WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION E and Mr. Stéphane Romanyszyn v. Internet Reit Inc./ Domain Administrator Case No. D2008-1001 1. The Parties
The Complainant is E and Mr. Stéphane Romanyszyn, of France, represented by Mascre Heguy Associes, France.
The Respondent is Internet Reit Inc./ Domain Administrator, of Texas, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson of United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with InnerWise, Inc. d/b/a ItsYourD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2008. On July 3, 2008, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourD a request for registrar verification in connection with the disputed domain name. On July 3, 2008, InnerWise, Inc. d/b/a ItsYourD 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 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 5, 2008.
Following the notification of the Respondent's default, the parties agreed to suspend the proceedings for a period to allow them to reach a settlement. By email on September 12, 2008, the Complainant informed the Center that the parties had been unable to reach a settlement.
On September 15, 2008, the Center acknowledged the Complainant's email of September 12, 2008 and noted that the Center would proceed to appoint the Panel. On September 16, 2008, the Respondent's counsel sent an email to the Center and the Complainant, stating that the disputed domain name “has been transferred to the complainant's counsel, as shown in the attached WHOIS report.” (That communication and the attached WhoIs report was included in the case file for this case.) That report indicated that the registrant was the second Complainant, “Stéphane Romanyszyn”. The Respondent's counsel sent a further email on September 23, 2008, repeating that the disputed domain name had been transferred and that the effect was that the appointment of the panel was unnecessary. However, there was no record of a communication from the Complainant to withdraw the Complaint.
Accordingly, the Center appointed James A. Barker, Pierre-Yves Gautier and William R. Towns as panelists in this matter on October 6, 2008. The Panel finds that it was properly constituted. Each member of 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 first Complainant is a French company, registered as a limited liability company in November 2000. The second Complainant is the founder, major shareholder and current Chairman of the first Complainant. For convenience, both the first and second Complainants are hereafter referred to as “the Complainant”. The Panel has proceeded to treat both Complainants jointly, consistent with prior decisions involving multiple complainants. (See e.g. Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc.,WIPO Case No. D2007-0638; Eli Lilly and Company, ICOS Corporation, and Lilly ICOS LLC v. RM-RS, LLC, WIPO Case No. D2005-1052.)
The Complainant is in the business of on-line classified property advertising.
The Complainant has registered marks for e.g. ENTRE-PARTICULIERS.COM (first filed in 1998) and ENTREPARTICULIERS (first filed in 1999).
The Complainant promotes the sale of its products and services via a website at the domain name , first registered in December 1998.
No information is provided directly about the identity of the Respondent in the case file, or the nature of its business. The Respondent has however been involved in or referred to in a number of prior decisions under the Policy, including cases in which it appears to have participated to some extent in cases of “cyberflight”. See e.g. Touro College v. William Vaughan, SMTM Investments, Ltd.,WIPO Case No. D2007-1813. It appears from some other proceedings under the Policy (in which the Respondent was not directly involved as a party) that the Respondent may be in the business of bulk registering domain names and on-selling them. See Ladbrokes Betting & Gaming Ltd. v. Privacy Ltd. Disclosed Agent for Yolapt,WIPO Case No. D2007-1702.
At the date of this decision, the disputed domain name reverted to a “portal” or “landing” website. That website was largely concerned with a list of links ostensibly to websites concerned with the advertising of properties for sale. The links on the Respondent's portal website were included under titles such as e.g. “Immobilier France”, “Vente immobilier espagne”, and “immobiliere luberon”. 5. Parties' Contentions A. Complainant
The Complainant claims that the disputed domain name is identical or confusingly similar to its registered marks. The Complainant also claims that its corporate name is a “distinctive sign” under French law that prevents the subsequent registration of a corresponding trademark or domain name. The Complainant claims that the differences between its relevant marks and the disputed domain name are “imperceptible”.
The Complainant secondly claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent uses the disputed domain name to redirect consumers via hyperlinks to other commercial property advertising websites, including those of the Complainant's competitors. On that basis, the Complainant claims in effect that the Respondent is seeking to unfairly take advantage the goodwill in the Complainant's marks.
Finally, the Complainant claims that the Respondent registered and has used the disputed domain name in bad faith for the purpose of paragraph 4(b)(iv) of the Policy. The Complainant claims that it and its marks are well known in France and that the evidence indicates that the Respondent must have been aware of it. B. Respondent
The Respondent did not reply to the Complainant's contentions. However, as noted above, the Respondent's counsel sent two emails on September 16, 2008 and September 23, 2008 stating that the disputed domain name had already been transferred to the Complainant. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These grounds are discussed in turn below.
Before turning to each of these grounds, the Panel notes that the Respondent has declined to submit a Response per se. In the face of this, the Panel considers it appropriate to draw the inference that the Respondent does not deny the allegations made against it and the facts asserted in the Complaint. The Panel may draw this inference under paragraph 14 of the Rules. (See also e.g. Kabushiki Kaisha Toshiba v Shan Computers,WIPO Case No. D2000-0325.) Such an inference is also strongly reinforced by the Respondent's statements (via its counsel) that it has already transferred the disputed domain name to the Complainant.
If that transfer has, in fact, taken place, it might also be asked whether this proceeding has any effect. It is important to note that proceedings under the Policy are triggered by the filing of the Complaint by the Complainant. Paragraph 4(a) of the Policy makes it clear that the administrative proceeding is “mandatory” for the Respondent, once the Complaint is properly filed under paragraph 3(a) of the Rules.
It is also important to note that a domain name cannot be transferred during a pending administrative proceeding, under paragraph 8(a) of the Policy, without the agreement of the parties. There is no evidence of such an agreement here. The Panel cannot confirm that any such transfer has, in fact, taken place. The Panel cannot therefore be confident that it is “unnecessary” for a decision to be rendered, which would otherwise require the Panel to terminate the proceedings under paragraph 17(b) of the Policy. For these reasons, the Panel has proceeded to consider the elements under paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
It is clear that the Complainant has rights in registered marks, evidence of which was attached to the Complaint. Those marks include ENTREPARTICULIERS.COM and ENTREPARTICULIERS. The Panel finds that the disputed domain name is clearly confusingly similar to those marks. The difference between them is trivial.
The Panel finds that the Complainant has established this element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Respondent provides no evidence of having rights or legitimate interests in the disputed domain name. As noted above, the Panel has also inferred that the Respondent accepts as much from its failure to respond to the Complaint and apparent willingness to transfer the disputed domain name.
The Panel finds that the Complainant has established this second element. C. Registered and Used in Bad Faith
For similar reasons to those set out above, the Panel also finds that the Respondent registered and used the disputed domain name in bad faith. The nature of the Respondent's portal site suggests that the Respondent was aware or should have been aware of the Complainant's marks. That evidence suggests that the Respondent registered and used the disputed domain name to exploit the trademark value associated with the disputed domain name. The Respondent's website clearly operates to attract Internet traffic concerned with the business of the Complainant.
Accordingly, the Panel finds that the Complainant has established this third element. 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.
James A. Barker
Presiding Panelist
Pierre-Yves Gautier
Panelist
William R. Towns
Panelist
Dated: October 20, 2008
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