Société de Négoce et de Participation v Mauro Taggiasco

WIPO Case No. D2024-0351

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Société de Négoce et de Participation v. Mauro Taggiasco

Case No. D2024-0351

1. The Parties

The Complainant is Société de Négoce et de Participation, France, represented by Dreyfus & associés,

France.

The Respondent is Mauro Taggiasco, Italy.

2. The Domain Name and Registrar

The disputed domain name <sonepar.ink> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2024.
On January 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 26, 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 (Privacy service provided by Withheld for Privacy ehf) and
contact information in the Complaint. The Center sent an email communication to the Complainant on
January 31, 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

February 1, 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
Complaint, and the proceedings commenced on February 1, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 21, 2024. The Respondent sent informal email communications
to the Center on January 31, 2024, February 1, 2024, and February 27, 2024, attempting to sell the disputed
domain name. The Center notified of the parties of the Commencement of Panel Appointment Process on
February 23, 2024.

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The Center appointed Masato Dogauchi as the sole panelist in this matter on March 1, 2024. 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

Whereas the Respondent has not submitted any formal response, the following information from the
Complaint is found to be the factual background of this case.

The Complainant is a French Company founded in 1969, whose name has been abbreviated as SONEPAR. related services through a network of 100 brands spanning 40 countries.

The Complainant is the owner of the SONEPAR Trademark, including:

- International Trademark Registration No. 736078, registered on February 3, 2000; and

- International Trademark Registration No. 1654996, registered on December 3, 2021.

The Complainant operates, among others, the following domain names:

- <sonepar.com> registered on April 17, 1997; and

- <sonepar.fr> registered on February 12, 1998.

The disputed domain name was registered on June 26, 2023. The disputed domain name was configured with an email server. The email server has been used for phishing activities. Indeed, the Respondent has engaged in fraudulent behavior and sending illicit emails to a third party. The Complainant claims that the disputed domain name is now blocked and placed under the status “clientHold” and the disputed domain

name resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

B. Respondent

The Respondent sent informal communications during the proceedings attempting to sell the disputed domain name. However, the Respondent did not reply formally to the Complainant’s contentions.

6. Discussion and Findings

In accordance with the Rules, paragraph 15(a), a panel shall decide a case on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since the Respondent has not made any arguments in this case, the following

decision is rendered on the basis of the Complainant’s contentions and other evidence submitted by the
Complainant.

In accordance with the Policy, paragraph 4(a), in order to qualify for a remedy, the Complainant must prove each of the following:

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

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

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

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 Trademark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

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 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 that the Complainant has established a prima facie case that the Respondent has no 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 use of the disputed domain name for phishing activity, as in this case, can never confer rights or legitimate interests on the Respondent. WIPO Overview 3.0, section 2.13.1.

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.

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In the present case, in consideration of the business activities of the Complainant using the SONEPAR
trademark for over 26 years, it is highly unlikely that the Respondent could have been unaware of the
Complainant’s trademark at the time of registration of the disputed domain name on June 26, 2023.

Therefore, it is found that the Respondent registered the disputed domain name in bad faith.

With regard to the requirement that the Respondent is using the disputed domain name in bad faith, the WIPO Overview 3.0, section 3.4. The Panel notes also that, in response to the notice from the Center on the commencement of the proceedings, the Respondent sent informal email communications to the Center attempting to sell the disputed domain name.

Since the Respondent did not reply to the Complainant’s allegations in this proceeding and noting the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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

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 <sonepar.ink> be transferred to the Complainant.

/Masato Dogauchi/
Masato Dogauchi
Sole Panelist
Date: March 6, 2024