WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Teleperformance SE v. Domain administrator, See PrivacyGuardian.org / Benson Sherman

Case No. D2020-2072

1. The Parties

Complainant is Teleperformance SE, France, represented by Inlex IP Expertise, France.

Respondent is Domain administrator, See PrivacyGuardian.org, United States of America (“United States”) / Benson Sherman, United States.

2. The Domain Name and Registrar

The disputed domain name <teleperformance-careerinc.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2020. On August 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 7, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 7, 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 Respondent of the Complaint, and the proceedings commenced on August 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 31, 2020.

The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on September 16, 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.

4. Factual Background

Complainant is a European registered company having its head office in Paris, France. It is a global leader in outsourced omnichannel customer experience management, and provider of digital integrated business services.

Complainant owns the following registered and used trade marks (“Complainant’s Mark”):

- European Union Trade Mark TELEPERFORMANCE No. 003460524, registered September 26, 2005 in classes 16, 35 and 38;

- International trade mark TELEPERFORMANCE No. 507250, registered September 4, 1986 in classes 9, 16, 35 and 38;

- French trade mark No. 4469777 registered July 18, 2018 in classes 9, 16, 35, 38, 41 and 42; and

- International trade mark No. 1462808 registered August 6, 2018 in classes 9, 16, 35, 38, 41 and 42.

Complainant is also the owner of an extensive list of domain names incorporating Complainant’s TELEPERFORMANCE trade mark, with various extensions, including the following:

- <teleperformance.com>, registered on October 28, 1995;

- <teleperformancecareer.com>, registered on August 23, 2018;

- <teleperformancecareers.com>, registered on November 15, 2016; and

- <teleperformancejob.com>, registered on August 14, 2017.

All of the above domain names are in use by Complainant and are automatically redirected to its official website for the domain name <teleperformancejob.com>.

According to the publicly available WhoIs, the Domain Name was registered on March 21, 2020. The Domain Name resolves to a website, which appears similar to those of Complainant.

5. Parties’ Contentions

A. Complainant

Complainant states that the Domain Name reproduces Complainant’s Mark in its entirety followed by the terms “career” and “inc”, thereby creating a risk of confusion and association for consumers.

Complainant contends that to its knowledge Respondent is not using the Domain Name in a legitimate noncommercial or fair manner without intent for commercial gain.

Complainant also asserts that Respondent knew or should have known about the existence of Complainant’s Mark and domain names as, by way example, the official websites of Complainant are the first results appearing on a Google search for the term “teleperformance”. Complainant believes that the registration of the Domain Name is not incidental but voluntary and a conscious move by Respondent in an attempt to primarily disrupt the business of Complainant.

Complainant further asserts that registration and use of the Domain Name by Respondent can be classed as typo squatting. Complainant submits that further proof of Respondent’s bad faith is evidenced by the fact that the Domain Name has been registered through a privacy registration service.

Complainant also notes that parts of its website and Complainant’s Mark have been reproduced on the webpage of the Domain Name, including Complainant’s visual identity, i.e. the same purple colour and presentation (including the same typeface, and reproduction of the logo on the left top of the webpage) of the one used for Complainant’s office website.

Further evidence of the risk of confusion in the mind of Internet users is that after completion of the application form contained on the webpage resolving from the Domain Name, the user is automatically redirected to the website “https://www.teleperformance.com/en-us/”, which is Complainant’s official website. Complainant asserts that Respondent’s behavior should be considered as identity theft which is disrupting Complainant’s business as Respondent is using a domain name that is confusingly similar to Complainant’s domain names and Complainant’s Mark and by impersonating Complainant’s identity.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant is a Paris based company supplying outsourced customer experience management and digital integrated business services. Complainant’s services enable companies to connect with their customers. Complainant asserts it is a global leader in this area. As noted above, Complainant is the proprietor of International, European Union, and French trade mark registrations, all incorporating the term TELEPERFORMANCE. These trade mark registrations have registration dates ranging from 1986 to 2018. They all precede the Domain Name, which was registered on March 21, 2020.

On the basis of the above, Complainant has established that it has rights in Complainant’s Mark and that these rights predate Respondent’s registration of the Domain Name.

Complainant argues that the Domain Name reproduces Complainant’s Mark in its entirety, followed by a hyphen and the terms “career” and “inc”. Given the adoption of the key element “teleperformance”, the Domain Name is confusingly similar to Complainant’s Mark.Accordingly, the Panel finds that:

a) Complainant has rights in respect of Complainant’s Mark; and

b) the Domain Name is confusingly similar to Complainant’s Mark.

Accordingly, the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

In terms of whether Respondent has rights or legitimate interests in the Domain Name, Complainant alleges that Respondent has registered the Domain Name, that comprises Complainant’s Mark in its entirety along with the terms “careers” and “inc”, thereby creating a risk of confusion and association for consumers. Given Complainant provides outsourcing and business services there is merit in this argument, insofar as consumers are likely to think that Respondent is providing some sort of “careers” related services associated in some way with Complainant.

In the absence of any explanation by Respondent as to why it registered the Domain Name, the Panel infers that the Domain Name is likely to create the mistaken impression that the Domain Name and/or Respondent is somehow connected to or associated with Complainant and/or Complainant’s Mark.

Complainant alleges that parts of its website and Complainant’s Mark have been reproduced on the webpage resolving to the Domain Name. Further, it is alleged that Respondent has used Complainant’s visual identity. Respondent does not deny such conduct, nor rely on any purported license or authorization.

Based on the above, Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, which the Respondent has failed to rebut. Accordingly, the Panel is satisfied that the second element of the Policy has been met.

C. Registered and Used in Bad Faith

Complainant asserts that Respondent knew or should have known about the existence of Complainant’s Mark and domain names as Complainant’s official websites are the first results appearing on a Google search for the word “teleperformance”. This assertion is plausible and is not refuted by Respondent.

In addition, given the alleged impersonating use by Respondent of parts of Complainant’s website, Complainant’s Mark, and Complainant’s visual identity, the Panel finds that Respondent must have known of Complainant and its business activities and registered and is using the Domain Name to take bad faith advantage of Complainant’s Mark.

The Panel thus finds that the third limb of the Policy has been met.

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 Domain Name <teleperformance-careerinc.com> be transferred to Complainant.

Clive L. Elliott
Sole Panelist
Date: September 30, 2020