WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Holding Soprema (Société Anonyme) v. Registrant [3121]: Reserved for Customers MustN Case No. D2010-1048 1. The Parties
The Complainant is Holding Soprema (Société Anonyme) of Strasbourg, France, represented by Cabinet Nuss, France.
The Respondent is Registrant [3121]: Reserved for Customers MustN of Taipei, Taiwan, Province of the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2010. On June 24, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On the same day, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the registrant identity, the Complainant filed an amended Complaint on June 29, 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”).
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 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 22, 2010.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on July 27, 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 is Holding Soprema (Société Anonyme), a worldwide manufacturer in the roofing and waterproofing industry.
The Complainant owns trademark registrations for ALSAN in France, Reg. No. 98725796; in the European Union, Reg. No. 000919654; an International Registration No. 775979; in the United States of America, Reg. No. 252028; and in Canada, Reg. No. TMA615415.
The disputed domain name was registered on February 23, 2002. 5. Parties' Contentions A. Complainant
The Complainant contends the following:
That the Complainant is a worldwide leading manufacturer in the roofing and waterproofing industry, particularly, specialized in the development and production of asphaltic membrane.
In that connection, the Complainant contends that ALSAN designates a special liquid waterproofing system used in parking deck, balcony terraces and roofing applications, and that it is one of the Complainant's leading products.
Moreover, the Complainant contends that it owns trademark registrations for ALSAN in France, Reg. No. 98725796; in the European Union, Reg. No. 000919654; an International Registration No. 775979; in the United States of America, Reg. No. 252028; and in Canada, Reg. No. TMA615415.
The Complainant also contends that the disputed domain name is identical to its trademark ALSAN, which is incorporated in its entirety in the disputed domain name.
On the other hand, the Complainant contends that the Respondent does not have any right or legitimate interest in connection with the disputed domain name as the Respondent is not the Complainant's licensee nor is it a reseller of the Complainant's products.
Furthermore, the Complainant contends that the disputed domain name was registered and is being used in bad faith.
In that connection, the Complainant contends that the Respondent was aware of its trademark ALSAN when registering the disputed domain name, since this word was chosen by the Complainant as a reference to the origin of its head office in Alsace, France, and that this word has no meaning neither in French, English, German nor in any other language. Therefore, the Complainant contends that the choice of the name “alsan” by the Respondent was not fortuitous.
Furthermore, the Complainant contends that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online websites, by creating a likelihood of confusion with the Complainant's trademark, and to divert Internet users who might be interested in the Complainant to websites providing pornographic goods or services presumably on a pay-per-click basis.
Finally, the Complainant claims that the adoption by the Respondent of a domain name identical to the Complainant's trademark irrevocably leads to the diversion of the Complainant's clients to the website of the Respondent directly or to links of pornography websites, alien to the business of the Complainant, with the consequential tarnishing of the Complainant's trademark ALSAN.
For all the above-mentioned the Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, 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; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis 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. A. Identical or Confusingly Similar
The Complainant has filed relevant evidence showing that the fantasy word ALSAN is used by the Complainant to identify a specific product in the roofing and waterproofing industry.
In that connection, the Complainant has filed relevant evidence showing that it holds trademark registrations for ALSAN in different countries.
Therefore, the Complainant has proved to the Panel's satisfaction that the disputed domain name reproduces the exact same trademark over which the Complainant has rights.
In view of the foregoing, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy. B. Rights or Legitimate Interests
According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests and so the burden of proof has effectively been shifted to the Respondent, who did not reply to the Complainant's contentions and, therefore, has not made such showing.
Moreover, there is no evidence showing that the Respondent is commonly known as or identified by ALSAN. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
Furthermore, the Complainant has proved to the Panel's satisfaction that the disputed domain name resolves to the website “www.”, which contains sponsored links (pay-per-clicks) that redirect Internet users to other on-line locations. Such use, according to paragraph 4(c)(iii) of the Policy, can not be considered a legitimate noncommercial or fair use of the domain name, without intent for commercial gain.
For these reasons, and in the absence of a plausible explanation from the Respondent in connection with its rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant has identified itself as a worldwide leading manufacturer in the roofing and waterproofing industry, and has proved it to the Panel's satisfaction through the documents provided by the Complainant.
Moreover, the Complainant has proved that it owns trademark registrations for ALSAN in different countries, some of which were registered before the Respondent registered the disputed domain name.
Likewise, the Complainant has proved to the Panel's satisfaction that ALSAN is currently being used by the Complainant to identify and commercialize a specific product, and that it has no literal meaning nor has it a sexual or any other kind of connotation.
In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent in all likelihood was aware or must have been aware of the Complainant's trademark before registering the disputed domain name , which evidences bad faith registration.
On the other hand, the Complainant has proved to the Panel's satisfaction that the disputed domain name resolves the website “www.”, which is used by the Respondent for providing pornographic goods or services on a pay-per-click basis.
Such use of the Complainant's trademark ALSAN is far from a good faith use. The exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy (L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
Moreover, as stated by the Complainant and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online websites, by creating a likelihood of confusion with the Complainant's trademark.
Accordingly, the Respondent's inclusion of advertising links for pornography on the website hosted at the disputed domain name potentially creates the false impression that the Complainant might have endorsed content of that nature. Regardless of whether Internet users would know that the Complainant and its trademark are not connected with pornography, the Respondent has used the Complainant's trademark to attract unwitting Internet users.
Furthermore, this use of the Complainant's trademark ALSAN as a domain name offering pornographic material certainly tarnishes the Complainant's existing trademark, business and reputation, which also evidences the Respondent's registration and use of the disputed domain name in bad faith.
For these reasons, the Panel finds that the Respondent both registered and uses the disputed domain name in bad faith, and that the Complainant has therefore satisfied the third requirement of (4)(a) 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 disputed domain name be transferred to the Complainant.
Miguel B. O'Farrell
Sole Panelist
Date: August 10, 2010
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