LOCATIERS v. Nicolas Trichet / Matos BTP
Claim Number: FA2205001996575
Complainant is LOCATIERS (“Complainant”), France. Respondent is Nicolas Trichet / Matos BTP (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <locatier.com>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2022; the Forum received payment on May 17, 2022. The Complainant was received in both French and English.
On May 17, 2022, Google LLC confirmed by e-mail to the Forum that the <locatier.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 20, 2022, the Forum served the French language Complaint and all Annexes, including a French and English language Written Notice of the Complaint, setting a deadline of June 9, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@locatier.com. Also on May 20, 2022, the French and English language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in French, thereby making French the language of the proceedings. Further, that the Complainant was received in both French and English. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the French language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
The English language Complaint suffers to some degree from translation issues but, suitably redacted, its states that both parties provide software “for the construction industry to help organize the planning and reservation of various construction materials and their certified drivers.”
Complainant asserts that after it registered a trademark, LOCATIERS, and launched an associated website, Respondent chose a confusingly similar domain name “having no product nor service commercialized under that name.” Further, that “Respondent has no existing or historical product or service that resembles the name Locatier nor Locatiers.”
Complainant asserts that the disputed domain names redirects “web traffic to … Respondent's website (www.matosbtp.com) … providing a similar product or service …
subsequently having a detrimental effect on [Complainant’s] business.”
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings (some made by the Panel after its own enquiries outside the evidence accompanying the Complaint) which are pertinent to the decision in this case are that:
1. the disputed domain name was registered on December 21, 2020;
2. the Parties are French and the Panel notes that Complainant is based in La Rochelle and Respondent in nearby Nantes;
3. a French joint-stock company (société par actions simplifiée), Locatiers SAS, is the owner of French National Institute of Industrial Property (“NIIP”) Reg. No. 4,652,869, filed on (and registered from) June 2, 2020. Publication was on June 26, 2020;
4. Complainant’s homepage describes its services as facilitation of the planning and invoicing of machinery and truck rentals (facilite le planning et la facturation des locations d’engins et camions);
5. the domain name resolves to Respondent’s website (www.matosbtp.com) where the same and related services are offered by reference to the trading name, MATOS; and
6. the French word, “locatier” (plural, “locatiers”), refers to the profession of workers carrying out rental activity, in particular, providing a means of transport or delivery for another company (travailleur exerçant une activité de location mettant à disposition un moyen de transport ou de livraison destiné à l’usage d’une autre entreprise).
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A preliminary procedural matter arises by reason of paragraph 3(a) of the Rules which states that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.” (added emphasis)
Complainant is neither a person nor an entity. It appears to the Panel that the proper complainant should have been the company, Locatiers SAS. Certainly, it seems to be the owner of the relevant trademark since the address given in the Complaint and the address for Locatiers SAS in the registration coincide.
The Panel notes that on May 17, 2022 the Forum sent Complainant a deficiency notice requiring correction of the Complaint in several way but not seeking clarification as to the identity of Complainant itself. The Panel considers this to be a minor oversight and further considers it clear that Complainant is referring to its corporate self.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments (see, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”)).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003); Les Echos v. Zhao Zhong Xian, FA 1716753 (Forum Mar. 30, 2017) concluding rights in the LES ECHO mark exist because “Panels have established that registration of a mark with the NIIP sufficiently recognizes a registrant’s rights in a mark.”). Complainant therefore has rights as it provides proof of its registration of the trademark LOCATIERS with the NIIP, a national trademark authority. The Panel observes that the registered mark is figurative, showing a stylized and interlocking rendition of the letters, “C” and “A”, but determines in line with UDRP authority that the registration can be treated as that for a ‘word mark’ for the purposes of this aspect of the Policy.
For the purposes of comparison of the domain name with the trademark the gTLD, “.com”, can be disregarded (see, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The disputed domain then differs from the trademark by deletion of the letter “s” which, as seen above, singularises the word in French as it would in English. The Panel finds the domain name to be confusingly similar to the trademark (see, for example, Taboola.com Ltd. v. YangZhiChao, FA2203001990337 (Forum May 2, 2022) finding the domain name at issue confusingly similar to the complainant’s TABOOLA NEWS trademark only omitting the letter ‘s’ from it and adding the gTLD “.com”; Bare Escentuals Beauty, Inc. v. PPA Media Services / Ryan G Foo, FA 1572597 (Forum Sept. 30, 2014) finding confusing similarity between <baremineral.com> and the BARE MINERALS trademark under Policy 4(a)(i)).
Complainant has therefore satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that 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 rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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 trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).
The Registrar disclosed the name of the domain name registrant as “Nicolas Trichet” and the registrant organisation as “Matos BTP”. Neither of those names suggests that Respondent might be commonly known by the disputed domain name and there is no evidence to suggest Complainant authorized Respondent to use the trademark in any way.
Complainant argues Respondent’s use of the domain name is in bad faith, as it redirects users to a competing website. Whilst the Panel has observed already that the word “locatier/s” is, to those who understand French, essentially descriptive of at least some of the core services provided by the parties and is to that extent perhaps generic, the facts remain that Complainant holds a registered trademark and Respondent uses that trademark to redirect traffic to its website where competitive services are offered under a different trading name. Such use is not a “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers”, to use the wording of the Policy (see, for example, CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”).
The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the domain name and so the onus shifts to Respondent. Absent a Response, that onus is not met and so the Panel finds that Complainant has met the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Paragraph 4(b) of the Policy sets out four circumstances which are to be taken as evidence of the registration and use of a domain name in bad faith. The Panel finds that paragraph 4(b)(iii) has direct application. It states that bad faith use and registration is established if “the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor”. That most certainly is the case here. Given the trading proximity of the parties and the other factors discussed, the Panel finds that it is more likely than not that Respondent targeted Complainant’s trademark and business and so finds registration and use in bad faith (see, for example, LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) finding that the respondent’s use of the disputed domain name to offer competing loan services disrupted the complainant’s business under Policy ¶ 4(b)(iii)).
The Panel finds that the third and final element of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that <locatier.com> be TRANSFERRED from Respondent to Locatier SAS.
Debrett G. Lyons, Panelist
Dated: June 17, 2022
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