Complainant is LeWeb SAS of Issy Les Moulineaux, France, represented internally.
Respondent is Satoshi Shimoshita of Tokyo, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2011. On September 27, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On September 27, 2011, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 30, 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 October 3, 2011. In accordance with the Rules, paragraph (a), the due date for Response was October 23, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 24, 2011.
The Center appointed Roberto Bianchi as the sole panelist in this matter on October 31, 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.
On November 9, 2011, the Respondent communicated with the Center via email. 4. Factual Background
Complainant is a French société par actions simplifiée à associè unique (a company with only one shareholder) based in Issy Les Moulineaux. The company was constituted and registered in January 2000 with the Registre du Commerce et des Sociétés. According to an excerpt of information available at the Tribunal de Commerce of Nanterre and obtained on August 17, 2011, the activities of the company are as follows: organization of workshops, seminars, conferences, congresses, production of films and videos, publication of books and periodical publications, exploitation of systems or equipment in the Internet, telecommunications, computing, and media in general, etc. According to this printout, the company commenced its activity on January 14, 2000. Its “nom commercial” (trade name) is “LE WEB”.
Presently, the LeWeb conference organized by Complainant is one of Europe’s most important technology conferences.
Complainant owns the following French trademark registrations:
leweb2 , Reg No. 3455696, Date of Application and Registration October 9, 2006, covering equipment for computing and software of International Class 9, telecommunications of International Class 38, and organization of expositions with a cultural or educational purpose of International Class 41, and creation of software of International Class 42.
leweb3 , Reg. No. 3520120, Date of Application and Registration August 16, 2007, covering advertising, organization of expositions, etc. of International Class 35, telecommunications of International Class 38, and organization of expositions with a cultural or educational purpose of International Class 41
LeWeb, Reg. No. 3616113, Date of Application and Registration December 5, 2008, covering advertising, organization of expositions, etc. of International Class 35, telecommunications of International Class 38, and organization of expositions with a cultural or educational purpose of International Class 41
The disputed domain name was registered on August 23, 2002.
On November 13, 2011 the Panel visited the “www.” website at the disputed domain name showing a web page on which the following text was displayed: “Thank You. Congratulations. You have been selected in the region of Buenos Aires to participate in our annual enquiry of visitors. It will take you only 30 minutes and will improve your experience as a user. After completing the enquiry you will have the chance to get a Macbook Air, an iPhone 4 of Apple or an iPad.2. Begin Now.” 5. Parties’ Contentions A. Complainant
In its Complaint, Complainant contends as follows:
Complainant owns the LEWEB French trademark. Since 2004, Complainants have produced the LeWeb conference in France, Europe’s largest and most significant technology conference. In 2010, the conference attracted over 3,000 people from over 60 countries. There were over 50 sponsors and exhibitors at the conference, including representatives from Google and Facebook.
Complainant has spent substantial time and financial resources in building goodwill in the LEWEB brand. Respondent’s domain name is identical and confusingly similar to the trademark in which Complainant has rights. The disputed domain name contains Complainant’s entire LEWEB mark and only differs by the addition of the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent has no registered trademark in a LEWEB or LEWEB.COM trademark in any jurisdiction. Respondent’s only use of the trademark is in connection with his website, which only capitalizes on the goodwill Complainant continues to develop in the French LEWEB marks. Respondent has not established any rights in the LEWEB or LEWEB.COM marks either through use or through registration in a recognized jurisdiction. Respondent uses the disputed domain name as a parked website, offering pay-per-click links in competition with Complainant’s business. This does not constitute a bona fide offering of goods or services under Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy, paragraph 4(c)(iii).
The disputed domain name was registered and is being used in bad faith. Respondent is a notorious cybersquatter. He has been named as a respondent in at least four domain name disputes and has lost at least three times, oftentimes not even choosing to submit responses defending his use of the trademarks of others. Respondent uses the disputed domain name to display links which, when clicked, redirect Internet users to websites offering goods and services in competition with Complainant. This is a disruption of Complainant’s business and evidence of bad faith registration and use under Policy, paragraph 4(b)(iii). Respondent uses the disputed domain name in an attempt to confuse Internet users who, when reaching Respondent’s website, are likely to misunderstand a connection between Complainant’s website and Respondent’s website. Respondent likely profits from this when Internet users click-through the links displayed at Respondent’s page. This activity constitutes bad faith registration and use pursuant to Policy, paragraph 4(b)(iv).
Complainant has received numerous complaints from attendees to the LeWeb conference that when they search for information regarding the LeWeb conference, they are directed to Respondent’s “www.” website, which has no purpose other than to capitalize on the goodwill associated with Complainant’s mark. B. Respondent
Respondent is formally in default as he did not reply to Complainant’s contentions timely.
In an email received by the Center on November 9, 2011 Respondent states inter alia, ”[this] domain is mine until 2002 after I registered”, presumably meaning that he owns the disputed domain name since 2002. Respondent adds that Complainant owns the domain name since 2008, six years after Respondent registered the disputed domain name. Finally, Respondent says that the present action by the Complainant is reverse domain name hijacking.
Because Respondent’s late submission does not comply with the minimum requisites of a response, the Panel will not consider it. However the Panel at the section on bad faith has considered the date of registration of the disputed domain name and found that the requisite of registration in bad faith is not met. 6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As seen at “Factual Background” above, Complainant has shown that it owns French registrations for the LEWEB, LEWEB.COM, LEWEB2 and LEWEB3 marks. Accordingly, the Panel is satisfied that Complainant has rights in such marks. Since the disputed domain name fully incorporates the LEWEB trademark, with the only addition of the “.com” gTLD, the Panel concludes that the disputed domain name is identical or confusingly similar to Complainant's LEWEB marks. B. Rights or Legitimate Interests
Given the Panel finding on bad faith below, the Panel need not consider the issue of rights or legitimate interests in the disputed domain name. See Tufco Technologies, Inc., Tufco LP, Hamco Manufacturing and Distributing LLC v. Hamco Alabama, LLC,WIPO Case No. D2011-1451 (“The [p]anel declines to rule on this element of the Policy, since the [p]anel finds (below) that the [d]omain [n]ame was not registered and is not being used in bad faith”); see also Creative Curb v. Edgetec International Pty. Ltd., NAF Claim No. 116765 (finding that because complainant must prove all three elements under the Policy, complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary). C. Registered and Used in Bad Faith
There is wide consensus among panels that a finding of domain name registration in bad faith requires that such registration be made with complainant’s mark in mind. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at 3.1 (“Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired? Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date ..., when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”)
In the instant case there is no evidence showing that Respondent knew or should have known of the LeWeb conference or of Complainant’s LEWEB marks on August 23, 2002, the date of registration of the disputed domain name.
On the one hand, the first application of Complainant for a LEWEB mark registration was made on October 9, 2006, over four years after the registration of the disputed domain name. Thus, Complainant cannot rely on a trademark registration to establish a domain name registration in bad faith. Nor has Complainant established that by August 2002, before it applied for registration of the first LeWeb mark, it had already acquired and enjoyed rights equivalent to a common law or de facto mark in the “LeWeb” expression. While Complainant since its constitution and registration as a commercial company in 2000 may have intended to pursue its activities under the “Le Web” trade name – see “Factual Background” above – it does not allege or, much less, prove that Complainant’s activities were in fact conducted under the “Le Web” trade name before 2002, and that such use of this name was sufficiently extensive and intense so as to allow a panel to infer that Respondent knew or should have known of Complainant’s LEWEB mark protecting any products or services by August 23, 2002.
On the other hand, according to the Complaint, Complainant began producing the LeWeb conference in France in 2004, two years after the registration of the disputed domain name. Moreover, Complainant has submitted as an annex to the Complaint an article published on June 10, 2010 in The Economist, stating that when Mr. L. Le Meur (Complainant’s President) started the LeWeb conference in 2005, three years after the domain name registration, it was attended by few technologists. From this one can infer that even three years after the registration of the disputed domain name there appeared to be no reason for Respondent to have heard of a LeWeb conference or of a LEWEB mark.
Finally, the use of the disputed domain name at the “www.” website as shown by the Panel visit conducted on November 13, 2011 – See “Factual Background” above - or by Complainant in its Complaint does not allow the Panel to infer that Respondent was aware of Complainant at the time of the domain name registration.
Since Complainant has failed to prove that the registration of the disputed domain name was made contemplating Complainant’s LEWEB mark, i.e. in bad faith, the third requirement of the Policy is not met. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied.
Roberto Bianchi
Sole Panelist
Dated: November 14, 2011
Full & Egal Universal Law Academy