EDHEC Business School v Host Master, Transure Enterprise Ltd

WIPO Case No. D2023-1973

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

EDHEC Business School v. Host Master, Transure Enterprise Ltd

Case No. D2023-1973

1. The Parties

The Complainant is EDHEC Business School, France, represented by CSC Digital Brand Services Group

AB, Sweden.

The Respondent is Host Master, Transure Enterprise Ltd, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <myedhec.com> (the “Domain Name”) is registered with Above.com, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2023. On May 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 5, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (above_privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 5, 2023 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 May 10, 2023.

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 May 11, 2023. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2023.

The Center appointed Jeremy Speres as the sole panelist in this matter on June 15, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

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Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant was founded in France in 1906 and has traded as a leading international business school under the EDHEC mark since 1951, with five campuses in Lille, Nice, Paris, London and Singapore.

The Complainant owns numerous trade mark registrations for its EDHEC mark, including International Trademark Registration No. 890123 EDHEC (stylised) in classes 35, 41 and 42, with registration date May 19, 2006, designating the Respondent’s country, the United States, amongst others.

The Domain Name was registered on November 23, 2020 and resolves to a pay-per-click (“PPC”) advertising site featuring advertisements for the Complainant as well as competing services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its well-known EDHEC mark, that the Respondent has no rights or legitimate interests in the Domain Name, and the Domain Name was registered and used in bad faith given that it has been used for PPC advertisements for the Respondent’s commercial gain, taking advantage of the Complainant’s reputation to attract users to competing services.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant’s registered and well-known EDHEC mark is wholly contained within the Domain Name with the addition of the element “my”. Where the trade mark is recognisable within the disputed domain name (as in this case), the addition of other terms does not prevent a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8). The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant’s unrebutted evidence establishes that its mark was registered and well-known for many
years prior to registration of the Domain Name. The Domain Name is confusingly similar to the
Complainant’s mark and the Complainant has certified that the Domain Name is unauthorised by it.

Use of a domain name to host PPC links does not represent a bona fide offering where such links compete with or capitalise on the reputation of the complainant’s mark, as in this case (WIPO Overview 3.0 at section 2.9). There is no evidence that any of the circumstances set out in paragraph 4(c) of the Policy pertain, nor any others which may confer rights or legitimate interests on the Respondent. The Complainant has

satisfied paragraph 4(a)(ii) of the Policy by virtue of having made out an unrebutted prima facie case (WIPO
Overview 3.0 at section 2.1).

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C. Registered and Used in Bad Faith

UDRP panels have consistently found that the registration of a domain name that is confusingly similar to a well-known trade mark can by itself create a presumption of bad faith (WIPO Overview 3.0 at sections 3.1.4 and 3.2.1).

The Domain Name has been used to advertise services competitive with those of the Complainant, which is
a clear indicator of targeting for commercial gain under paragraph 4(b)(iv) of the Policy. See Dr. Martens
International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No.
D2011-1753. Although the advertisements may be served programmatically by a third party, the
Respondent cannot disclaim responsibility for them (WIPO Overview 3.0 at section 3.5).

The Domain Name was listed for sale on a prominent domain name marketplace for USD 250, which is likely, without evidence from the Respondent to the contrary, in excess of the Respondent’s out-of-pocket expenses relating directly to the Domain Name. Thus, paragraph 4(b)(i) of the Policy is applicable.

The Respondent also has a long history of cybersquatting, as evidenced by the many UDRP cases decided
against it as respondent. See e.g. Aldi GmbH & Co. KG Aldi Stores Limited v. Host Master, Transure
Enterprise Ltd, WIPO Case No. D2023-0116. This is a further indicator of bad faith.

The Panel draws an adverse inference from the Respondent’s failure to take part in the present proceeding where an explanation is certainly called for (WIPO Overview 3.0 at section 4.3).

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 Domain Name, <myedhec.com>, be transferred to the Complainant.

/Jeremy Speres/
Jeremy Speres
Sole Panelist
Date: June 29, 2023