Complainant is Armor of Nantes, France, internally represented.
Respondent is TTR Euroworks BV / ttr, Evert Schaeffer of Alblasserdam, the Netherlands, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Cronon AG Berlin, Niederlassung Regensburg (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2013. On December 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name, with informal reminders on December 17 and 20, 2013. On December 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to an email communication by the Center seeking confirmation, Complainant filed an amended Complaint on January 7, 2014.
The Center verified that the Complaint together with the amended 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”).
On January 3, 2014 the Center notified the Parties that the Complaint was filed in French but that according to the information received from the Registrar the language of the Registration Agreement is English. Accordingly, Complainant confirmed its request for French to be the language of the proceedings on January 6, 2014. Respondent replied on January 8, 2014 in English. The Center thus informed the Parties that it would send all case-related communications in both English and French, that it would accept a Response filed in either language, and that the language of the proceeding would be decided by the Panel once appointed.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint in English and French, and the proceedings commenced on January 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2014.
On January 14, 2014, Respondent sent an email communication, of which the Center acknowledged receipt and invited the parties to find a possible settlement. Complainant replied on January 17, 2014, requesting that the proceedings be continued. On January 21 and 23, 2014, Respondent further wrote to the Center about the language of the proceedings.
The formal Response was filed in English with the Center on January 29, 2014.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 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.
On February 24, 2014, the Panel ordered in Administrative Panel Procedural Order No. 1 that English be the language of the administrative proceeding and required the Complainant to submit a translation of the Complaint into English within five (5) calendar days of the notification of this Administrative Panel Procedural Order. Respondent had twenty (20) calendar days following the receipt of the translated Complaint to file a response.
On February 28, 2014, Complainant submitted a translated Complaint. On March 4, 2014 Respondent filed a response. Due to the fact that the Response due date, according to the Administrative Panel Procedural Order No. 1, was March 20, 2014, the Center had requested Respondent on March 4, 2014 to confirm that its submission can be regarded as its complete Response. Respondent responded on March 20, 2014 that the Response of March 4, 2014 was its final Response. 4. Factual Background
Complainant is a French group, whose industrial coding and printing division designs and manufactures inked films used in thermal transfer technology. Complainant is the holder of a number of trademarks consisting of, or including the word “Armor” in various jurisdictions and uses its ARMOR trademarks in connection to its products and services. Complainant inter alia shows to be the holder of the following registered ARMOR trademarks:
- ARMOR, registered as an international word mark, under number 692469 since March 17, 1998;
- ARMOR, registered as a Community trademark (figurative), under number 005857917 since March 6, 2008.
The disputed domain name was registered on July 14, 2008. The disputed domain name has been used to redirect to Respondent’s webpage, linked to the domain name until the Tribunal de Grande Instance of Paris, France ruled that this redirection of the disputed domain name was an act of counterfeit and an act of unfair competition. The Tribunal ordered that Respondent ceases this use of the disputed domain name. The disputed domain name currently links to a parking page. 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. Finally, Complainant considers that the disputed domain name was registered and being used in bad faith. B. Respondent
Respondent replied that it was a reseller of Respondent’s products and that it had rights in the ‘ttr’ name, an acronym for thermal transfer ribbon. Respondent further argued that both “armor” and “ttr” are generic terms and that it is willing to sell the disputed domain name to a third party that is not in the thermal transfer business if the proceeds are given to a later to be appointed charity organization. 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 the disputed domain name. As the UDRP proceedings are civil, 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:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. 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 therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
Complainant must first establish that there is a trademark or service mark in which it has rights. Since Complainant is the holder of the ARMOR trademark it is clearly established that there is a trademark in which Complainant has rights.
The Panel considers the only difference between the disputed domain name and Complainant’s trademark the addition of a hyphen and the letters “ttr”. According to the Panel and as indicated by both parties “ttr” is an acronym for “thermal transfer ribbon”. The Panel considers that the addition of hyphen and the “ttr” acronym, which refers to Complainant’s business is insufficient to avoid confusing similarity, as such minor modifications to a trademark do not diminish in any significant way the confusing similarity between the disputed domain name and Complainant’s trademark (See Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, finding the domain name confusingly similar to the complainant’s BELSTAFF trademark; Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395 finding the domain nam confusingly similar to the KAREN MILLEN trademark).
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s ARMOR trademark. 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 is well established that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of rebuttal 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; 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 “Armor”. Respondent’s use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed, allowing Respondent to register and use a domain name that is confusingly similar to the Complainant’s trademark. In addition, the previous use of the disputed domain name by the Respondent was held to constitute unfair use, creating confusion between the Respondent’s products and services and the Complainant’s trademark, by the Tribunal de Grande Instance of Paris, France. Following this judgment, Respondent has not made any active use of the disputed domain name and Respondent indicates to be willing to sell the disputed domain name to a third party.
The Panel considers that Respondent does not show that it has made any fair use of the disputed domain name. Therefore, it is established that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
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 Marshmallow,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Policy, paragraph 4(b) provides a non-exclusive list of factors, any one of which shall demonstrate bad faith registration and use, including the use of a domain name for intentionally attempting to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s web site or location or of a product or service on the web site or location (Policy paragraph 4(b)(iv)).
In the present case, Respondent is currently passively using the disputed domain name that is essentially identical to Complainant’s trademark. Although Complainant’s trademark may also have a dictionary meaning, the disputed domain name has never been used in connection with this generic meaning and the addition of the “ttr” acronym to Complainant’s trademark in the disputed domain name explicitly refers to the products for which Complainant has registered trademark rights. Together with the previous use that Respondent has made of the disputed domain name – which was found to be infringing – this shows that Respondent was well aware of Complainant’s trademark rights and that Respondent did not (have the intention to) use the disputed domain name in relation to the dictionary meaning of the “Armor” sign. These factors make it difficult to imagine any plausible future active use of the disputed domain name by Respondent that would be legitimate and not infringing Complainant’s mark or unfair competition and consumer protection legislation. In such circumstances, the passive holding of the disputed domain name can amount to bad faith registration and use (See Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
In addition, it is made apparent that Respondent has registered and has been using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
Therefore, it is established that the disputed domain name has been registered and 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 Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: April 3, 2014
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