The Complainant is Région Rhône-Alpes of Lyon, France, represented by Bird & Bird LLP, France.
The Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States of America / Edmunds Gaidis of Rēzekne, the Republic of Latvia. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2014. On November 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 10, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 10, 2014.
The Center verified that the Complaint together with the amendment to 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 November 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2014. The Respondent did not submit any timely response. Accordingly, the Center notified the Respondent’s default on December 8, 2014. On December 12, 2014, the Respondent submitted a short reply. The Center informed the Respondent that the Administrative Panel will decide in its sole discretion whether to consider a late Response.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on December 17, 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 is a French regional public authority, whose responsibilities include regional public transport. The Complainant has implemented a transport card and ticketing system for which it uses its complex “OÙRA!” trademark, applied for on March 24, 2005 and registered under No. 3.348.892 in classes 9, 16 and 39.
The contact details listed in the Registrar’s WhoIs database correspond to those provided by a privacy registration service. The underlying registrant is Mr. Edmunds Gaidis, the Respondent in this case. The WhoIs records indicate that the disputed domain name was registered on July 7, 2011.
The Respondent uses the disputed domain name to refer to a pay-per-click parking page, indicating that the domain name is for sale. 5. Parties’ Contentions A. Complainant
The 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. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent is not making a bona fide, legitimate non-commercial or fair use of the domain name. Finally, the Complainant considers that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions, but indicated that it wanted to keep the disputed domain name. 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:
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 deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has established that it is the holder of a French registered trademark, which consists of the word ‘OÙRA!’ in stylized letters.
The Panel considers the disputed domain name to differ from the OÙRA! trademark by the absence of the accent on the letter “ù” and the absence of the exclamation mark. According to the Panel, the disputed domain name contains all verbal elements of the Complainant’s trademark and the abovementioned differences between the trademark and the disputed domain name are insufficient to remove the confusing similarity. See Zamir Telecom Limited v. Simple Mobile, Mehmet Kurt,WIPO Case No. D2014-0544, where the addition of a letter and a hyphen were considered insufficient to remove the confusing similarity; La Quinta Worldwide L.L.C. v. Satoshi Shimoshita,WIPO Case No. D2007-1241, where the fact that disputed domain name contained the principal textual element of the majority of complainants trademarks and the addition of a hyphen were considered insufficient to remove the confusing similarity; Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI,WIPO Case No. D2006-0768, where the omission of letters and the addition of a hyphen were considered insufficient to remove the confusing similarity; see also Creative Nail Design, Inc. and Colomer USA, Inc. v. Creative Nails, c/o E Designers Ltd,WIPO Case No. D2006-0873.
Accordingly, 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 is established case law under the Policy 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 apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Names was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not “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.” Policy, paragraph 4(c)(iii). First, Respondent obviously is making “commercial gain” by virtue of the pay-per click (PPC) links on the page. That “commercial gain” appears to be based on the misleading diversion of some consumers, to the extent they navigate to the website linked to the disputed domain name because they believe it to be associated with Complainant. Further, Respondent’s use of the disputed domain name to resolve to a PPC parking page, containing sponsored links, cannot be considered “fair” on the facts of this case, as it is not legitimate to register a domain name and use it for a PPC parking page where the domain name is a trademark and has no dictionary or descriptive meaning (See Lange Uhren GmbH v. Dvlpmnt, Ltd.,WIPO Case No. D2013-1700).
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. 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 is being used in bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use are the registration of the domain name primarily for the purpose of disrupting the business of a competitor and the use of the domain name with the intention to attract, for commercial gain, Internet users to a website 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 the website or location or of a product or service on the respondent’s website or location. The passive holding of a domain name can constitute bad faith use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, inconceivable good faith use, etc. (See, e.g., Telstra Corporation Limited, supra; Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763).
In the present case, Respondent is using the disputed domain to publish a PPC parking page advertising third party websites, some of which offer competing transportation services in France. In addition, Respondent has failed to respond to the Complaint, while it is difficult to conceive that Respondent was unaware of Complainant and its trademark rights when it registered the disputed domain name.
According to the Panel, this evidences bad faith registration and use pursuant to paragraphs 4(b)(iii) and (iv) 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.
Flip Jan Claude Petillion
Sole Panelist
Date: December 29, 2014
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