WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mutuelle d'Assurance du Corps de Sante Francais - MACSF Assurances v. Marketing Express Case No. D2010-0242 1. The Parties
The Complainant is Mutuelle d'Assurance du Corps de Sante Francais - MACSF Assurances of Puteaux, France, represented by INLEX IP, France.
The Respondent is Marketing Express of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2010. On February 23, 2010, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain name. On March 1, 2010, R Corp. 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 March 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 23, 2010.
The Center appointed André R. Bertrand as the sole panelist in this matter on March 31, 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
The Complainant Mutuelle d'Assurance du Corps de Sante Français- MACSF Assurances or “MACSF” is an insurance company. It was founded in 1935 and today employs more than 1,200 persons and has more than 650,000 customers.
The MACSF is the legitimate owner – among other trademarks – of the following trademarks :
- MACSF, a French trademark first filed on November 25, 1999 in class 36 (reg. No.99 825388), which was renewed on the July 8, 2009.
- MACSF, a Community trademark which was filed on September 3, 2001 in classes 36, 38 and 42 (reg. No.2361657).
The Complainant is also the legitimate owner of the French domain name registered on November 4, 1999. 5. Parties' Contentions A. Complainant
According to the Complainant:
(i) the disputed domain name is identical to its trademarks in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name ; and,
(iii) the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the disputed domain name in this case:
(i) the disputed domain name is identical to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; see also 5B Investments, Inc. v. RareNames WebReg, WIPO Case No. D2008-0146 and Barceló Corporación Empresarial, S.A (Barceló Group) v. Zapotel, Inc., WIPO Case No. D2010-0083).
Thus the disputed domain name is identical to the trademark MACSF registered by the Complainant.
The Panel thus finds that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires that the Complainant proves that the Respondent has no right or legitimate interests in the disputed domain name.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish his rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements :
(i) before any notice of the dispute, there is any evidence of the Respondent's use of, or demonstrable 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;
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
Since the Respondent did not reply to the Complainant's contentions, it is difficult to find out if he satisfies to one of the above-mentioned elements.
It must be noted that the word “macsf” is not a common, a generic or descriptive word that one finds in French or in English dictionaries. The word “macsf” has no meaning, due to the fact it is the initials of the trade name of the Complainant.
Thus, there is not an apparent reason why the Respondent has any rights or legitimate interests in this word which he has registered as a domain name.
Furthermore, as stated in Barceló Corporación Empresarial, S.A (Barceló Group) v. Zapotel, Inc, WIPO Case No. D2010-0083, “it is the consensus view among panelists that if a Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to show such a right or legitimate interest, by for example providing proof of one of the three circumstances under paragraph 4(c) of the Policy, then the Respondent is considered to lack a right or legitimate interest in the contested domaine name”.
The Panel thus finds that the Complainant has established the requirement of paragraph 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy also requires that the Complainant proves that the Respondent has registered and used in bad faith the disputed domain name.
The website “www.” lists the following headings “Car Insurance”, “Auto Insurance quote”, “Insurance quote”, “Commercial insurance”, “Health care insurance”…. which are linked to various sites. It is notable in this regard that insurance is the Complainant's field of business.
Thus it appears that this site is directed towards people that could be interested in buying insurances.
In other words, it appears that by using the domain name, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
The Panel thus finds that the Complainant has established the requirement of paragraph 4(b) 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 the Complainant.
André R. Bertrand
Sole Panelist
Dated: April 20, 2010
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