WIPO Domain Name Decision D2009-0915 for livret-a.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Caisse Nationale des Caisses d'Epargne et de Prevoyance v. Blue Q Ltd Case No. D2009-0915 1. The Parties

The Complainant is Caisse Nationale des Caisses d'Epargne et de Prevoyance, France, represented by HAAS Société d'Avocats, France.

The Respondent is Blue Q Ltd of Frimley, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar

The disputed domain name is registered with eNom, Inc. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2009. On the same day, the Center transmitted a request for registrar verification in connection with the disputed domain name by email to eNom, Inc., which immediately confirmed that the Respondent was listed as the registrant and which provided 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”).

Upon receipt of the Complaint in electronic format on July 8, 2009, the Respondent sent to the Center an email to update its personal contact information and to get additional information regarding the procedural steps. On July 9, 2009, the Center acknowledged receipt of the email and informed the Respondent that the Notification of the Complaint would take place after its formal verification.

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 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2009. The Respondent did not submit a Response.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on August 14, 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.

On August 17, 2009, the Respondent sent an email to the Center to support its case. On the same day, the Center acknowledged receipt of the email and transmitted it both to the Complainant and the Panel. 4. Factual Background

The Complainant is a French bank which holds the French Trademark LIVRET A (n° 99803308), registered under classes 9, 16, 35, 36, 38 and 41 with a filing date of July 19, 1999. According to the INPI, the application for renewal was filed on June 10, 2009, with a renewal foreseen on July 19, 2019.

The disputed domain name was registered on December 17, 2005.

On June 16, 2009, the Respondent sent an email to the Complainant, written in French, informing the latter that it had received an offer of purchase related to the domain name , but was nevertheless willing to transfer it to the Complainant for an amount to be discussed should it be interested in it.

On June 18, 2009, the Complainant replied to the Respondent that the domain name clearly infringed its rights upon the trademark LIVRET A, and invited the Respondent to transfer the domain name in its favor within forty-eight hours upon receipt of the email.

On the same day, the Respondent replied that it had not been aware of the trademark registration, but that its offer of June 16, 2009 was still valid should the Complainant be interested.

No further emails or submissions between the parties have been submitted. 5. Parties' Contentions A. Complainant

The Complainant first argues that the domain name is identical or confusingly similar to its trademark LIVRET A, as the presence of a hyphen is insufficient to exclude the quasi identity between the disputed domain name and the trademark.

The Complainant then asserts that the Respondent has no rights or legitimate interests in respect of the domain name. First, the Complainant's use of its trademark LIVRET A predates the registration of the domain name at dispute. Second, the domain name does not reflect the Respondent's name, which is not known under this name. Third, the Complainant has neither authorized nor licensed the usage of its trademark to the Respondent as a domain name. Finally, the Complainant adds that the email sent by the Respondent on June 16, 2009 clearly demonstrates the lack of rights or of legitimate interest of the Respondent in the domain name.

The Complainant finally alleges that the domain name was registered and is being used in bad faith. According to the Complainant, the email sent by the Respondent on June 16, 2009 clearly shows that the Respondent was well aware of the Complainant's rights in the trademark LIVRET A, as further pointed out by the fact that the Respondent maintained its offer in its subsequent email of June 18, 2009, despite the Complainant's request of transfer sent on the same day. The Complainant adds that one cannot see how and why a Respondent located in United Kingdom would choose a domain name consisting of a French word, but to reflect the Complainant's trademark. B. Respondent

The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

In view of the Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to the Rules, paragraphs 5(e), 14(a) and 15(a) and will draw such inferences as it considers appropriate pursuant to the Rules, paragraph 14(b).

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith. A. Procedural matter

On August 17, 2009, i.e. after the time granted to file a Response which expired on August 10, 2009, the Respondent sent an email to the Center containing a link to a press release from the European Commission from May 10, 2007, which called on France to end special rights to distribute saving books.

Paragraph 12 of the Rules unambiguously provides that the Panel “may request, in its sole discretion, further statements or documents from either of the Parties.” There is no provision in the Rules for a party to file an additional submission without leave of the Panel. This is because, under the expedited process provided under the Policy and Rules, each party is given one opportunity to put forward all the material on which it wishes to rely and is expected to do so.

The question whether paragraph 12 of the Rules shall be constructed as precluding acceptance of additional unsolicited submission has been considered in a number of panel decisions. A majority view holds that, “while panels must be mindful of the need for procedural efficiency, they have discretion to accept an unsolicited supplemental filing from either party, bearing in mind the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case” (see paragraph 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and cases cited therein). A panel therefore has to appraise the circumstances of each case before deciding whether to admit unsolicited additional submissions.

In the present case, the Panel is unwilling to accept the supplementary filing for several reasons. First, nothing prevented the Respondent to submit its Response and any material deemed desirable to support its case, including the link, within the deadline granted by the Center to the Respondent to submit its Response. Second, having nevertheless taken note of the link provided by the Respondent, the Panel finds that the supplemental filing does not include anything that would have changed the outcome of this case. B. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant proves to be the right holder of the trademark LIVRET A. Paragraph 10 of the Rules provides that “the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules”. Considering that the trademark registration was to expire on July 19, 2009, i.e. after the submission of the Complaint to the Center, the Panel accessed online trademark records to confirm that the renewal of this registration had been requested. The Panel notes that such records show the trademark to be live (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions section 4.5).

The domain name is quasi identical to the Complainant's trademark. The mere presence of a hyphen between “livret” and “a” has no role to play and does not exclude the similarity between the trademark and the domain name (Draw-Tite, Inc. v. Plattsburgh Spring Inc.,WIPO Case No. D2000-0017 and cases quoted by Gilliéron, La procédure de résolution en ligne des litiges relatifs aux noms de domaine, Lausanne 2002, N. 165). Accordingly, the Panel finds that the Policy, paragraph 4(a)(i) has been satisfied. C. Rights or Legitimate Interests

According to the Policy, paragraph 4(b)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name.

In Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, the panel stated: “Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Subsequent panels have developed a consensus view that where the complainant makes a prima facie case that the respondent has no rights or legitimate interests, it falls to the respondent to show circumstances establishing such rights or legitimate interests. See e.g. paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and cases cited therein.

In the present case, the Panel is convinced that the Respondent has neither rights nor legitimate interests in the domain name. The offer spontaneously sent by the Respondent to the Complainant on June 16, 2009 suggests that the Respondent was well aware of the Complainant's existence and rights in the disputed domain name. Here, such an offer made to the Complainant is clear indication that the Respondent has neither rights nor legitimate interests in the domain name.

The Panel finds that the Complainant has made a prima facie case and, even though put on notice of the Complainant's allegations, the Respondent does not bring any evidence that would demonstrate any right or legitimate interests in the domain name as the Respondent did not file a Response. More specifically, the Respondent does not demonstrate that:

(i) before any notice to it of the dispute, he used or made 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 is commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Consequently, the Panel considers the Policy, paragraph 4(a)(ii) to be fulfilled. D. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

To have registered the domain name in bad faith, the Respondent first must have been aware of the existence of the Complainant. The Panel finds that is the case here.

The Panel is persuaded from the circumstances in this case that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for an amount in excess of any documented out-of-pocket costs incurred by the Respondent and directly related to the domain name. The Respondent's unsolicited offer to sell the domain name to the Complainant, with the thinly veiled threat that he otherwise would consider its transfer in favor of a third party for an undisclosed amount that would have been offered to it, is compelling evidence of the Respondent's bad faith under paragraph 4(b)(i) of the Policy.

The Panel also finds that Respondent's bad faith is further illustrated by the fact that it was officially informed of Complainant's rights in the LIVRET A mark after receiving on June 18, 2009 a cease-and-desist letter requesting the transfer of the disputed domain name to Complainant. Respondent failed to comply with such request maintaining instead, which is a further indication of its bad faith, its offer for sale (see Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556). 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.

Philippe Gilliéron
Sole Panelist

Dated: August 20, 2009

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