The Complainant is OVH SAS of Roubaix, France, represented internally.
The Respondent is Mahmudul Hasan of Torrance, California, United States of America (“US”). 2. The Domain Names and Registrar
The disputed domain names and are registered with #1 Internet Services International, Inc. dba 1ISI (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2014. On January 15, 2014, the Center received an informal email communication from the Respondent. On January 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2014, 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 January 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the parties about the commencement of panel appointment process on February 14, 2014.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on February 19, 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 has submitted evidence that it is the owner of a large number of trademark registrations in numerous countries for OVH and KIMSUFI, including:
European Community trademark OVH with registration number 5370796 and registration date September 27, 2006.
US trademark registration OVH with registration number 4,177,556 and registration date July 24, 2012.
European Community trademark KIMSUFI with registration number 007238637 and registration date September 5, 2008.
US trademark registration KIMSUFI with registration number 4,017,847 and registration date August 30, 2011.
The disputed domain names and were registered by the Respondent on May 22, 2013. 5. Parties’ Contentions A. Complainant
The Complainant is a French company which was founded by Octave Klaba in 1999. OVH is the acronym for the French “On Vous Héberge” which means “we host you”. Among other things, the Complainant provides worldwide web hosting services. The Complainant is not only the largest hosting provider in France and the European Union but the fourth largest in the world. The Complainant operates three million domain names and 150,000 servers for 700.000 customers.
The disputed domain name incorporates not only the OVH trademark in its entirety but also the KIMSUFI trademark. The disputed domain name consists of the KIMSUFI trademark and the descriptive term “reseller”. The Complainant maintains that the disputed domain names are confusingly similar to the Complainant’s trademarks.
The Respondent is not an authorized agent or licensee and has no permission to register domain names incorporating the OVH and KIMSUFI trademarks. The disputed domain names resolve to a website offering the same type of services as those offered by the Complainant. Using the disputed domain names for a service in direct competition with the trademark holder does not confer rights or legitimate interests arising from a bona fide offering of goods or services. The Respondent has registered and is using the disputed domain names with the intent to profit and exploit the goodwill associated with the trademarks OVH and KIMSUFI. Furthermore, the disputed domain names are registered with the purpose of disrupting the Complainant’s business.
In OVH SAS v. Charal Investment Tust, R.D. Larach,WIPO Case No. D2012-1552, it was held that the trademark OVH is well-known in the context of webhosting. Given the Complainant’s reputation and presence on the Internet, the Respondent was or should have been aware of the trademarks prior to registering the disputed domain names. This is supported by the Respondent’s email dated November 25, 2013 in which the Respondent stated: “I can sell your product via your reseller system (I was plan to do)”. Furthermore, in an email dated December 10, 2013, the Respondent offered to sell the disputed domain names to the Complainant for USD 1,000. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. The Respondent sent an email communication to the Center and the Complainant on January 15, 2014 stating: “We are going to park this domain on Sedo.also we will not sale like this your product.” 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain names are 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 the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademarks OVH and KIMSUFI. The disputed domain name incorporates both trademarks in their entirety. Incorporating two of the Complainant’s trademarks in a domain name is not sufficient to distinguish the domain name from any of the trademarks.
The disputed domain name incorporates the trademark KIMSUFI in its entirety with the addition of “reseller”, which is a descriptive term commonly used to describe someone who acquires goods or services for the purpose of selling them, rather than consuming or using them. The ability for a descriptive term, such as “reseller”, to distinguish a domain name from the trademark of the Complainant is limited. In fact, the addition of the term “reseller” to the trademark may instead lead Internet users to believe that the Complainant operates and sells products and services through the website associated with the disputed domain name.
Having the above in mind, the Panel concludes that the disputed domain names and are confusingly similar to the Complainant’s trademarks and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it uses or has made demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the disputed domain names, even if it has not acquired any trademark rights; or
(c) that it makes a legitimate, noncommercial or fair use of the disputed domains names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant has not licensed or otherwise consented to the Respondent’s use of the OVH and KIMSUFI trademarks in connection with the disputed domain names and . According to the submitted evidence in the case, the disputed domain names are used to sell the same type of services for which the Complainant is using its trademarks. The website, to which the disputed domain names resolve, offers services that compete directly with the Complainant’s services. Thus, the evidence in the case indicates that the Respondent is neither making a bona fide offering of goods or services, nor a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that he is commonly known by the disputed domain names.
By not submitting any formal Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or
(ii) circumstances indicating that the disputed domain names were registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain names have intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The Complainant’s trademark registrations OVH and KIMSUFI predate the registration of the disputed domain names and . The submitted evidence indicates that the Respondent is using the disputed domain names to sell the very same type of services as the Complainant. Internet users who are directed to the Respondent’s website may therefore incorrectly assume that the Respondent’s website is associated with the Complainant. Thus, the evidence in the case before the Panel indicates that the disputed domain names have intentionally been and are being used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.
The submitted correspondence between the parties indicates that the Respondent knew or should have known of the Complainant’s trademarks when registering the disputed domain names. Furthermore, the Respondent offered to sell the disputed domain names to the Complainant for USD 1,000. Thus, the evidence in the case indicates that the disputed domain names were registered or acquired primarily for the purpose of selling or otherwise transferring the disputed domain name registrations to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names.
There is no evidence in the case that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain names and have been registered and are 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 and be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: February 27, 2014
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