WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Association de moyens Malakoff Médéric v. N/A Ko Ko Te Case No. D2010-0029 1. The Parties
Complainant is Association de moyens Malakoff Médéric, Paris, France, represented internally.
Respondent is N/A Ko Ko Te of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2010. On January 8, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry a request for registrar verification in connection with the disputed domain name. On January 13, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2010. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on February 5, 2010.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on February 16, 2010. 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
Complainant is a complementary social protection insurer which conducts two main activities: management of complementary pension rights and life and health insurance for individuals. Association Groupe Malakoff and Association de Gestion Group Médéric have merged to form Complainant.
Complainant owns a verbal trademark MALAKOFF-MEDERIC registered with OHIM under number 006912612 filed on May 14, 2008 and the trademark MALAKOFF-MEDERIC with design, filed with OHIM on May 15, 2008 under number 006915681.
In addition, the verbal trademark MALAKOFF-MEDERIC in France under registration number 073534249 filed on October 30, 2007 is registered in the name of Association Groupe Malakoff and Association de Gestion Group Médéric, which form Complainant.
These registrations cover various classes, including class 36, which is in connection with the activities of management of complementary pension rights and life and health insurance for individuals.
Complainant has registered the domain name on April 7, 2008.
The disputed domain name was registered on October 2, 2009, and presently routes to a parking page displaying links to student scholarships, healthcare solutions and third-party web sites that offer or advertise various goods and services. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar to Complainant's Trademark
Complainant contends that the trademarks listed above were initially registered by Association Groupe Malakoff and Association de Gestion Groupe Médéric and have been transferred to or are in the process of being transferred to Complainant.
Complainant contends that the disputed domain name contains Complainant's MALAKOFF-MEDERIC trademark, but for the letter “f” and that the disputed domain name is identical to Complainant's trademarks listed above, its trade name and its domain name.
Complainant contends that the extensive similarity, from a sight, sound and meaning standpoint, between the disputed domain name and Complainant's trademarks and domain name creates a risk of confusion. No Rights or Legitimate Interests in Domain Name
Complainant contends that the use of the disputed domain name is not in connection with a bona fide offering of goods or services as the Internet site to which it directs is a so-called “parking” site. The site does not exploit its own content but presents commercial links which are classified by items.
Complainant contends that Respondent does not appear to be known under the disputed domain name since no trademark registrations have been found and no Internet searches were revealed in connection with Respondent.
Complainant further contends that Respondent is not making a legitimate non commercial use nor a fair use of the domain name but is using the trademark and name of Complainant to gain money as each click on a link appearing on the website of the disputed domain name generates revenue. Furthermore, the links presented are in relation to the activities of Complainant which creates confusion between Complainant and the domain name.
Complainant therefore concludes that Respondent has no legitimate rights or interests in the disputed domain name. Registration and Use of Domain Name in Bad Faith
Complainant contends that by using the disputed domain name Respondent has deliberately tried to attract, for money earning purposes, Internet users by creating confusion with Complainant and its trademarks, especially that the links offered on the disputed site relate to activities conducted by Complainant.
Complainant alleges therefore that Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
As per paragraph 15(a) of the Rules, Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. MC Enterprises v. Mark Segal (N),WIPO Case No. D2005-1270. However, in the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
Complainant has established that it possesses rights in the registered mark MALAKOFF-MEDERIC in France and in the European Union in connection with the activities of management of pension rights and life and health insurance. The trademarks have been filed since October 2007 and May 2008. Complainant also owns the domain name registered in April 2008.
The Panel finds that there is a slight difference in spelling between the trademark of Complainant MALAKOFF-MEDERIC and the disputed domain name which is the absence of the letter “f”. However, the absence of the letter “f” does not affect the visual or phonetic impression the word leaves on the reader or the listener. It will be hardly noticeable that an “f” is missing and the sound of the word will not differ whether read with two “f”s or one “f”. See Neuberger Berman Inc. v. Alfred Jacobsen,WIPO Case No. D2000-0323; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. Herreveld,WIPO Case No. D2000-0776; LouisVuitton v. Net-Promotion,WIPO Case No. D2000-0430.
Panels disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant's marks. See, e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-13l5.
The Panel concludes that the disputed domain name is confusingly similar to a trademark of Complainant and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
Complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002 -0005).
Complainant contends that Respondent was not commonly known by the disputed domain name, and that Respondent had no license or authorization to use the MALAKOFF-MEDERIC trademark. In the absence of a Response, the Panel accepts Complainant's undisputed factual contentions as true.
Screens from Respondent's web site accessible to the Panel online show that the disputed domain name presently routes to a parking page displaying links to student scholarships, healthcare solutions and third-party web sites that offer or advertise various goods and services, both related and unrelated to Complainant's activities.
The Panel infers that Respondent receives revenues when it diverts traffic through link advertisements on Respondent's web site. E.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit...in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate noncommercial interest in, or fair use of, the domain name. E.g., Hoffmann-La Roche Inc. v. O,WIPO Case No. D2007-1806 (citing Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784); Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
Filing no Response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, and other circumstances. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Respondent's web site shows that the links to which the disputed domain name routes are in direct relation with activities relating to the management of retirement plans and the provision of insurance services for individuals, which are the activities carried out by Complainant. The Panel infers that Respondent is deliberately attempting to attract Internet users to its web site for commercial gain, by creating a likelihood of confusion with Complainant's mark. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith.
The Panel concludes that this activity demonstrates bad faith use. Hoffmann-La Roche Inc. v. AZ Marketing Inc., Thomas Brennan, WIPO Case No. D2007-1843; Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088).
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy. 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 Complainant.
Nayiri Boghossian
Sole Panelist
Dated: March 1, 2010
Full & Egal Universal Law Academy