Somfy Activites SA v Privacy service provided by Withheld for Privacy ehf /

WIPO Case No. D2022-2128

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Somfy Activites SA v. Privacy service provided by Withheld for Privacy ehf /
Mariano Guzman

Case No. D2022-2128

1. The Parties

The Complainant is Somfy Activites SA, France, represented by Cabinet Lavoix, France.

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Mariano Guzman, United

States of America.

2. The Domain Name and Registrar

The disputed domain name <sornfy.com> (“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 June 13, 2022. On June 13, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 13, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on June 14, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant requested a time extension to file an amended Complaint and consequently, filed their amended Complaint on June 24, 2022.

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 June 24, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2022.

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The Center appointed Nicholas Smith as the sole panelist in this matter on July 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 French company, specializing in motorisation and automation solutions for internal and external window coverings including blinds, curtains, awnings and roller shutters. The Complainant operates in 58 countries, produces over 20 million motors annually and had global sales of EUR 1,200 billion in 2019. It was founded in 1969 and promotes its services from various websites including websites located at the

domain names <somfy.fr> and <somfy.com>.

The Complainant is the owner of trade mark registrations in various jurisdiction for marks consisting of the word “somfy” (“SOMFY Mark”) including an International Registration designating various countries including Switzerland, Russian Federation and Ukraine (Registration No. 448984, registered on November 8, 1979 for goods in classes 7 and 9).

The Domain Name was registered on April 27, 2022. The Domain Name does not, and there is no evidence that it ever has, resolved to an active webpage. Rather it resolves to a webpage maintained by the Registrar stating that the domain name has been suspended because “Whois verification is pending” as the contact

details for the Respondent have not been verified.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

1. that the Domain Name is confusingly similar to the Complainant’s SOMFY Mark;

2. that the Respondent has no rights nor legitimate interests in respect of the Domain Name; and

3. that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the SOMFY Mark, being the owner of trade marks registered in various jurisdictions for the SOMFY Mark. The Domain Name consists of a minor misspelling of the SOMFY Mark, replacing the “m” with a “rn” and adding the “.com” generic Top-Level-Domain (“gTLD”).

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The the Respondent is not commonly known by the Domain Name. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Domain Name has never been used in any active way and is presently suspended.

The Respondent has registered and uses the Domain Name in bad faith. Given the fame of the SOMFY Mark and the nature of the Domain Name, being a minor misspelling (also known as typosquatting) of the SOMFY Mark, there are no plausible circumstances under which the Respondent could legitimately use the

Domain Name other than in bad faith. In such circumstances, the Respondent’s passive holding of the

Domain Name amounts to use of the Domain Name in bad faith.

B. Respondent

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

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6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the SOMFY Mark, having registrations for the SOMFY Mark as a trade mark in various jurisdictions, including Switzerland.

Disregarding the “.com” gTLD, as a necessary technical requirement of the Domain Name, the Domain Name is confusingly similar to the SOMFY Mark since it wholly incorporates the SOMFY Mark, other than replacing the “m” with an “rn” which creates a minor distinction that would be easy for an Internet user to overlook. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved
based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the
domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name,

even if you have acquired no trade mark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial

gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the
Complainant to register or use the Domain Name or to seek the registration of any domain name
incorporating the SOMFY Mark or a mark similar to the SOMFY Mark. There is no evidence that the
Respondent is commonly known by the Domain Name or any similar name.

There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact, there is no evidence of any demonstrable preparations to use the Domain Name at all.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Name. The Panel

finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under

paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

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limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain
Name in bad faith:

1. circumstances indicating that the Respondent has registered or has acquired the Domain Name

primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or

service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has
engaged in a pattern of such conduct; or

1. the Respondent has registered the Domain Name primarily for the purpose of disrupting the business

of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial	gain, Internet users to its website or other online location, by creating a likelihood of confusion with the or location or of a product or service on the Respondent’s website or location.
The Panel finds on the balance of probabilities that the Respondent was aware of the Complainant and its reputation in the SOMFY Mark at the time the Respondent registered the Domain Name. The SOMFY Mark has been used for over 50 years and has a considerable reputation. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name that consists of a minor misspelling of the SOMFY Mark unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant and the SOMFY Mark. The registration of the Domain Name in awareness of the SOMFY Mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith.
The Panel is prepared to infer, based on the conduct of the Respondent, including the passive holding of the Domain Name, the nature of the Domain Name itself, being a minor misspelling of a well-known mark, the fact that the Domain Name is presently suspended for failure to verify contact details, the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct in registering a domain name that is confusingly similar to the SOMFY Mark and the lack of any apparent legitimate reason for the registration and use of the Domain Name, that the Domain Name is most likely being held pending use in a bad faith manner that would take advantage of confusion between the Domain Name and the SOMFY Mark. As such, the Panel finds that the passive holding of the Domain Name does not prevent a finding that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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, <sornfy.com>, be transferred to the Complainant.
/Nicholas Smith/ Nicholas Smith Sole Panelist Date: July 27, 2022