The Complainant is EASYVOYAGE of Paris, France represented by SCP Duclos Thorne, Mollet-Viéville & Associés, France.
The Respondent is Dingmeo of Ha Noi, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with NetEarth One Inc. d/b/a NetEarth (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2012. On October 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 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 October 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2012.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on November 12, 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. 4. Factual Background
The Complainant is an editorial portal website devoted to travel and tourism. It owns several trademarks consisting in part of the element “easyvoyage”, such as:
- The French trademark EASYVOYAGE – (n° 3018181), registered under classes 16, 35, 36, 38, 39, 41 and 42 of the Nice Classification with a priority date as of March 30, 2000.
- The combined Community Trademark EASYVOYAGE (n° 005773932), registered under classes 9, 16, 35, 38, 39, 41, 42 and 43 of the Nice Classification with a priority date as of March 20, 2007.
On October 14, 2008, the Respondent registered the disputed domain name , which is currently linked to a website where the Respondent offers travel services in relation to travels and tours in Viet Nam.
On February 15, 2011, the Complainant, acting through its legal representative, sent an email to the Respondent, drawing its attention upon the numerous domain names it held as well as upon its registered trademarks. The Complainant requested the Respondent to transfer the domain name in its favor within a week.
On February 26, 2011, the Respondent responded that the domain name had been registered to offer travel services in Viet Nam, did not infringe upon any Vietnamese laws, all the more than several similar domain names offering similar services such as “easytravelvietnam”, “easyvietnamtravel” or “easyvietnamtour” co-existed on the market.
On September 7, 2012, the Complainant, acting through its legal counsel, sent a cease and desist letter to the Respondent. In this letter, the Complainant considers French law to apply, as the disputed domain name and attached website can be accessed to from France. It adds that the alternatives referred to in the Respondent’s email of 26 February 2011 are of no avail, as these domain names do not contain the Complainant’s trademark as the one chosen by the Respondent. As a result, the Complainant requested the Respondent to transfer the disputed domain name in its favor within a week at no cost. The Respondent did not respond. 5. Parties’ Contentions A. Complainant
The Complainant contends that its EASYVOYAGE trademark results from the “non-usual combination of the English term EASY and the French term VOYAGE, which is quite attractive and distinctive”. Owing to substantial use, the trademark would enjoy a wide reputation, at least in the French public’s mind. The disputed domain name entirely contains the Complainant’s trademark, to which the descriptive term “vietnam” has been added. As a result, the public would be likely to believe that the services offered under the disputed domain name would originate from the Complainant or a company affiliated to it.
The Complainant then affirms that the Respondent would have no right or legitimate interest in the domain name. Respondent would not use the domain name in connection with a bona fide offering of services, would not be commonly known under this domain name and would not be making any legitimate noncommercial or fair use of the domain name.
The Complainant finally considers that the disputed domain name has been registered and is being used in bad faith. The Respondent would clearly have been aware of the Complainant’s trademark when it registered the disputed domain name in 2008. The fact that the website associated with the disputed domain name would relate to competing services would “[…] clearly manifest an intent of the Respondent to commercially benefit from the ensuing confusion of Internet users”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “…decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of several trademarks consisting in whole or in part of the word “easyvoyage”.
In its Complaint, the Complainant asserts the combination of the words “easy” and “voyage” to be unusual. While the Panel does not necessarily agree with such assertion, it is not up to a UDRP panel to appraise the distinctiveness of a registered trademark, which has to be considered as validly registered for the purpose of these proceedings.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
This is all the more true when the added elements are merely descriptive. Such happens to be the case here. The addition of a geographical term such as “vietnam” is merely descriptive and does not exclude the likelihood of confusion (see paragraph 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition [“WIPO Overview 2.0”]. See, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd,WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363).
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview 2.0).
In accordance with paragraph 4.6 of WIPO Overview 2.0, a respondent's default does however not automatically result in a decision in favor of the complainant. Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. As stated by the here above mentioned paragraph, “[t]here are many examples of cases (typically involving complaints based on wholly unsupported assertions or mere conclusory statements) to which there has been no response where (not withstanding such respondent default) the decision has nonetheless gone in favor of the respondent on grounds that the complainant has failed to prove its case”.
In the present case, the Panel is of the opinion that, based upon the file in its hand, the Complainant did not establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. While the Complainant argues that the Respondent does not use the disputed domain name in connection with a bona fide offering of services, such an allegation cannot suffice to be considered in itself as evidence that would need to be rebutted by the Respondent if the file at hand proves otherwise. In the present case, the Panel finds such an assertion to be unpersuasive based upon the website’s content. The Respondent appears to offer different circuit and tours in Viet Nam under the disputed domain name, and contains several testimonies from customers which refer to their unique experience with the operator. Absent any further explanations and evidence, the Panel finds it hard to consider that the Respondent would have no legitimate interest in the disputed domain name, that to the contrary appears to be used in connection with a bona fide offering of goods and services in relation with travels and tours in Viet Nam.
It is worth pointing out that the cases referred to by the Complainant in its Complaint prove unpersuasive. In Chip Merchant, Inc. v. Blue Star Elec.,WIPO Case No. D2000-0474, both parties were living in California, and the complainant had sent to the respondent a letter objecting to respondent’s use of the concerned terms less than a year prior to the registration of the disputed domain name, which excluded any potential legitimate interests. In Ticketmaster Corp. v. DiscoverNet, Inc.,WIPO Case No. D2001-0252, both parties were living in the United States and the panel had ruled that the complainant had demonstrated to enjoy substantial reputation and recognition in the United States. The fact that the respondent’s website was “under construction” and offered for sale also made it completely different from the present case. The same goes with regards to Nike, Inc. v. Dias, NAF Claim No. 135016, where the respondent, living in the United States as the complainant, could not ignore the NIKE trademark considering its well-known character.
All these circumstances are absent from the present case, where the parties are located in different jurisdictions. The Complainant does not prove or even allege that it carries out activities in Viet Nam. It has also never informed the Respondent upon the existence of its trademark prior to the registration of the disputed domain name and the offering of bona fide services under the disputed domain name. All in all, none of the cases referred to by the Complainant thus appears to be relevant.
As a result, the Panel considers paragraph 4(a)(ii) of the Policy not to be fulfilled. C. Registered and Used in Bad Faith
While the Panel’s finding under the second element proves sufficient to deny the Complaint, the Panel finds it worth briefly assessing the third element.
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the respondent to be aware of the complainant’s trademarks. In the present case, the Panel finds it hard to come to such a conclusion considering, in the Panel’s view, the relatively weak character of the words “easy” and “voyage” chosen by the Complainant, which to a large extent merely describes its activities. The Complainant does not appear to have any activity in Viet Nam and does not prove or provide any factual circumstances that would enable the Panel to come to the conclusion that the Respondent would have been aware of the Complainant’s trademark when it registered the disputed domain name.
As a result, the Panel considers paragraph 4(a)(iii) of the Policy not to be fulfilled either. 7. Decision
For the foregoing reasons, the Complaint is denied.
Philippe Gilliéron
Sole Panelist
Dated: November 26, 2012
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