WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Planete Tortue v. none Pierre Guynot Case No. D2009-1540 1. The Parties
The Complainant is Planete Tortue of Aix-en-Provence, France represented by Tmark Conseils of France.
The Respondent is none, Pierre Guynot of Port-au-Prince, Haiti. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2009. On November 17, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 17, 2009, eNom 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 November 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 16, 2009.
The Center appointed Moonchul Chang as the sole panelist in this matter on December 22, 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
Since 1993 the Complainant has made a business of selling clothing for children and women, and has established a large reputation in this field. (Annex 4 to the Complaint). In 2008 the turnover of the Complainant was EUR 45,100,000.
The Complainant owns the trademark JAVA in France which is in use for women's clothing such as underwear, lingerie, bottoms, petticoats, garters and bras. (Annex 3 to the Complaint) Since 1993 the trademark JAVA has been used by its previous owner for a women's underwear range and the Complainant purchased the trademark and its business in 2009.
The Respondent registered the disputed domain name on December 6, 2005. The Respondent is currently managing the “www.” website, which is used for a parking website offering various sponsored links. 5. Parties' Contentions A. Complainant
The Complainant contends that
(1) The disputed domain name is confusingly similar to the Complainant's trademark JAVA. Within the denomination “javalingerie” the dominant and distinctive element is the word “java” which trademark the Complainant owns. The term “lingerie” in French and English means women's underwear and is descriptive of the goods designated by the Complainant's trademark.
(2) The Respondent has no rights or legitimate interests in the disputed domain name . The Respondent has no trademark containing the words “java” and “lingerie” in the name of Pierre Guynot. The Respondent has never been commonly known by the disputed domain name.
(3) The disputed domain name was registered and used in bad faith by creating a likelihood of confusion with the trademark JAVA. Firstly, at the time of the registration of the disputed domain name the Respondent could not have registered it at random and was aware of the existence of the French trademark JAVA for an activity of lingerie because of the good reputation of the Complainant in the field of women's clothing. Secondly, the disputed domain name is used for a parking website proposing different sponsored links among which several links refer to erotic or adult websites.(Annex 5 to the Complaint) Thus the domain name was registered for the purpose of disrupting the business of the Complainant. Thirdly, the Respondent obtains financial gain every time an Internet user would inadvertently access its website and activate any of the sponsored links. The Respondent wants to create a risk of confusion by making an illegitimate commercial use of disputed domain name and by attempting to attract Internet users to its website for commercial gain. The Respondent prevents the Complainant from registering the disputed domain name for promoting its trademark JAVA in an online trade. Finally, the Respondent appears to own some 986 domain names and has been involved in UDRP proceedings several times. (Annex 8, 9 & 10 to the Complaint) B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.” In light of the above, the Panel may draw such inferences from the Respondent's failure to comply with the Rules as it considers appropriate.
Under paragraph 4(a) of the Policy, a complainant must prove each of the following:
(i) The domain name is identical or confusingly similar to the complainant's trademark or service mark; 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 consists of two words “java” and “lingerie”. Among them the dominant word “java” is identical to the trademark which the Complainant owns. The other word “lingerie” is descriptive of the goods designated by the Complainant's trademark as well as of the goods that Complainant sells in its Internet shopping mall.
Therefore, the Panel concludes, under paragraph 4(a)(i) of the Policy, the disputed domain name is confusingly similar to the trademark of the Complainant. B. Rights or Legitimate Interests
The Panel considers that under paragraph 4(a)(ii) of the Rules, the overall burden of proof is on the Complainant. However, once the Complainant presents prima facie evidence that the Respondent has no rights or legitimate interests, the burden shifts to the Respondent.
First, the Panel considers that in the absence of any permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name in this case could reasonably be claimed. Here, the Complainant is widely-known in the field of women's clothing and did not give any permission to the Respondent to use the trademark JAVA.
Secondly, there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services at present. In addition, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. On the other hand the name “java lingerie” has no apparent association with the Respondent.
Therefore, the Panel concludes that the Complainant satisfied the second element under the paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the domain name “has been registered and is being used in bad faith.” As this requirement is conjunctive, the Complainant must establish both bad faith registration and bad faith use. In addition the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, since the Complainant's trademark is widely-known in the field of women's underwear including lingerie, the Respondent is likely to have registered the disputed domain name with notice of the Complaint's trademark.
Secondly, the Panel considers further that the Respondent is merely using the disputed domain name which includes the trademark JAVA to attract Internet users interested in the Complainant's goods such as lingerie. This is supported by the fact that the Respondent has run a website located at “www.”, which displays “Sponsored Listings” and pay-per-click links that appear when the user clicks on one of these lists. As a result, the Respondent, by using the disputed domain name, is attracting customers so as to commercially benefit from its confusing similarity with the JAVA trademark. Such finding indicates the Respondent's bad faith in the registration and use of the disputed domain name.
Thirdly, the disputed domain name had used for a parking website proposing different sponsored links, among which several links such as “Hot Lingerie”or “Rencontre en Ligne” referred to erotic or adult websites, at the time when the Complaint was submitted. Thus the Respondent used the disputed domain name to attract Internet users to its website and to disrupt the business of the Complainant. The Respondent thereby prevented the Complainant from registering the disputed domain name for promoting its trademark JAVA.
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the disputed domain name in accordance with paragraph 4(b) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy, the Panel finds that: (i) the disputed domain name is identical or confusingly similar to the trademark owned by the Complainant, (ii) the Respondent has no rights or legitimate interests in the disputed domain name, and (iii) the disputed domain name has been registered and used in bad faith.
Therefore, under paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Moonchul Chang
Sole Panelist
Dated: January 5, 2010
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