The Complainant is DALKIA, France, represented by IP Twins S.A.S., France.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Ryan Cooper, Canada, self-represented.
The disputed domain name <delkia.com> (the “Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2020. On July 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 9, 2020, 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 July 17, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an informal email communication from the Respondent on July 18, 2020. The Complainant filed an amended Complaint on July 22, 2020.
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 July 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2020. The Response was filed with the Center on July 26, 2020 and an amended Response was filed on July 29, 2020.
The Center appointed John Swinson as the sole panelist in this matter on August 17, 2020. 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 Dalkia, a company incorporated in France and a member of the EDF Group. According to the Complaint, the Complainant offers expertise in providing energy solutions to customers in various countries and has a presence in Canada. The Complainant has 16,000 employees and provides services to many industrial sites as well as to commercial, service-sector and healthcare facilities. According to the Complaint, the Complainant generated revenue of EUR 4.2 billion in 2019.
The Complainant is the owner of several registered trade marks for DALKIA, the earliest of which is French registered trade mark number 98717437, registered on February 11, 1998 (the “Trade Mark”). The Complainant is also the owner of domain names incorporating the Trade Mark, including <dalkia.com> and <dalkia.fr>, registered on September 29, 2013 and September 26, 2013 respectively.
The Respondent is Ryan Cooper, an individual of Canada. The Disputed Domain Name was registered on October 26, 2019. The Disputed Domain Name currently resolves to a parking page.
According to the Response, the Respondent is the sole proprietor of a business registered in Canada. The Respondent states that he registered the Disputed Domain Name for a role playing Linux Operating System like Dungeons & Dragons (the “DELKIA Operating System”) and that the website will go live once development is complete.
The Complainant makes the following contentions.
Identical or Confusingly Similar
The Disputed Domain Name is identical to the Trade Mark but for the second letter “a” being replaced with the letter “e”. The term “DALKIA” is highly distinctive and has no dictionary meaning in any language to the Complainant’s knowledge. Phonetically “dalkia” and “delkia” are very similar and the letters “a” and “e” are in close proximity on AZERTY and QWERTY keyboards. For these reasons, the Disputed Domain Name is an example of typosquatting and is confusingly similar to the Trade Mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- the Trade Mark is an arbitrary and fanciful mark and therefore enjoys strong protection against infringement;
- the Complainant has no business relationship with the Respondent and has not licensed or consented to the Respondent’s use of the Trade Mark;
- to the best of the Complainant’s knowledge, the Respondent does not possess registered or unregistered trade mark rights in the term “delkia” and has not been known by the Disputed Domain Name;
- the Disputed Domain Name redirects to a parking page; and
- based on the above, the Respondent has not made any use of or preparation to use the Disputed Domain Name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Trade Mark.
Registered and Used in Bad Faith
The Respondent knew or should have known of the Complainant’s rights in the Trade Mark at the time the Disputed Domain Name was registered. There is no plausible explanation for the Respondent’s registration of the Disputed Domain Name other than it being an attempt to divert traffic from the Complainant’s website by taking advantage of a misspelling of the Trade Mark. Registration of a typosquatting domain name, such as the Disputed Domain Name, is usually considered to have been done in bad faith.
The non-use of a domain name will not prevent a finding of bad faith under the doctrine of passive holding and the totality of the circumstances should be considered. The Respondent did not respond to the cease and desist letter or the four reminders sent by the Complainant to the proxy email address listed in the WhoIs record for the Disputed Domain Name. Further, the Trade Mark is widely used and highly distinctive and the Respondent has not made any genuine use of the Disputed Domain Name in connection with a bona fide offer of products or services.
The Respondent makes the following contentions.
Identical or Confusingly Similar
The Complainant has no rights over the Disputed Domain Name, which is spelled differently to the Trade Mark. The Complainant’s contention that the letters “a” and “e” are in close proximity on a QWERTY keyboard is false. The Disputed Domain Name is not an example of typosquatting.
Rights or Legitimate Interests
The Disputed Domain Name was registered in connection with the DELKIA Operating System. “DELKIA” is a term used for a land filled with Dwarves, Elves, and Orcs, and the letters “IA” come from the land of Britannia.
The Disputed Domain Name was registered by the Respondent as a Canadian sole proprietor business and will go live once development is complete.
The Respondent has spent a significant amount of time developing the DELKIA Operating System and spent thousands of dollars in the process. A logo was also developed for this business, that includes the term DELKIA, on November 8, 2019.
Registered and Used in Bad Faith
The Respondent was unaware of the Complainant prior to receiving the Complaint and seeks a finding of Reverse Domain Name Hijacking.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements is on the Complainant.
The Respondent submitted an additional filing on July 29, 2020. This consisted of additional Annexures to the Response. Given that this was submitted before the Response due date, the Panel considers it as an amended response. Even if it did not so consider such filing, the Panel would admit it for the following reasons:
- it did not amend the substance of the Response and instead comprised additional Annexures to the Response evidencing preparations to use the Disputed Domain Name;
- it was filed well in advance of the due date for the Response; and
- the Respondent is self-represented.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see WIPO Overview 3.0, section 1.7).
The Disputed Domain Name is the same as the Trade Mark except that the second letter “a” in the Trade Mark is replaced with an “e”. The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. (the Panel need not specifically consider the Complainant’s argument that it constitutes typosquatting because it is “recognizable” and thus meets the standard for the first element.)
The Complainant is successful on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Respondent presented evidence that:
- he operates a sole proprietor business in Canada and has shown evidence of his tax filings;
- a logo was created for the Disputed Domain Name and DELKIA Operating System with a timestamp of November 8, 2019, i.e., unless he has presented a fraudulent specimen, prior to notice of the present dispute;
- he performed development work which he says was related to the DELKIA Operating System between February and May 2020; and
- he purchased various equipment as part of his work which appears to have been delivered on July 14, 2020, a few days before he received notice of the present dispute from the Center.
The Respondent provided supporting documents, including source code he says was related to the DELKIA Operating System, although this connection is not clear from the images provided.
The Panel considers the evidence presented by the Respondent to be minimal but sufficient in these circumstances to rebut the Complainant’s prima facie case.
In light of the above, the Complainant does not succeed on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
Registration in bad faith
To succeed in a complaint under the Policy, it is well established that under the third element of the Policy, a complainant must prove on the preponderance of the evidence that the domain name in issue was registered in bad faith, i.e., was registered with the Complainant or its Trade Mark in mind.
The Respondent contends that he was unaware of the Complainant prior to receiving the Complaint. Despite having a presence in Canada, the Complainant has not provided sufficient evidence to demonstrate that the Respondent is likely to have been aware of the Trade Mark or the Complainant, and otherwise targeted the Complainant.
Based on the evidence presented, the Panel does not consider the Disputed Domain Name to be an example of typosquatting and the Respondent provided adequate, if minimal, and certainly subject to challenge by the Complainant e.g., in court, evidence that the origins of the name “DELKIA” are independent of the Trade Mark.
Use in bad faith
There is no evidence that the Respondent has sought to sell, rent or otherwise transfer the Disputed Domain Name to the Complainant or a competitor of the Complainant. The Respondent claims that his intention is to retain the Disputed Domain Name for use in connection with the DELKIA Operating System.
There is also no evidence that the Respondent is attempting to attract Internet users to the Disputed Domain Name by creating a likelihood of confusion with the Trade Mark. Although the Disputed Domain Name currently resolves to a parking page, the Respondent provided evidence that he has made preparations to use the Disputed Domain Name in connection with a projectwhich is unrelated to the Complainant’s business. The parking page is a generic registrar created parking page, with no advertising or pay-per-click links.
In light of the above, the Panel finds that the Complainant does not succeed on the third element of the Policy.
The Respondent has asked the Panel to make a finding of Reverse Domain Name Hijacking (“RDNH”). Under the Rules, RDNH is defined as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The Panel does not consider the Complaint was filed in bad faith. Before filing the Complaint, the Complainant attempted to contact the Respondent by sending a cease and desist letter (followed by a number of reminders) and received no response from the Respondent. The Complainant also undertook various searches in an effort to identify any preparations by the Respondent to use the Disputed Domain Name or operate a business under the name “DELKIA”. The evidence presented by the Respondent which demonstrated his intentions for the Disputed Domain Name was not accessible to the Complainant.
The Panel does not make a finding of RDNH.
The Panel also notes that some of the Respondent’s evidence may be seen as self-serving and lacking in specifics (i.e., the screenshots of code) but that this tips the case from the narrow type of “clear cut” case the Policy was intended to deal with. The Complainant may be able to question the authenticity of the Respondent’s evidence in court – where, the Panel adds, damages may be available. The Panel would finally note that if subsequent evidence comes to light to cast doubt on the Respondent’s bona fides such as a change in the use of the Disputed Domain Name to target the Complainant, or attempts to sell the same to the Complainant, that may be relevant to a refiled case.
For the foregoing reasons, the Complaint is denied.
Date: August 31, 2020
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