The Complainant is Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry, Succession Saint Exupéry-d’Agay, Saint Raphaël, France, represented by Mr. Hervé Grünig, Grünig & Binimelis Asociados, Spain.
The Respondent is Il piccolo principe di laurora rossella Ditta Individuale, Rovato, Italy. 2. The Domain Name And Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2011. On the same day, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On September 6, 2011, Tucows Inc. 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 September 12, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2011. The Response was filed with the Center on September 29, 2011.
On September 30, 2011, the Center asked the Complainant to confirm whether the proceedings shall be suspended for the parties to reach a settlement or whether the Center shall proceed. On October 4, 2011 the Complainant confirmed that the Center shall proceed. On the same day, the administrative proceeding was suspended until November 3, 2011. On October 4, 2011, the Complainant reiterated its request that the Center proceed with the case specifying that no suspension was requested. As a consequence, the proceedings were re-instituted by email of October 5, 2011.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on October 20, 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 the owner and manager of the intellectual property rights in Antoine de Saint Exupéry's work. Antoine de Saint Exupéry is the author of the novel "Le Petit Prince" (in Italian "Il Piccolo Principe"), which was published in 1943 and is known worldwide. The Complainant has registered the trademark "Le Petit Prince" in many countries worldwide and is using it for several derived goods, including goods destined to children.
On July 19, 2008, the Respondent registered the domain name . Under this website, a toy shop in Rovato, which is owned by the Respondent, is presented.
Those facts are not contested by the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the domain name is confusingly similar to its trademark LE PETIT PRINCE. The domain name is a translation of the trademark and is visually and phonetically similar. The novel "Le Petit Prince" is well known in Italy as "Il Piccolo Principe".
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has no connection or affiliation with the Respondent and did not authorize it to use the trademark LE PETIT PRINCE or the disputed domain name. The disputed domain name is different from the name under which the Respondent is registered in Italy, namely "Il piccolo principe di Laurora Rossella". The Respondent is not known under the name "Il Piccolo Principe", but under the name "Laurora Rossella". Its business is limited to the city of Rovato and its surroundings. On the contrary, Antoine de Saint Exupéry's novel has a worldwide reputation. The Respondent has the intention to take advantage of the reputation of the Complainant's trademark in order to attract the Internet users to its website. In addition, the Respondent does not sell goods bearing the Complainant's trademark but only goods from other companies, including the Complainant's competitors. Such practice does not constitute a bona fide offering of goods or services.
The Complainant further alleges that the disputed domain name was registered and is being used in bad faith. The Complainant's trademark was registered before any registration or use of the disputed domain name. The Respondent knew or should have known the existence of the Complainant's trademark when it registered the disputed domain name. The registration was made with opportunistic bad faith. The Respondent's toy shop located in Rovato has merely a local influence. The use of the disputed domain name increases the number of visitors by attracting Internet users who know Antoine de Saint Exupéry's novel and expect, by typing the domain name , to be redirected to a website owned by the Complainant. In doing so, the Respondent gains potential new customers thanks to the sole confusion created. This is a typical case of initial interest confusion. It is not a coincidence if the Respondent uses the domain name to promote its shop where it sells articles for children, bearing in mind that "Le Petit Prince" is a famous book for children. In addition, the Respondent has deliberately increased the confusion by using sentences of the novel of Antoine de Saint Exupéry on its website.
The Complainant therefore requests the Panel that be transferred to the Complainant. B. Respondent
The Respondent declared that it "does not intend to defend" itself in the present proceeding and that it allows the Panel to cancel the domain name or to transfer it to whom the Panel assumes to be the owner. The Respondent simply added that "the claims and actions of [the present proceeding] are considered unlawful and groundless". 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the burden for the Complainant is to show that:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used by the Respondent in bad faith.
With regard to the second condition, the paragraph 4(c) of the Policy specifies that any of the following circumstances, shall demonstrate the existence of rights or legitimate interests to the domain name:
i. before any notice of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
iii. the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
For the purpose of the last condition, 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 (paragraph 4(b) of the Policy):
(i) circumstances indicating that the respondent 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 respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 it has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 its website or location or of a product or service on its website or location. A. Identical or Confusingly Similar
The novel "Le Petit Prince" of Antoine de Saint Exupery is known worldwide. Not only its title in French but also its title in Italian is very famous. People usually make a connection with this novel as soon as they hear the words "petit prince" or "piccolo principe". It is evident to the Panel that the Respondent also makes this connection when it uses sentences of the novel on its website. In addition, there is as visual and phonetic similarity between "Le Petit Prince" and "Il Piccolo Principe". It was already recognized in various decisions that a trademark and a domain name containing word elements of different languages have a semantic similarity when a considerable part of the public understands the meaning of the translation (see e.g. Compagnie Générale Des Etablissements Michelin – Michelin & Cie v. Graeme Foster,WIPO Case No. D2004-0279; Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties,WIPO Case No. D2005-1085). In the present case, it is clear that the main part of the Internet users will make an association with the Complainant's trademark LE PETIT PRINCE when typing in the disputed domain name. In addition, it has to be noted that a confusingly similarity between the Complainant's trademark and the domain name is not contested by the Respondent.
The Panel is therefore convinced that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
It is uncontested that the Complainant has no connection or affiliation with the Respondent and the latter was not authorized by the Complainant to use the trademark LE PETIT PRINCE or the disputed domain name. It is also uncontested and demonstrated that the domain name is different from the name under which the Respondent is registered in Italy, namely "Il piccolo principe di Laurora Rossella", where Laurora Rossella is the only element that could lead a client to think that maybe this company does not have anything to do with the famous novel. In addition, the Respondent does not contest the fact that it is not commonly known by the simple name "Il Piccolo Principe", as alleged by the Complainant.
It is also uncontested that the business of the Respondent is limited to the city of Rovato and its surroundings and it is clear from the sentences of Antoine de Saint Exupery's novel quoted on the Respondent's website that the Respondent, with the words "il piccolo principe", makes reference to the novel. The fact that in the Respondent's shops toys for children are sold is also a sign that the Respondent is using these terms to refer to the world-famous novel of Antoine de Saint Exupéry. In addition, the Respondent does not sell goods bearing the Complainant's trademark but only goods from other companies, including the Complainant's competitors. This practice does not constitute a bona fide offering of goods.
Finally, the Respondent does not bring any element demonstrating that it has aright or a legitimate interest in the disputed domain name.
This leads to the conclusion that by using the disputed domain name the Respondent has the intention to take advantage of the reputation of Complainant's trademark in order to attract the Internet users to its website. The Respondent has therefore no rights or legitimate interests in respect of the domain name. C. Registered and Used in Bad Faith
It is uncontested that Complainant's trademark was registered before any registration or use of the disputed domain name. Of course, Antoine de Saint Exupéry's novel was written long before. The Respondent knew or should have known the existence of the Complainant's trademark when it registered the disputed domain name. The Respondent's toy shop located in Rovato has merely a local influence whereas the Complainant's trademark is known worldwide. The use of the disputed domain name increases the number of visitors by attracting Internet users who know Antoine de Saint Exupéry's novel and expect, by typing the disputed domain name , to be redirected to a website owned by the Complainant. In doing so, the Respondent gains potential new customers thanks to the sole confusion created. In addition, the Respondent has played with the created confusion by using sentences of the Antoine de Saint Exupéry's novel on its website. Eventually, the Respondent does not contest the Complainant's allegation that its use of the domain name was made in bad faith.
The Panel is therefore convinced that the registration and the use of the disputed domain name was made in bad faith. D. Conclusion
As (a) the domain name in dispute is confusingly similar to the Complainant's trademark, (b) the Respondent has therefore no rights or legitimate interests in respect of the domain name and (c) the registration and the use of the domain name was made in bad faith, the Panel orders that the disputed domain name be transferred to the Complainant. The Panel notes that the Respondent also explicitly agreed to such a transfer. 7. Decision
For these 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 the Complainant.
Michael A.R. Bernasconi
Sole Panelist
Dated: November 3, 2011
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