The Complainant is Société nouvelle d’études, d’éditions et de publicité SNEEP of Paris, France, represented by CABINET STRATO-IP, France.
The Respondent is Whois Protection of Praha, Czech Republic / Hulmiho Ukolen, of Helsinki, Finland. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD. dba HebeiD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2015. On April 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2015, 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, and informing that the language of the Registration Agreement was Finnish. The Center sent an email communication to the Complainant on April 22, 2015 in both English and Finnish informing that the language of the Registration Agreement differed from the language of the complaint. On the same date, the Center notified the Complainant that the Complaint was administratively deficient. In response to such notification, the Complainant filed an amendment to the Complaint on April 24, 2015. In this filing the Complainant requested that English ne the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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”).
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 April 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2015.
The Center appointed George R. F. Souter as the sole panelist in this matter on May 26, 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
The Complainant, a French company, has been editing and publishing since 1927 the magazine “L’Argus de l’automobile et des locomotions”, called today “L’Argus”, specialized in the field of transactions relating to second-hand vehicles.
Details of various French trademark registrations including the trademark ARGUS in the Complainant’s name have been supplied to the Panel, as have details of the Complainant’s Community trademark registration (CTM) No. 011713633, of ARGUS registered on January 24, 2014.
Details of the well-known nature of the Complainant’s ARGUS trademark in France have also been supplied to the Panel.
The disputed domain name was registered on February 20, 2015. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name, which contains the Complainant’s trademark ARGUS in its entirety, with the addition only of the letters “db”, being the abbreviation of the French language term “bande desinée”, which is the French term for the English word “comics”, is confusingly similar to its ARGUS trademark.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that it has not granted any permission to the Respondent to the use the term ARGUS, alone or in combination with any other terms. The Complainant has supplied the Panel with details of an extensive international search which it effected to determine whether Hulmiho Ukolen might have any trademark rights to the term ARGUS, with negative results.
The Complainant alleges that the disputed domain name has been registered in bad faith and, notwithstanding that the website operated under the disputed domain name is currently inactive, it is being used in bad faith, and draws the Panel’s attention to the decision in Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003. B. Respondent
The Respondent did not reply to the Complainant’s contentions 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Language of the Proceeding
As stated above, on April 22, 2015, the Center notified the Parties in both English and Finnish that the language of the Registration Agreement for the disputed domain name was Finnish, and the Complainant requested that the language of the proceeding should be English. The Respondent made no objection to this request. Hulmiho Ukolen does not appear to be a Finnish name, and the Finnish Population Register contains no reference to any resident of Finland under either the first name or surname Hulmiho or Ukolen. In the Panel’s opinion, requiring the Complainant to submit its Complaint in Finnish in these circumstances would be unduly onerous. The Panel therefore exercises its discretion under paragraph 11 of the Rules and decides that the language of the proceeding in the present case should be English. B. Identical or Confusingly Similar
It is well established in decisions under the UDRP that generic Top-Level Domain (“gTLD”) indicators (e.g., “.com”, “.info”, “.net”, “.org”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator “.com” to be irrelevant in connection with the disputed domain name in the present case.
It is well-established in prior decisions under the UDRP that the addition to a trademark in which the complainant has rights of descriptive or non-distinctive elements is not sufficient to avoid a finding of confusing similarity. In the Panel’s opinion, the term “bd”, in the circumstances of the present case, is clearly a descriptive or non-distinctive element, and so finds. The Panel, consequently, finds that the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy in connection with the disputed domain name. C. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the present Panel agrees, that a prima facie case advanced by a complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel regards the submissions put forward by the Complainant as described above as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name, may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the Complainant’s ARGUS trademark was incorporated in its entirety, the only difference being the addition of the descriptive or non-distinctive element “bd”, which gives rise to grave suspicion that the disputed domain name was deliberately “coined” from the Complainant’s trademark, as sufficient for the Panel to find that the disputed domain name was registered in bad faith.
Legitimate concern as to an inactive website was addressed by the panel in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, which found in favour of the complainant. The Panel agrees with the reasoning in that case. In the circumstances of the present case, where the Respondent has not provided evidence of any actual or contemplated good faith use by it of the disputed domain name, the Panel accepts that the Complainant has a clear legitimate concern that seeing the disputed domain name in the hands of the Respondent is a threat hanging over the Complainant’s head.
Accordingly, the Panel finds it appropriate to consider the current passive holding of the disputed domain name as use of the disputed domain name in bad faith, and finds that the Complainant has satisfied the dual requirement of paragraph 4(a)(iii) 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.
George R. F. Souter
Sole Panelist
Date: June 9, 2015
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