WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
3 Suisses International v. Caribbean online International Ltd.
Case No. D2007-1512
1. The Parties
The Complainant is 3 Suisses International, France, represented by Espace Juridique Avocats, France.
The Respondent is Caribbean online International Ltd., Bahamas.
2. The Domain Name and Registrar
The disputed domain name is registered with Capitol domains, LLC.
3. Procedural History
The Complaint was filed with the World Intellectual Property Organization Arbitration and Mediation Center (the “Center”) on October 12, 2007.
On October 16, 2007, the Center transmitted by email to the Registrar, Capitol domains, LLC, pursuant to Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy, a request for registrar verification in connection with the domain name at issue. On October 16, 2007, Capitol domains, LLC transmitted by email to the Center its verification response confirming that the Registrar had received a copy of the Complaint and that the Respondent is listed as the registrant and providing the contact details. The Capitol domains LLC also confirmed that according to the Agreement between the Registrar and the Respondent the Uniform Domain Name Dispute Resolution Policy applies to the domain name.
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 October 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2007. The Respondent was informed that if his response was not received by that date, he would be considered in default. The Center would still appoint a Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2007.
The Center appointed Vinod K. Agarwal, Solicitor of the Supreme Court of England and Wales and Former Law Secretary to the Government of India as the sole panelist in this matter on November 26, 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
From the Complaint and the accompanying annexes, the Panel has found the following facts:
Complainant’s activities
The Complainant is a French holding company. It is the owner of many trademarks and domain names with the word “Doremicado”. The Complainant alleges that the details of some of the trademarks registered by the Complainant with various authorities are as follows:
(a) DO.RE.MI.CA.DO. is registered at World Intellectual Property Organization, Geneva No. 494 362 on July 31, 1985 in classes: 6 – Metal goods, 9 – Electrical and scientific apparatus, 11 – Environmental control apparatus, 12 - Vehicles, 14 - Jewellery, 16 – Paper goods and printed matters, 20 - Furniture, 21 – house wares and glasses, 24 - Fabrics, 27 – Floor coverings, 28 – Toys and sporting goods, and 34 – Smokers’ articles.
(b) DOREMICADO is registered at World Intellectual Property Organization, Geneva on January 7, 1987 in classes: 16 – Paper goods and printed matter, 21- House wares and glasses, 24 - Fabrics and 28 – Toys and sporting goods.
(c) DO RE MI CA DO is registered at Institut National de la Propri�t� Industrielle, Paris No. National 95567887 on September 22, 1995 in classes: 2 – Paints, varnishes, lacquers, etc. and 41 – Education and entertainment services.
Respondent’s Identity and Activities
The Respondent did not reply to the Complainant’s contentions. Hence, the Respondent’s activities are not known.
5. Parties Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.
In relation to element (i), that is, the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant contends that DOREMICADO is its trademark. The disputed domain name is identical to the Complainant’s trademark.
Thus, the domain name is confusingly similar to the Complainant’s trademark DOREMICADO.
In relation to element (ii), that is, the Respondent has no rights or legitimate interests in respect of the domain name, the Complainant contends that the Respondent has never registered DOREMICADO trademark or any similar trademark. The Respondent (as an individual, business, or other organization) has not been commonly known by the domain name . Further, the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services. The Respondent registered the domain name for the sole purpose of creating confusion and misleading the general public and the customers of the Complainant by offering similar goods or services.
Thus, it is contended that there were no legitimate rights or interests of the Respondent in the domain name .
Regarding the element at (iii), that is, the domain name has been registered and is being used in bad faith, the Complainant contends that the main object of registering the domain name by the Respondent is to earn profit and to mislead the general public and the customers of the Complainant. The Complainant has contended that the use of a domain name that appropriates a well-known trademark to promote competing or infringing products cannot be considered a “bona fide offering of goods and services”.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel as to the principles the Panel is to use in rendering its decision. It says that, “A panelist 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”.
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The present dispute pertains to the domain name . The Complainant is the owner of the trademark DOREMICADO, DO.RE.MI.CA.DO., and DO RE MI CA DO for various goods, such as metal goods, electrical and scientific apparatus, environmental control apparatus, vehicles, jewellery, paper goods and printed matters, furniture, house wares and glasses, fabrics, floor coverings, toys and sporting goods, and smokers’ articles. The domain name includes the entire trademark of the Complainant.
The addition of the generic top level domain reference “.com”, which is necessary for a domain name to be operational, does not alter the original trademark and is sufficient to establish functional identity to the DOREMICADO trademark. See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493 and Soci�t� G�n�rale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri,WIPO Case No. D2002-0760.
Thus, the Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, the respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the respondent of the dispute, the respondent’s 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) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate non-commercial 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.
The Respondent has not filed any response in this case. There is no evidence to suggest that the Respondent has become known by the disputed domain name anywhere in the world. The Respondent is known by the name of Caribbean Online International Ltd. Based on the default and the evidence in the Complaint, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name. See also Pavillion Agency Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221.
DOREMICADO is the name and mark of the Complainant. It is evident that the Respondent can have no legitimate interest in the domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark or to apply for or use the disputed domain name incorporating the said name and that nobody could use the word “Doremicado” unless seeking to create an impression of an association with the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of the domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of 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 trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) 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 on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The contention of the Complainant is that the present case is covered by the second, third and fourth circumstance. The domain name was registered in bad faith and it was used in bad faith. The Complainant has furnished evidence of the fact that the disputed domain name is being used by the Respondent for exploiting the consumers’ trust in the Complainant’s reputation and goodwill. The Respondent is not offering goods and services on the website. It only leads to a portal site offering sponsored links. The Respondent is misleading the consumers and confusing them so as to lure them to other websites making them believe that the websites behind those links are associated with the Complainant.
This and other information submitted by the Complainant leads to the presumption that the domain name in dispute was registered and is being used by the Respondent in bad faith. The Panel agrees with the said contention of the Complainant and concludes that the registration of the domain name amounts to the registration and use of the domain name in bad faith.
7. Decision
In light of the forgoing findings, namely, that the domain name is confusingly similar to a mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered and is being used in bad faith, in accordance with Paragraphs 4(i) of the Policy and Rule 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Dr. V. K. Agarwal
Sole Panelist
Date: December 10, 2007
Full & Egal Universal Law Academy