WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VTECH HOLDING LIMITED v. Forsyte Corporation
Case No. D2007-1030
1. The Parties
The Complainant is VTECH HOLDING LIMITED, Hong Kong SAR of China (“Complainant”), represented by Cabinet Lavoix, France.
The Respondent is Forsyte Corporation, Nassau, Bahamas (“Respondent”).
2. The Domain Name(s) and Registrar(s)
The disputed domain name, is registered with AdoptAD Inc., Ottawa, Ontario, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2007. On July 18, 2007, the Center transmitted by email to AdoptAD Inc. a request for registrar verification in connection with the domain name at issue. On July 19, 2007, AdoptAD Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2007.
The Center appointed M. Scott Donahey as the sole panelist in this matter on August 20, 2007. 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
Complainant is the holder of many trademarks in the mark VTECH, registered in various countries around the world including Hong Kong SAR of China, Singapore, the European Union, the United States, Canada, and Australia. The earliest trademark registration is in Hong Kong SAR of China carrying a registration date of February 27, 1990. The marks are registered in connection with toys and games. Complaint, Annex 3.
Complainant is the registrant of the domain name , which domain name was first registered on August 23, 1993. Complainant’s subsidiary, VTech France, is the registrant of the domain name , which was first registered on October 31, 2003. Complaint, Annex 2. “Jouets” is the French equivalent of the English word, “toys”. Both domain names resolve to web sites at which Complainant’s goods are offered for sale. Complaint, Annex 5.
Complainant’s group of companies invested US$ 40.3 million in research and development in the 2006 fiscal year. Complainant currently has approximately 20,000 employees.
Respondent registered the domain name at issue on January 3, 2007. Complaint, Annex 1. The domain name at issue resolves to a web site which contains links to various services, some described in French, and some described in English. The links include links to sites on which the toys and games of competitors of Complainant are offered for sale. Complaint, Annex 4.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name at issue is confusingly similar to the trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the domain name at issue was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2) that the respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name consists of Complainant’s mark to which the common French term “jouet” (“toy,” in English) is appended and the gTLD suffix .com. It has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. Nokia Corporation v. IBCC aka N,WIPO Case No. D2000-0102 ; Eauto L.L.C. v. Net Me Up, WIPO Case No. D2000-0104 . The panel finds that the domain name at issue is confusingly similar to Complainant’s registered mark.
B. Rights or Legitimate Interests
The consensus view of WIPO UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case the Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds on the record that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Respondent registered the domain name at issue almost seven years after Complainant registered its first trademark and after Complainant had registered virtually all of the trademarks that Complainant had registered around the world. Respondent registered the domain name at issue more than three years after Complainant’s subsidiary company registered the almost identical domain name . The domain name at issue consists of Complainant’s registered mark and the French word for “toy” which is effectively descriptive of Complainant’s trademarked goods. Moreover, Respondent uses the domain name at issue to resolve to a web site which contains links to Complainant’s competitors and other web sites. This is in itself evidence of bad faith. Mudd, LLC v. Unasai, Inc., WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556. Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
M. Scott Donahey
Sole Panelist
Date: August 28, 2007
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