WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Le Parisien Libéré, SAS v. Domains By Proxy, LLC / Fayssal Akkaoui

Case No. DCO2020-0032

1. The Parties

The Complainant is Le Parisien Libéré, SAS, France, represented by Nameshield, France.

The Respondent is Domains By Proxy, LLC, United States of America / Fayssal Akkaoui, Morocco.

2. The Domain Name and Registrar

The disputed domain name <leparisien.co> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2020. On June 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 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 June 16, 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 June 17, 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 June 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2020. On June 19, 2020, the Respondent submitted an email communication in Arabic, inquiring about settlement. On June 22, 2020, the Complainant requested for suspension of the proceeding. On the same day, the Center suspended the proceeding until July 22, 2020. The Complainant requested the proceeding to be reinstituted on July 16, 2020. Accordingly on July 17, 2020, the proceeding recommenced with the new Response due date being August 3, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified to the Parties that it was proceeding to the panel appointment.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on August 12, 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

The Complainant is a French newspaper which was established in 1944. The Complainant owns the French trademark registrations Nos. 98732441 registered on May 14, 1998, and 98732442 registered on May 14, 1998, for the trademark LE PARISIEN. The Complainant also owns the domain name <leparisien.com>.

The disputed domain name was registered on February 24, 2020, and used to resolve to a news/blog website in French. The disputed domain name does not currently resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the Complainant’s trademark LE PARISIEN. The addition of the country code Top-Level Domain (“ccTLD”) “.co” does not prevent confusing similarity. .

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant to use its trademark. Further, the Respondent is using the disputed domain name in order to attract Internet users to its website.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have been aware of the Complainant’s trademark given its reputation and distinctiveness. The Respondent is trying to attract Internet users to its website for commercial gain.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Respondent submitted an email communication in Arabic inquiring about settlement.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for the trademark LE PARISIEN. The Panel is satisfied that the Complainant has established its ownership of the trademark LE PARISIEN.

The disputed domain name comprises the Complainant’s trademark LE PARISIEN in its entirety. The ccTLD “.co” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name.

The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has been operating since 1944 while the disputed domain name was only registered earlier this year. More importantly, the disputed domain name resolves to a website that seems to post articles on current affairs and other topics. The Complainant’s trademark is a news publication and hence the Respondent must have been fully aware of the Complainant and its trademark when it registered the disputed domain name.

The Complainant contends that the disputed domain name contains sponsored links. However, the Panel was not able to verify such contention. The print outs produced by the Complainant do not show such links and the website to which the disputed domain name resolves is not accessible. Irrespective of whether sponsored links exist or not, the fact that the disputed domain name resolves to a website that replicates the activity of the Complainant is an indication that the Respondent has registered the disputed domain name and is using it in order to attract Internet users by creating the likelihood of confusion with the Complainant’s trademark.

Additionally, the use of a privacy protection service is an indication of bad faith in the circumstances of this case.

Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <leparisien.co> be transferred to the Complainant.

Nayiri Boghossian
Sole Panelist
Date: August 13, 2020