent a finding of confusing similarity.
As regards the generic Top-Level Domain “.com”, it is typically disregarded under the confusing similarity test.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and satisfied the requirement under paragraph 4(a)(i) of the Policy.
The onus is on the Complainant to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and it is then for the Respondent to rebut this case.
The Panel accepts the Complainant’s submissions that the Respondent does not appear to be known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the disputed domain name, and has no consent from the Complainant to use its trademark.
The Respondent has not filed a Response.
The Complainant has made out its prima facie case under this element of the Policy and the Respondent has failed to rebut it. Accordingly, the Complainant succeeds in relation to the second element of the Policy.
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Considering the Panel’s finding under the second element, the Panel finds that the registration and use of the disputed domain name falls under the circumstances described under paragraph 4(b)(iv) of the Policy, namely, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by seeking to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Lastly, the Panel observed that the Respondent used a privacy shield. While the Respondent’s use of a privacy service will not in itself constitute bad faith under the Policy, the Panel may still take it into account and draw adverse inferences. The use of the privacy shield in this case together with other elements gives rise to the suspicion that the privacy shield was used to mask the identity of the true registrant and to obstruct proceedings commenced under the Policy.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been met by the Complainant.
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, <tradition-clearing.com> be transferred to the Complainant.
Emre Kerim Yardimci
Date: July 14, 2019
Stay updated! Get new cases and decisions by daily email.