Egis v Carolina Rodrigues, Fundacion Comercio Electronico

WIPO Case No. DCO2022-0117

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Egis v. Carolina Rodrigues, Fundacion Comercio Electronico

Case No. DCO2022-0117

1. The Parties

The Complainant is Egis, France, represented by Novagraaf France, France.

The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <egisgroup.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 December 20, 2022. On December 20, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2022, 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 December 29, 2022 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 amendment to the Complaint on December 30, 2022.

The Center verified that the Complaint together with the amendment to the 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 January 11, 2023. In accordance with the Rules, paragraph
5, the due date for Response was January 31, 2023. The Respondent did not submit any Response.

Accordingly, the Center notified the Respondent’s default on February 14, 2023.

The Center appointed Mihaela Maravela as the sole panelist in this matter on February 17, 2023. 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.

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4. Factual Background

According to information in the Complaint, the Complainant was founded in France and operates in the transport, infrastructure and building engineering field. It has over 5,000 projects and a team of 16,200 employees. The Complainant’s activities focus on research and development, which allowed it to expand its

business into the energy sector, particularly renewable energy, and also into digital and cyber security

consultancy.

The Complainant has registered several trademarks consisting of or including EGIS, including the
International Trademark registration No. 686345 (verbal) registered on December 24, 1997 and the
European Union Trade mark registration No. 005831946 (figurative) registered on May 6, 2008.

The Complainant has registered its corporate name EGIS since June 1970, and owns and operates various domain names comprising EGIS trademark, including the domain names <egis.fr>, and <egis-group.com>.

The disputed domain name was registered on July 15, 2022 and it resolves to a parking page with links to third party service offerings. The record also indicates that an active mail exchange (“MX”) email server for the disputed domain name has been configured.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name entirely and identically reproduces the respectively EGIS.

As regards the second element, the Complainant argues that the disputed domain name was registered rights.

without its consent. It argues that there is no relationship between the Complainant and the Respondent and
that the Complainant has never permitted the Respondent to use the denomination EGIS identical to its
trademarks to apply for any domain name. The disputed domain name directs to a pay-per-click (PPC)
page. Moreover, the MX servers of the disputed domain name are configured which demonstrates the
Respondent’s bad faith as it could send fraudulent emails to customers, partners or competitors of the

With respect to the third element, the Complainant contends the Respondent must have been aware of the existence of the numerous Complainant’s trademarks, company name, and domain names when registering the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Matters

No communication has been received from the Respondent in this case. The Panel notes that the delivery
of the Written Notice to the Respondent’s address confirmed by the Registrar in reply to the verification
request was not possible, as the address provided for the registration of the disputed domain name seems to
be a “bad address”.

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Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, the Panel finds that the Respondent has been given a fair opportunity to present its case. Accordingly, the Panel considers it can proceed to determine the Complaint based on the statements and documents submitted by the Complainant as per paragraph 15(a) of the Rules and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default.

6.2 Substantive Matters

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i)        that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii)       that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its rights in the EGIS trademarks. The trademark EGIS is reproduced in its entirety in the disputed domain name. The addition of the term “group” does not prevent a finding of confusing similarity with the Complainant’s trademark EGIS, which is recognizable in the disputed domain name. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such trademarks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is well accepted by UDRP panels that a country-code Top-Level Domain, such as “.co”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie case demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).

In the present case, the Complainant has established a prima facie case that it holds rights over the trademark EGIS and claims that the Respondent has no legitimate reason to acquire and use the disputed domain name.

There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services, nor does the Respondent appear to engage in any legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraphs 4(c)(i) and (iii) of the Policy. Rather, according to the unrebutted evidence put forward by the Complainant, at the date of the Complaint the disputed domain name was used to host a parked page comprising PPC links to third-party services.

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According to section 2.9 of the WIPO Overview 3.0. “Applying UDRP paragraph 4(c), panels have found that
the use of a domain name to host a parked page comprising PPC links does not represent a bona fide
offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark
or otherwise mislead Internet users”. The fact that the links on the Respondent’s webpage have no obvious
connection with the Complainant is insufficient for the Respondent’s activities to comprise a bona fide
offering of goods and services. Noting the circumstances of this case, the Panel does not foresee any
reasonable explanation for the selection of the disputed domain name (reproducing the Complainant’s
trademark in its entirety, and also being highly similar to the Complainant’s domain name
<egis-group.com>), and none has been provided.

Also, there is no evidence that the Respondent is commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.

The Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because the Respondent did not respond to the Complainant’s contentions.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

The Complainant’s registration and use of the relevant trademarks predate the date at which the Respondent registered the disputed domain name. Given the distinctiveness of the Complainant’s trademark, and its reputation, it is reasonable to infer from the circumstances that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademarks, and to target those trademarks.

The disputed domain name is used by the Respondent to direct to a website displaying PPC advertisements. Given the confusing similarity between the Complainant’s trademark and the disputed domain name, the distinctiveness and repute of the Complainant’s trademark, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolves. Presumably, the Respondent intends to benefit from the confusion created: it is likely that the Respondent earns income when Internet users click on the links in search of Egis services.

The Panel also notes that there is a configured MX email server for the disputed domain name, which noting the nature of the disputed domain name (and the similarities with the Complainant’s domain name <egis-group.com>), in view of the Panel creates an ongoing threat to the Complainant, as the disputed domain name could also be used for sending out emails for the purpose of misleading recipients in their believing that any such email sent from the disputed domain name origins from the Complainant, most likely for non-legitimate or even fraudulent purposes.

Also, there appears to be a pattern of abusive registrations by the Respondent, as the unrebutted evidence
in the case file shows that the Respondent was involved in numerous other UDRP proceedings where similar
factual situations caused the concerned UDRP panels to decide in favor of the complainants. This fact also
supports a finding grounded on paragraph 4(b)(ii) of the Policy, referring to a respondent registering “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 you have engaged in a pattern of such conduct”.

In the Panel’s view, the circumstances of the case represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the condition of paragraph 4(a)(iii) of the Policy is fulfilled.

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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, <egisgroup.co>, be transferred to the Complainant.

/Mihaela Maravela/
Mihaela Maravela
Sole Panelist
Date: March 3, 2023