WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EUTELSAT S.A. v. Contact Privacy Inc. Customer 1249969408 / Duponchelle Vincent

Case No. D2021-1177

1. The Parties

The Complainant is EUTELSAT S.A., France, represented by Nameshield, France.

The Respondent is Contact Privacy Inc. Customer 1249969408, Canada / Duponchelle Vincent, United States of America.

2. The Domain Name and Registrar

The disputed domain name <eutelast.com> (the “Disputed Domain Name”) is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2021. On April 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 April 19, 2021, 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 April 19, 2021.

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 April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2021.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 21, 2021. 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 one of the leading satellite operators in the world, having a fleet of 39 satellites and serving countless broadcasters, video service providers, telecom operators, ISPs, and government agencies. The Complainant’s satellites are used for video broadcasting, satellite newsgathering, broadband services, and data connectivity.

The Complainant is the owner of numerous trade mark registrations for the EUTELSAT mark in various jurisdictions, including, inter alia, the International EUTELSAT trade mark (Reg. No. 479499) registered on June 20, 1983, and the International EUTELSAT trade mark (Reg. No. 777505) registered on December 31, 2001.

The Complainant also owns and operates a number of domain names, including <eutelsat.com>, which was registered on October 29, 1996.

The Disputed Domain Name was registered on April 14, 2021. The Disputed Domain Name fails to resolve to an active webpage. However, the Complainant provided evidence that the Disputed Domain Name has been used in connection with a fraudulent email scheme.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) The Disputed Domain Name is confusingly similar to the Complainant’s EUTELSAT trade mark. This is a clear case of typosquatting, as the Disputed Domain Name incorporates a variation of the Complainant’s EUTELSAT trade mark with the letters “s” and “a” inversed.

(b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its EUTELSAT trade mark. The Respondent is not commonly known by the Disputed Domain Name. The fact that the Disputed Domain Name contains a typosquatted version of the Complainant’s trade mark and that the Disputed Domain Name has been used in a phishing scheme further prove that the Respondent lacks the rights and legitimate interests in using the EUTELSAT trade mark, and that such use is neither a bona fide offering of goods or services nor a noncommercial or fair use.

(c) The Respondent must have been aware of the Complainant and its EUTELSAT trade mark at the time of registering the Disputed Domain Name. The typosquatted version of the Complainant’s EUTELSAT trade mark incorporated in the Disputed Domain Name was intentionally designed to cause confusion and mislead Internet users. The Disputed Domain Name was also used by the Respondent for phishing purposes. In particular, the Respondent had attempted to pass off as the Complainant by sending an email using the Disputed Domain Name in order to receive undue payment from third parties. Therefore, the Respondent has registered and is using the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the EUTELSAT trade mark, based on its various trade mark registrations.

It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Disputed Domain Name incorporates a version of the Complainant’s EUTELSAT trade mark with the letters “s” and “a” inversed. The Panel finds that there is a reasonable likelihood that Internet users may not notice the difference and may mistakenly perceive the Disputed Domain Name as being one of the Complainant’s domain names.

Such variation does not prevent the Complainant’s EUTELSAT trade mark from being sufficiently recognisable in the Disputed Domain Name, and therefore does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s EUTELSAT trade mark. See section 1.9 of the WIPO Overview 3.0.

As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s EUTELSAT trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel accepts that the Complainant has not authorised the Respondent to use the EUTELSAT trade mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the EUTELSAT trade mark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; 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 consumers or to tarnish the trade mark or service mark at issue.

There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. The Panel agrees with the Complainant that the Respondent’s use of the Disputed Domain Name cannot be regarded as legitimate noncommercial or fair use, as the Disputed Domain Name was used by the Respondent for phishing purposes. In particular, the Respondent had attempted to pass off as the Complainant by sending an email using the Disputed Domain Name in an attempt to receive undue payment from third parties in place of the Complainant. Such fraudulent use of the Disputed Domain Name can never confer rights or legitimate interests on the Respondent. See section 2.13 of the WIPO Overview 3.0.

In addition, no evidence has been provided to show that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that the Respondent has become known by the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names comprising typos) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The Complainant’s EUTELSAT trade mark appears to be fairly well-known. According to Annex 8 of the Complaint, the top Internet search results for “eutelast” are the Complainant’s official website and various third party websites making references to the Complainant’s services. Therefore, taking this into consideration, together with the fact that the Disputed Domain Name incorporates a deliberately misspelled version of the Complainant’s EUTELSAT trade mark, and that the Respondent has been attempting to pass off as the Complainant using the Disputed Domain Name, the Respondent must have been aware of the Complainant and its rights in the EUTELSAT trade mark when registering the Disputed Domain Name.

In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:

(i) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;

(ii) the Respondent registered the Disputed Domain Name using a privacy shield to conceal its identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu,WIPO Case No. D2019-0193); and

(iii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name contains a typosquatted version of the Complainant’s EUTELSAT mark, any use of the Disputed Domain Name would likely mislead third parties into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant, thereby causing harm to the Complainant’s legitimate rights; and

(iv) the Respondent has been using an email account associated with the Disputed Domain Name to pass itself off as the Complainant and seek undue payment from third parties (see section 3.4 of the WIPO Overview 3.0).

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and 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 <eutelast.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: June 4, 2021