1.1 The Complainant is Pullmantur, S.A. of Barcelona, Spain, represented by Cuatrecasas, Gonçalves Pereira, Spain.
1.2 The Respondent is Domain Asset Holdings, LLC, Domain Administrator of Potomac, Maryland, United States of America, represented by The Law Firm of Erika Sullivan, United States of America. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2015. On January 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 14, 2015, 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.
3.2 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”).
3.3 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 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2015. The Response was filed with the Center on February 7, 2015.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on February 20, 2015. 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
4.1 The Complainant is a company incorporated in Spain and forms part of the “Royal Caribbean” group of companies. It provides tour-operator and cursing services, and this business has been in existence for more than thirty years.
4.2 In the middle of the last decade the Complainant decided to offer cruises specifically directed to French speaking customers. In about 2006-2007 (in collaboration with its parent company) it launched this business under the name “CDF Croisiere de France” and a company with that name was incorporated in August 2008. The business currently operates a fleet of five ships offering cruises in the Mediterranean, Atlantic, Baltic and Caribbean.
4.3 The Complainant is the owner of two registered trade marks in France. The earliest of these is registered trade mark no. 3515391 dated July 23, 2007, which is registered in class 39 and takes the following form:
4.4 The class 39 specification for this mark roughly translates into English as follows:
“Travel arrangement, arranging cruises, excursions. Escorting of travelers. Travel seat reservation. Sightseeing. Transport by boat. Shipping. Passenger. Navigation services. Pleasure boats and cruise services. Boat rental.”
4.5 The second of these trade marks is registered trade mark no. 3884824 dated December 27, 2011, which is registered in classes 16, 39, 43 and takes the following form:
4.6 The specifications for this mark roughly translate into English as follows:
“16: Paper, cardboard; printed matter; bookbinding; photographs; stationery; adhesives (glues) for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging not included in other classes, namely bags, sachets, films and sheets; print; clichés.
39: Transport; packaging and storage of goods; travel organization.
43: Services (food); temporary accommodation.”
4.7 The Complainant operates a website that promotes its activities from the domain name .
4.8 The Domain Name was registered on the November 7, 2010.
4.9 As the name of the Respondent suggests, and the Respondent openly admits, it is a domain name trader.
4.10 As at the date of the Complainant, the Domain Name was being used to display a web page generated by DomainM. DomainM is described by the Respondent as it’s “sister company”. The page displayed declared the Domain Name to be for sale for the price of USD 20,000.
4.11 The “DomainM” web page continues to be displayed as at the date of this decision. 5. Parties’ Contentions A. Complainant
5.1 The Complainant contends that by reason of its business activities its CROISIERES DE FRANCE trade marks have had a “wide reputation in the market” for some time and at least as far back as November 2010 when the Domain Name was registered.
5.2 In support of that claim the Complainant provides printouts of various newspaper articles and advertisements. They include (a) an article appearing in the March 12, 2009 edition of Le Figaro in which the Complainant is referred to as “Croisieres de France” and is described as “one of the four main brands leading the French cruise market” and (b) an article in Match dated July 19, 2012 in which the Complainant also appears to be described as “Croisieres de France”.
5.3 The Complainant also provides a certificate from a person identified as “General Manager” of “the French company “CDF Croisieres de France”. This broadly shows that there has been marketing spend in excess of EUR 1 million per year since 2008 to promote the products and services identified with the Complainant’s trade marks.
5.4 The Complainant also provides a printout of the results of a Google search performed against the words “Croisieres de France”. This shows organic search results where the first result returned appears to involve a link to the Complainant’s website.
5.5 The Complainant maintains that the Domain Name is identical, or at least confusingly similar to the Complainant’s trade marks.
5.6 So far as rights or legitimate interests are concerned, the Complainant maintains that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy apply.
5.7 So far as bad faith is concerned the Complainant claims that the Domain Name was registered “due to its obvious connection with the Complainant and its trade marks” and that the Respondent “must have deliberately chosen the [Domain Name] in order to take unfair advantage from the investments made” by the Complainant so as to develop a reputation in its marks. In this respect it relies upon the fact that the Complainant’s registered trade marks pre-date the registration of the Domain Name in November 2010 and that prior to that date the Complainant had, in addition to the domain name, also registered a number of other domain names that contained the text “croisieresdefrance”.
5.8 The Complainant also relies upon the fact that the Respondent has been found to be a cybersquatter in the following decisions under the Policy.
(i) Take-Two Interactive Software, Inc. v Domain Asset Holdings,WIPO Case No. D2013-1434 in respect of 4 domain names incorporating the terms “grandtheftauto” or “gta”;
(ii) Tracy Anderson Mind and Body LLC v Domain Asset Holdings,WIPO Case No. D2013-0699 regarding the domain name ;
(iii) Universal Assistance S.A. v. Domain Asset Holdings, LLC,WIPO Case No. D2012-2547 regarding the domain name ;
(iv) Lifetime Assistance, Inc. v. Domain Asset Holdings, LLC,WIPO Case No. D2011-2137 regarding the domain name ;
(v) Training Channel, S.A v. Domain Asset Holdings,WIPO Case No. D2011-0875 regarding the domain name ; and
(vi) Facebook, Inc. v Domain Asset Holdings, WIPO Case No. D2011-0516in respect of over 20 domain names that incorporated the term “facebook”.
5.9 Further, the Complainant contends that the term, “Croisieres de France” is French for “Cruises of France” and the fact that the Respondent has no connection with France or any French speaking cultures, suggests that the Domain Name was “deliberately chosen by the Respondent to take an unfair advantage of its trade marks”.
5.10 The Complainant also relies upon the provisions of paragraph 4(b)(ii) of the Registration Agreement that the Respondent has agreed to with its registrar.
5.11 So far as bad faith use is concerned, the Complainant also points to the Respondent’s offer to sell the Domain Name for USD 20,000. B. Respondent
5.12 The Respondent denies that the Domain Name is identical or confusingly similar to any registered trade mark owned by the Complainant. The earlier of the marks relied upon incorporates the letters “CDF”, which is said to “substantially change” the registered mark. It appears to contend that the “CDF” was added to the mark in order to obtain that registration where the Complainant “does not conduct business under the combined term ‘CDF Croisieres De France’, but rather under ‘Croisieres De France’”.
5.13 Further, the Respondent contends that “‘Croisieres De France’ is a generic term that should be incapable of trade[ ]mark protection anywhere in the world in the first place unless associated with a distinctive class of goods or services, which is not the case here.”
5.14 The Respondent also claims that the Domain Name is outside of the preview of the Policy because it contains the word “France” which is a “geographic term” (citing paragraph 1.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition).
5.15 So far as rights and legitimate interests are concerned, the Respondent refers to a number of UDRP decisions in which, notwithstanding the fact that a domain name was offered for sale, the complainant failed to show that there was no right or legitimate interest. The Respondent also claims that as a trader in domain names, it owns various domain names that incorporate geographical terms or foreign language terms.
5.16 So far as geographical terms are concerned, it refers to , , , and . So far as foreign language terms are concerned it claims to own “several hundred domains” of this character, but gives only five examples; namely , , , and .
5.17 Further, the Respondent contends that the Domain Name is not parked “but clearly resolves to a developed website that offers and advertises Respondent’s charitable services (through “G”) and advertises Respondent’s other companies, which is akin to a bona fide offering of goods and services under the Policy, paragraph 4(c)(i).” However, no evidence or website printout is provided to support that assertion.
5.18 So far as bad faith is concerned, the Respondent refers to and relies upon the decisions of Consorzio del Prosciutto di Parma v. Domain Name Clearing Company, LLC,WIPO Case No. D2000-0629; and Comexpo Paris v. Visiotex S.A.,WIPO Case No. D2000-0792, which are said to be authority for the proposition that where a domain name is generic, its registration and use cannot be in bad faith.
5.19 As to the previous UDRP cases in which the Respondent was unsuccessful, the Respondent states that “the basis for not prevailing in each of those cases is distinguishable to the issues and facts that are present in this case and that Respondent’s history with disputes under the Policy also include instances where it was the prevailing party.” However, the Respondent does not further explain how the cases where it lost can be distinguished and does not identify those cases that went the other way. 6. Discussion and Findings
6.1 It is incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. The Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
6.2 The two trade marks relied upon by the Complainant are device marks that contain text. In the opinion of the Panel it is not possible to simply disregard the non-textual elements of a mark when it comes to a comparison and the assessment required by the first limb of the Policy. As this Panel stated in Philip Morris USA Inc. v. Marlboro Beverages / Vivek Singh,WIPO Case No. D2014-1398:
“In this Panel’s view when comparing a domain name and the trade mark for the purposes of the Policy, it is always the mark as a whole and the domain name as a whole that should be compared. There is nothing in the wording of the Policy that suggests that the exercise should be a comparison of some sub-set of either and if as a matter of course certain parts of a mark or a domain name are ignored, there is a danger that the elements of the mark or name that remain will be considered out of context and given undue weight.”
6.3 On this view, the Domain Name and the trade marks relied upon by the Complainant cannot be identical for the purposes of the Policy. The question is whether they are confusingly similar.
6.4 In most cases whether the test is whether mark and domain name are identical or confusingly similar does not make any practical difference. This is because (as is for example discussed in paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)), the issue of confusing similarity is merely a “threshold test”, and not a particularly high threshold at that (see the discussion in Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227).
6.5 However, matters become more problematic where it is credibly alleged that the textual part of the mark relied upon is generic or descriptive of the goods and services in respect of which it has been registered and used. In such a case it may be contended that were it not for the non-textual elements of the mark, the mark would not have proceeded to grant and that it would be unfair to allow a complainant to essentially claim rights for the purposes of the Policy in the descriptive textual element alone.
6.6 This was essentially the problem that was faced by the panel in Jobs on the Net Limited, Andrew Middleton v. International New Media Limited,WIPO Case No. D2011-1531. The disputed domain name in that case was and the marks relied upon were the word marks NJ NANNY JOB and NJ NANNYJOB. This was not a device mark case, but the respondent contended that the term “Nanny Job” was descriptive and that any distinctiveness in the marks relied upon by the complainant arose solely out of the “NJ” addition to those marks.
6.7 In considering what was the right approach to take in this case the panel considered various previous cases under the Policy and in particular the decision in Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE,WIPO Case No. D2003-0645 (the “British Meat” case). Having done so, it then commented as follows (starting at para 6.7):
“... At its heart the reasoning in the British Meat case addresses a concern that many registered trade marks may only be able to proceed to registration because a non-distinctive element that could not have been registered alone (for example the words “British Meat”) has been combined with some distinctive feature (for example, a distinctive font or logo). If this is so, there is an understandable reservation amongst panellists that such a mark can be relied upon under the UDRP in circumstances where only the “non-registrable” element is relied upon. It a point that the Respondent itself makes when it asserts in the Response
“The Respondent would not be surprised to learn that the Complainant opted to apply for this trade mark, and to use the ‘nj’ prefix in its name, because it had been advised that the term ‘nanny job’ alone was unregistrable and unprotectable.”
... In the case of some trade mark registries the issue is addressed by the registry requiring the non-distinctive element of the mark to be expressly disclaimed. If the only similarity between the mark and domain name in issue is the disclaimed element, then there can be no similarity and a claim under the Policy will fail (see, for example, Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS,WIPO Case No. D2005-0035). However, the approach to disclaimers varies from registry to registry. For example, in the U.K. Intellectual Property Office (the relevant registry so far as the Complainant’s registered marks are concerned), while it may sometimes be in the interest of the registrant to disclaim certain words, the inclusion of a disclaimer is voluntary (see paragraph 62 in Chapter 6 of the Trade Marks Work Manual).
... That said, the approach in the British Meat case if taken too far can involve a panel embarking upon an assessment of the exact extent of a complainant’s trade mark rights that a panel under the Policy may be ill equipped to address. There are also plenty of cases under the UDRP where panels appear to have taken a somewhat more permissive approach. Further, and in any event, the less distinctive the element relied upon by the complainant, the harder it will be for the complainant to satisfy the other requirements of the Policy. In the circumstances, and if the first element of the Policy sets up a standing requirement, then these issues may be better addressed under those elements of the Policy.
... With this in mind, the Panel respectfully declines to follow the reasoning in the British Meat case insofar as that case is said to be authority for the proposition that a complainant must show that a part of the mark relied upon has acquired secondary meaning in the sense that it has become exclusively associated with the complainant’s goods and service. Instead, the Panel is of the view that the dismissal of a complaint under the first heading of the Policy on the ground that only a non-distinctive element of a registered trade mark has been taken, should be restricted to those cases where it is clear that the element of the trade mark relied upon is so completely devoid of distinctive character that it is incapable of distinguishing the goods and services in respect of which the mark is registered.”
6.8 The Panel adopts that reasoning in the case now before it. Accordingly, the question the Panel needs to address is whether the term “Croisieres De France”, is so completely devoid of distinctive character that it is incapable of distinguishing the goods and services in respect of which the Complainant’s mark are registered. The Complainant’s evidence in this respect is less than overwhelming. For example, referring to advertising spend in promoting the Complainant’s marks provides little guidance as to how the term “Croisieres De France” is understood among the relevant public. However, ultimately the Panel concludes that on the basis of this test the Complainant gets over the threshold in this case. The most persuasive pieces of evidence that the Complainant has provided are the press articles annexed to the Complaint. In particular, in articles that appeared in Le Figaro and Match, the Complainant is named as “Croisieres de France”, rather than “CDF” or “CDF Croisieres de France”. Not many articles of this sort are relied upon, but the Respondent does not seek to argue that the way in which the Complainant is described in this material is somehow unrepresentative of the way that the Complainant is perceived. Indeed, the Panel notes that the Respondent positively contends that the Complainant trades under the name “Croisieres de France” rather than “CDF”.
6.9 There is also the technical point (which has parallels with the majority of the panel’s reasoning in the Nanny Job case supra), that the second of the two marks relied upon by the Complainant extends beyond the provision of cruise related services to, for example, paper, cardboard, and printed matter. There is of course nothing to suggest that the Complainant is known under the name “Croisieres de France” in respect of those goods or has even used the mark in any meaningful way in respect of those goods. Nevertheless, it cannot be said that this name is in any way descriptive of those goods. So far as the first requirement of the policy is concerned, that is sufficient (see the reasoning at paragraph 6.19 of the Nanny Job case supra).
6.10 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
6.11 Further, for the sake of completeness the Panel rejects the Respondent’s contention that the Domain Name is a domain name which comprises or includes a geographic indicator to which the Policy does not apply. With all due respect to the Respondent, it is a contention that misunderstands paragraph 1.5 of the WIPO Overview 2.0 and the Second WIPO Internet Domain Name Process to which it refers. What that paragraph deals with is the fact that in some jurisdictions there is protection granted in respect of certain geographical terms that is separate from that provided by trade mark law. For example, in Europe there is specific legislation that deals with the protection of “geographic indicators”. In the Report of the Second WIPO Internet Domain Name Process, WIPO recommended that the UDRP not be changed to provide geographical terms and geographic indicators protection equivalent to that provided to trade marks. However, it does not follow that a geographic term (which may or may not be protected as a geographic indicator in respect of some goods) cannot be registered as a trade mark. Still less does it follow that the UDRP is not available where (as here) the trade mark relied upon contains, among other things, a geographical term. B. Rights or Legitimate Interests
6.12 Given that the Domain Name can according to the Respondent be understood as a descriptive term, one would have expected the Respondent to allege that the Domain Name was registered because of that alleged descriptive reading and with some descriptive use in mind. The reason is that as is recognised in paragraph 2.2 of the WIPO Overview 2.0:
“Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase).”
6.13 It is not clear given the way in which the Response is constructed whether this is contended by the Respondent in this case. Indeed, at one stage the Respondent appears to contend that it has rights or a legitimate interest in the Domain Name not because it is being used to take advantage of some descriptive reading of the Domain Name, but because the Domain Name displays a page “that offers and advertises Respondent’s charitable services (through “G”) and advertises Respondent’s other companies” and this is “akin” to a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
6.14 There are a number of problems with this contention. First, as has already been described, no evidence is provided to support this claim. The only evidence as to the form the web page operating from the Domain Name, is that supplied by the Complainant. This clearly shows that the webpage displayed is one generated by “Domainm” and offers the Domain Name for sale rather than any offering of charitable services. Second, it is a contention that assumes that the question of whether there is a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy is one that can and should be considered in isolation and without reference to the nature of domain name that is being used to promote those goods and services. This is clearly erroneous. Whether the offering of goods or services is bona fide must be considered in the round. The extent to which the text in the domain name used to promote those goods and services has some sensible connection with those goods and services is highly relevant to that assessment. Here the phrase “Croisieres de France” has no sensible connection with the offering of charitable services. Therefore, even assuming that the Respondent is genuinely involved in some form of charitable activity, the use of the Domain Name to promote that activity does not mean that there is a bona fide offering for the purposes of paragraph 4(c)(i) of the Policy, or provide the Respondent with a right or legitimate interest.
6.15 However, ultimately for the reasons that are explained under the “bad faith” heading below, the Panel has reached the conclusion that the Domain Name was primarily registered with the intention of taking advantage of the Complainant’s reputation in the term “Croisieres de France”. Given this and for the reasons set out in paragraph 2.2 of the WIPO Overview 2.0, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.16 The Complainant clearly and unambiguously claims in the Complaint that the Domain Name was registered because of its obvious connection with the Complainant and its trade marks and to take unfair advantage of the reputation that the Complainant had built up in the same. What is remarkable about the Response in this case is that it does not address that allegation head on. The Response seeks to argue at length that the Domain Name is generic, but at no point describes why and in what circumstances and for what purpose the Domain Name was registered. Indeed, one gets the impression that the Response has been carefully crafted to avoid addressing that fundamental point.
6.17 The fact that the Respondent can point to some other domain names that it has registered that contain geographic terms or that comprise words in languages other than English does not really take matters further. Sometimes, the fact that similar domain names have been registered to the domain name the subject of the proceedings, can constitute powerful evidence in support of a contention by a respondent that the domain name was registered with a particular purpose, project or business model in mind. Nevertheless, to serve as such evidence, that particular purpose, project or business model must be articulated. So far as the Domain Name is concerned, none is directly articulated.
6.18 Further, even if it were suggested by the Respondent the Domain Name forms part of a broader series of registrations, the other domain names identified do not really support that contention. The Respondent points to , , , and , but apart from the fact that the Domain Name incorporates the name of a country, there is no obvious connection between the Domain Name and the other domain names identified. The reference to five non-English domain names, some of which are not even in French is even less persuasive. The choice of these particular three French words is on its face somewhat odd and these words have nothing in common with the other non-English domain names that the Respondent has identified.
6.19 In short, why the particular French term “Croisieres de France” was registered in a domain name by the Respondent cries out for an explanation, but none is provided. A complainant bears the burden of proof under the Policy. Nevertheless where a respondent puts in a detailed response that fails squarely to address what is usually the key issue in proceedings under the Policy; i.e. the respondent’s motives in registering the domain name, that is of itself something that a panel can take into account. Evidentially that failure is the dog that did not bark, and the panel is entitled to draw inferences adverse to the respondent from that failure (for an explanation of this canine reference see Credit Industriel et Commercial S.A. v. Demand Domains, Inc.,WIPO Case No. D2009-1184).
6.20 Further, there is the fact that the Respondent has been held in a large number of cases to be a cybersquatter. This prima facie constitutes a pattern of conduct of the sort identified in paragraph 4(b)(iv) of the Policy. It simply will not do, as the Respondent attempts, to assert that these cases can be distinguished from the present one, without further explanation. The Panel is entitled to conclude, and does conclude, from this material that the Respondent has historically operated a business model that seeks by reason of domain name registrations to take unfair advantage of the trade mark rights of others. It is clearly a factor that the Panel can take into account when it comes to assessing the Respondent’s motives in this particular case.
6.21 The Respondent refers to two early decisions under the Policy that are said to support its position; i.e. Consorzio del Prosciutto di Parma v. Domain Name Clearing Company, LLC,WIPO Case No. D2000-0629; and Comexpo Paris v. Visiotex S.A.,WIPO Case No. D2000-0792. The reasoning in both of these decisions is somewhat limited. Nevertheless, in each of these cases it would appear that the complainant had failed to show that the domain names were not being held for some descriptive purpose. If that is correct reading of those cases, the fact that they were decided the way that they were is unremarkable. In the opinion of the Panel they do not support the proposition that merely because a domain name might have some generic or descriptive use, the registration and holding of that domain name cannot be in bad faith. Alternatively, if those cases do support that proposition, it is a proposition with which the Panel disagrees. What matters is not whether the domain name is capable of being used in a legitimate fashion, but for what use the domain name was actually registered.
6.22 In the present case and even if one accepts the Respondent’s contentions that the Domain Name could be legitimately used in a descriptive manner, the Panel has reached the conclusion, for all the reasons that have been set out above, that the most likely explanation for the registration and holding of the Domain Name was to take some form of unfair advantage of the association of the term embodied in the Domain Name with the Complainant’s trade marks. That is sufficient for a finding of bad faith under the Policy (see M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230). Accordingly, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 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.
Matthew S. Harris
Sole Panelist
Date: February 24, 2015
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