The Complainant is Assurances Premium SARL of Hyeres, France, represented by Nameshield, France.
The Respondent is Whois Privacy Shield Services of Irvine, California, United States of America / Daisuke Yamaguchi of Chiba, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with T, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 13, 2016. On July 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2016, 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. The Center sent an email communication to the Complainant on July 19, 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 July 20, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 17, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on August 22, 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 an insurance brokerage company incorporated in France since 1939. It specializes in the design of automobile insurance products collection. It is a subsidiary of the French group FAVIER CASANOVA ASSOCIÉS.
The Complainant is the owner of the French Trademark No. 4113767, registered with the National Institute of Industrial Property of France on August 27, 2014, for MASCOTTE ASSURANCES.
The Complainant is also the owner of the domain name , registered on May 26, 2004.
The Respondent is a Japanese individual named Daisuke Yamaguchi of Chiba, Japan.
The disputed domain name was registered with T, Inc. on January 31, 2015. The disputed domain name was used in connection with a website blog template in Japanese.
A cease-and-desist letter has been sent to the Respondent by the Complainant's agent to let him justify the registration of the disputed domain name on June 16, 2016 (The letter stated that the Complainant was the owner of a European Union trademark. However, the Complaint has been based on the Complainant's French trademark). The Respondent did not respond. At the time of drafting this decision the website under the disputed domain name does not resolve to any webpage. 5. Parties' Contentions A. Complainant
The Complainant contends as follows: Identical or confusingly similar
The Complainant contends that the disputed domain name other than the generic Top-Level Domain ("gTLD") ".com" and hyphen is identical to their French trademark MASCOTTE ASSURANCES and their domain name . No rights or legitimate interests
The Respondent has no rights or legitimate interest in the disputed domain name as it was neither granted a license nor authorization to make any use of the Complainant's trademark. Furthermore, the translation of the content of the website also shows the lack of legitimate interests as the website displays a WordPress blog template that makes reference to body care. The Respondent, therefore, has no rights or legitimate interests in the disputed domain name. Registered and used in bad faith
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent could not have ignored the Complainant's trademark and domain name at the moment of the registration of the disputed domain name. The trademark is composed of two French words "Mascotte" and "Assurances" which have no meaning in English or Japanese language.
The Complainant also contends that the bad faith can be inferred from the Respondent's lack of reply to the cease and desist letter sent by the Complainant's agent prior to this proceeding on June 16, 2016.
Finally, the Complainant contends that the Respondent has registered and is using the disputed domain name in order to prevent the owner of the trademark from reflecting the trademark in a corresponding domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 use in bad faith. A. Identical or Confusingly Similar
The disputed domain name , other than the gTLD ".com" and hyphen, is identical to the Complainant's trademark MASCOTTE ASSURANCES.
The Panel notes that the Complainant does not have a registered trademark for MASCOTTE ASSURANCES in Japan. However, the ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. However, such factors may bear on a panel's determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP. (See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"))
The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview 2.0 provides:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
The Complainant is the owner of the MASCOTTE ASSURANCES trademark and has no business or any relationships with the Respondent. The disputed domain name pointed to a website displaying a WordPress blog template in Japanese about body care, with no relation to the disputed domain name.
The Complainant thus has made a prima facie case showing the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish they have rights and legitimate interests. These are:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
Considering the absence of a response by the Respondent and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant's trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.
The disputed domain name has also been used in bad faith. This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Panel finds that the Respondent would not have chosen and registered the disputed domain name in good faith without having been aware of the Complainant's existing trademark and domain name in France, especially given the fact that "MASCOTTE ASSURANCES" carries no meaning in either the English or Japanese languages. The Panel finds that the Respondent must have been aware of the Complainant's trademark.
While the website under the disputed domain name does not appear to be related to the Complainant, the use of the disputed domain name can only have been intended to attract consumers to the Respondent's website which appears to generate revenue from links offering for sale beauty products.
The third element of paragraph 4(a) of the Policy is therefore satisfied. 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.
Douglas Clark
Sole Panelist
Date: September 6, 2016
Full & Egal Universal Law Academy