Complainant is Lagardere SCA of Paris, France, represented by Markplus International, France.
Respondent is Telecom Tech Corp. of Panama City, Panama, / PrivacyP of,Moergestel, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Bargin Register Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2010. On December 29, 2010, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the disputed domain name. Reminders were sent on January 4, January 6, January 7, and January 10. On January 10, 2011, Bargin Register Inc. 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 Complainant on January 18, 2011 providing the registrant and contact information disclosed by Bargin Register Inc., and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 25, 2011.
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 Respondent of the Complaint, and the proceedings commenced on January 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 16, 2011.
The Center appointed Eduardo Machado as the sole panelist in this matter on February 25, 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. 4. Factual Background
Complainant, Lagardere SCA, is one of the world’s leading companies in the media sector. Complainant is currently the second world editor, the largest editor of magazines in the world and the first editor in Europe. The annual revenue of Complianant exceeds EUR 7 billion.
Complainant’s main activities are in the editing domain, and most of them are carried out under or by reference to its trademark HACHETTE, in France and in other countries. Further, Lagardere SCA is the owner of several subsidiaries whose names incorporate the trademark HACHETTE, notably Hachette Filipacchi Medias, Hachette-livre, Hachette-Education and Hachette Editions Ventures. Furthermore, Hachette-Livre founded its origins in 1826 and has been trading under the name “Hachette” since that date.
Complainant is the owner of numerous registrations for the trademark HACHETTE all over the world and filed before the date of registration of the disputed domain name, that is March 25, 2010.
Complainant is also the registrant of the following domain names including the HACHETTE trademark:
5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name incorporates Complainant’s trademark HACHETTE in its entirety, and combines it with the word “edition”. Complainant contends that the addition of the word “edition” does not permit to create a substantial difference between the trademark HACHETTE and the disputed domain name because of the following:
- the trademark HACHETTE in the disputed domain name is in the first position;
- the separation between the two words “Hachette” and “edition” by “-“ highlights the trademark HACHETTE;
- the word “edition” is generic, as well as the extension “.com”;
- furthermore, “edition” is one of the main services covered by the trademark HACHETTE.
Complainant supports that there is a likelihood of confusion between the disputed domain name and Complainant’s trademark HACHETTE because of the visual, phonetical and intellectual similarities, and that this is strongly stressed by the fact that HACHETTE is a worldwide well-known trademark. The public will clearly perceive the trademark HACHETTE in the disputed domain name, and therefore, it is obvious that the disputed domain name is an imitation of the famous trademark HACHETTE.
Complainant sustains that Respondent has neither rights nor legitimate interests in respect of the disputed domain name, that it is not the owner of any trademark that includes the word “Hachette”, and still uses the trademark without any agreement of Complainant, which owns rights in the trademark HACHETTE. Complainant alleges that Respondent refers directly to the famous HACHETTE trademark in the disputed domain name, but Respondent does not have any kind of link with Complainant.
Complainant alleges that Respondent knew and could not ignore Complainant’s trademark HACHETTE when it registered the disputed domain name because the trademark is well-known all over the world.
Complainant informs the word “Hachette” is a family name (the name of the founder of the company). The word “edition” is a French and an English word which means “publishing, edition, editing” (Collins Robert French Dictionnary). Consequently, no one would legitimately choose the word “Hachette” in association with the word “edition”, which describes the principal service of the well-known trademark HACHETTE, unless seeking to create an impression of an association with this trademark. Complainant alleges that it is inconceivable that Respondent would not be aware of the famous trademark HACHETTE at the time of registration of the disputed domain name. By virtue of the wide spread use and reputation of the trademark HACHETTE, Internet users would believe that the entity owning the disputed domain name is Complainant or in some way associated with Complainant.
Complainant alleges that Respondent creates intentionally a likelihood of confusion, attempts to attract Internet Users and makes the public think that the website at the disputed domain name is registered by the legitimate owner of the trademark HACHETTE.
Complainant alleges that Respondent is using the well-known trademark HACHETTE in the disputed domain name to direct Internet users to a parking page offering goods and services in competition with those of the real owner of the trademark HACHETTE. This calculated confusion brings commercial gains to Respondent.
Complainant alleges that it is not possible to conceive a plausible circumstance in which Respondent could legitimately use the disputed domain name.
Complainant further alleges that Respondent has decided to register the disputed domain name through PrivacyP to prevent any direct claims. Complainant concludes that it is obvious that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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, Policy, paragraph 4(a). A. Identical or Confusingly Similar
The Panel finds that Complainant’s registered HACHETTE trademark is well-known in its field of activity and has a strong reputation in many countries. The Panel finds that the disputed domain name is confusingly similar to Complainant’s HACHETTE trademark. The only difference between Complainant’s registered trademark and the disputed domain name is the addition of a hyphen and the generic term “edition”.
The Panel finds that the difference pointed above is not enough to characterize the disputed domain name as being distinct from Complainant’s registered trademark. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd.,WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”).
The Panel, therefore, finds that Complainant has established the first condition of the paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Taking into consideration of the below and the fact that Respondent has failed to respond to the Complaint, the Panel finds that Respondent lacks rights and legitimates interests in the disputed domain name.
Complainant has made a prima facie case in support of its allegations and, due to this, Respondent carries the burden of demonstrating that it does have rights or legitimates interests in the disputed domain name according to paragraph 4(a) (ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
At the time the Complaint was filed, the disputed domain name directed Internet users to a parking page offering goods and services in competition with Complainant. The Panel finds that this is not a bona fide offering of goods and services.
Accordingly, in view of the above, the Panel finds that Complainant has established the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s 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 site or of a product or service offered on the respondent’s site. Policy, paragraph 4(b)(iv).
The Panel finds that Respondent registered the disputed domain name in bad faith.
Respondent has intentionally registered the disputed domain name which totally reproduces Complainant’s well-known trademark HACHETTE. By the time the disputed domain name was registered, it is unlikely that Respondent did not have knowledge of Complainant’s rights in the trademark HACHETTE.
Complainant’s allegations of bad faith are not contested. The evidence provided by Complainant confirm that it had long been using its HACHETTE registered trademark when the disputed domain name was registered. Moreover, Complainant submitted consistent evidence that its trademark is well-known. The Panel finds that Respondent must have been aware of Complainant’s rights in the mark and, further, that Respondent had Complainant’s trademark in mind when it registered the disputed domain name.
Also, under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”, Policy, paragraph 4(b)(iv). Respondent used Complainant’s well-known trademark to attract users to a parking page offering goods and services in competition with Complainant. This is evidence of the intention by Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
In light of the above, the Panel finds that Complainant has established the third element of paragraph 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 domain name be transferred to Complainant.
Eduardo Machado
Sole Panelist
Dated: March 11, 2011
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