Complainant is Caviar Volga of Neuilly sur Seine, France, represented by Pro.Mark, France.
Respondent is Blankert Consultancy BV of Teteringen, the Netherlands. 2. The Domain Names and Registrar
The disputed domain names and are registered with Key-Systems GmbH dba . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2010. On December 14, 2010, the Center transmitted by email to Key-Systems GmbH dba a request for registrar verification in connection with the disputed domain names. On December 14, 2010, Key-Systems GmbH dba transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 15, 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 amendment to the Complaint on December 17, 2010.
On December 15, 2010, the Center issued a Language of Proceeding notification, inviting comments from the parties. Complainant submitted a request that English be the language of the proceeding on December 17, 2010. Respondent on the same date requested the Center to proceed in Dutch. On December 20, 2010, the Center notified the parties in Dutch and English of its preliminary decision to 1) accept the Complaint as filed in English and 2) accept a Response in either Dutch or English.
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 December 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2011. The Response was filed with the Center on January 9, 2011.
On January 14, 2010, Complainant submitted a Supplemental Filing. On the same day and the day thereafter, Respondent submitted a total of three Supplemental Filings. On January 17, 2011, the Center acknowledged receipt of all Supplemental Filings.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on January 17, 2011. 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.
As the Complaint was not filed in the language of the Registration Agreement and in the absence of a formal agreement between parties on the language of the administrative proceeding, the Panel shall decide on the language of the administrative proceeding, having regard to the circumstances of the administrative proceeding. Indeed, paragraph 11(a) of the Rules reads: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Panel is satisfied that both parties speak and write English. Based on the evidence adduced before the Panel, the Panel finds Respondent to be proficient in the English language. Apart from its communication of December 17, 2010, Respondent, although indicating to keep its right to write in Dutch, only used the English language in written communications with both Complainant and the Center. Accordingly, this Panel finds that these elements show that Respondent has a sufficient understanding of English.
Accordingly, the use of the English language in the proceedings would not be prejudicial to the interests of Respondent, whereas it would be a disadvantage for Complainant to be forced to translate the Complaint. Therefore, the Panel decides to use the English language in the present proceedings (See e.g., Credit Agricole S.A. v. Dick Weisz, WIPO Case No. D2010-1683, according to which, where a respondent shows to be able to understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even though it is different to the language of the Registration Agreement; The Dow Chemical Company v. Hwang Yiyi,WIPO Case No. D2008-1276, decision according to which, where a respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even though it is different to the language of the Registration Agreement). 4. Factual Background
Complainant, Caviar Volga, is a French company, specialized in the commercialization of luxury products, such as caviar or salmon.
Complainant shows to be the holder of inter alia the following registered trademark:
- CAVIAR VOLGA, registered with the French Institute of Intellectual Property under number 99768068 on January 8, 1999 in classes 29 and 43 to designate “caviar; restaurants”, and duly renewed;
Complainant also owns a restaurant in Paris, which operates under the name La maison du caviar. On February 12, 2007, Complainant filed an application for the Community trademark LA MAISON DU CAVIAR MC, with application number 5680616 in classes 29, 35 and 43, but opposition was filed by a third party to the proceedings. At the date of this decision appeal proceedings initiated by the third party in question were still pending.
The disputed domain name was registered on July 8, 2010, and the disputed domain name was registered on August 30, 2010, with Key-Systems GmbH dba . The disputed domain name is used for a website of online caviar selling. The disputed domain name is not actively used by Respondent but refers to the website linked to the domain name , where domain name registration services, webhosting and service hosting activities are advertized. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain names to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain names. Finally, Complainant considers that the disputed domain names were registered and are being used in bad faith.
In its additional submission, Complainant argues that Respondent’s bad faith is obvious, since Respondent does not use “maisoncaviar” as generic words, but as a legal entity and therefore attempts to create a likelihood of confusion with the commercial website of Complainant’s restaurant La Maison du Caviar. B. Respondent
Respondent did not submit a formal response to the Complaint in accordance with paragraph 5(b) of the Rules. However, Respondent expressed its position in its Response of January 9, 2011, and (additional) emails addressed to the Center. According to Respondent, Complainant’s trademark rights would only grant Complainant protection in France and with regard to domain names in the “.fr” ccTLD. Respondent argues that it registered domain names composed of generic terms. Finally, Respondent suggested that Complainant could try to buy the disputed domain name with caviar or exchange another domain name held by Complainant for that domain name. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to 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.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the disputed domain names. The standard of proof in this administrative proceeding is the balance of probabilities.
Thus for Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain names; and
3. The disputed domain names have been registered and are being used in bad faith.
The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
Complainant must first establish that there is a trademark or service mark in which it has rights. Since Complainant is the holder of the trademark CAVIAR VOLGA, which is used in connection with caviar and restaurants, it is clearly established that there is a trademark in which Complainant has rights.
Complainant also claims to be the holder of the trademark LA MAISON DU CAVIAR MC and the trade name of its restaurant, La maison du caviar. The Panel notes that Complainant does not prove to be the holder of a registered trademark LA MAISON DU CAVIAR MC, but that Complainant has already filed a trademark application for this trademark. The Panel finds that although the LA MAISON DU CAVIAR MC mark is not a registered trademark, Complainant nevertheless has rights in the trademark LA MAISON DU CAVIAR. This is achieved through extensive usage of the LA MAISON DU CAVIAR trademark by Complainant that resulted in significant media attention for Complainant’s restaurant, as evidenced by Complainant in the Annexes to the Complaint. Several panels under the Policy have decided that the Policy affords protection not only to those having rights in registered trademarks but also to those having unregistered rights – that can also can arise even when the complainant is based in a civil law jurisdiction – in their trade or service marks. See the answer to question 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. See further Skype Limited v. Xiaochu Li,WIPO Case No. D2005-0996; Bennett Coleman & Co Ltd v. Steven S. Lalwani,WIPO Case No. D2000-0014; SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs,WIPO Case No. D2000-0131; Cedar Trade Associates, Inc. v. Gregg Ricks, NAF Claim No. 93633 and Passion Group Inc. v Usearch Inc., AF-0250. As such, the Panel finds that Complainant has rights in the LA MAISON DU CAVIAR trademark for purposes of the Policy.
With regard to the disputed domain name , the Panel considers the only difference between the disputed domain name and Complainant’s CAVIAR VOLGA trademark to be the order of the words, which are inversed in the disputed domain name. According to the Panel, all distinctive elements of Complainant’s trademark are taken up in the disputed domain name. The Panel considers the inversion of the distinctive elements of Complainant’s trademark insufficient to avoid confusing similarity, as such minor modifications to a trademark do not diminish in any significant way the likelihood of confusion between the disputed domain name and Complainant’s trademark.
With regard to the disputed domain name , the Panel considers the only difference between the disputed domain name and Complainant’s LA MAISON DU CAVIAR trademark, the omission of the French articles “la” and “du”. According to the Panel, all distinctive elements of Complainant’s trademark are taken up in the disputed domain name. The Panel considers the omission of the French articles “la” and “du” of Complainant’s trademark insufficient to avoid confusing similarity, as such minor modifications to a trademark do not diminish in any significant way the likelihood of confusion between the disputed domain name and Complainant’s trademark (See e.g., Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768 and Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281).
Accordingly, for both disputed domain names, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain names.
It is established case law that it is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the disputed domain names in order to place the burden of rebuttal on Respondent. (See Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434; Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not acquired trademark or service mark rights corresponding to the disputed domain names. Respondent’s registration of the disputed domain names was not authorized by Complainant. There are no indications that a connection between Respondent and Complainant exists.
With regard to the disputed domain name , the Panel notes that Respondent has not been commonly known by this disputed domain name. Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name . In fact, Respondent is not making any use of the disputed domain names at all. According to the Panel, the passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (See American Home Products Corporation vs. Ben Malgioglio,WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci,WIPO Case No. D2000-1244; Paws, Inc. v. , NAF Claim No. 97328; Victoria’s Secret et al v This Domain Name For Sale, NAF Claim No. 96486).
With regard to the disputed domain name , the Panel is of the opinion that Respondent tries to create the impression on the website accessible through this domain name that it operates as a legal entity, registered in the Netherlands under the name Maison Caviar. However, there appears to be no such legal entity in the Netherlands and the registration number to which reference is made on the website is the registration number of the Respondent, Blankert Consultancy B.V. As a result, the Panel is of the opinion that Respondent is not commonly known by Maison Caviar, nor by the disputed domain name (thereby taking into account that Respondent did not allege, nor provided proof of such).
Respondent claims to be an online supplier of caviar, and that it therefore has a legitimate interest in the disputed domain name , which is composed of generic terms. On the website accessible through the disputed domain name , it is claimed that caviar can be ordered and links are provided to websites of suppliers of caviar. However, most links refer to websites that either are an almost exact copy of the website accessible through or are parking pages with commercial links. According to the Panel, this raises questions about the veracity of the information on the website under the above-mentioned disputed domain name. Therefore, in the Panel’s view, the information on the website per se is insufficient to prove a legitimate interest in the disputed domain name. Without compelling evidence that Respondent is a true online supplier of caviar, the only use of the disputed domain name would be to divert traffic to third party websites. In such case, Respondent presumably receives referral fees of some sort for the placement of these advertisements on the corresponding website. Such use would not constitute a bona fide use or a legitimate noncommercial use, as contemplated by the Policy. (See e.g.: Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; McLaughlin Gormley King Company v. BWI Domains c/o Domain Manager, NAF Claim No. 1230837; Stunt Dynamics c/o John Zimmerman v. BWI Domains c/o Domain Manager, NAF Claim No. 1226425 and MacKenzie-Childs Aurora LLC v. BWI Domain Manager c/o Domain Manager, NAF Claim No. 1218043). In the instant case, Respondent fails to provide any evidence that it would actually be selling caviar. If Respondent were to be selling caviar and used Maison Caviar as a trade name for this, it could easily have provided evidence of this. Since Respondent fails to provide such evidence, the Panel opines that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name
Furthermore, in its Response of January 9, 2011, Respondent made a suggestion for a possible solution of the dispute. Respondent suggested that Complainant should try to find out whether it could buy the disputed domain names. According to the Panel, given the circumstances of this case, such offer can neither be considered to be a bona fide offering of goods and services pursuant to Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii).
In light of the above, the Panel is of the opinion that Respondent cannot reasonable claim any rights or legitimate interests in the disputed domain names and . The Panel therefore finds Complainant has satisfied the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that they are being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may be evidence of bad faith. Among these factors demonstrating bad faith are the registration or acquisition of domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name, the registration of domain names primarily for the purpose of disrupting the business of a competitor and the use of domain names for intentionally attempting to attract, for commercial gain, Internet users to a website or other online 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 or location or of a product or service on the website or location.
1. Bad Faith Registration
According to the Panel, the awareness of a respondent of the complainant and/or the complainant’s trademark rights at the time of registration can evidence bad faith in certain circumstances. (See BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
In the instant case, Respondent most likely had knowledge of Complainant’s rights in the LA MAISON DU CAVIAR and the CAVIAR VOLGA trademarks at the moment it registered the disputed domain name, since Complainant’s continuously used both trademarks in commerce for over 50 years. This, in combination with the fact that Respondent registered two domain names that are confusingly similar to the trademarks of Complainant, makes it conceivable that Respondent had knowledge of Complainant’s LA MAISON DU CAVIAR and CAVIAR VOLGA trademarks. According to the Panel, it is inconceivable that Respondent came up with both disputed domain names by itself.
Therefore, it is established that the disputed domain names were registered in bad faith.
2. Bad Faith Use
In the instant case, Respondent is passively holding one of the disputed domain names, namely . The passive holding of a domain name can constitute bad faith use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, the concealment of identity, etc. (See e.g., Telstra Corporation Limited, supra; Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763).
With regard to the disputed domain name , the Panel notes that links are provided to competitors of Complainant. The Panel finds that, by using the disputed domain name for a set of links to other providers of caviar, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s LA MAISON DU CAVIAR trademark as to source, sponsorship and affiliation of the website (See GasBuddy Organization, Inc. v. Whois Protection Service LLC,WIPO Case No. D2009-0607). This is further bolstered by the composition of the domain name itself which incorporates the main elements of Complainant’s trademark. Therefore, Internet users are likely to get the idea that Respondent’s website at the disputed domain name is an official website of Complainant, sponsored by Complainant, or affiliated with Complainant. Such likelihood of confusion would in all likelihood attract more customers to the website under the disputed domain name resulting in commercial gain as Respondent’s website provides links to numerous commercial websites (See GasBuddy Organization, Inc., supra).
Therefore, the Panel finds that Respondent is clearly using a confusingly similar domain name intentionally to attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s trademark, in accordance with paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Apart from the passive holding of one of the disputed domain names, and the use of the confusing similarity of the other domain name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s trademark, the file shows that Respondent intended to somehow benefit financially from the disputed domain names. Respondent suggested that Complainant should try to find out whether it could buy the disputed domain names. According to the Panel this cannot be considered to be genuine use of the disputed domain names and is further evidence that Respondent must have registered the disputed domain names primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registrations to Complainant for valuable consideration in excess of out-of pocket costs (See Nike, Inc. v. Farrukh Zia,WIPO Case No. D2000-0167; Skype Limited, supra).
As a result, it is established that both disputed domain names have not only been registered, but are also used in bad faith. 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 names and be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Dated: January 31, 2011
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