Safran v Privacy Service Provided by Withheld for Privacy ehf / Amanda

WIPO Case No. D2022-0697

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Safran v. Privacy Service Provided by Withheld for Privacy ehf / Amanda
Ferrari

Case No. D2022-0697

1. The Parties

The Complainant is Safran, France, internally represented.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Amanda Ferrari, United

States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <safran-parts.com> (“Disputed Domain Name”) is registered with NameCheap,

Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2022. On March 2, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 2, 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 March 3, 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 March 7, 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 March 14, 2022. In accordance with the Rules, paragraph
5, the due date for Response was April 3, 2022. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 11, 2022.

page 2

The Center appointed Nicholas Weston as the sole panelist in this matter on April 19, 2022. 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 multinational company headquartered in France that operates a global business operating in the aviation (propulsion, equipment and interiors), defense and space markets, with 76,000 employees and sales of 16.5 billion euros in 2020. The Complainant holds a number of registrations for the trademark SAFRAN in numerous jurisdictions including, for example: International Trademark Registration No. 884321 for SAFRAN, registered on August 5, 2005.

The Complainant owns the domain name <safran-group.com> which hosts its main website.

The Respondent registered the Disputed Domain Name <safran-parts.com> on December 27, 2021. The
Disputed Domain Name resolved to the Complainant’s main website. At the time of the Decision the

Disputed Domain Name resolves to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The Complainant cites its European Union trademark No. 004535209 registered on registered on August 17,
2009 and other registrations internationally for the mark SAFRAN as prima facie evidence of ownership.

The Complainant submits that the mark SAFRAN is “internationally known” and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <safran-parts.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the SAFRAN trademark and that the confusing similarity is not removed by the addition of the word “parts”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the an inactive webpage.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and
currently is, in bad faith, contrary to the Policy and Rules and submits that “the Respondent has no known
commercial activity under the name Safran, Safrangroup or Safrangrup. Thus, it appears that the
Respondent intentionally attempted to attract the Internet users, by creating a likelihood of confusion with the

Complainant’s trademark”.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights; and

page 3

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark SAFRAN in numerous jurisdictions including France. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0“), section 1.2.1).

Turning to whether the Disputed Domain Name is identical or confusingly similar to the SAFRAN trademark,
the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the
Complainant’s trademark SAFRAN; (b) followed by a hyphen and the word “parts”; (c) followed by the gTLD
“.com”.

It is well established that the gTLD used as technical part of a domain name may be disregarded. (see section 1.11 of the WIPO Overview 3.0). The relevant comparison to be made is with the Second-Level portion of the Disputed Domain Name, specifically: “safran-parts.”

It is also well established that in cases where a domain name incorporates the entirety of a trademark, or
where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain
name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see WIPO
Overview 3.0, section 1.7).

The Panel finds that the addition of the word “parts” does not avoid a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” (see WIPO Overview 3.0, section 1.8).

The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate
interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish
the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of
the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put
forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production
then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment,

Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the
Disputed Domain Name because (i) the Disputed Domain Name resolved to the Complainant’s own website
then was subsequently not resolving to an active website; (ii) the Respondent has not acquired or owned
any trademark or service mark rights in the name SAFRAN, and has not been commonly known by the name
SAFRAN; and (iii) the Respondent is not 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
Complainant’s trademarks.

page 4

The Respondent is not using the Disputed Domain Name as a reseller with legitimate interests in a domain
name incorporating a Complainant’s mark, and there is no active website at the Disputed Domain Name,
therefore it cannot meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.
D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. The
Panel accepts the Complainant’s uncontested submission that the Disputed Domain Name “redirected to the
official Safran website, leading Internet users to believe that the disputed domain name belongs to Safran
Group before the Registrar intervened”. The Panel also accepts the Complainant’s submissions that “Safran
has not licensed or otherwise right of use of the trademark SAFRAN to the Respondent” and that “Safran

has no relationship with the Respondent”.

The Panel notes the evidence that the Disputed Domain Name in this proceeding resolved to the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests. In the absence of a response, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of the Policy requires that the complainant must also demonstrate that the Disputed circumstances to be construed as evidence of both of these conjunctive requirements.

The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed
Domain Name in bad faith.

On the issue of registration, taking into account the composition of the Disputed Domain Name and the content of the website it resolves to, the Panel is satisfied that the Respondent knew of the Complainant’s trademark SAFRAN when it registered the Disputed Domain Name (see SAFRAN v. Whois Agent, Whois Privacy Protection Service, Inc. / Marc Boezio, WIPO Case No. D2017-1204 (“The evidence is that, at the time the disputed domain name was created, Respondent directly targeted the Complainant and its trade mark”); Safran v. Cheng Chan, WIPO Case No. D2021-3371 (“The Respondent has registered a disputed domain name that fully incorporates the Complainant’s distinctive SAFRAN trademark”).

In addition, the gap of more than ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the Complainant’s trademark in its entirety), and its use to redirect to the Complainant’s website is a further indicator of bad faith. (See Asian

World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this
case, the Complainant’s rights in its trademark predate any rights that could possibly flow from the

Respondent’s registration by 16 years.

the Complainant’s own website and, currently, does not resolve to an active website. This Panel accepts the Complainant’s evidence the Disputed Domain Name resolved to the website of the Complainant as evidence that the Respondent was well aware of the Complainant’s trademark SAFRAN when registering the Disputed

On the issue of use, the Complainant’s evidence is that the Disputed Domain Name previously resolved to that the Disputed Domain Name is connected or associated to the Complainant, and by retaining control of the redirection, it would allow the Respondent to divert Internet users to competing or other types of web sites at any time.

This Panel also finds that the subsequent use of the Disputed Domain Name to resolve to a passive website is further evidence of bad faith. Previous UDRP 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. “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the

page 5

‘passive holding’ doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in

breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put” (see WIPO Overview 3.0, section 3.3). This Panel notes that the evidence is that all of these factors are present in this proceeding.

This Panel also views the provision of false contact information underlying the privacy or proxy service as an additional and separate indication of bad faith (see WIPO Overview 3.0, section 3.6).

In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights.

the Respondent has taken the Complainant’s trademark SAFRAN and incorporated it in the Disputed

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <safran-parts.com> be transferred to the Complainant.

/Nicholas Weston/
Nicholas Weston
Sole Panelist
Date: May 3, 2022