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 Xiao Kaka of Hengyang, Hunan, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2016. On July 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 1, 2016, 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 July 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2016.
The Center appointed Jonathan Agmon as the sole panelist in this matter on August 9, 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
The Complainant is Société d’Exploitation et de Gestion de Spectacles de Music Halls Internationaux, a France based corporation, founded in 1946.
The Complainant is the owner of numerous worldwide trademark registrations for the mark LIDO for inter alia musical cabaret services. For example: International trademark registration No. 389915, with the registration date of June 19, 1972; France trademark registration No. 842927, with the registration date of March 23, 1972, and more.
The disputed domain names and were registered on February 25, 2016.
The disputed domain names resolve to online websites with links to gambling and adult escort services, as well as linking to the Complainant’s official LIDO website. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain names identically reproduce the mark LIDO and the main distinctive part of the mark LE LIDO with the addition of the word “vip”.
The Complainant further argues that WIPO Arbitration and Mediation Center already recognized the well-known character of the Complainant’s mark LIDO (See, e.g., Société d’Exploitation et de Gestion de Spectacles de Music Halls Internationaux v. WhoIsguard Inc. / John Hernandez,WIPO Case No. D2016-0630).
The Complainant further argues that the addition of the word “vip” in the disputed domain names is inoperative to distinguish them from the Complainant’s marks, as the name “lido” keeps its attractive and individual character in the whole.
The Complainant further argues that disputed domain names were registered in the name of an individual called Xiao Kaka whose name is known to the Complainant, since the Respondent has previously been involved in aWIPO Case No. D2015-2326 filed by the Complainant for the domain name , which had the same type of links. In that matter, the Complainant further argues that considering the previous proceeding, the Respondent knew that he had no rights or legitimate interests in the disputed domain names. Moreover, the Complainant argues that the Respondent does not have any affiliation or connection with the Complainant and has not been authorized or otherwise permitted by the Complaint to use the LIDO trademark.
The Complainant further argues that the Respondent has registered and is using the disputed domain names in bad faith.
The Complainant further argues that the Respondent is using the disputed domain names by exploiting the confusion with the well-known mark LIDO / LE LIDO to divert Internet traffic to gambling websites and adult escort services.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.
The Complainant is the owner of numerous worldwide trademark registrations for the mark LIDO. For example: International trademark registration No. 389915, with the registration date of June 19, 1972; France trademark registration 842927, with the registration date of March 23, 1972, and more.
The disputed domain names and incorporate the Complainant’s LIDO trademark in its entirety, as a dominant element.
The disputed domain names and differ from the LIDO trademark by the additional term “vip” that stands for “very important person” and the generic Top-Level Domain (“gTLD”) suffix “.com”.
The Panel finds the addition of the term “vip” does not serve to sufficiently distinguish or differentiate the disputed domain names from the Complainant’s LIDO trademark. It is clear that the most prominent element in the disputed domain name is the mark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the relevant trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the gTLD suffix “.com” to the disputed domain names does not avoid confusing similarity to the Complainant’s trademark (see, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Thus, the gTLD suffix “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the LIDO trademark, or a variation thereof.
The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain names that is sufficient to rebut the Complainant’s prima facie case.
The Panel takes into account the previous UDRP proceeding with the Respondent (Société d’Exploitation et de Gestion de Spectacles de Music Halls Internationaux v. Xiao KaKa,WIPO Case No. D2015-2326) where the Respondent had registered the domain name which was transferred to the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark and clearly with the knowledge of the existence of the Complainant’s trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the LIDO trademark since the year 1972. It is suggestive of the Respondent’s bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The disputed domain names are confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Panel takes into account the previous UDRP proceeding with the Respondent (Société d’Exploitation et de Gestion de Spectacles de Music Halls Internationaux v. Xiao KaKa,WIPO Case No. D2015-2326) where the Respondent had registered the domain name which was transferred to the Complainant.
Therefore, the Panel finds that the Respondent’s actions to register the disputed domain names constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel also finds that the Respondent’s attempt to attract, for commercial gain, Internet users to its websites with the intent to creating a likelihood of confusion with the Complainant’s trademarks and its affiliation with the Complainant’s website falls under paragraph 4(b) of the Policy.
Based on the evidence presented to the Panel, including the registration of the disputed domain names long after the registration of the Complainant’s marks, the previous proceeding between the parties, the reputation of the Complainant’s trademark and the Respondent’s use of the disputed domain names, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under 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 names, and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: August 23, 2016
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