The Complainant is Nexity S.A. of Paris, France, represented by De Gaulle Fleurance & Associés, France.
The Respondent is Richard J. of California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2011. On March 31, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2011, eNom. 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 on April 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2011.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on May 9, 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 in this proceeding is NEXITY S.A., a corporation organized under the laws of France. The Complainant is a fully integrated real estate group. The Complainant has registered and uses several trademarks comprised of the NEXITY name, (the “NEXITY Marks” or “NEXITY Mark”) in connection with real estate, property sales, construction, building lease, housing, accommodation, lodging and more generally for use in all areas of real estate. The Complainant is present throughout France and in other European countries. The Complainant’s activities include housing and accommodation estate particularly for individuals and its turnover in 2010 was 2.7 billion Euros.
The Complainant has registered the NEXITY Marks in France and as a Community Trademark. The French registration for the NEXITY trademark was granted on July 14, 2000.
Copies of extracts of registration for the Community and French trademark registrations were provided with the Complaint.
The disputed domain name was registered on November 12, 2004. 5. Parties’ Contentions A. Complainant
The Complainant claims that:
1) The NEXITY Mark is renowned in France;
2) The Respondent had full knowledge at the time of registration of the disputed domain name of Complainant’s trademark;
3) The Respondent has previously abused French trademark owners;
4) Respondent has used the disputed domain name to redirect users to competitive websites through a pay-per-click program.
5) The Respondent Richard J. is a usual respondent in WIPO UDRP cases and that in all the previous cases concerning the Respondent, the panel has ordered the transfer of the disputed domain name, considering the bad faith of the Respondent;
6) The disputed domain name is confusingly similar to the Complainant’s NEXITY trademark and to the Complainant’s domain name .
7) The Respondent is not authorized by the Complainant to use the Complainant’s mark NEXITY in his domain name, nor is the Respondent commonly known by the disputed domain name or any term incorporated therein;
8) The Respondent has no rights or legitimate interests in the disputed domain name;
9) The Respondent has no connection or affiliation with the Complainant;
10) The Respondent’s lack of the indication of his full name should be considered as an inference of bad faith.
The Complainant requests that the Panel issue a decision 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 A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark NEXITY registered, among other products, for “accommodation services’’.
This Panel considers that the addition of the descriptive term “logement” to a trademark registered and used also in connection with accommodation services i.e. “logement” in French, is not sufficient to avoid confusing similarity. On the contrary, this combination can increase confusion to the Internet consumers looking for “logement” offered by the Complainant.
Supporting this, is for example, Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna,WIPO Case No. D2010-0988, where the panel wrote that:
“It is long established by past panel decisions that a domain name incorporating a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is confusingly similar to the trademark. (e.g., Bayerische Motoren Werke AG v. , WIPO Case No. D2002-0615; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing,WIPO Case No. D2010-0746; Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144).
The suffix incorporated in the disputed domain name is a descriptive word which is not distinctive. Used in conjunction with the NEXITY trademark further aggravates the likelihood of confusion (see Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521).”
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. 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. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a 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, he or she 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 he or she has not acquired any trademark rights; or
iii) that the respondent intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised the Respondent to use or apply for any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known as ”nexitylogement” or by a similar name, and it has not alleged any facts to justify any rights and/or legitimate interests in the disputed domain name. The Respondent does not appear to make any legitimate use of the disputed domain name for noncommercial activities. Finally, the Respondent has not replied to the Complaint, and has not proven nor alleged in any other way any right or legitimate interest in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied 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 holder has registered or has acquired the 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 that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the holder has registered the 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 holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.
(Policy, paragraph 4(b)).
Accordingly, for a complainant to succeed, the panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Considering: a) the Complainant’s trademark and its use on the Internet through the domain names , , , , and ;
b) the Respondent’s use of the disputed domain name to redirect users to competitive websites through a pay-per-click program; c) the fact that the Respondent has already been involved in at least eight UDRP cases, where the panels found that he had registered and used the domain names in bad faith; d) that the surname and postal address of the Respondent are not indicated in the WhoIs of the disputed domain name; and e) in the absence of contrary evidence, the Panel finds:
1) that the Respondent had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name;
2) that the above described use of the disputed domain name, i.e., to redirect users to websites, where pay-per-click advertisements for the Complainant’s direct and indirect competitors are displayed is inference of bad faith use. In this sense see Grosbill S.A. v. Richard J.,WIPO Case No. D2006-1254 finding that: “Even if it was not the intention of the Respondent to promote goods which directly compete with those of the Complainant, it is nevertheless clear that the disputed domain name was chosen to attract web traffic for the purposes of commercial gain by creating a likelihood of confusion with the Complainant’s mark”.
3) that deliberate steps to conceal true identity constitute bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, finding bad faith where the respondent has taken deliberate steps to ensure that its true identity cannot be determined); and
4) that in the absence of any rebuttal by the Respondent of the Complainant’s claims, or any other indication in the case file, the Panel accepts as true the Complainant’s claims.
Accordingly, the Panel finds on the basis of the evidence presented that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Fabrizio Bedarida
Sole Panelist
Dated: May 20, 2011
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