WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Helloasso SAS v. Weimu Zheng

Case No. D2021-1700

1. The Parties

The Complainant is Helloasso SAS, France, represented by Didier Colin, France.

The Respondent is Weimu Zheng, China.

2. The Domain Names and Registrars

The disputed domain name <helloasso.net> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “First Registrar”).

The disputed domain name <helloasso.online> is registered with Registrar of Domain Names REG.RU LLC (the “Second Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2021. On May 31, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 1, 2021, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.

On June 2, 2021, the Center transmitted an email communication to the Parties in English, Japanese, and Russian regarding the language of the proceeding. On June 4, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that 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 in English, Japanese, and Russian of the Complaint, and the proceedings commenced on June 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 1, 2021.

The Center appointed Douglas Clark as the sole panelist in this matter on August 8, 2021. 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 that provides payment services through the website under the domain name <helloasso.com>. The Complainant is also the owner of various domain names such as <helloasso.fr> and <helloasso.org>.

The Complainant owns the French trade mark registration No. 4042069 for HELLOASSO, registered on October 23, 2013, in classes 35 and 38.

The disputed domain names <helloasso.net> and <helloasso.online> were registered on April 18, 2021 and May 20, 2021 respectively. At the date of this decision, the disputed domain name <helloasso.net> resolves to a webpage containing an offer to enquire about the sale of the disputed domain name and a list of apparent pay‑per‑click links to unrelated third-party websites. The disputed domain name <helloasso.online> resolves to a page providing links to pornographic websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain names are confusingly similar to its trade mark;

(b) The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not commonly known by the disputed domain names, and has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names; and

(c) The disputed domain names were registered and are being used in bad faith. The Complainant provides evidence that the disputed domain name <helloasso.net> previously resolved to an IP address known for spreading malware. The Complainant further contends the Respondent has registered disputed domain names that incorporate the HELLOASSO trade mark primarily to sell the domain names to the Complainant.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issues – Language of the Proceeding

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

In this case, the language of the Registration Agreements for the disputed domain names <helloasso.net> and <helloasso.online> are in Japanese and Russian respectively. There is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Complainant has filed its Complaint in English and has requested that English be the language for the proceeding under the ground that the Respondent is capable of communicating in the English language.

In accordance with paragraph 11(a) of the Rules and taking into consideration paragraph 10(b) and (c) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the following circumstances:

- the Center has notified the Respondent of the proceeding in English, Japanese, and Russian;
- the content on the Respondent’s websites are entirely in English; and
- the Complainant has provided evidence that the Respondent able to communicate in the English language.

Further, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

6.2. Preliminary Issues – Multiple Domain Names

The Panel notes that the present Complaint has consolidated two domain name disputes. At the time of filing it was not aware who the registrant of <helloasso.net> was, but submitted that it was the Respondent due to the same IP address being used. That the Respondent was the registrant of <helloasso.net> was confirmed by the Registrar.

According to paragraph 10(e) of the Rules, the Panel has the power to consolidate multiple domain name disputes. Paragraph 3(c) of the Rules also provides that a complaint may relate to more than one domain name, provided that the domain names are arguably registered by the same domain-name holder.

As the registrant for both of the disputed domain names is the Respondent, the Panel accepts the Complainant’s application to consolidate the disputed domain names in the Complaint.

6.3. Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:

(i) the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights to;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trade mark. Both the disputed domain names incorporate the HELLO ASSO trade mark in full. The disputed domain name <helloasso.net> is accompanied with the generic Top‑Level Domain (“gTLD”) “.net” while the disputed domain name <helloasso.online> is accompanied with the gTLD “.online”. The gTLD is generally disregarded when considering the first element. (see section 11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”))

The Panel notes that the Complainant does not rely on any registered trade marks for HELLO ASSO in China where the Respondent is located. The ownership of a trade mark is generally considered to be a threshold standing issue. The location of the trade mark, its date of registration (or first use), and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trade mark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of WIPO Overview 3.0).

The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

There is no evidence that the Respondent has any business with or is in any way affiliated with the Complainant, nor that the Respondent is authorized or licensed to use the Complainant’s HELLOASSO trade mark or to apply for registration of the disputed domain name. Furthermore, there is no evidence that the Respondent is commonly known by the name “helloasso”.

Furthermore, the Complainant claims, and the Respondent has not denied, that the disputed domain name <helloasso.net> was being used for fraudulent purposes including malware distribution. The use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (see section 2.13 of the WIPO Overview 3.0).

There is also no other evidence that the Respondent has used or is planning to use the disputed domain names for a bona fide offering of goods or services. In addition, the Respondent has not responded to any of the Complainant’s contentions.

The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain names.

Section 2.1 of the WIPO Overview 3.0 provides:

“While 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 often impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent.

The Complainant has therefore satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Based on the given evidence, the Panel finds the disputed domain names were registered and are being used in bad faith.

The disputed domain names were registered long after the Complainant has registered the HELLOASSO trademark and the use of the Complainant’s HELLOASSO trademark in both the disputed domain names cannot be a coincidence. The Panel is satisfied that the Respondent was aware of the Complainant and its HELLOASSO trade mark when he or she registered the disputed domain names.

The Complainant has submitted evidence that the Respondent offered to sell the disputed domain name <helloasso.net> to the Complainant on two separate occasions. The consideration offered by the Respondent were EUR 300 and USD 9,500, which are prices significantly higher than the initial price of a “.net” domain name. Furthermore, the disputed domain name <helloasso.net> resolves to a website that includes an offer to enquire about the sale of the disputed domain name. Even though no similar evidence is available for <helloasso.online>, given the identity of the domain names, the Panel is satisfied that the Respondent registered the disputed domain names primarily for the purpose of selling the disputed domain names to the Complainant for valuable consideration in excess of their out-of-pocket costs for the domain name.

It also appears that the disputed domain names were used for fraudulent purposes. The disputed domain name <helloasso.net> previously redirected to IP addresses used to spread malware. This has been found in previous UDRP cases to constitute evidence of registration and use of a domain name in bad faith.

With regards to <helloasso.online>, the current advertisements for pornography on the website that the disputed domain name resolves to establish the Respondent is making a commercial gain from the website by attracting users to generate click through revenue. Further, the pornographic materials on the website, tarnish the HELLOASSO trade mark. This has been found in previous UDRP cases to constitute evidence of registration and use of a domain name in bad faith. (See WIPO Overview 3.0, section 3.12)

For the above reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith.

The Complainant has therefore satisfied the third element under paragraph 4(a) 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 names <helloasso.net> and <helloasso.online> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: August 22, 2021