The Complainant is Cortix of Merignac, France, represented by ACTION Avocats, France.
The Respondent is Lyubava Bogatchikova of Slavgorod, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “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 January 25, 2012. On January 25, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 25, 2012, the Registrar 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 January 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2012.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 22, 2012. 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.
It appears to the Panel that while some of the Written Notices in the case were in fact delivered to the Respondent, some may not have been. None of the Notification of Complaint emails seems to have got through to the Respondent. Nonetheless, the Panel has scrutinized the correspondence and is satisfied that the Center has discharged its responsibility to achieve actual notice to the Respondent as laid down in paragraph 2(a) of the Rules. 4. Factual Background
The Complainant is a French company engaged in the provision of services (including web-related services) to small businesses. It was incorporated in 1999. It has operating websites connected to its domain names which include , > and . The websites appear to be French and Spanish language websites.
The Complainant is the registered proprietor of French trade mark registration number 113833461 dated May 23, 2011, ELLIWEB (a figurative mark coloured red and blue) in classes 9, 16, 35, 38, 41, 42 and 45 for a wide variety of goods and services including telecommunications and web-related goods and services. The Complainant is also the registered proprietor of Spanish trade mark registration number 2998710 dated September 21, 2011, ELLIWEB (a figurative mark coloured red and blue) based on the French registration and for goods and services in many of the same classes.
The Respondent is based in the Russian Federation. The Domain Name was registered on March 30, 2011, and is connected to an English language pornographic website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to its ELLIWEB registered trade mark and that people will be led to believe that the parties are in some way related. The Complainant further contends that the Respondent has no rights or legitimate interest in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the name, “elliweb”, and the generic “.info” domain suffix.
The Complainant contends that the Domain Name is identical to the Complainant’s registered trade mark. That contention is misconceived. As can be seen from section 4 above, the Complainant’s registered trade mark is a figurative trade mark coloured red and blue.
However, the principal and most prominent element of the Complainant’s registered trade mark is the name “elliweb” (in lower case). It being permissible for the Panel to ignore the domain suffix when assessing identity and confusing similarity for the purpose of paragraph 4(a)(i) of the Policy, the Panel finds that the Domain Name is confusingly similar to the Complainant’s figurative trade mark. C. Rights or Legitimate Interests
The Complainant asserts that it has granted the Respondent no right to use the name “elliweb” for the Domain Name or for any other purpose and that to the best of its knowledge the Respondent has no rights in respect of the name “elliweb”.
While it is for the Complainant to prove all three elements of paragraph 4(a) of the Policy, the Complainant has fairly challenged the Respondent on the topic. Moreover, the Panel has examined the evidence produced by the Complainant as to the Respondent’s use of the Domain Name and can see nothing to indicate what the Respondent’s rights or legitimate interests in respect of the Domain Name might be. Certainly, on the evidence before the Panel, none of the elements of paragraph 4(c) of the Policy appears to the Panel to be applicable.
The Respondent has not seen fit to respond. In the circumstances the Panel finds on the balance of probabilities that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainant contends that “the only plausible purpose for the Respondent’s registration and use of the disputed domain name is to attract, for commercial gain, Internet users to its sexually explicit websites or other online pornographic locations, by creating a likelihood of confusion with the Complainant’s mark, ELLIWEB, as to the source, affiliation or endorsement of Respondent’s websites and services offered on those sites.”
In so contending, the Complainant is asserting, at the very least, that when the Respondent registered the Domain Name in March 2011 it was aware of the Complainant’s trade mark and was intending to take advantage of it. However, as can be seen from section 4 above, the Complainant’s trade mark registration is dated May 23, 2011. The Complainant’s trade mark registration was not in existence at the date of registration of the Domain Name.
Thus, to make good this claim, the Complainant must establish the existence of unregistered trade mark rights pre-dating registration of the Domain Name. What must a Complainant produce in the way of evidence to establish the existence of unregistered trade mark rights? This question is answered in paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which is to be found on the Center’s website. Paragraph 1.7 reads as follows:
“Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
The Complainant has produced nothing in the way of evidence to establish unregistered trade mark rights. The Complainant’s evidence contains no information on the nature and extent of its business; nothing in the way of sales figures; nothing in the way of advertising spend; and nothing to demonstrate any media recognition or third party recognition of any kind. Some of the documentation that the Complainant has produced has been in the French language. Notwithstanding that English is the language of this proceeding, the Panel has done his best to try and decipher whether any of the French language documents provide support of any kind for the existence of unregistered trade mark rights, but does not believe that they do.
The Complainant has produced a document certifying that the company was incorporated in 1999, but there is nothing before the Panel to establish when it actually commenced business. It claims to have a number of “elliweb” domain names, but the Panel has been given no information as to when they were registered. They may not have been registered until May 2011 when the Complainant registered its trade mark. The Panel simply does not know. The Complaint features screenshots of some of the Complainant’s webpages, but the Panel was unable to decipher any dates.
The Panel does not recognize the name “elliweb” as a dictionary word or anything approximating to a dictionary word, so it may perhaps be that the Respondent did in fact select the name because it had prior knowledge of the Complainant’s trade mark, but there is nothing about the Respondent’s use of the name to support that contention. The Panel would have found it easier to draw inferences favourable to the Complainant if the Respondent’s website had been a French language website, but it is not. The textual content of the site appears from the Complainant’s evidence to be entirely in the English language. Had the Complainant’s trade mark been a household name such as KODAK or COCA-COLA, then again it would have been easier for the Panel to draw those inferences.
The absence of a Response and in particular the absence of any explanation (or any obvious reason) as to why the Respondent selected the Domain Name for its pornographic website count against the Respondent. However, the absence of any evidence demonstrating the nature and scope of the Complainant’s business prior to registration of the Domain Name renders it, in the view of this Panel, virtually impossible for the Panel to conclude that in March 2011 when the Domain Name was registered, the Respondent was likely to have been aware that the Complainant was then in possession of French and/or Spanish trade mark rights in respect of the name, “elliweb”, and intended to take advantage of those rights as alleged. As indicated there is nothing before the Panel to indicate that any such rights existed at that date beyond the certificate demonstrating the existence of the Complainant in 1999 and various unsupported assertions to that effect in the Complaint.
The Complainant correctly observes that there have been myriad UDRP decisions in which the fact that the domain name in issue was connected to a pornographic website was found to be indicative of bad faith. However, connection of a domain name to a pornographic website cannot of itself be determinative of the issue. There has to be something there to indicate (a) that the Complainant’s trade mark rights were in existence at date of registration and (b) that the Respondent is likely to have been aware of those rights.
The Panel notes for the record that the Complaint makes no mention of the fact that the Complainant’s registered trade mark rights, the only rights expressly claimed by the Complainant, post-date registration of the Domain Name. 7. Decision
For the foregoing reasons the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: February 25, 2012
Full & Egal Universal Law Academy