WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Institut National de la Propriété Industrielle (INPI) v. BWI Domains Case No. D2008-1536 1. The Parties
The Complainant is the Institut National de la Propriété Industrielle (INPI), of Paris, France, represented internally.
The Respondent is BWI Domains, of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2008 by email and on October 9, 2008 by hardcopy. On October 9, 2008, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain name at issue. On October 9, 2008, R Corp. 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” 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 14, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was November 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 7, 2008.
The Center appointed Brigitte Joppich as the sole panelist in this matter on November 13, 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant, the Institut National de la Propriété Industrielle, is the national industrial property office of France (the initials of which are “INPI”), a public establishment created by the French law No. 51-444 of April 9, 1951 and governed by article L.411-1 of the French Intellectual Property Code. The Complainant is notably in charge of patents, trademarks, industrial design rights and national public business information. The Complainant is well established worldwide under its acronym “INPI” and is also involved in the adaptation of international intellectual property law.
The Complainant owns trade mark registrations in respect of “INPI” in France, inter alia trademark no. 3449074 INPI, registered on September 7, 2006, trademark no. 3449071 INPI INSTITUT NATIONAL DE LA PROPRIETE INDUSTRIELLE, registered on September 7, 2006, and trademark no. 532435 INPI INSTITUT NATIONAL DE LA PROPRIETE INDUSTRIELLE, registered on August 10, 1994 (the “INPI Marks”). The Complainant's trademarks mainly cover services in international classes 35, 38, 41 and 42.
Furthermore, the Complainant registered at least nine domain names consisting of or comprising the term “INPI”, inter alia , and .
The Respondent has previously been involved in many domain cases where the transfer of domain names to the respective complainant was ordered (see Stunt Dynamics c/o John Zimmerman v. BWI Domains c/o Domain Manager, NAF Case No. FA 1226425; Krause Publications, Inc. v. BWI Domains,WIPO Case No. D2008-1352; Axcan Pharma Inc. v. BWI Domain Manager c/o Domain Manager, NAF Case No. FA 1217153; MacKenzie-Childs Aurora LLC v. BWI Domain Manager c/o Domain Manager, NAF Case No. FA 1218043; JPS Manufacturing, LLC v. BWI Domains c/o Domain Manager, NAF Case No. FA 1211095; Les Publications Grand Public PGP v. BWI Domains,WIPO Case No. D2008-0905; National Construction Rentals, Inc. v. BWI Domains, Domain Manager,WIPO Case No. D2008-0915; Bloody Disgusting, LLC v. BWI Domain Manager c/o Domain Manager, NAF Case No. FA 1208358; Chivas Brothers Limited, Chivas Brothers Pernod Ricard Limited, Muir Mackenzie & Company Limited v. BWI Domains/Whois Protection,WIPO Case No. D2008-0722; Hercules Incorporated c/o Sandra D. Dobbs v. BWI Domain Manager c/o Domain Manager, NAF Case No. FA 1199010; Cavaliers Operating Company LLC, Gund Business Enterprises, Inc., and NBA Media Ventures, LLC. v. BWI Domains c/o Domain Manager, NAF Case No. FA 1192083; Keystone Automotive Operations, Inc. v. BWI Domain Manager, NAF Case No. FA 1177906; Choice Hotels International, Inc. v. BWI Domains c/o Domain Manager, NAF Case No. FA 1174416; Gene Kelly Image Trust v. BWI Domain Manager,WIPO Case No. D2008-0342; Det Berlingske Officin A/S v. BWI Domain Manager,WIPO Case No. D2007-1717; American Girl, LLC v. BWI Domain Manager, NAF Case No. FA 1104431; AARP v. BWI Domain Manager, NAF Case No. FA 1094042; AMFM, Inc. v. BWI Domain Manager, NAF Case No. FA 1084750).
The Respondent holds a portfolio of more than 35,000 domain names.
The Complainant sent a cease and desist letter to the Respondent on July 15, 2008. The Respondent did not reply. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the Complainant's INPI Marks as it incorporates the Complainant's acronym “INPI” in its entirety.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as there is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, as the Respondent is not making a legitimate non commercial or fair use of the disputed domain name but merely uses it in connection with a parking website offering links to third parties, thus tarnishing the Complainant's INPI Marks and trying to divert Internet users for commercial gain. Finally, the Complainant contends that the Respondent is not commonly known by the name “INPI” and that the Complainant has neither authorized nor licensed the Respondent to own or use a domain name incorporating the INPI Marks.
(3) The Complainant finally contends that the disputed domain name was registered and is being used in bad faith. In support of these allegations, the Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, the Complainant's customers to the parking website or other on-line location at the disputed domain name, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship or affiliation. Furthermore, the Complainant contends that the Respondent registered the disputed domain name primarily for the purposes of selling, renting or otherwise transferring it to the Complainant or to a competitor for valuable consideration in excess of its out-of-pocket costs. Finally, the Complainant contends that the Respondent is a well-known cyber-squatter which was already involved in other UDRP proceedings and therefore acts in a pattern of such conduct and that its failure to respond to the Complainant's cease and desist letter is further inference of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trademark; and
(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 disputed domain name fully incorporates the Complainant's distinctive INPI Marks in which the Complainant has rights and is therefore confusingly similar to the Complainant's trademarks nos. 3449071 and 532435 and identical to the Complainant's trademark no. 3449074.
It is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of a complainant's trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374; Teradyne, Inc v. 4Tel Technology,WIPO Case No. D2000-0026).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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 customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will shift to the respondent.
The Complainant has asserted that the Respondent has neither been granted a license nor any other permission to use the Complainant's INPI Marks and that the Respondent cannot have any rights or legitimate interests in the disputed domain name. The Complainant has therefore fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(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 the respondent's 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 the respondent 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 circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
As to bad faith registration, on balance, the Panel finds it more likely than not that the Complainant knew of third parties' rights in the disputed domain name at the moment of its registration or acquisition:
- The Complainant has been active in the field of protecting intellectual property in France since its creation in 1951 and is also widely-known internationally because it is involved in the adaptation of international intellectual property law. Given the distinctiveness of the INPI Marks and the high profile of the Complainant and its marks, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant's rights in the INPI Marks.
- This finding is supported by the fact that the Respondent uses the disputed domain name to provide links to third parties' websites including direct competitors of the Complainant. As the name “INPI” is in itself not descriptive of the Complainant's services, the Respondent would not have placed related ads on the website without knowledge of the Complainant and its activities. The fact that the Respondent is generating links in the French language even if through an automated process and for users in France suggests that the disputed domain name is used for its trademark value.
- The Panel is aware that the disputed domain name was first registered in 2000 but in the absence of any explanation by the Respondent finds it likely that it was acquired by the Respondent, a professional domainer, and in any event, most probably with the intention of making money from the likely confusion with third parties' rights. The Respondent has not given any reason for its behaviour, neither upon receipt of the letter of warning sent by the Complainant in July 2008, nor during these administrative proceedings. The Panel cannot find any intrinsic relationship between the Respondent and the disputed domain name. Under these circumstances, the benefit of any doubt cannot lie with the Respondent.
- Finally, even if the Respondent did not specifically know of the Complainant or of its trademark rights when it registered the disputed domain name, the finding of bad faith registration would be confirmed under the specific circumstances of this case by the Respondent's “wilful blindness”. The Respondent is evidently a professional domainer. Previous panels have found that a sophisticated domainer who regularly registers domain names for use as pay-per-click landing pages cannot be “wilfully blind” to whether a particular domain name may violate trademark rights (see Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448; Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI),WIPO Case No. D2008-1216), at least not in cases like the present where the Complainant as trademark owner is internationally known and its rights are revealed as hits on the first page of a Google search.
The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the INPI Marks into the disputed domain name and by using the website under such domain name as a parking website, providing links to direct competitors of the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant's website. The use and exploitation of trademarks to obtain click-through revenues from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (see L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623, with further references). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
This finding of bad faith use is further supported by the fact that the Respondent was ordered to transfer domain names to the respective complainant in at least nine earlier proceedings where registration and use in bad faith were established. The Respondent therefore acted in a pattern of preventing owners of a trademark or service mark from reflecting their marks in a corresponding domain name as illustrated under paragraph 4(b)(ii) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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. The Panel notes that this finding is without prejudice to any rights that may be asserted by third parties.
Brigitte Joppich
Sole Panelist
Dated: November 27, 2008
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