The Complainant is Desautel of Lyon, France, represented by Cabinet Lavoix, France.
The Respondent is Holding Account, SnapNames W, LLC of Jacksonville, Florida, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name is registered with WillametteN LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2016. On October 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 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 Complaint did not include a named Respondent, but rather referred to it as “unknown”. Accordingly, the Center sent a Complaint Deficiency Notification on October 31, 2016. The Complainant responded to this email on November 3, 2016, adding the Respondent confirmed by the Registrar to the Complaint through an amendment.
The Center verified that the Complaint together with the amendment to 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 November 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2016.
The Center appointed James A. Barker as the sole panelist in this matter on December 8, 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 the owner of a European registered mark for DESAUTEL registered in March 2006 in classes 9, 11 and 12 variously for (as described in the Complaint), in part, “Fire hose nozzles, fire engines, anti-explosion apparatus”, “Apparatus for refrigerating, water supply and sanitary purposes, humidifiers, refreshing showers for places and people”, “Vehicles, apparatus for locomotion by land, air or water self−propelled devices for fire-fighting; motorized fire engines, ambulances, emergency rescue vehicles.” The Complainant also registered that mark in France since May 1971, and also owns an international registration for the same, registered in 1998.
At the date of this decision, the disputed domain name did not link to an active website. The Complainant provides a screen shot of the website at which the disputed domain name referred in October 2016. At that time, the evidence shows that the website was a landing website, containing various links with titles such as “Kitchen Fire Suppression” and “Fire Extinguishers Sale”, and containing links to other sites that sell fire extinguishers.
The disputed domain name was registered in May 2016 (as confirmed by the WhoIs details provided by the Registrar). 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is relevantly identical to its registered mark. As such it is likely to cause confusion, mistake or deception.
The Complainant also says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is using the disputed domain name for a commercial website with sponsored links to companies selling products that compete with the Complainant’s. The Respondent is not a licensee or otherwise authorized by the Complainant to use the Complainant’s marks. There is no plausible explanation for the Respondent’s registration of the disputed domain name.
Lastly, the Complainant says that the disputed domain name was registered and has been used in bad faith. The Complainant points to the character of the various links that appeared on the Respondent’s website. From this, the Complainant says that the Respondent, by using the disputed domain name, has attempted to attract Internet users to its website by creating confusion with the Complainant’s mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and has been used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below. A. Identical or Confusingly Similar
It is well-established that the “.com” extension is to be disregarded in determining whether a disputed domain name is identical or confusingly similar to a trademark.
Disregarding that extension, it is clear that the disputed domain name is relevantly identical to the Complainant’s registered mark. B. Rights or Legitimate Interests
In the absence of a Response and on the present record, the Panel cannot fathom any reasonable right or legitimate interest it might have in the disputed domain name. While the Complainant did not provide any explanation of the derivation of its mark, it is one that has been registered for more than 40 years by the Complainant in connection with products such as fire extinguishers. As a registered mark, it is also entitled to a presumption of distinctiveness. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047, Owens Corning Fiberglas Technology, Inc v. Hammerstone,WIPO Case No. D2003-0903.
There is nothing known about the business of the Respondent. The Complainant provides evidence that the disputed domain name has been used in connection with a landing website, which contained a variety of links to websites relating to products seemingly competing with those marketed by the Complainant. The Respondent has registered a domain name exactly corresponding to the Complainant’s mark and used it in this connection.
The obvious impression this evidence creates is that the Respondent registered the disputed domain name to deliberately increase traffic to its website, by creating a misleading association with the Complainant’s mark. Such a use cannot be a basis for a right or legitimate interest.
It is perhaps notable that the Complainant never registered a domain name in the popular generic Top-Level Domain “.com” space to correspond to its DESAUTEL mark. This is despite having had registered rights at least in France since 1971. But for the purpose of the Policy, this is of no moment. All the Complainant is required to establish is the three elements in paragraph 4(a) of the Policy.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
For similar reasons, the Panel finds that the disputed domain name was registered and has been used in bad faith. The Panel cannot think of any plausible alternative explanation for the Respondent’s registration and use of the disputed domain name, than to unfairly trade off the reputation in the Complainant’s mark.
The Complainant’s mark appears fanciful and distinctive. As such, it is unlikely the Respondent chose the mark by accident or in some other connection, other than because of its association with the Respondent. The previous content of the Respondent’s website, which related to products similar to those offered by the Complainant, confirms this impression.
The Respondent’s conduct appears to fall squarely within paragraph 4(b)(iv) of the Policy. That paragraph provides that there is evidence of bad faith in circumstances where a respondent intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
As such, the Panel finds that the disputed domain name has been registered and used in bad faith. 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.
James A. Barker
Sole Panelist
Date: December 18, 2016
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