The Complainant is Car&Boat Media of Paris, France, represented by Casalonga Avocats, France.
The Respondent is Wiam Zouhair of Clermont Ferrand, France, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2012. On December 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed two amended Complaints on December 21, 2012.
On January 3, 2013, the Respondent transmitted Pre-Commencement materials by email to the Center.
The Center verified that the Complaint together with the amended Complaints 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 January 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response January 28, 2013. The Response was filed with the Center on January 28, 2013.
On February 18, 2013, the Complainant transmitted a Supplemental Filing by email to the Center, and the Respondent replied on the same date.
In accordance with the Rules, paragraphs 10 and 12, the Panel decides, in its sole discretion, to not admit the further Supplemental Filing transmitted by the Parties.
The Center appointed Christophe Caron, David Taylor and Michael A.R. Bernasconi as panelists in this matter on February 26, 2013. The Panel finds that it was properly constituted. Each member of 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, CAR&BOAT Media, developed a presence on the Internet and is the owner of several domain names which contain the term “la centrale”. It exploits an Internet website at the domain name dedicated to selling second-hand cars.
The Complainant is the owner of the following trademarks, notably composed of the term “la centrale”:
- Community trademark LA CENTRALE No. 1919182, filed on October 24, 2000 in international classes 16, 35, 36, 38, 41 and 42;
- French trademark LA CENTRALE No. 3036751, filed on June 23, 2000, in international classes 16, 35, 36, 38, 41, 42 and 45;
- French trademark LA CENTRALE DES PARTICULIERS No. 3038915, filed on July 5, 2000 in international classes 35, 38, 41, 42 and 45;
- French trademark LA CENTRALE DES PARTICULIERS No. 1624078, filed on July 6, 1990 in international classes 16, 35, 36, 41 and 42.
The disputed domain name was created on July 15, 2009 and registered by the Respondent on or about April 1, 2010.
The disputed domain name is used for a website entirely in French and dedicated to selling second-hand cars in Morocco. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions and arguments.
The Complainant argues that the Complaint is based on the trademarks LA CENTRALE and LA CENTRALE DES PARTICULIERS.
The Complainant adds that it is also the owner of numerous domain names composed with the term “la centrale” dedicated to advertising regarding cars and boats.
The Complainant notes that the disputed domain name is composed of the same key words – specifically “la centrale” – as the Complainant’s trademarks. In this regard, according to the Complainant, the disputed domain name is confusingly similar to the Complainant’s trademarks.
Moreover, the Complainant produces decisions of French courts which have held that its trademarks were infringed by third parties. Moreover, the Complainant adds that the French Supreme Court held on November 6, 2007 that the trademarks LA CENTRALE and LA CENTRALE DES PARTICULIERS are distinctive and well-known.
The Complainant argues further that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent is not commonly known by the disputed domain name, whereas the Complainant has a long-standing and wide-spread association with the key term “la centrale” in the disputed domain name.
The Complainant insists on the renown and the reputation of its trademarks LA CENTRALE and LA CENTRALE DES PARTICULIERS. According to the Complainant, the Respondent could not have independently come up with the French expression “la centrale des voitures” by coincidence and likewise could not ignore the reputation of the trademark LA CENTRALE when the disputed domain name was registered. In this regard, an opinion poll is mentioned by the Complainant that demonstrates, according to the Complainant, the well-known character of its trademarks.
In addition, according to the Complainant, the Respondent knew of the Complainant’s reputation since the Respondent provides a direct link to the Complainant’s website “www.”. Moreover, the Respondent is domiciled in France.
Moreover, the Complainant states that the Respondent is not making a noncommercial or fair use of the disputed domain name because the disputed domain name is directed to the French market: the website is entirely in French, the title mentioned on each page is “Centrale occasion – acheter une voiture- vendre mon auto”, the term “la centrale” is used as metas for the purpose of referencing the website under the searches with “la centrale”, etc. So consumers might think they are going to a website genuinely associated with the Complainant.
In addition, the Complainant argues that the Respondent is generating revenue via advertised links and services through the disputed domain name. According to the Complainant, such practice is not a legitimate noncommercial or fair use of the disputed domain name.
The Complainant adds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because the Respondent is using the Complainant’s trademark LA CENTRALE in relation to its website dedicated to facilitating used car sales, the service offered by the Complainant. The aim is thus to take advantage of the reputation of the Complainant’s trademark.
Finally, the Complainant argues that the disputed domain name was registered and is being used in bad faith.
According to the Complainant, the Respondent’s bad faith at the time of registration is obvious in its provision of a United State post office box address for the disputed domain name’s registration. Consequently, the Respondent was concealing its identity. Moreover, the Respondent could not ignore the Complainant’s rights when she registered the disputed domain name.
The Complainant notes that the services offered by the Respondent are exactly the same as the services offered by the Complainant. According to the Complainant, the Respondent’s exploitation of the disputed domain name in this way was therefore doubtless made in bad faith in an attempt to attract, for commercial gain, Internet users to the Respondent’s website. In the same way, the Respondent’s use of the Complainant’s trademark intentionally disrupts the Complainant’s business.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent makes the following submissions and arguments.
According to the Respondent, “la centrale des voitures” is a generic term. Moreover, the trademarks registered by the Complainant (LA CENTRALE and LA CENTRALE DES PARTICULIERS) are registered in France, whereas the disputed domain name targets the Moroccan market. The Respondent adds that the disputed domain name has not been changed in “.ma” because there was “no reason why”.
The Respondent states that the “business logo” of “lacentraledesvoitures” is not identical or confusingly similar to the “business logo” of the trademark LA CENTRALE.
The Respondent argues further that she has rights or legitimate interests in respect of the disputed domain name for the following reasons:
- The Complainant’s websites, particularly , are not popular in Morocco.
- The opinion poll that has been conducted by the Complainant to highlight the well-known character of the trademark LA CENTRALE targeted the Paris region, which the Complainant omitted to specify in the Complaint.
- The Complainant hasn’t registered any trademarks in Morocco either.
- The Respondent’s website doesn’t provide any direct links to the Complainant website “www.” as claimed by the Complainant. The supposed link is an ad and it appears in the ads zone because of Google ads system. In this regard, the Respondent gives more explanation on how the Google smart ads system works.
Moreover, according to the Respondent, the Complainant is using false and unsubstantiated pieces of information to show up that the Respondent would like to connect to its trademarks on the French market. The Respondent’s website only targets the Moroccan market. The website is in French because it is more practical in most cases especially for technical content. Moreover, Morocco is a former French colony so French is a largely used language in Morocco. The Respondent states that the website does not aim at competing with the Complainant websites as regarding the statistics of visits of the website.
The Respondent argues further that the website doesn’t make car sellers or buyers pay for the service she provides.
Finally, the Respondent states that the disputed domain name has not been registered and is not used in bad faith.
In this regard, the Respondent argues that she used the private WhoIs to avoid spam, ads and different proposals that she received several times during the period in which the WhoIs information was public.
The Respondent explains that her website has a good reputation in Morocco. She states that 16.13 % of the website visitors “come using the direct link, with no use of the search engines”.
The Respondent concludes that the Complainant is trying to take advantage of the Respondent’s good reputation website and uses mostly unsubstantiated and false pieces of information. Consequently, she asks the Panel to make a finding of reverse domain name hijacking, in accordance with the Rules, paragraph 15(e). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of several trademark registrations using the term “la centrale”:
- Community trademark LA CENTRALE No. 1919182, filed on October 24, 2000 in international classes 16, 35, 36, 38, 41 and 42;
- French trademark LA CENTRALE No. 3036751, filed on June 23, 2000, in international classes 16, 35, 36, 38, 41, 42 and 45;
- French trademark LA CENTRALE DES PARTICULIERS No. 3038915, filed on July 5, 2000 in international classes 35, 38, 41, 42 and 45;
- French trademark LA CENTRALE DES PARTICULIERS No. 1624078, filed on July 6, 1990 in international classes 16, 35, 36, 41 and 42.
The disputed domain name reproduces the Complainant’s trademark LA CENTRALE. Indeed, the disputed domain name is composed of the key term “la centrale” associated with the term “voiture”, which means “car” in French, that directly refers to the Complainant’s website activity, i.e. selling cars.
Moreover, the disputed domain name has the same structure as the trademark LA CENTRALE DES PARTICULIERS.
The Panel finds that the addition of the terms “des voitures” in the disputed domain name has no impact in the likelihood of confusion (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The likelihood of confusion is accentuated by the notoriety of the trademarks LA CENTRALE and LA CENTRALE DES PARTICULIERS.
The addition of the term “des voitures” in the disputed domain name, which is descriptive, leads the public to believe that the Complainant is the owner of the disputed domain name.
Moreover, the fact that the Complainant has no rights in Morocco is irrelevant for the purposes of the first element of the UDRP (see WIPO Overview 2.0, paragraph 1.1).
The Panel therefore finds that the disputed domain name is confusingly similar to the registered trademarks in which the Complainant has rights. The requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial 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.”
The Panel states that the Respondent Wiam Zouhair does not appear to have been commonly known by the disputed domain name, is not a licensee or an agent of the Complainant, nor in any way authorized to use the Complainant’s trademarks.
The Complainant has prior rights in the trademarks which precede the registration of the disputed domain name.
There is no legitimate interest to use the term “la centrale” that is not a generic term in the sector of cars renting and selling.
Moreover, the Respondent is making a commercial use of its website (via advertising).
The Panel notes that the services offered by the Respondent are identical to the services offered by the Complainant, so it is difficult to consider that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. The Respondent is using the term “la centrale” in association with a website designated to facilitate car sales, i.e. a service the Complainant is well-known for. Consequently, Internet users might think that they are going to a website associated with the Complainant.
For all of those reasons, the Panel considers that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights or legitimate interests in the disputed domain name. Hence, the Panel finds, also in light of the Panel’s findings below, that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative, but are expressly non-exclusive, are:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The trademarks LA CENTRALE and LA CENTRALE DES PARTICULIERS can be considered as distinctive and well-known trademarks in France. The notoriety of the website of the Complainant “www.” could not have been ignored by the Respondent at the time of the registration of the disputed domain name, since the Respondent appears to live in France.
Consequently, the choice of the Respondent is not a coincidence because she could not have ignored the reputation of the trademarks LA CENTRALE and LA CENTRALE DES PARTICULIERS when the disputed domain name was registered, especially in the same business sector.
In addition, on the website at the disputed domain name, a link is provided to the Complainant’s website. That link shows that the Respondent is attempting to make Internet users think there is an affiliation with the Complainant’s website. It is a further indication of the use of the disputed domain name in bad faith.
Moreover, the services offered by the Respondent are exactly the same as the services offered by the Complainant. The Respondent is using the Complainant’s trademark LA CENTRALE in relation to its website at the disputed domain name dedicated to facilitating second-hand car sales, i.e. the same service offered by the Complainant.
Consequently, Internet users could believe that the website is owned by the Complainant. It creates a likelihood of confusion with the Complainant’s website. The Panel considers that it aims at taking advantage of the reputation of the Complainant’s trademarks.
The Respondent’s exploitation of the disputed domain name could be considered as a way to attract, for commercial gain, Internet users on her website.
For all these reasons, it appears that the disputed domain name has been registered and is being used in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is made out. 7. Decision
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel states that:
- The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name.
- The disputed domain name has been registered and is being used in bad faith.
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.
Christophe Caron
Presiding Panelist
David Taylor
Panelist
Michael A.R. Bernasconi
Panelist
Date: March 18, 2013
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