WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mr. Prosper Assouline v. Domain Names Sale Lease Individual, Serkov Andrey Case No. D2009-0871 1. The Parties
The Complainant is Mr. Prosper Assouline of Paris, France, represented by Markplus International, France.
The Respondent is Domain Names Sale Lease Individual, Serkov Andrey of Zhurovitsy, Leningradskaya oblast, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2009. On July 1, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On July 2, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 proceeding commenced on July 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 27, 2009.
The Center appointed David Perkins as the sole panelist in this matter on July 30, 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.
After Notification of Respondent Default (July 17, 2009) the Respondent requested additional time for Response. The subsequent correspondence between the Respondent and the Center is set out in the Panel's Procedural Order dated August 4, 2009. By that Order, the Panel extended time for Response until August 11, 2009. On the same date as that Order, the Respondent submitted a Response. 4. Factual Background 4.A. The Complainant
4.A.1 The Complainant is the owner of Editions Assouline S.A. [“Assouline Publishing”], which for the past ten years has been in the business of creating and publishing high quality illustrated books, luxury editions and a gift line focused on fashion, photography, art and design.
4.A.2 Assouline Publishing opened its first wholly owned boutique in Paris in Late 2005. Its second flagship boutique was opened at The Plaza Hotel in Manhattan, New York in the Autumn of 2008. There are also Assouline boutique outlets, Saks, Fifth Avenue (New York), Wilkes Bashford (San Francisco) and Neiman Marcus (San Francisco), with a further four such boutiques planned to be launched during 2009.
4.A.3 Assouline Publishing also has shops which are operated in partnership with other parties located in Miami, Montreal, Toronto, Hong Kong, Dubai, Qatar and Mexico City. The ASSOULINE Trademark
4.A.4 The Complainant is the owner of the following registered trademarks and applications
Country Reg. No Mark Class(es) Date of Application / Registration
Community Trade Mark
005974647
ASSOULINE
16, 20 and 41
Filed: June 6, 2007 Registered: June 12, 2008
Community Trade Mark
004054763
ASSOULINE
3,18 and 15
Filed: December 22, 2004
Registered: November 28, 2005
International1
967180
ASSOULINE
16, 38 and 41
Registered: May 30, 2008
International2
976663
ASSOULINE
3 and 18
Registered: August 22, 2008
France
3546037
ASSOULINE
16, 38 and 41
Filed / Registered: December 26, 2007 The ASSOULINE domain names
4.A.5 The Complainant is the proprietor of the domain name which was registered on March 1, 1999, and the domain name which was registered on January 8, 1999, in the name of Trilogie Assouline of Paris. 4.B. Respondent
4.B.1 The Respondent says that he is in the business of leasing or selling domain names to third parties.
4.B.2 The disputed domain name was registered on May 20, 2009. According to the Respondent, he acquired the disputed domain name after it had become available through non-payment of renewal fees by its previous owner.
4.B.3 The disputed domain names resolves to a website offering pornographic material. Exhibited to the Complaint is a 40 page Report dated June 15, 2009 from a Bailiff [Hussier] of the Tribunal de Grande Instance, Paris which exhibits material printed from that website. This includes offers of videos and photographs entitled, inter alia, “Cruel Forced Sex”. The Report is in French and the website content in English.
4.B.4 The Respondent states that after he has been contacted by the Complainant, he offered to sell the disputed domain name to the Complainant for the price for which he purchased it. There is no mention of such offer in the Complaint. 5. Parties' Contentions 5.A. Complainant Identical or Confusingly Similar
5.A.1 The Complainant is the owner of registered trademark for the mark ASSOULINE, the earliest of which was applied for in December 2004.
5.A.2 The disputed domain name which was registered on May 20, 2009 – incorporates the identity of the ASSOULINE trademark, with the suffix “France”. As such, the Complainant says that it is confusingly similar to his ASSOULINE trademark.
5.A.3. In that respect, the Complainant points to the decision of Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd.,WIPO Case No. D2005-0587 in which the disputed domain name was held to be confusingly similar to the complainant's ELLE trademarks. The Complainant also refers to Koninklijke Philips Electronics N. V. v. Chung Kyungil,WIPO Case No. D2001-0194 in which the disputed domain names and were held to be confusingly similar to the Complainant's PHILIPS trademark. Rights or Legitimate Interests
5.A.4 First, the Complainant says that there is no evidence that the Respondent is commonly known by the disputed domain name.
5.A.5 Second, the Complainant says that the use to which the Respondent is putting the disputed domain name – namely, to link to a pornographic website – is not a noncommercial or fair use of that domain name, without intent for commercial gain to misleadingly divert customers looking to find the Complainant's French book stores.
5.A.6 Third, the Complainant says that the Respondent has no right to use the ASSOULINE trademark. Although the Complainant does not specifically address paragraph 4(c)(1) of the Policy, it is plain from the Complaint that he considers the use to which the disputed domain name is being put by the Respondent is not in connection with a bona fide offering of services.
5.A.7 In the light of the foregoing, the Complainant says that the Respondent has no rights nor any legitimate interest in the disputed domain name. Registered and Used in Bad Faith Identical or Confusingly Similar
5.A.8 The Complainant's case is that the circumstance set out in paragraph 4(b)(iv) of the Policy can be demonstrated in this case.
5.A.9 Specifically, the Complainant says that Internet users looking for the Complainant's French bookstores will spontaneously type in the disputed domain name, only to be directed to the pornographic website to which that domain name links. It is inferred that the Respondent will gain commercially from each confused user landing at that site.
5.A.10 In this respect, the Complainant cites two decisions under the Policy where, in similar circumstances, registration and use in bad faith were found. In Ferrero S.p.A. v. Alexander Albert W. Gore,WIPO Case No. D2003-0513, the disputed domain name was directed to a website advertising pornographic content. NUTELLA and NUTELLA FERRERO were long established trademarks of the complainant registered in many countries of the world. The Panel held that such use could confuse consumers (mostly children) and dilute the well-known NUTELLA and NUTELLA FERRERO trademarks.
5.A.11 In Benetton Group SpA v Domain for Sale,WIPO Case No. D2001-1498, the disputed domain name was linked to advertisements of several pornographic websites. The Panel held that such use tarnished the distinctiveness and reputation of the complainant's BENETTON SPORTSYSTEM registered trademarks and in the circumstances demonstrated bad faith by the respondent. 5.B. Respondent
5.B.1 First, the Respondent says that ASSOULINE cannot be a trademark because “Assouline” is – as can be demonstrated by a Google search – a common French surname.
5.B.2 Second, as Wikipedia search directed to “” produces no reference to ASSOULINE as a trademark.
5.B.3 Third, because France is the name of a country, it cannot be registered as a trademark.
5.B.4 In the circumstances, the Respondent asserts that the Complainant cannot have trademark rights in the disputed domain name . Consequently, the Respondent's case is that the Complaint must fail because the Complainant can have no rights in the trademarks ASSOULINE or ASSOULINE FRANCE. Rights or Legitimate Interests
5.B.5 The Respondent says that he is in the business of leasing and selling domain names to third parties. He registered the disputed domain name when its previous owner failed to pay renewal fees. Consequently, it is inferred that the Respondent's case is that, because the disputed domain name was abandoned by its former owner, it was entirely legitimate for him to register it. Consequently, the Respondent asserts that he has legitimate rights to the disputed domain name. Registered and Used in Bad Faith
5.B.6 Although not expressly pleaded in the Response, it is to be inferred that, because the Respondent considers that the Complainant has no trademark rights in ASSOULINE or ASSOULINE FRANCE and because it was entirely legitimate for him to register the disputed domain name when its previous owner allowed it to lapse, there can be no registration nor use in bad faith.
5.B.7 The Respondent says that he has offered to sell the disputed domain name to the Complainant for the sum for which the Respondent brought it at the auction. That sum is not stated.
5.B.8 Finally, the Respondent says that, if this Complaint is decided in favour of the Complainant, he
“… will be harming complainant's reputation and their business all ways we can including courtesy case and publishing how it's going in France Press with emails, letters, WHOIS history reports, etc.” 6. Discussion and Findings
6.1 Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
6.5 The Complainant clearly has registered trademark rights in the ASSOULINE mark. The Complainant's company has been trading under the ASSOULINE name and mark for the past 10 years and in the past two years has expanded its ASSOULINE specialist book stores internationally. The Complainant's rights in the ASSOULINE trademark predate registration in May 2009 of the disputed domain name.
6.6 The dominant prefix of the disputed domain name is identical to the Complainant's ASSOULINE trademark. The suffix “France” does not avoid confusing similarity between the Complainant's ASSOULINE trademark and the disputed domain name. The ELLE and PHILIPS decisions cited by the Complainant (see above) are entirely in point.
6.7 The Respondent's case in this respect, which is set out in paragraphs 5.B.1 to 5.B.4, is misconceived. First, because the Complainant does have registered trademark rights in a number of countries for the mark ASSOULINE. Second, because it is not necessary for the Complainant to have trademark rights in ASSOULINE FRANCE as to be identical to the disputed domain name. It is sufficient under the Policy for there to be confusing similarity.
6.8 In the circumstances, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interests
6.9 The Respondent says that he is in the business of leasing and selling domain names. As such, it is reasonable to assume that he is, or should be, aware of the Policy. Further, where a respondent is in that business and acquires a domain name which has been allowed to lapse, normal procedure dictates that he should satisfy himself that registration of that domain name will not infringe such trademark rights as the previous owner may have in the domain name.
6.10 Here, the Respondent offers no justification for asserting rights to or legitimate interests in the disputed domain name, whether by demonstrating that any of the circumstances of paragraph 4(c) of the Policy apply, or otherwise. By contrast, the disputed domain name has been held to be confusingly similar to the Complainant's ASSOULINE trademark. In the circumstances, the use to which that domain name is being put by the Respondent is neither a legitimate noncommercial or fair use. Further, in the Panel's view it is entirely likely that – as the Complainant suggests – Internet users seeking the Complainant's ASSOULINE bookstores in France will be mislead into using the disputed domain name. Still further, the use to which the disputed domain name is being put will likely tarnish the Complainant's ASSOULINE trademark. Registered and Used in Bad Faith
6.11 It is unnecessary to reiterate the Complainant's case that circumstances falling within paragraph 4(b)(iv) of the Policy apply on the facts of this administrative proceeding: see paragraphs 5.A.8 to 5.A.11 above. Furthermore, the NUTELLA FERRERO and BENETTON SPORTSYSTEM decisions under the Policy which the Complainant cites (see above) are entirely in point.
6.12 In the circumstances, the Complaint meets the requirements of paragraph 4(a)(iii) of the Policy. Further Comment
6.13 As noted in paragraph 5.B.8 above, the Respondent threatened certain reprisals against the Complainant and Assouline Publishing in the event that this Panel orders transfer of the disputed domain name to the Complainant. In that respect, the Respondent is directed to paragraph 4(k) of the Policy which explains that a Respondent may submit a dispute to a court of competent jurisdiction before this Panel's Decision is implemented. 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.
David Perkins
Sole Panelist
Dated: August 19, 2009
1 Designating People's Republic of China, the Russian Federation and Syria
2 Designating People's Republic of China and the Russian Federation
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