WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION EK FRANCE SARL v. Domain Administration Limited, David Halstead Case No. D2008-1524 1. The Parties
Complainant is EK FRANCE SARL of Le Kremlin Bicètre, France, represented by Cabinet Singer, France.
Respondent is Domain Administration Limited, David Halstead of Auckland, New Zealand. 2. The Domain Name and Registrar
The disputed domain name is registered with F Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2008. On October 7, 2008, the Center transmitted by email to F Pty Ltd. a request for registrar verification in connection with the disputed domain name. On October 8, 2008, F Pty Ltd. transmitted by email to the Center its verification response, confirming that 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” 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 31, 2008.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on November 6, 2008. 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 trademark upon which the Complaint is based is AMBIANCE ET STYLES. According to the documentary evidence and contentions submitted, the trademark was registered in France under Nos. 1218690 as of January 27, 1982 and 95560131 as of February 24, 1995, and has been registered as international trademark under Nos. 641281 as of August 3, 1995 and 878898 as of January 24, 2006. The first trademark registration was made by Alliance Ceramique, which sold the trademark to the German group EK/servicegroup eG. Complainant has been licensed by the trademark owner to exploit and defend the AMBIANCE ET STYLES trademark in France, Benelux, Switzerland and Morocco.
According to the documentary evidence and contentions submitted, the trademark AMBIANCE ET STYLES has been used in France in connection with hand tools and implements, household and kitchen utensils, and similar items which are sold in more than 80 stores in France. Complainant operates a website under the domain name which was registered on July 11, 2000.
The disputed domain name was registered on April 21, 2005. According to the documentary evidence and contentions submitted, the disputed domain name resolves to a landing page in different languages, one of which is French. 5. Parties' Contentions A. Complainant
Complainant argues that the disputed domain name is confusingly similar to the AMBIANCE ET STYLES trademark because (i) the omission of the letter “s” is not relevant since the letter “s” at the end of the word is a silent letter in French and, therefore, does not change the pronunciation, (ii) there are clear similarities between the disputed domain name and the registered trademark, and (iii) the contents of the website at the disputed domain name are likely to create confusion as to the existence of a relationship between the parties.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent has not been authorized, licensed, or permitted by Complainant to use the disputed domain name; (ii) the disputed domain name has not been used for a bona fide offering of good and services; (iii) there is no evidence to indicate that Respondent is commonly known by the disputed domain name; and (iv) it is likely that Respondent receives click-through fees for diverting consumers to third-party websites via the links.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith because (i) Respondent is using the disputed domain name to divert Internet users to a website with links to Complainant's competitors and to take advantage of the confusing similarity between the disputed domain name and the AMBIANCE ET STYLES trademark, and (ii) Respondent's conduct is a typical behavior demonstrating bad faith registration and use (see OMX, Inc. c/o OfficeMax Incorporated v Domain Administration Limited c/o David Halstead, NAF Case No. FA0605000720880). B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Complainant's Standing
Complainant has invoked a registered trademark which is owned by the German group EK/servicegroup eG. Complainant, which is a French subsidiary of the trademark owner, is also an exclusive licensee in France, Benelux, Switzerland and Morocco. Following the approach taken by a majority of panels under the Policy, the Panel considers that, as the exclusive licensee, Complainant has rights in the trademark (see paragraph 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”)). Complainant is both a licensee of the registered trademark and a subsidiary of the registered holder of the trademark. The fact that Complainant's license does not include New Zealand is not relevant since the location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark (paragraph 1.1 of the WIPO Overview), and the website to which the disputed domain name resolves contains pages in French and links to French websites in addition to pages in other languages and links to websites in other countries. Therefore, Complainant's right to the trademark are affected by the operation of the website at the disputed domain name. B. Effect of the Default
The consensus view is that a respondent's default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (paragraph 4.6 of the WIPO Overview). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. See Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact,WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true, and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited, supra; and RX America, LLC v. Matthew Smith,WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements. C. Identical or Confusingly Similar
Complainant relies on InfoS, Inc. v. Registrar Administrator Lew Blanck,WIPO Case No. D2000-0069, where the panel held that the addition of an “s” at the end of the mark INFOSPACE is not sufficient to avoid confusion between the domain name and the registered trademark since this is a type of mistake that consumers are likely to make when intending to enter the website address of the trademark owner.
As the panel in InfoS, Inc., supra points out, the misspelling of a registered trademark by adding or deleting a letter “s” is a typical case of typosquatting, which UDRP panels have consistently found to create confusion with trademark holders' rights. See, e.g., Nutri/System IPHC, Inc v. Larry Mims, WIPO Case No. D2008-0657; Nutri/System IPHC Inc. v. Ms. Lacy Ana De Oliveira, WIPO Case No. D2008-0204; MasterCard International Incorporated v. Domain Services Pty Ltd., Buy This Domain,WIPO Case No. D2007-1122; and E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095.
“The addition or subtraction, of a single character, such as a letter or number, to a mark for use in a domain name has not precluded [p]anels from finding the domain name to be identical or confusingly similar to a mark, especially where the conversion is from singular to plural.” Panavision, Inc. and Panavision International, L. P. v. Ed Meyer, d/b/a/ Panavisions Eyewear and Sunglasses, Domains by Proxy, Inc., and M.P.W., Inc. d/b/a Panavisions Eyewear and Sunglasses, Inc.,WIPO Case No. D2004-0002 (citing PlayNetwork, Inc. v. Play Industries, NAF Case No. FA0003000094232; and InfoS, Inc., supra (finding a deliberate attempt to take advantage of typographical errors by users, i.e., “typosquatting”)).
While the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity (See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions), the fact that the website at “www. ” contains links to French websites offering products similar to those sold by Complainant reinforces the likelihood of confusion.
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC, supra.
Therefore, the Panel finds that the disputed domain name is clearly confusingly similar to the AMBIANCE ET STYLES trademark in which Complainant has rights and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. D. Rights or Legitimate Interests
The Panel finds as reasonable Complainant's contentions that (i) Respondent has not been authorized, licensed, or permitted by Complainant to register and use the disputed domain name; and (ii) Respondent is not commonly known by the disputed domain name.
The Panel concurs with the prior UDRP decisions holding that typically there is no bona fide offering of goods or services where the disputed domain name resolves to a website containing sponsored links where those links trade on the trademark value of the complainants (or a competitor's mark(s)). In Deutsche Telekom AG v. Dong Wang,WIPO Case No. D2005-0819, the panel held that respondent's use of the domain name for a commercial website with links to competitors of the complainant cannot constitute a bona fide use of the domain name pursuant to paragraph 4(c)(i) of the Policy. That panel relied on Chanel, Inc. v. Cologne Zone,WIPO Case No. D2000-1809, where the panel held that bona fide use does not exist when the intended use is a deliberate infringement of another's rights.
The Panel also agrees with Complainant's contention that Respondent likely receives click-through fees for diverting consumers to third-party websites via the links. Therefore, Respondent has taken advantage of the reputation associated to the AMBIANCE ET STYLES trademark, and has clearly attempted to profit from its unauthorized registration and use of the disputed domain name.
The Panel finds that Complainant has satisfied its burden of providing sufficient evidence to show that Respondent lacks rights to or legitimate interests in the disputed domain name. It has been established by previous UDRP decisions that, “while the overall burden of proof rests with the complainant, the burden of proof shifts to the respondent where the complainant establishes a prima facie case showing the lack of rights and legitimate interests of the respondent to the disputed domain name”. Caixa d'Estalvis i Pensions de Barcelona (“La Caixa”) v. Young N,WIPO Case No. D2006-0406 (cf. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Respondent has failed to provide the Panel with e.g., any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. E. Registered and Used in Bad Faith
First of all, it is worth noting that the mere act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights, has often been recognized as evidence of bad faith registration. See Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107; National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011.
There is a further element which is relevant in the resolution of this dispute. Complainant contends that Respondent has demonstrated a pattern of engaging in bad faith registration and use of domain names which violate third party rights. Complainant relies solely on a NAF decision rendered on July 17, 2006 (OMX, supra). A research on WIPO cases made by the Panel revealed that Respondent has been involved in 17 similar cases in the period of 2006 to date where transfer of the disputed domain name was determined in all cases.1
Therefore, the Panel concludes that the evidence of a past history of bad faith registration and use of domain names by Respondent as evidenced by the previous decisions referred above reinforces the finding of bad faith registration by Respondent in the instant case.
The Panel takes further the view that in this case the content of the website is relevant in the finding of bad faith use. As indicated before, Respondent's website contains sponsored links to third parties' websites which provide competing products. The Panel concurs with the understanding of several other UDRP panels that the use of a domain name to point to a website that offers sponsored links to other websites is an evidence of bad faith, particularly if, as in the instant case, the complainant had registered and used its mark before the registration and use of the disputed domain name. Mudd (USA), LLC v. Unasi, Inc.,WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unasi Inc.,WIPO Case No. D2005-0556.
In short, the manner in which Respondent has used and is using the disputed domain name demonstrates that the disputed domain name was and still is being used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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 Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: November 20, 2008
1 PriceG Inc v. William Vaughan and Domain Administration Limited,WIPO Case No. D2008-1399; Chuck Liddell v. Comdot Internet Services Private Limited,WIPO Case No. D2008-1284; F. Hoffmann-La Roche AG v. Domain Administration Limited,WIPO Case No. D2008-0626; (1) Robert L. Goldman and (2) CELS Enterprises, Inc. v. Domain Administration Limited/ David Halstead,WIPO Case No. D2008-0239; FPS Training Corporation v. Domain Administration Limited,WIPO Case No. D2007-1860; ebm-papst Mulfingen GmbH & Co. KG v. Domain Administration Limited,WIPO Case No. D2007-1332; Elders Limited v. Domain Administration Limited/ David Halstead,WIPO Case No. D2007-1026; American Funds Distributors, Inc. v. Domain Administration Limited,WIPO Case No. D2007-0950; The Bank of Nova Scotia v. Domain Administration Limited,WIPO Case No. D2007-0883; E-Z Rent-A-Car, Inc. v Domain Administration Limited, David Halstead,WIPO Case No. D2007-0647; Gilmar S.p.A. v. Domain Administration Limited,WIPO Case No. D2007-0093; Nationwide Mutual Insurance Company v. Domain Administration Limited, c/o David Halstead,WIPO Case No. D2006-1490; Compass Bancshares, Inc. & Compass Bank v. Domain Administration Limited.WIPO Case No. D2006-1259; Fifth Third Bancorp v. Domain Administration Limited,WIPO Case No. D2006-1207; Getty Images, Inc. v. Domain Administration Limited,WIPO Case No. D2006-1173; Sports Holdings, Inc. v. Domain Administration Limited c/o David Halstead,WIPO Case No. D2006-1147; American Diabetes Association. v. Domain Administration Limited,WIPO Case No. D2006-0921.
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