The Complainant is Société d'Exploitation et de Gestion de Spectacles de Music Halls Internationaux of Paris, France, represented by Areopage, France.
The Respondent is Nassib Elkadri, Media Web Plus of Gatineau, Canada. 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 October 23, 2015. On October 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 18, 2015. Subsequently, the Respondent submitted an email communication to the Center on November 18, 2015.
The Center appointed Richard Hill as the sole panelist in this matter on November 24, 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 has rights in the registered trademark LE LIDO, dating back to 1961. This mark is registered in many countries around the world and it is well-known, including in Canada.
The disputed domain name was registered on December 2, 2003, well after the Complainant registered its mark.
The Complainant has not licensed or otherwise authorized the Respondent to use its mark.
The Respondent has used the disputed domain name to point to a website providing click-through advertising links to some of the Complainant's direct competitors. 5. Parties' Contentions A. Complainant
The Complainant states that it was founded in 1946. The LIDO is a legendary luxurious establishment located on the avenue of the Champs-Elysées in Paris. The LIDO has created the dinner & show concept and offers fine dinners with Champagne during its shows. The cabaret, called LIDO and LE LIDO ("the LIDO" in French) is one of the most famous cabarets in the world.
The Complainant states that it has registered the trademark LE LIDO in many countries around the world, with rights dating back to 1961. The mark was registered in Canada in 1991. The Complainant has also registered the mark LIDO, in 1972. The marks have a strong reputation and are widely known around the world, including in Canada.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name as it has no rights to LIDO as a corporate name, trade name, shop sign, mark or domain name that would be prior to the Complainant's rights dating back to 1946. The Respondent was not commonly known by the disputed domain name prior to the adoption and use by the Complainant of the corporate name, business name and mark LIDO / LE LIDO. Moreover, the Respondent does not have any affiliation, association, sponsorship or connection with the Complainant and has not been authorized, licensed or otherwise permitted by the Complainant or by any subsidiary or affiliated company to register the disputed domain name and to use it.
According to the Complainant, the disputed domain name is used to direct Internet users to a website that contains click-through advertising links to sites that offer tickets for the Complainant's direct competitors in Paris. Thus the Respondent is using the disputed domain name to divert Internet traffic to unrelated websites offering among others cabaret services that compete with those of the Complainant. This is an intentional attempt to attract, for commercial gain, Internet users to websites or to sponsored links. Such a use creates a likelihood of confusion with the Complainant's mark LE LIDO / LIDO as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. The Complainant cites UDRP precedents to support its position.
Further, the disputed domain name is offered for sale. B. Respondent
The Respondent did not reply formally to the Complainant's contentions, however he submitted an email which states [sic]:
"I recieved a mail regarding the case number in the subject above which questions my ownership for the domain name . I want to get to your attention that I acquired this domain name on a popular domain auction which was open to everyone with no exclusive rights. And this domain name was owned by various people before that and it was never owned by Lelido Cabarret in the past.
In the legal case I received, Lelido cabaret representative listed various countries that they have copyrights in, which doesn't include Canada where I live. And they only mentioned that their Cabariet is known in Canada. Anyone can actually assume their places are popular in a certain country but that doesn't grant them the exclusive rights in that country. Otherwise, Why have trademarks in certain country and not in others as they do !
If they believe that this domain name is important to them and it is beneficial owning it for their future marketing, I will be positive and cooperative to discuss it further and receive compensation for my costs ($ 5000) in return to transferring the domain name to their ownership.
If you require any additional information, I will be happy to provide." 6. Discussion and Findings A. Identical or Confusingly Similar
It is obvious that the disputed domain name is identical to the Complainant's famous mark LE LIDO. Contrary to what the Respondent says, the Complainant does have registered trademark rights in Canada, but this is not necessary in order to establish this element of the Policy: it suffices that the Complainant have trademark rights somewhere in the world. The first element is established. B. Rights or Legitimate Interests
The Respondent does not have any license or other authorization to use the Complainant's mark or to sell its products or services. The Respondent has used the disputed domain name to resolve to a web page that provides advertising links to the Complainant's competitors. Thus the Respondent's use of the Complainant's mark in the disputed domain name appears to be an attempt to trade off of the Complainant's reputation and goodwill by taking advantage of the confusing similarity between the disputed domain name and the Complainant's trademark.
Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services for purposes of the Policy.
Furthermore, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods and services, see The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan,WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian,WIPO Case No. D2000-0937).
The Panel holds that the Complainant has satisfied its burden of proof for the second element of the Policy. C. Registered and Used in Bad Faith
As noted above, the Respondent has used the disputed domain name to resolve to a web page that contains advertising links to the Complainant's competitors. The Respondent likely obtains revenue from that web page. Thus the Panel finds that Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant's mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319; ACCOR v. Steve Kerry / North West Enterprise, Inc.,WIPO Case No. D2006-0649; Terex Corporation v. Texas International Property Associates - NA NA,WIPO Case No. D2008-0733.
Further, the Respondent has offered to sell the disputed domain name for an amount above out-of-pocket costs, and this constitutes bad faith use under paragraph 4(b)(i) of the Policy.
The Panel holds that the Complainant has satisfied its burden of proof for the third element 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.
Richard Hill
Sole Panelist
Date: November 24, 2015
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