The Complainant is Toluna SAS of Levallois-Perret, France, represented by Cabinet Moutard, France.
The Respondent is Rampe Purda of Hailuoto, Finland; UKTOLUNA.COM Privacy -- P of Shanghai, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2011. On January 5, 2011, the Center transmitted by email to Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiD. a request for registrar verification in connection with the Disputed Domain Name. On January 10, 2011, Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiD. 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 January 10, 2011 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 January 12, 2011.
On January 10, 2011, the Center transmitted an email to the parties in both English and Finnish regarding the language of the proceeding. On January 12, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amendment to 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 on January 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 7, 2011.
The Center appointed Jacques de Werra as the sole panelist in this matter on February 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. 4. Factual Background
The Complainant is a French company offering services in the fields of surveys and polls. It is the owner of various trademarks containing the terms TOLUNA, including the following trademarks (the “Trademark”):
-French trademark TOLUNA N° 99 826 860 filed on December 3, 1999 and registered on May 5, 2000 in classes 9, 38, 41 and 42.
-Community trademark TOLUNA N° 005172473 filed on June 16, 2006 and registered on April 27, 2007 in classes 9, 35, 38, 41 and 42.
The Complainant also operates various domain names including the TOLUNA term including and .
The Disputed Domain Name was registered on August 25, 2009. It is used as a landing page in the course of a domain name parking program which points - among others - to survey sites which compete with the services offered by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant first claims that the Disputed Domain Name is very similar to the Trademark given that the reproduction of the distinctive term “toluna” together with the mention “uk” which means United Kingdom of Great Britain and Northern Ireland creates very strong visual, phonetic and conceptual similarities with the Trademark.
The Complainant further alleges that the Respondent has no right or legitimate interest in respect of the Disputed Domain Name because there is no use nor any preparations to use it with a bona fide offering of goods or services, because the Respondent has not been commonly known by the Disputed Domain Name and because the Respondent is making illegitimate commercial and non-fair uses of the Disputed Domain Name through a pay-per-click system.
The Complainant finally claims that when registering and using the Disputed Domain Name, the Respondent has intentionally attempted to attract for commercial gain and Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s Trademark because consumers of average attention think that the Complainant has approved or is the source of the registration and use of the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Language of the proceeding
Paragraph 11 of the Rules provides:
“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.”
In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding subject to the Panel's discretion to decide otherwise, having regard to the circumstances of the case. The Panel's discretion must be exercised in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time, and costs. It is important that the language finally chosen by the Panel for the proceeding is not prejudicial to the parties in their ability to articulate the arguments for the case. International Data Group, Inc. v. Lingjun,WIPO Case No. D2004-0398.
In this case, the Panel notes that the registration agreement relating to the Disputed Domain Name is in Finnish. However, the Complainant claims that English shall be the language of the proceeding because the Disputed Domain Name is used in English and in French, because Finnish people (and more generally Scandinavian people) have a very good level of English and finally because of the excessive time and costs resulting from the translation of the documents into Finnish.
The Panel notes in this respect that the Respondent who has not responded in these proceedings has not alleged at any time during the proceedings that it would not have been in a position to understand English and that it did not understand the content of the Complaint which was filed in English.
The Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding. 7. Discussion and Findings A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to the Trademark in various countries and specifically in Finland (via a Community Trademark) which is the country where the Respondent is located.
The Panel also notes that the Trademark has a certain degree of distinctiveness, which is not disputed by the Respondent.
A comparison between the Disputed Domain Name and the Trademark shows the Disputed Domain Name contains the geographic abbreviation “uk” which has been added to the Complainant's Trademark. It is well established that a domain name consisting of a trademark combined with a geographic term can remain confusingly similar to the trademark at issue. See e.g. Red Bull Gmbh v. Tony Marinelli,WIPO Case No. D2001-0522, relating to the domain names , and , where the panel finding was that “the combination of a trademark with a geographical name is common practice for many domain names […[ and does not exclude confusing similarity”; Inter-IKEA v. Polanski,WIPO Case No. D2000-1614, relating to the domain name ; Wal-Mart stores Inc v. Walmarket Canada,WIPO Case No. D2000-0150, relating to the domain name .
The confusion is even more likely in this case given that the Complainant operates websites in some countries by adding its Trademark to the name of the relevant country (e.g. ).
Consequently, the addition of the geographic identifier “uk” to the term “toluna” in the Disputed Domain Name does not prevent the finding of confusing similarity between the Disputed Domain Name and the Trademark owned by the Complainant, but rather contributes to create confusion between them.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the conditions of paragraph 4(a)(i) of the Policy are met. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant may do so by establishing a prima facie case that the Respondent lacks rights or legitimate interests. The Respondent does not bear the burden of proof, but may establish a right or legitimate interest in the Disputed Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy:
(i) that before any notice to the Respondent of the dispute, it used or made demonstrable preparations 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; or
(ii) that the Respondent is commonly known by the Disputed Domain Name, even if it has not acquired any trademark or service mark rights; or
(iii) that the Respondent intends to make a legitimate, non commercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, the Complainant has established that the Respondent has no connection or affiliation with the Complainant, who has not licensed or otherwise authorized the Respondent to use the Complainant's Trademark.
The Panel also notes that the use of the Disputed Domain Name in the framework of domain name parking programs does not create a right or legitimate interest of the Respondent on the Disputed Domain Name under paragraph 4(c) of the Policy.
The Panel further acknowledges that the Respondent is not commonly known by the Disputed Domain Name.
Given that the Respondent has not filed a Response in these proceedings, it has not alleged any facts or elements which would potentially justify its rights and/or legitimate interests in the Disputed Domain Name.
On this basis, the Panel finds that Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Respondent has not established any rights to or any legitimate interests in the Disputed Domain Name.
Accordingly, the Panel finds that the Complainant has satisfied the condition set forth under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Disputed Domain Name 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 the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent's website or location or of a product or service on the holder's website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the Disputed Domain Name has been registered and is being used in bad faith by the Respondent.
Considering the undisputed distinctiveness of the Complainant's Trademark and in the absence of contrary evidence, the Panel finds that the Respondent had actual knowledge of the Complainant's Trademark when the Disputed Domain Name was registered.
In addition, the Respondent's use of the Disputed Domain Name in connection with a parking site providing for commercial ads and sponsored links some of which are competing with the services offered by the Complainant constitute a bad faith use of the Disputed Domain Name. See, e.g., Compart AG v. C / Vertical Axis, Inc.,WIPO Case No. D2009-0462.
The Respondent has furthermore neither rejected the Complainant's assertions of bad faith, nor provided any justification for the registration of the Disputed Domain Name or substantiated or at least alleged any right or legitimate interest to the Disputed Domain Name which could give rise to a good faith registration and use of the Disputed Domain Name.
Considering the foregoing, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy are satisfied. 8. 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.
Jacques de Werra
Sole Panelist
Dated: February 22, 2011
Full & Egal Universal Law Academy