WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sonia Rolland v. Belize Domain WHOIS Service Case No. D2009-0480 1. The Parties
The Complainant is Sonia Rolland, Paris, France, represented by Avocat au Barreau de Paris, France.
The Respondent is Belize Domain WHOIS Service, City of Belmopan, Belize. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Domain Contender, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2009. On April 14, 2009, the Center transmitted by email to Domain Contender, LLC a request for registrar verification in connection with the Disputed Domain Name. On April 15, 2009, Domain Contender, LLC 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 Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 18, 2009.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 3, 2009. 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 Complainant is a former Miss France and a French actress who has gained considerable fame since her election as Miss France in 2000. In addition to the Complainant's name being well recognized in the entertainment industry, her name is associated with a non-governmental organization that she created in 2001, “Association Sonia Rolland pour les enfants” (the “Association”). The Complainant has marketed a series of products in connection with her Association, such as books, and also wrote her own book in 2007.
As well as cultivating substantial goodwill in the name “Sonia Rolland”, the Complainant has registered trademarks for SONIA ROLLAND and SONIA ROLLAND MAÏSHA AFRICA in France.
The Complainant received a registration for SONIA ROLLAND on November 21, 2002 with the French National Institute for Industrial Property (the “INPI”) to cover a series of products, such as perfumed soaps, oils, and hair lotion.
The Complainant received a registration for SONIA ROLLAND MAÏSHA AFRICA, which is used in connection with the Complainant's Association, on January 27, 2006 with the INPI to cover numerous products, such as books and posters, as well as services, such as online advertising and photography services.
The Respondent registered the domain name on July 9, 2004.
The Respondent has been involved in more than 60 UDRP proceedings in which the panelist ruled that it was involved in abusive registrations, and thus, it was ordered to transfer the domain name in each of those proceedings to the complainant. 5. Parties' Contentions A. Complainant
The following are the allegations made by the Complainant in this proceeding:
Since the Complainant's election as Miss France in 2000, the Complainant has established considerable fame and a significant fan base. The Complainant has appeared in several movies and television shows and has been featured in numerous news/pop culture articles and interviews. In addition to her success in the entertainment industry, the Complainant has been involved with many other initiatives, including writing a book in 2007 and marketing a series of products in connection with a non-governmental organization she created in 2001, “Association Sonia Rolland pour les enfants.”
The Complainant has owned registered trademark rights to the mark SONIA ROLLAND, which is registered to cover a series of products such as cosmetic products, since November 21, 2002. The Complainant has owned registered trademark rights since 2006 for the mark SONIA ROLLAND MAÏSHA AFRICA, which has been used in connection with the Complainant's Association, since 2001.
The Disputed Domain Name is confusingly similar to the Complainant's registered SONIA ROLLAND marks, only differing in minor and immaterial respects
The Respondent has no rights or legitimate interests in the Disputed Domain Name, has no connection or affiliation with the Complainant, and has not been granted consent or a license, express or implied, to use the SONIA ROLLAND marks in a domain name or in any other manner.
The Respondent has never been known, recognized, or otherwise associated with the Disputed Domain Name. Nor has the Respondent used the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name links to a pay-per-click advertising website, which contains links to products and services that are not connected to or associated with the Complainant's trademarks. The Respondent likely earns click-through fees for each redirected Internet user. Thus, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name because the Respondent is using a well-known trademark with the intent to misleadingly divert consumers to the website and thereby gain revenue.
The Respondent registered the domain name .
The Respondent knew of the rights that the Complainant has in the SONIA ROLLAND mark at the time the Respondent registered the Disputed Domain Name and thus acted in bad faith in so registering it. The Respondent intentionally registered the Disputed Domain Name to confuse Internet users into thinking that the Complainant somehow sponsors or is affiliated with the Respondent's website. In this way, the Respondent deliberately seeks to capitalize on the goodwill and reputation of the Complainant.
The Respondent has been involved in more than 60 UDRP proceedings in which the panelist ruled that it was involved in abusive registrations, and thus, it was ordered to transfer the domain name in each of those proceedings to the complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no right or legitimate interest in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has valid and well established, exclusive rights in her SONIA ROLLAND trademarks. Specifically, the Complainant possesses valid French trademark registrations and uses the SONIA ROLLAND mark for products, and additionally uses the SONIA ROLLAND MAÏSHA AFRICA mark for goods and services in connection with the Association created by the Complainant.
As prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant's registered mark. See, Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding that QUIXTAR and are identical for purposes of the Policy).
Furthermore, it is well established that the addition of the suffix “.com” to a trademark in its entirety is irrelevant and does not change the likelihood of confusion between a domain name and a registered trademark. See, e.g., BIC Deutschland GmbH & Co KG v. Paul Tweed,WIPO Case No. D2000-0418 (finding that TIPP-EX and are nearly identical for purposes of the Policy).
The Panel therefore concludes that the Disputed Domain Name is identical or confusingly similar to the Complainant's SONIA ROLLAND mark in which the Complainant has valid and exclusive rights. B. Rights or Legitimate Interests
Once a complainant establishes that a respondent's domain name is identical or confusingly similar to a complainant's mark, and has made a prima facie case that the respondent lacks rights or legitimate interest in the domain name, the burden shifts to the respondent to establish some rights or legitimate interest with respect to the domain name. See, Sony Kabushiki Kaisha v. , WIPO Case No. D2000-1074. The Panel, noting that that the Complainant has not authorized the Respondent to use the SONIA ROLLAND marks, finds that the Complainant has made such a prima facie case, which the Respondent has not answered.
The Respondent has not shown that it has made any bona fide commercial use or any legitimate noncommercial or fair use of the Disputed Domain Name without any intent either for commercial gain, or to mislead or divert consumers or tarnish the trademarks at issue. Nor has the Respondent shown that it has been commonly known by the Disputed Domain Name. The Complainant states in the Complaint, and submits evidence in its schedule of annexes to the Complaint, that the Disputed Domain Name is being used as a pay-per-click advertising website. The Respondent's use of the Disputed Domain Name to redirect unsuspecting Internet users to click-through advertisements and sponsored links present on fails to constitute a bona fide commercial offering of goods and services under the Disputed Domain Name. Such use certainly does not constitute a legitimate non-commercial or fair use without any intent either for commercial gain, or to mislead or divert consumers or tarnish the trademark at issue. See, MSNBC Cable, LLC v. T,WIPO Case No. D2000-1204.
The Respondent's default notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent is now or was ever known by , that the Respondent possesses any trademark or service mark rights in the Disputed Domain Name , or that the Respondent has other authority or permission to use the Complainant's SONIA ROLLAND marks. Indeed, the Complainant states expressly that the latter is not the case. See, e.g., Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Jonathan Dardashti,WIPO Case No. D2001-1158 (finding no legitimate interest because, inter alia, the complainant had not licensed mark to the respondent). Furthermore, by not submitting a response to the Complaint, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds some right or legitimate interest in the Disputed Domain Name. See, Ahead Software AG. v. Leduc Jean, WIPO Case No. D2004-0323; see also, Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (finding that respondent's default alone was sufficient to conclude that it had no right or legitimate interest in the domain name).
Therefore, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
First, in view of the circumstances, the Panel infers the Respondent's bad faith intent from the Respondent's lack of response to the Complaint. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210.
Second, the Respondent's registration of two years after the Complainant began to use and widely promote her trademark is evidence that the Disputed Domain Name was registered in bad faith. See, Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and web publicity in the complainant's trademark). The SONIA ROLLAND trademark had been used since 2001 and was well-known among consumers when the Respondent registered the Disputed Domain Name in 2004. Thus, it can be inferred that the Respondent was aware of the Complainant's well known trademark and specifically registered the Disputed Domain Name to confuse Internet users and to attract them to the Respondent's website. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Given the Complainant's numerous trademark registrations for, and its wide reputation in, the word [i]t is not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration.”). Although SONIA ROLLAND MAÏSHA AFRICA was not registered until 2006, the Association with which it is used was created in 2001, and according to the Complainant, has been very active and well known since then. Therefore, the Panel finds that the Respondent registered the Disputed Domain Name in bad faith.
Third, because the Disputed Domain Name is identical to the Complainant's well known trademark and the Respondent has no rights or legitimate interest in the Disputed Domain Name, as was previously established, the Respondent is using the Disputed Domain Name in bad faith. See, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (finding that the domain name was “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”). The Respondent's use of the Disputed Domain Name to divert consumers to a pay-per-click advertising website is further evidence that the Disputed Domain Name is being used in bad faith. Through the use of click-through fees, the Respondent financially benefits from the hyperlinks on its website. Thus, the Respondent uses the Disputed Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website. See MatchNet plc. v. MAC Trading,WIPO Case No. D2000-0205.
Finally, the Respondent, Belize Domain WHOIS Service, has been involved in more than 60 UDRP proceedings in which the panelist ruled that it was involved in abusive registrations, and thus, it was ordered to transfer the domain name in each of those proceedings to the complainant. See, e.g., Aluship Technology SP. Z O.O. v. Belize Domain WHOIS Service,WIPO Case No. D2009-0028; See also, Seco Tools AB v. Belize Domain WHOIS Service Lt., NAF Claim No.1254882. For example, Annex 8 to the Complaint, lists 33 National Arbitration Forum cases and 20 World Intellectual Property Organization cases in which the domain names were ordered transferred to the complainants. This provides further evidence that the Disputed Domain Name is being used in bad faith. See Pension Benefit Guaranty Corporation v. Belize Domain WHOIS Service Lt,WIPO Case No. D2008-1371 (finding that the Respondent's involvement in numerous UDRP proceedings, in which it was consistently required to transfer the disputed domain name, was evidence of bad faith).
The Panel therefore concludes that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Disputed Domain Name, , be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Dated: June 17, 2009
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