WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pi-Design AG v. A Domain Privacy / Transure Enterprise Ltd Case No. D2010-0462 1. The Parties
1.1 The Complainant is Pi-Design AG of Triengen, Switzerland, represented by Gorrissen Federspiel, Denmark.
1.2 The Respondents are A Domain Privacy of Beaumaris, Victoria, Australia and Transure Enterprise Ltd of Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland (collectively, the “Respondent”). 2. The Domain Name and Registrar
2.1 The disputed domain name is registered with A Pty Ltd. 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2010. On March 26, 2010, the Center transmitted by email to A Pty Ltd a request for registrar verification in connection with the disputed domain name. On March 29, 2010, A Pty Ltd transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 30, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 31, 2010. The Center verified that the Complaint together with the amended 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”).
3.2 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 April 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 22, 2010.
3.3 The Center appointed Nathalie Dreyfus as the sole panelist in this matter on April 30, 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
4.1 The Complainant is a Swiss company forming part of the Bodum Group, which conducts business notably for tableware and kitchen utensils.
4.2 The Complainant is the owner of various trademark registrations that comprise “Bodum”. These trademarks include Community Trade Mark BODUM (word) No 224097 filed on April 12, 1996 in classes 3, 8, 11, 14, 20, 21, 24, and 30; Community Trade Mark BODUM (word) No 538546 filed on May 21, 1997 in classes 1, 4, and 16; and the international trademark BODUM No 908026 registered on October 6, 2005 for the word “bodum” in classes 1, 3, 4, 6, 7, 8, 9, 11, 14, 16, 18, 20, 21, 22, 24, 25, 26, 28, 29, 30, 33, 35, 42, and 43, and designating various countries including Australia and the European Community.
4.3 The Complainant is the registrant of the domain name which was created on December 17, 1996.
4.4 The disputed domain name was registered on December 11, 2008. According to the public WhoIs details, the Respondent is the current registrant of the disputed domain name. At least recently the webpage operating from the disputed domain name consists in a parking page mostly displaying commercial links.
4.5 On February 17, 2010 the Complainant's solicitors sent a letter by post to “A Domain Privacy”, alleging that its actions involved trademark infringement and typosquatting. It demanded the transfer of the disputed domain name. No response was received to this letter. The Complainant subsequently filed the Complaint with the Center. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that its BODUM trademark is known worldwide and that it enjoys a long established reputation. The Complainant specifies that it is using the BODUM trademark actively during the course of its business for the sale of tableware and kitchen utensils. It contends that, since the disputed domain name incorporates the BODUM trademark in full, the disputed domain name is confusingly similar to that trademark.
5.2 The Complainant refers to the “www” part of the disputed domain name, which is generally known as the abbreviation for World Wide Web. The Complainant thus contends that the “bodum” name constitutes the determining part of the disputed domain, and the “www” part is irrelevant when comparing the disputed domain name with the Complainant's trademark. In light of the above contentions, the Complainant believes that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.
5.3 The Complainant contends that the Respondent is not commonly known by the disputed domain name and has acquired no trademark or service mark rights on this domain name. The Complainant also confirms that it has not licensed or otherwise permitted the Respondent to use the BODUM trademark.
5.4 The Complainant alleges that the website operating from the disputed domain name only include a number of sponsored links to other websites, some of which offer for sale products that are similar to the Complainant's products. Thus the Complainant contends that the Respondent's sole purpose when registering the domain name seems to be the sale of sponsored links to other persons.
5.5 The Complainant contends that the Respondent selected the disputed domain name solely in order to attract Internet users to the Respondent's website by trading on the fame of the Complainant's BODUM trademark and on the accidental omission of the dot when Internet users are attempting to access the Complainant's website “www.”. In the circumstances, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
5.6 The Complainant further claims that, due to the long established reputation of its trademark within many jurisdictions, it is unlikely that the Respondent inadvertently selected a combination of the “bodum” name with the abbreviation for World Wide Web when registering the disputed domain name. It is even less likely, the Complainant claims, in the light of the Complainant's website “www.”.
5.7 The Complainant contends that the Respondent's clear purpose when registering the disputed domain name is to divert Internet users searching for the Complainant's website “www.” who accidentally omit the dot. The Complainant seems to contend that this shows no bona fide offering of goods and services.
5.8 The Complainant claims that by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the products or services on the Respondent's website. B. Respondent
The Respondent did not reply to the Complainant's contentions and it is therefore in default. 6. Discussion and Findings A. Procedural Matters
6.1 Paragraph 1 of the Rules defines “Respondent” as the holder of a domain name registration against which a complaint is initiated. Based on the public WhoIs record, it appears that the Complaint correctly named as the Respondent A Domain Privacy, the registrant of record for the disputed domain name at the time the Complaint was filed. It was only after this proceeding was filed that the registrar identified Transure Enterprise Ltd, who was using the privacy service, as the registrant.
6.2 The Panel is of the opinion that both the registrant having registered through a privacy service and the registrar providing such registration must bear some of the consequences of anonymous registration. This has already been enounced in Research In Motion Limited v. PrivacyP / Pluto Domain Services Private Limited,WIPO Case No. D2009-0324.
6.3 In this proceeding, the Center sent a copy of the Complaint to both A Domain Privacy and Transure Enterprise Ltd. Accordingly, for the purposes of this proceeding, the Panel considers both of them, collectively, as the Respondent. B. Burden of Proof
6.1 The Panel is of the view that there are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii)); and
(ii) the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii)). a. Identical or Confusingly Similar
6.1 The first element under the paragraph 4(a)(i) of the Policy requires the Complainant to establish the disputed domain name is identical or confusingly similar to a trademark in which it has rights.
6.2 The Panel finds that the Complainant has established its registered trademark rights in BODUM as evidenced by the trademark registrations submitted with the Complaint.
6.3 The Panel accepts that the disputed domain name is confusingly similar to the Complainant's BODUM trademark. The disputed domain name incorporates the term “Bodum” in full. Such term provides the dominant element of the disputed domain name. The addition of the “www” term, commonly known as the abbreviation for World Wide Web, does not so detract from or alter the perception of that word so as to prevent a finding of confusing similarity (as that term is understood under the Policy) with the BODUM trademark. Prior UDRP panel decisions have considered domain names that consist of the prefix “www” affixed to a trademark and have concluded that such domain names are confusingly similar to the relevant trademark: CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273; EasyGroup IP Licensing Limited v. Amjad Kausar,WIPO Case No. D2003-0012.
6.4 The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy. b. Rights or Legitimate Interests
6.1 The second element under paragraph 4(a)(ii) of the Policy requires the Complainant to establish the Respondent lacks rights and legitimate interests in the disputed domain name.
6.2 The Respondent has not been authorized by the Complainant to use the Complainant's trademarks in any manner. The Panel finds no evidence that the Respondent ever had any rights or legitimate interests in the disputed domain name.
6.3 The website operating from the disputed domain was in use as a “pay-per-click portal site” or “parking page”. It shows sponsored links, some of which offer products that appear to compete with those offered by the Complainant, such as cups, saucers, and coffee mugs. The Panel agrees with the decision in Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304 that this type of use is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use.
6.4 The website operating from the disputed domain also features links which includes the term “Bodum”, such as “Bodum Webshop”. Previous UDRP panel decisions have recognized that the use of the website which links include the Complainant's trademark is not bona fide offerings of goods and services which will give rise to any rights or legitimate interests (See e.g., Gold Medal Travel Group plc v. Damir Kruzicevic,WIPO Case No. D2007-1902).
6.5 In the circumstances, the Panel finds that the Respondent has registered and used the Complainant's trademark with the sole intention to derive advantage from user confusion. The Panel accepts that such behaviour does not provide a right or legitimate interest for the purposes of the Policy, in accordance with previous UDRP panel decisions such as Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258.
6.6 In the absence of any evidence to the contrary, the Complainant has therefore made out the requirements of paragraph 4(a)(ii) of the Policy. c. Registered and Used in Bad Faith
6.1 The third element under paragraph 4(a)(iii) requires the Complainant to establish that the disputed domain name was registered and used in bad faith.
6.2 The disputed domain mainly consists of the “www” term combined with the “Bodum” term in which the Complainant has rights. The Panel is of the view that such combination is a strong indication of bad faith. In the circumstance of the case, the Panel finds that the Respondent has registered the disputed domain name with the purpose to attempt to divert Internet traffic intended for the Complainant's website by capitalizing on this typographical error.
6.3 The website operating from the disputed domain was in use as a “pay-per-click portal site” or “parking page”. In Mpire Corporation, supra, it was recognized that “the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use”. In the present case, the Panel finds that the Respondent was using the disputed domain name to intentionally attempt to attract Internet users to the website associated with the disputed domain name, by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of its website, for commercial gain, and earning.
6.4 The Panel accepts that the BODUM trademark is well-known worldwide. In the circumstance, the use of the domain name to post pay-per-click links based on the trademark value of the disputed domain name is clearly indicative of the Respondent's bad faith.
6.5 For all of these reasons, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. Therefore, the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy. 7. Decision
7.1 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.
Nathalie Dreyfus
Sole Panelist
Dated: May 14, 2010
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