WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Akiem Holding v. Registration Private, Domains By Proxy, LLC / Zacaria Carlos

Case No. D2020-2830

1. The Parties

The Complainant is Akiem Holding, France, represented by CasalR

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Zacaria Carlos, United States.

2. The Domain Name and Registrar

The disputed domain name <akiemsas.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2020. On October 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 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 November 2, 2020, 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 November 4, 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 November 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2020.

The Center appointed Edoardo Fano as the sole panelist in this matter on December 3, 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.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Akiem Holding, a French company operating in the railway tractions solutions field and owning, among others, the following trademark registrations for AKIEM:

- French Trademark Registration No. 3599186 for AKIEM, registered on September 17, 2008;
- International Trademark Registration No. 1001761 for AKIEM, registered on September 26, 2008;
- European Union Trade Mark Registration No. 7262454 for AKIEM, registered on July 21, 2009.

The Complainant also operates on the Internet, its official website being “www.akiem.com”.

The Complainant provided evidence in support of the above.

The disputed domain name was registered on June 24, 2020, according to the WhoIs records, and the website at the disputed domain name is a parking page displaying pay-per-click (“PPC”) links. Furthermore, the Complainant claims that one of its clients recently received a fraudulent email, from an email address associated with the disputed domain name (i.e., [...]@akiemsas.com), used in a phishing scheme.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain name is confusingly similar to its trademark AKIEM, as the disputed domain name wholly contains the Complainant’s trademark with the addition of the acronym “sas”, corresponding to the Complainant’s corporate structure (“société par actions simplifiée”, the French version for “simplified stock company”).

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name, and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, since it is using it to fraudulently pass itself off as the Complainant.

The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark AKIEM is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name. Additionally, the Complainant contends that the use of the disputed domain name for fraudulent activities, as part of a phishing scheme, by sending emails from accounts associated with the disputed domain name to the Complainant’s customers, qualifies as bad faith registration and use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is therefore in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288).

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(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 finds that the Complainant is the owner of the trademark AKIEM both by registration and acquired reputation and that the disputed domain name is confusingly similar to the trademark AKIEM.

Regarding the addition of the acronym “sas”, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the domain name and a trademark (seeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The addition of the acronym “sas” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark.

It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).

The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent did not file a Response in accordance with the Rules, paragraph 5.

The Complainant asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. The Complainant states that the Respondent, using an email address associated with the disputed domain name (i.e., [...]@akiemsas.com), is fraudulently passing itself off as the Complainant to obtain from a Complainant’s customer an undue payment.

The Panel is of the opinion that the Respondent’s phishing activity cannot be considered as a use of the disputed domain name in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.

Moreover, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the 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 has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) that [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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that 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”.

Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark AKIEM in the railway tractions solutions field is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, especially because it corresponds to the Complainant’s trademark, business name, and corporate structure.

The Panel further notes that the disputed domain name is also used in bad faith since in connection to phishing activity, as established by the Complainant by producing a fraudulent finance document pretending to be from the Complainant, via which the Respondent is trying to fraudulently obtain an undue payment. Furthermore, the Complainant provided evidence of a complaint before the French police in relation to this activity.

The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <akiemsas.com> be transferred to the Complainant.

Edoardo Fano
Sole Panelist
Date: December 16, 2020