WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Indiana SA v. Belize Domain Whois Service Lt Case No. D2009-0847 1. The Parties
The Complainant is Indiana SA, of Paris, France, represented by Cabinet Desbarres & Staeffen, France.
The Respondent is Belize Domain Whois Service Lt, of Belize. 2. The Domain Names and Registrar
The disputed domain name is registered with Intercosmos Media Group d/b/a/directNIC.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2009. On June 26, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a/directNIC.com. a request for registrar verification in connection with the disputed domain name. On June 28, 2009, Intercosmos Media Group d/b/a/directNIC.com 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 July 7, 2009. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 27, 2009. The Respondent did not submit any response. Accordingly the Center notified the Respondent's default on July 28, 2009.
The Center appointed Clive Duncan Thorne as the Sole Panelist in this matter on August 4, 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
According to the Complainant, it is a company incorporated under French law. It operates in the restaurant trade and has done since the date of its registration in 1987.
It operates a chain of restaurants named Indiana Cafe specialising in Tex Mex food and cocktails. There are today, 11 Indiana Cafe restaurants in Paris. They are very popular and the brand Indiana Cafe is according to the Complainant, recognised in France and particularly in Paris.
The Complainant's intention is to franchise Indiana Cafe and particularly to Spain.
The Complainant is the owner of a number of domain names including , , , , , , , and .
The Complainant is also the owner of various trade mark registrations combining the word element “indiana cafe” with the design of a drawing of an “Indian head”.
The Complainant refers particularly to the following registered trademarks:
INDIANA CAFE (and design) - French trademark No. 1738132 filed on January 30, 1989, in class 43 for restaurant and cafe services. A copy of the registration certificate and renewal certificate are exhibited at Annex 5 to the Complaint.
INDIANA CAFE (and design) - French trademark No. 94540718 filed on October 18, 1994, in class 25 for clothing, footwear and head gear. A copy of the registration certificate is annexed as Annex 6 to the Complaint.
INDIANA CAFE (and design) - No. 639070 - an international trademark registered on April 5, 1995 in class 42 for restaurant services. The international trademark is effective in Austria, Benelux, Switzerland, Germany, Spain, Italy, Monaco and Portugal. A copy of the registration certificate is exhibited at Annex 7 to the Complaint.
The Complainant is also the owner of a European Community trademark application for INDIANA CAFE (and design) No. 008251852 filed on April 28, 2009, in classes 25, 29, 30, 31, 32, 33, 35, 38 and 43.
At Annex 9 to the Complaint, the Complainant exhibits an extract from the Respondent's website. The headings on the pages exhibited relate to cafes, food, dining, restaurant, Indian restaurants, bars, pubs and other similar activities which are also the main fields of activities of the Complainant. The page also includes links to websites offering competing services to those of the Complainant in the field of restaurants or pubs, e.g. “” “”, “” and “”.
It should be noted that the disputed domain name was registered on April 17, 2004, which post dates the French trademark registrations relied on by the Complainant.
In the absence of a Response, or any submission to the contrary, the Panel accepts the proof of the evidence submitted by the Complainant. 5. Parties' Contentions A. Complainant
The Complainant submits that:
(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
(b) The Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant submits that the website related to the disputed domain name is a parking website linked to websites offering competing services.
The Complainant submits that there is no evidence that the Respondent has any rights or legitimate interests in respect of the domain name or its use.
(c) The domain name was registered and is being used in bad faith
The Complainant relies upon the evidence of the use of the disputed domain name which it submits intentionally attempt to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's marks.
The Complainant also submits that the Respondent has a history of bad faith registrations and has been named in numerous UDRP actions in each of which the Panel decided that the disputed domain name be transferred to the complainants. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or confusingly similar
The Panel is satisfied that the Complainant has subsisting trademark registrations for the mark INDIANA CAFE.
The Complainant submits that the disputed domain name consists solely of the word portion of the Complainant's INDIANA CAFE trademarks with only the addition of the top level domain “.com”. It also points out that the design portion of the Complainant's trademarks does not obscure the central identifying role of the words with which it is combined. The sight, sound and meaning of the trademark words INDIANA CAFE and the disputed domain name are the same. The overall impression is therefore one of similarity and it is in this Panel's view indisputable that the disputed domain name is confusingly similar to the Complainant's INDIANA CAFE trademarks.
The Panel accepts these submissions and finds that the disputed domain name is confusingly similar to the Complainant's trademarks INDIANA CAFE (and design). B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant submits that the Complainant's adoption and use of the trademark INDIANA CAFE precedes by many years the registration of the disputed domain name and there is no evidence of the use or preparation to use the disputed domain name by the Respondent.
The Complainant confirms that it has not authorised the Respondent to register or use the marks nor is the Respondent an authorised franchisee of licensee of the Complainant.
The Complainant also submits that the Respondent is not and has never been commonly known by the disputed domain name or by the name “Indiana Cafe”.
It also relies upon an earlier UDRP decision Express Scripts Inc v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267 as authority for the proposition that linking a domain name to a sponsored link in the hope and expectation that Internet users searching information about the business activities of the trademark owner will be directed to the parking page does not provide a legitimate interest in the domain name.
In the absence of submissions to the contrary from the Respondent the Panel accepts the reasonable submissions of the Complainant and finds that the Respondent has no rights or legitimate interests in respect of the domain name. C. The Domain Name was Registered and is Being Used in Bad Faith
The Complainant submits that the disputed domain name was registered and is being used in bad faith since it is being used intentionally to attempt to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, or affiliation of the website. The Panel finds that this is clearly established by the existence of the sponsored links referred to above.
The Panel also takes into account the history of the Respondent's practice of using sponsored links in this manner and which have been the subject of the lengthy list of UDRP cases and decisions referred to in the Complaint. There are approximately 20 such cases listed in which the Respondent is named as Respondent. According to the Complainant the panel in each case ruled that the domain name be transferred to the complainants.
In the Panel's view, the situation, in this case, is no different. Moreover, there is no evidence or submission to the contrary from the Respondent. The Panel therefore finds that the disputed domain name was registered and is being used in bad faith. 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.
Clive Duncan Thorne
Sole Panelist
Dated: August 17, 2009
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