Cerba Healthcare v Name Redacted

WIPO Case No. D2024-4737

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Cerba Healthcare v. Name Redacted

Case No. D2024-4737

1. The Parties

The Complainant is Cerba Healthcare, France, represented by Domgate, France.

The Respondent is Name Redacted.[1]

[1]The Respondent appears to have used the name of a Complainant’s employee when registering the disputed domain name. In light of

2. The Domain Name and Registrar

The disputed domain name <cerballianceparisetidfest.com> is registered with IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18,

2024. On November 18, 2024, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the disputed domain name. On November 19, 2024, 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 (Redacted for privacy) and contact information in

the Complaint. The Center sent an email communication to the Complainant on November 21, 2024,

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 29,

2024.

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

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Complaint, and the proceedings commenced on December 2, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was December 22, 2024. The Respondent did not file a formal

response. A third-party sent an email communication to the Center on December 21, 2024. The Center

commenced panel appointment process on December 26, 2024.

The Center appointed Elise Dufour as the sole panelist in this matter on January 3, 2025. 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 Cerba Healthcare, a French based group dedicated to operating medical biology

laboratories on a European scale.

The Complainant is running a network of laboratories under the name “Cerballiance”. This network brings

together over 600 laboratories in France and Europe.

One of these laboratoires is CERBALLIANCE Paris et Ile De France EST.

The Complainant owns a number of trademarks formed with CERBALLIANCE:

- French Trademark CERBALLIANCE No. 4213826 registered on September 30, 2015, covering services in

classes 42 and 44.

- International Trademark CERBALLIANCE No. 1316808 registered on March 9, 2016, covering services in

classes 42 and 44 and designating various jurisdictions.

The disputed domain name was registered on September 20, 2024.

The Complainant served a cease and desist letter on September 27, 2024 to the Respondent that remained

unanswered. The disputed domain name is not currently linked to an active website. However, the

Respondent has used fraudulent information seemingly impersonating the Complainant for purposes of

registration of the disputed domain name.

A. Complainant

The Complainant contends that (i) the disputed domain name is confusingly similar to the Complainant’s

trademarks; (ii) the Respondent has no rights or legitimate interests in the disputed domain name; and (iii)

the Respondent registered and is using the disputed domain name in bad faith.

(i) The Complainant claims that the disputed domain name is confusingly similar to its previous registered

trademarks. Indeed, the disputed domain name incorporates entirely the Complainant’s trademark

CERBALLIANCE, to which the geographic terms “paris”, “idf “and “est” and the generic Top-Level Domain

“.com” are added. For the Complainant, this addition does not prevent a finding of confusing similarity

between the disputed domain name and the Complainant’s trademark.

(ii) The Complainant states that the Respondent has no rights or legitimate interests in respect of the

disputed domain name: the Respondent is neither related to, nor has it been licensed or permitted to use the

Complainant’s trademarks. The Respondent is not commonly known by the disputed domain name and is

not making a legitimate noncommercial or fair use of the disputed domain name as it is inactive. In addition,

as the Mail Exchange (“MX”) servers are activated, for the Complainant, the Respondent is certainly using

the disputed domain name for illegal activities like spamming or phishing.

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(iii) the Complainant considers that the Respondent could not have ignored the existence of the

Complainant’s trademark at the time the disputed domain name was registered.

As per the use of the disputed domain name, for the Complainant, the passive holding of the disputed

domain name by the Respondent constitutes bad faith.

For the Complainant, the combined following circumstances imply that the passive use of the disputed

domain name should be considered as bad faith use: (i) The disputed domain name incorporates the

reproduction of the Complainant’s trademark; (ii) According to this similarity, it is very implausible that the

Respondent may use the disputed domain name in good faith given that the Complainant never gave any

authorization to anyone to register the disputed domain name; (iii) The disputed domain name’s MX servers

are activated which could imply fraudulent use for phishing or scamming activities; (iv) the Respondent has

used fraudulent information seemingly impersonating the Complainant for purposes of registration of the

disputed domain name.

B. Respondent

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

5. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing

(or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison

between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain

name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “paris”, “idf “and “est”, may bear on assessment of the second and

third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity

between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0,

section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate

rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized

that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task

of “proving a negative”, requiring information that is often primarily within the knowledge or control of the

respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or

legitimate interests, the burden of production on this element shifts to the respondent to come forward with

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relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

proof always remains on the complainant). If the respondent fails to come forward with such relevant

evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0,

section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case

that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has

not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the

Policy or otherwise. The Panel also notes that the Respondent sought to impersonate an employee of the

Complainant through the contact details used for registration of the disputed domain name, which even

included a physical address from which the Complainant operates.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy

establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall

be evidence of the registration and use of a domain name in bad faith.

The Complainant’s CERBALLIANCE Mark was registered years before the Respondent’s registration of the

disputed domain name. The Panel notes that the Respondent registered the disputed domain name with

details impersonating an employee of the Complainant and using the address of the Complainant’s head

office, which demonstrates that the Respondent knew the Complainant when registering the disputed domain

name.

The disputed domain name resolves to an inactive website. Panels have found that the non-use of a domain

name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0,

section 3.3. Having reviewed the available record, the Panel notes the reputation of the Complainant’s

trademark, the composition of the disputed domain name, and the fact that the Respondent used the

Complainant’s details when registering the disputed domain name, and finds that in the circumstances of this

case the passive holding of the disputed domain name does not prevent a finding of bad faith under the

Policy.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain

name constitutes bad faith under the Policy.

Accordingly, the Panel finds that the Complainant has established the third element of the Policy.

6. 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 <cerballianceparisetidfest.com> be transferred to the Complainant.

/Elise Dufour/

Elise Dufour

Sole Panelist

Date: January 20, 2025

the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as

Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the

Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding and has

indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A.

v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.