Westmore · UDRP DecisionTbwa.agency
The Panel ordered transfer of <tbwa.agency>. It found the domain identical to the Complainant’s TBWA trademark, found no rights or legitimate interests, and found bad-faith registration and use based on the mark’s distinctiveness and reputation, the domain’s close relationship to the Complainant’s advertising-agency business, passive holding, the absence of a substantive response, inaccurate contact information, and the implausibility of good-faith use.
The timeline behind tbwa.agency
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind tbwa.agency — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates how an exact-match domain using an industry-related TLD can support an inference of deliberate trademark targeting. It also shows that a Registrar parking page does not prevent a bad-faith finding where the cumulative circumstances satisfy the passive-holding doctrine.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION TBWA Worldwide, Inc. v. Karim Bendali Case No. D2019-1932 1. The Parties The Complainant is TBWA Worldwide, Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom. The Respondent is Karim Bendali, Algeria. 2. The Domain Name and Registrar The disputed domain name <tbwa.agency> 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 August 8, 2019. On August 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 8, 2019, 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 August 13, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint 1 . The Complainant filed an amended Complaint on August 21, 2019. 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 August 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2019. The Respondent did not submit a formal response. Accordingly, the Center notified the Commencement of the Panel Appointment process on September 13, 2019. The Center appointed Marilena Comanescu as the sole panelist in this matter on September 24, 2019. 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. The language of the proceeding is English. 4. Factual Background The Complainant is an international advertising agency founded in 1976, a subsidiary of the company, Omnicom Group Inc. The Complainant has more than 11,100 employees across 323 offices in 97 countries and is ranked as a top-ten global advertising network. In addition to advertising, the Complainant provides relationship marketing, promotional marketing and branding services to international clients. The Complainant states that its TBWA mark is a coined mark with no linguistic meaning, deriving from the surnames of its founders, i.e . Tragos, Bonnange, Wiesendanger and Ajroldi. The Complainant holds numerous registrations for the TBWA mark worldwide including: - European Union Trademark TBWA (word), registration number 001457423, filed on January 12, 2000 and registered on February 23, 2001, for goods and services in international classes 16, 35, and 42; and - International Trademark TBWA (figurative), registration number 742866, registered on May 16, 2000, for goods and services in international classes 16, 35, and 42. The Complainant holds and uses a number of domain names which wholly incorporate the TBWA mark, such as <tbwa.com>, <tbwa.co.uk>, <tbwagroup.be> and <tbwa-paris.com>. The disputed domain name <tbwa.agency> was registered on June 22, 2019, and, according to the evidence provided in the Complaint, it resolves to the Registrar’s parking page. The Respondent appears to be an individual located in Algeria. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical to its well-known trademark TBWA followed by the Top-Level Domain (”TLD”) suffix “agency”, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (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 the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar The Complainant holds rights in the TBWA trademark. The disputed domain name <tbwa.agency> incorporates the Complainant’s trademark in its entirety. It is well established in decisions under the UDRP that the TLD ( e.g. , “.agency”, “.info”, “.com”, “.club”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. Given the above, the Panel finds that the disputed domain name <tbwa.agency> is identical to the Complainant’s trademark TBWA, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark TBWA, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. Under the Policy, “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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case. There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or it has any rights or legitimate interests in it. Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Complainant, an international advertising agency, holds trademark rights since at least 2000 and it is well-known worldwide. Moreover, according to the evidence provided in the Complaint particularly regarding its accolades and recognitions, the Panel is satisfied that the Complainant’s trademark has acquired significant goodwill and has a strong reputation worldwide in its field of activity. The disputed domain name was created in 2019 and incorporates the Complainant’s mark together with the generic word “agency”, closely related to the Complainant’s business. For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark. At the time of filing the Complaint the disputed domain name resolved to Registrar’s parking page. The passive holding or non-use of a domain name does not prevent a finding of bad faith. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the 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, and (iv) the implausibility of any good faith use to which the domain name may be put. See section3.3 of the WIPO Overview 3.0. Here we have all such circumstances cumulated: (i) the Complainant’s trademark is well-known and highly distinctive; (ii) the Respondent did not provide any arguments or evidence in its favor; (iii) the Respondent’s use of false contact details (the postal address revealed by the Registrar was not accurate), and (iv) the implausibility of any good faith use for the disputed domain name. For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 <tbwa.agency> be transferred to the Complainant. Marilena Comanescu Sole Panelist Date: October 8, 2019 1 On August 15, 2019, the Center received an email communication from the Respondent requesting information about the Complaint and asking why the disputed domain name was locked. On the same date, the Center provided relevant information about the proceedings.
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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