Complainant is Alpitour S.p.A. of Torino, Italy, represented by Studio Torta S.p.A., Italy.
Respondent is Jean Nordmann of Nice, France. 2. The Domain Name and Registrar
The disputed domain name is registered with TierraNet d/b/a DomainDiscover (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on February 14, 2013. On February 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent was listed as the registrant and providing the contact details for the disputed domain name.
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 Respondent of the Complaint, and the proceedings commenced on February 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2013. The Response was filed with the Center on March 7, 2013.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on March 20, 2013. 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.
Although the Registration Agreement is in the English language, the Response was filed in French. 4. Factual Background
Complainant is an Italian company operating in the field of package holidays. Complainant has registered trademark rights in the EASY BOOK mark, which it uses in connection with travel services. Complainant is the holder of inter alia the registered Italian figurative EASY BOOK trademark, used in connection with travel services, registered in 1987, with registration number 0001235944. Complainant also shows that it has applied for a Community Trademark containing the term “Easy Book”, which is currently subject of opposition.
The disputed domain name was registered on November 6, 1996, and is used by Respondent in connection with a website on which electronic books are offered. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, the disputed domain name refers to a blank page offering the domain name for sale in exchange for EUR 45,000. Complainant considers that Respondent registered the disputed domain name primarily for the purpose of selling it in exchange of an amount of money largely in excess of the out-of-pocket costs related to the registration of the disputed domain name. Complainant considers that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent contends that the disputed domain name has been used for 17 years without interruption. The disputed domain name is used for email purposes and a website on which electronic books are offered is linked to the disputed domain name. Respondent claims that this use of the disputed domain name is not competing with Complainant’s services. 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 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 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 Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Panel will therefore 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. Complainant has established that there is a trademark in which the Complainant has rights. The mark has been registered in Italy since 1987. Complainant claims to use its EASY BOOK trademark to target the large-scale consumer, both in Italy and in Europe and that this is the reason why Complainant filed for a community trademark. As stated above, the Panel notes that the Community figurative trademark is currently subject of an opposition.
The Panel considers the disputed domain name to be identical to Complainant’s EASY BOOK trademark. 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, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It has been established by previous UDRP panels that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the domain name in order to place the burden of production on 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; and Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not been commonly known by the disputed domain name and that Respondent has not acquired trademark or service mark rights in a name corresponding to the disputed domain name. Respondent’s registration and use of the disputed domain name was not authorized by Complainant. There are no indications in the record that a connection between Complainant and Respondent existed.
Nevertheless, the Panel notes that the disputed domain name is comprised of two dictionary words (“easy” and “book”) and that Respondent is using the disputed domain name to offer electronic books or e-books on the website linked to the disputed domain name. The website linked to the disputed domain name also contains a forum discussion page on which posts appear that predate the filing of the Complaint.
The use of a domain name that is linked to the generic or descriptive value of the domain name may be considered a fair and legitimate use. See, e.g., Landmark Group v. DigiM, L.P., NAF Claim No. 285459 (a legitimate interest, on the part of a respondent, in a disputed domain name may be found “[if] the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”); National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 (“A number of Panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of the complainant…It is clear, however, that the respondent must be using the domain name not in the trademark sense but in the descriptive sense, to communicate some aspect of the services offered.”); Havanna S.A. v. Brendan Hight, Mdnh Inc,WIPO Case No. D2010-1652 (“Prior decisions under the UDRP show there may well be a legitimate interest if the domain name is a generic word or a geographic indicator, provided it is not used to trade on the trademark owner’s goodwill.”). See WIPO Overview on WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 2.2.
In the case at hand there is a clear link to the generic or descriptive value of the disputed domain name and the use made by Respondent of it. Respondent is offering books for sale and not services or products which are similar to Complainant’s trademark. There are no indications that Respondent is using the disputed domain name to trade on the goodwill that may be linked to Complainant’s trademark. Moreover, the evidence provided by Complainant that Respondent would be offering the disputed domain name for sale is not in itself, in the view of the Panel, conclusive.
Therefore, the Panel is of the opinion that Respondent has demonstrated a legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
Because of the finding that Respondent has a legitimate interest in the disputed domain name, there is no need for the Panel to decide on the existence of bad faith registration and use of the disputed domain name, as all three elements must be proven to obtain an order to have the domain name cancelled or transferred. 7. Decision
For the foregoing reasons, the Complaint is denied.
Flip Jan Claude Petillion
Sole Panelist
Date: April 5, 2013
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