The Complainant is Laboratoires Thea of Clermont Ferrand, France, represented by Hirsch & Associés, France.
The Respondent is DNS Administrator, Domain Spa, LLC of Livingston, New Jersey, United States of America, represented by Kenyon & Kenyon LLP, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2010. On July 9, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain names. On July 12, 2010, 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. 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 July 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response August 8, 2010. The Response was filed with the Center August 8, 2010.
The Center appointed John Swinson, William Lobelson and David E. Sorkin as panelists in this matter on September 3, 2010. The Panel finds that it was properly constituted. Each member of 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. Respondent
The Respondent listed in the Complaint is DNS Administrator of Livingston, New Jersey. This was verified by the registrar. However, in the Response, the Respondent refers to itself as Domain Spa, LLC of Livingston, New Jersey, United States. Given that both parties have the same contact details (including telephone, fax and email address), the Panel will treat and refer to both parties collectively as the Respondent. 5. Factual Background
The Complainant is an independent ophthalmic group in Europe. It specializes in the research, development and commercialization of ophthalmologic products across the world. The Complainant is the owner of numerous French trademarks including:
- trademark registration number 94 502 704 for THEA, filed on January 21, 1994; and
- trademark registration number 94 503 566 for LABORATOIRES THEA, filed on January 27, 1994.
The second named Respondent, Domain Spa, LLC is a limited liability based in the United States. The business combines the acquisition of domain names incorporating generic words and the subsequent commercial development of those domain names.
The first disputed domain name, , was registered on August 4, 1997 and the second disputed domain name, , was registered on March 15, 2001. Both disputed domain names show the same content that advertises adult dating services. 6. Parties’ Contentions A. Complainant
The Complainant makes the following submissions and arguments:
The Complainant is an independent ophthalmic group in Europe. Out of all laboratories, the Complainant is now ranked 6th in Europe and 8th worldwide.
The Complainant is the owner of numerous trademarks including:
- trademark registration number 94 502 704 for THEA, filed on January 21, 1994;
- trademark registration number 94 503 566 for LABORATOIRES THEA, filed on January 27, 1994;
- trademark registration number 3 082 124 for THEA PHARMA, filed on February 12, 2001;
- trademark registration number 7 656 28 for THEA PHARMA, filed on July 30, 2001;
- trademark registration number 3 012 250 for THEA, filed on March 7, 2000; and
- trademark registration number 99 788 457 for B12 THEA filed on April 23, 1999;
The Complainant is also the owner of numerous domain names including , and .
The disputed domain names are identical or confusingly similar in relation to trademarks in which the Complainant has rights. The Complainant’s trademark for THEA is entirely contained within each disputed domain name. The likelihood of confusion in relation to the Complainant’s other trademarks is the same, as the distinctive part of the trademarks, “Thea”, is reproduced. Consumers and Internet users could be led to believe that the disputed domain names belong to the Complainant.
The Complainant has not licensed the Respondent to use the THEA trademark or to apply for a domain name incorporating this trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
The disputed domain names were registered by the Respondent with the intention of creating a parking page with advertising links dedicated to adult dating. The purpose of the Respondent’s websites is therefore to take advantage of Internet users seeking the Complainant and to divert these users to a parking page generating revenue for the Respondent. See Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857 and IMAX Corporation v. Paul Walsh,WIPO Case No. D2010-0195.
All text appearing on the websites resolving from the disputed domain names is in English and French. Given the reputation of the Complainant’s trademarks in France, there is no doubt that the Respondent was aware of the existence of the trademarks when it registered the disputed domain names.
The disputed domain names portray content of an adult nature. All of the pages resolving from the disputed domain names are “a little erotic”, and interfere with the Complainant’s reputation.
When looking at the pages linked to the disputed domain names, which lead to parking pages, it is obvious that the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s bad faith is illustrated by the disputed domain names’ resolution to a parking page offering links to third parties’ websites for single adults. This does not constitute bona fide offering of goods or services or a legitimate noncommercial use of the disputed domain names under the Policy. B. Respondent
The Respondent makes the following submissions and arguments:
The Respondent registered the disputed domain names on the basis that “Thea” is the Greek word for goddess. The Complainant does not have exclusive rights to use the name “Thea”. A brief search of the United States Patent and Trademark Registry, Internet phonebooks and Google shows that numerous organizations use the name “Thea” as a mark or designation for their goods or services. A Google search of the word “Thea” results in 17 million hits, showing the prevalence of this term in other industries and contexts. No likelihood of confusion exists on the basis that consumers are well accustomed to seeing so many uses of “Thea” by numerous entities in a variety of contexts, and as a woman’s name.
It is irrelevant whether the Complainant has licensed the name “Thea” to anybody. “Thea” is a common generic name used frequently around the world, particularly in the United States where the Respondent is based. The Respondent has always used the disputed domain names for a legitimate use - paid directories of adult content. “Where the domain name and the trademark in question are generic . . . the rights/interests inquiry is more likely to favor the domain name owner” (Shirmax Retail Ltd./Détaillants Shirmax v. CES Marketing Group Inc., AF-0104).
For the content on the disputed domain names to tarnish the Complainant’s mark, the Complainant must show that the Respondent specifically has the Complainant’s trademark in mind when registering the disputed domain names. The Complainant cannot and has not provided any evidence to this effect. The Complainant attempts to distract the Panel by insinuating that any adult content is in itself an improper use of a domain name. Any claim that the Complainant’s use would be “more legitimate” is improper and insufficient to meet its burden.
In The Landmark Group v. DigiM, L.P., NAF Claim No. FA 285459 it was found that pay-per-click landing pages are legitimate if “the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks.” The Respondent again reiterates that it registered the disputed domain names on the basis of its meaning in Greek and to signify to Internet users that the websites are associated with goddesses and feminine beauty.
There is no evidence that the Respondent had actual or constructive knowledge of the Complainant. Therefore the use of the name “Thea” in no way shows bad faith. The only evidence of knowledge provided by the Complainant is in relation to the language of the text appearing on the Respondent’s websites. In fact, any foreign text is a direct result of the country the person is located in. For example, in Germany advertisements will appear in German, in France, advertisements will appear in French. The Complainant provides no further evidence to show that the Respondent knew of its existence, let alone targeted its trademarks when acquiring the disputed domain names.
The Respondent’s use of the disputed domain names to show advertising links for adult dating services is not evidence of bad faith. The UDRP does not impose values on the content of websites.
The Respondent’s use of the websites dedicated to adult dating services with targeted links is a legitimate and bona fide offering of goods and services. The Respondent has not and does not intend to infringe or free ride on the goodwill of any company’s trademark; this should be clear from the complete lack of any links or references to any ophtalmological goods or services on the Respondent’s websites.
While the Respondent does not attempt to raise the defense of laches; the Respondent believes that the unexplained 16 year delay in bring this Complaint should ensure the Complainant’s claims are subject to stringent examination. The Respondent further submits that a case of reverse domain hijacking should be found on the basis that the Complainant did not have sufficient proof that the Respondent lacked rights or legitimate interests in the disputed domain names or that the Respondent registered and used the disputed domain names in bad faith. 7. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
The Complainant is the owner of a registered trademark in France for THEA, as well as other trademarks incorporating the word “thea”. For the Complainant to succeed in this element, it must show that the disputed domain names are identical or confusingly similar to the Complainant’s trademark. It is well established that the suffix, “.com” or “.net” can be ignored for this purpose.
The disputed domain names reproduce the Complainant’s trademark for THEA in its entirety. The Panel therefore finds that the disputed domain names are confusingly similar to a registered trademark in which the Complainant has rights.
Accordingly, the first element has been met. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name. The Complainant must make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
The Panel finds that the Complainant has failed to establish that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant submitted that because the Respondent registered the disputed domain names with the intention of creating a parking page with pay-per-click links that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel disagrees. Pay-per-click landing pages hosted at a domain name can be a legitimate use of a domain name if the domain name was registered due to its attraction as common or generic word (see The Landmark Group, supra). The Panel accepts the Respondent’s explanation as to the reason behind the choice of the domain names as being entirely plausible when used in conjunction with an adult dating site.
The Complainant argues that the Respondent’s pay-per-click websites target users that are actually interested in the Complainant and divert these customers in the hope of generating revue from the pay-per-click advertisements. The Panel also disagrees with this assertion.
Pay-per-click parking pages which are “built” around a trademark do not satisfy paragraph 4(c)(iii) of the Policy: Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598.
However, that is not the situation here. There is no evidence that the Respondent is targeting the Complainant’s customers in anyway. The websites resolving from the disputed domain names do not refer to the Complainant, its competitors or offer similar goods or services to the Complainant.
It is quite plausible to believe that “Thea” is an appropriate name for a dating website, and in this case the Respondent’s websites are websites advertising third party dating services. The links on the websites at the disputed domain names support the Respondent’s submissions that the domain names were registered due to their descriptive value.
The disputed domain names were registered over ten years ago. The Complainant did not present evidence or make any compelling submission that the Respondent knew of the Complainant or the Complainant’s trademarks when the disputed domain names were registered.
On the facts of this case, the Panel finds that use by the Respondent of the disputed domain names amounts to a bona fide offering of goods or services. Contrast Budget Rent A Car System, Inc v. Admin, Domain,WIPO Case No. D2010-0149, citing Auer Lighting GmbH v. Domain Privacy LTD / The Tidewinds Group, Inc.,WIPO Case No. D2009-1622. See also Nexmedia Pte Ltd v. Domain Administrator, Heavy Lifting, LLC, WIPO Case No. D2010-0059.
Accordingly, the Complainant has not met the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Due to the above finding it is unnecessary to decide this element. D. Reverse domain name hijacking
The Respondent has asked that a finding of reverse domain name hijacking be made against the Complainant. While the Complainant has not succeeded in this case, the Panel is not prepared to find that its Complaint was unjustified. Although, some of the Complainant’s arguments may have been weak, the Complainant still produced an arguable case for each element of the Complaint, and the Complainant succeeded on the first element. The Panel finds that the Complaint was not brought in bad faith, and consequently there is no basis for finding the Complainant has engaged in reverse domain name hijacking. 8. Decision
For all the foregoing reasons, the Complaint is denied.
John Swinson
President Panelist
William Lobelson
Panelist
David E. Sorkin
Panelist
Dated: September 21, 2010
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