1.1 The Complainant is Société d’Exploitation et de Gestion de Spectacles de Music Halls Internationaux of Paris, France, represented by Areopage, France.
1.2 The Respondent is WhoIsguard Inc. of Panama / John Hernandez of Costa Mesa, California, United States of America (“United States”). 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2016. At that time the publically accessible WhoIs Details for the Domain Name displayed the name of what would appear to be the privacy service of the Registrar. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 4, 2016, the Registrar transmitted by email to the Center its verification response in which it disclosed details of the underlying registrant details behind the privacy service and associated contact information. The Center sent an email communication to the Complainant on April 5, 2016 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 amended Complaint on April 7, 2016.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2016.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 29, 2016. 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 the operator of a cabaret business called “Lido”. The business was founded in 1946 and currently operates a cabaret out of premises on the Champs-Elysées in Paris, France.
4.2 These shows have a reputation around the world and are attended by approximately 500,000 people a year.
4.3 The Complainant is the owner of various trade marks around the world that comprise or incorporate the term “Lido”. They include:
(i) international trade mark registration no. 242838 for the word mark LE LIDO, registered on April 29, 1961 in classes, 16, 32, 33 and 41 and remains in force in at least ten countries. The class 41 specification of this mark is for “Entertainment, organization and presentation of shows”.
(ii) international trade mark registration no. 389915 for the word mark LIDO, registered on June 19, 1972 in class 33 and remains in force in seven European countries.
4.4 The Respondent according to the WhoIs details available for the Domain Name would appear to be an individual based in the United States.
4.5 The Domain Name was registered on April 29, 2015. It has been used since registration as a parking page that has displayed various search links (“pay-per-click”). Some, but not all, of these links make reference to the Complainant’s business. For example on March 29, 2016 the links displayed included “The Lido Paris” and “Spectacle Lido”, but also “Lido De Jesolo Hotel”. When clicked on some of those links displayed sponsored links advertising the Complainant’s shows as well as shows of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
5.1 The Complainant describes its business and marks, and names a number of the famous singers and artists, including the Bluebell Girls, that have performed at the Lido. It claims that its cabaret has “a worldwide fame and is visited like a Paris monument”. It refers to the previous decision in LE LIDO v. Olivier Salesse,WIPO Case No. D2005-0208 in which the panel noted that at least in France the fame of Complainant’s cabaret was “incontestable”. It also exhibits pages from Wikipedia that appear to demonstrate that the fame of the Lido extends beyond France.
5.2 The Complainant claims that the Domain Name wholly reproduces its LIDO mark to which has been added the generic work “talent”. That addition it said to be “inoperative to distinguish it from the Complainant’s marks”. If anything the word “talent”, with its associations with show business, is said to further suggest a link or affiliation with the Complainant’s mark.
5.3 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name and that it is well established that the use of a domain name for a “parked page with links to competitive products does not establish rights or legitimate interests” (citing the decision of Railteam B.V. v. Internet Media Group, Domain Admin,WIPO Case No. DCO2015-0024).
5.4 The Complainant maintains that “the Respondent most likely knew the existence of the LIDO / LE LIDO mark when he registered the [D]omain [N]ame” and that from this is it possible to infer bad faith. Further, it contends that:
“The Respondent is using the [Domain Name] by exploiting the confusion with the well-known trade mark LIDO / LE LIDO to attract Internet users to his parking page, and misleadingly divert them to [the Respondent’s] website as well as to websites that advertises competitive services from competing companies”.
5.5 The Complainant, therefore, claims that the Domain Name was registered and has been used in bad faith.
5.6 It further also appears to claim that the Respondent’s failure to do a trade mark search “can also contribute to prove bad faith”. Finally, it contends that the use of a privacy service provides further support for an inference of bad faith in this particular case.
5.7 The Complainant asks for the Domain Name to be cancelled rather than transferred to it. B. Respondent
5.8 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge any Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, 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 (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Domain Name comprises the entirety of the Complainant’s LIDO trade mark and the dominant element of the Complainant’s LE LIDO trade mark, with the addition of the word “talent” and the addition of the generic Top-Level Domain (“gTLD”) “.com”. The addition of the word “talent” does not so transform or change the natural reading of the Domain Name so as to prevent a finding of confusing similarity with these marks. Indeed, the Panel accepts that the association of the word “talent” with the world of show business and the fact that the Complainant’s class 41 registration for the LE LIDO mark covers show business related activities, increases the degree of similarity so far as that mark is concerned.
6.5 The Panel therefore finds that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 For the reasons that are explained in greater detail when considering the issue of bad faith later on in this Decision, the Panel concludes that the Domain Name has been registered, held and used with the intention of taking unfair advantage of the reputation of the Complainant’s business and marks, whether that unfair advantage be through the use of the Domain Name for a pay-per-click parking page or otherwise. Such registration and use does not provide a right or legitimate interest for the purposes of the Policy; see paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”).
6.7 The Panel therefore finds that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.8 The terms “lido” (although of Italian derivation) and “talent” are each ordinary English words. However, their combination is an unusual one. In the absence of any explanation from the Respondent as to why he registered a domain name combining those two words, the most likely explanation is that the Domain Name was registered because of its associations with the Complainant’s business and marks. The key factors that support that conclusion are that Complainant has brought forward evidence that its LIDO and LE LIDO marks have a considerable reputation that extends beyond the borders of France, and the fact that the word “talent” is a word that has show business related connotations that appears to involve a direct allusion to the Complainant’s business.
6.9 The Complainant also points to the display of search links on the parking page operating from the Domain Name, which if clicked on display pay-per-click sponsored links associated with the business of the Complainant and its competitors. The Panel considers this to be use in bad faith within the scope of paragraph 4(b)(iv) of the Policy, even if (as is often the case) the links displayed were chosen by the parking page operator. Although the Panel cannot be certain why the Domain Name was initially registered, it is persuaded that it was registered with the intention of either that use in violation of paragraph 4(b)(iv) or some other use that took unfair advantage of the Complainant’s trade marks. That is sufficient for a finding of bad faith registration and use (see, for example, M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
6.10 The Panel, therefore, finds that 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 Domain Name be cancelled.
Matthew S. Harris
Sole Panelist
Date: May 2, 2016
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