The Complainant is Sporoptic Pouilloux S.A. of Paris, France, represented by SCP August & Debouzy, France.
The Respondent is Registrant ID:PP-SP-001 of Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with IHS Telekom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2013. On November 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2013, 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.
On December 4, 2013, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. Neither party commented on the language of the proceedings.
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 December 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2014.
The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on January 10, 2014. 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 designs, manufactures and markets sunglasses all around the world and owns registered trademark VUARNET in several countries, including France (registration no. 92413033 of April 1, 1992).
In addition, the Complainant is the owner of a number of domain names containing the registered trademark VUARNET, including registered on February 6, 1997.
The disputed domain name was registered on May 4, 2013. 5. Parties’ Contentions A. Complainant
The disputed domain name incorporates the trademark VUARNET in its entirety, which is identical or highly similar to the registered trademark VUARNET, which has been registered by the Complainant as a trademark and domain name in numerous countries all over the world.
According to the Complainant, the Respondent is neither a licensee, authorized agent of the Complainant nor in any other way authorized to use the Complainant’s trademark VUARNET.
The Complainant also stated that the Respondent has not provided the Complainant with any evidence of its use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute.
Finally, the Complainant contends that the disputed domain name has been registered and is being used in bad faith by the Respondent because:
a) The Respondent could not have possibly ignored the existence of the Complainant’s trademark when it registered the disputed domain name;
b) It is inconceivable that the Respondent was not aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name;
c) The Respondent is using a WhoIs protection service for the registration which, even if per se does not constitute bad faith, can in certain circumstances constitute a factor indicating bad faith, depending on the manner in which such service is used. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the proceeding
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11(a) is to ensure fairness in the selection of the language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, the Complaint was filed in English and the language of the registration agreement for the disputed domain name is Turkish. Neither the Complainant nor the Respondent responded to the Center’s email communication of November 28, 2013, concerning the language of the proceedings. However, the Panel notes that the Complainant has requested English to be the language of the proceedings in paragraph 10 of the Complaint which remained un-objected by the Respondent. If the Complainant were to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have incurred substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11(a) of the Rules, that English shall be the language of administrative proceeding. 6.2 Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name incorporates the trademark VUARNET in its entirety.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g.,Telstra Corporation Limited v. Barry Cheng Kwok Chu,WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd.,WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l.,WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0282.
Therefore, the Panel finds that the disputed domain name is identical to the trademark VUARNET and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainant showed, inter alia, that the Respondent has neither a license nor any other permission to use the disputed domain name. The Respondent has failed to demonstrate such rights or legitimate interests. The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. The Respondent has not demonstrated use of the disputed domain name in connection with any bona fide offering of goods or services and has not rebutted the Complainant’s prima facie case. Nor has the Respondent shown that it has been commonly known by the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
Considering that the Complainant’s trademark was registered in several countries long before the disputed domain name was registered, the Complainant’s Internet presence, and that “vuarnet” has no apparent meaning in English or Turkish, there appears to be no reasonable basis for the Respondent to have independently and innocently chosen the disputed domain name. Accordingly, the Panel is of the opinion that the Respondent must have been aware of the Complainant and its trademark rights when it registered the disputed domain name. While the disputed domain name is currently not used for an active website, this does not as such prevent a finding of bad faith (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2). Taking into account the above, the fact that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name and the Respondent’s use of a privacy/proxy service, the Panel concludes that the Respondent’s passive holding in this case constitutes use in bad faith.
As in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Ladbroke Group Plc v. Sonnoma International LDC,WIPO Case No. D2002-0131, after examining all circumstances surrounding the registration and use of the disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly the Panel finds in favor of the Complainant on the third element of the Policy. 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.
Dilek Ustun Ekdial
Sole Panelist
Date: January 20, 2014
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