The Complainant is Société d'Exploitation de la Tour Eiffel (SETE) of Paris, France, represented by Selarl Kahn et Associés, France.
The Respondent is Mr. Philip Law of Kowlong Bay, Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2012. On October 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 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 November 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2012. An informal Response was filed with the Center on November 26, 2012.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on December 7, 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 Société d’Exploitation de la Tour Eiffel (SETE), the Complainant, is in charge of the management of the Eiffel Tower, for a period running from January 1, 2006 to December 31, 2015. In connection with the management of the Eiffel Tower, the Complainant makes use of following trademarks in which it has an exclusive license:
- TOUR EIFFEL, French word trademark registered with the INPI under number 1310358 on May 24, 1985, in classes 3, 4, 5, 8, 10, 11, 13, 14, 16, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 38, 39 and 41 and duly renewed;
- LA TOUR EIFFEL, French semi-figurative trademark registered with the INPI under number 94548883 on December 13, 1994, in classes 1 to 45 and duly renewed;
The disputed domain name was created on December 12, 2000 and is registered by the Respondent. The disputed domain name has been linked to a website displaying images of the Eiffel Tower and references to Paris, France and on which handbags were advertised. 5. Parties’ Contentions A. Complainant
The Complainant considers the disputed domain name to be confusingly similar to trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not used the disputed domain name in connection with a bona fide offering of services or a legitimate noncommercial use, as the Respondent would be advertising with commercial intent goods infringing the Complainant’s trademarks. Also, the Respondent has not been commonly known by the disputed domain name and failed to respond to the Complainant’s requests to cease the use of the disputed domain name, according to the Complainant. Finally, the Complainant considers that the disputed domain name was registered and being used in bad faith. B. Respondent
The Respondent claims that it did not receive any previous documents, as he moved from his old offices. The Respondent further claims to be using the disputed domain name for his business of selling handbags and asks to release the domain name as it would be interrupting his business. Finally, the Respondent claims he would be happy to consider an offer to sell the domain name. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name 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 disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a TOUR EIFFEL trademark in which the Complainant has rights. The trademark has been registered and used, including in countries that the Respondent seems to target with the website that is linked to the disputed domain name.
The Panel considers the disputed domain name to be composed of a name identical to the TOUR EIFFEL trademark and the non-distinctive generic terms “la” (which is a definite article in French (“the”)). The Panel is of the opinion that the mere addition of non-distinctive term such as “la” to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software; International Business Machines Corporation v. Scott banner,WIPO Case No. D2008-0965, where the domain name was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by the Complainant; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org. and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the addition of the words “mail”, “post”, “fan” and “top50” to the word “pokemon” in the domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word “pokemon”; Nintendo of America Inc. v. Gray West International,WIPO Case No. D2000-1219, where it was held that the addition of the word “games” in the domain name does nothing to reduce its confusing similarity with Nintendo’s POKÉMON marks; Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helios Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark PORSCHE).
Accordingly, the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Previous UDRP decisions establish that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that the Respondent has not been commonly known by the disputed domain name and that the Respondent has not acquired trademark or service mark rights incorporating such name. The Respondent’s use and registration of the disputed domain name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed or exists.
The Panel also finds that the Respondent is not making 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 or service mark at issue, Policy, paragraph 4(c)(iii).
The Respondent is using the disputed domain name to advertise for his business in handbags and hence making “commercial gain” through the website linked to the disputed domain name. That “commercial gain” appears to be based on the misleading diversion of some consumers, to the extent they navigate to the “www.” website because they believe it is associated with the Complainant. The likelihood that Internet users are misled is increased by the content of the website, containing images of the Eiffel Tower. The Panel opines that the Respondent’s use of the disputed domain name cannot be considered fair on the specific facts of this case, and as such demonstrates the Respondent’s lack of rights or legitimate interests. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (see e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use are the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with a complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location and the registration or acquisition of 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 a respondent’s documented out-of-pocket costs directly related to the domain name.
In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the disputed domain name. It is apparent from the website that was linked to the disputed domain name, which contained images of the Eiffel Tower that the Respondent is familiar with the Complainant and its trademarks. Therefore, it is inconceivable that the Respondent was unaware of the Complainant’s rights in the TOUR EIFFEL trademark.
Furthermore, without authorization, the Respondent is using the main and distinctive elements of the Complainant’s trademark for advertising his own products and hence making commercial gain. The Respondent is using the repute of the Complainant’s trademark to intentionally attract Internet users to visit his website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the web site or location and of the products offered for sale on the website.
Furthermore, the Respondent considers that the lock on the disputed domain name is disrupting his business and states that it would consider an offer to buy the disputed domain name. As the lock on the disputed domain name has no immediate influence on the working of the website linked to the disputed domain name, the fact that the Respondent wants the lock immediately removed together with the statement that it would consider an offer to buy the disputed domain name can be seen as a further indication that the Respondent primarily registered or acquired the disputed domain name for the purpose of selling it to the Complainant for valuable consideration in excess of its out-of-pocket costs directly related to the disputed domain name.
Therefore, in view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used in bad faith. 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.
Flip Jan Claude Petillion
Sole Panelist
Date: December 26, 2012
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