Complainant is Institut Merieux of Lyon, France represented by Cabinet Lavoix, France.
Respondent is Cameron Jackson of Norfolk Island, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Instra Corporation Pty Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2016. On December 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2017.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on January 6, 2017. 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
Complainant owns many registrations worldwide for its family of INSTITUT MERIEUX marks, including, for example, INSTITUT MERIEUX, New Zealand trademark Registration number 179063, registered October 25, 1991 in international class 5; INSTITUT MERIEUX (with design), European Union Trade Mark number 008876872, registered August 2, 2010 in classes 5, 10 and 42.
The disputed domain name was registered June 30, 2016, and currently resolves to a parking page which is being used to advertise commercial domain hosting services. 5. Parties’ Contentions A. Complainant
Complainant is based in France. Complainant has a long history in medical science development, the introduction of vaccines and diagnostics. Complainant traces its history back over 100 years to Marcel Mérieux, the grandfather of Alain Mérieux, current President of the Institut Mérieux.
Summarizing its legal contentions, Complainant alleges that (1) the disputed domain name is identical or confusingly similar to Complainant’s trademarks, (2) Respondent has no rights or legitimate interests in the disputed domain name, and (3) the disputed domain name was registered and is being used in bad faith, all in violation of the Policy.
On the basis of the above, Complainant requests the transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Notification of Proceedings
The Policy and the Rules establish procedures to give respondents notice of proceedings and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). The Center sent by courier and email to Respondent notification of this proceeding, using the contact information provided by the Registrar and Complainant. The contact information did not include a fax number. The Written Notice was not deliverable to the address provided.
The Panel is satisfied that by sending communications to the contact addresses provided by the Registrar, provided by Complainant and listed in the WhoIs records on the day of the notification, the Center has exercised care, fulfilling its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent. B. Substantive Rules of Decision
The Panel must render its decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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 used in bad faith.
Complainant must establish these elements even if Respondent does not submit a Response. E.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). C. Identical or Confusingly Similar
The Panel agrees that the disputed domain name is identical to Complainant’s trademarks in the sense of the Policy.
Panels usually disregard the domain name suffix (or generic Top-Level Domain (“gTLD”)) in evaluating identity and confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
Omitting the “.xyz” gTLD, the disputed domain name adopts Complainant’s trademarks in their entirety.
The Panel finds therefore that the disputed domain name is identical to the registered trademarks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled. D. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response rebutting the complainant’s prima facie case. See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005.
The Panel accepts Complainant’s undisputed allegations that Respondent has no authorization to use Complainant’s trademarks and that Respondent is not making bona fide use of the disputed domain name under the Policy. The Panel also agrees that Respondent is not commonly known by the disputed domain name.
The routing of Internet users by Respondent to a website promoting commercial products unrelated to the trademarks precludes any finding that there is a legitimate non-commercial interest in, or fair use of, the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
The Complaint makes out a prima facie case. Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of rights or legitimate interests in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. E. Registered and Used in Bad Faith
The Panel also concludes that the Complaint fulfills the third element of paragraph 4(a) of the Policy, bad faith registration and use, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the complaint, and other circumstances. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In the Panel’s view, there exists no conceivable reason for Respondent to have chosen the disputed domain name but for Respondent’s motivation to ride on the reputation of Complainant’s marks, which existed for many years at the time of Respondent’s registration. This in and of itself evidences registration in bad faith.
The use of the disputed domain name to route to a parking page unrelated to Complainant, to generate revenues through advertising hosting services, establishes bad faith use.1
The record also shows that Respondent has continued to engage in an extensive pattern of registering domain names identical to or bearing a striking resemblance to third-party marks, a pattern of conduct establishing bad faith under paragraph 4(b)(ii) of the Policy. In only the past year, Respondent faced several UDRP complaints brought against him; each UDRP panelist ruled that Respondent registered and used the domain names at issue in bad faith. Statoil ASA v. Cameron Jackson,WIPO Case No. D2016-1649; Intensa Sanpaolo S.p.A. v. PrivacyDotLink Customer No. 2413949/Cameron Jackson,WIPO Case No. D2016-1640; The American Automobile Association v. Cameron Jackson/PrivacyDotLink Customer No. 2440314WIPO Case No. D2016-1671; Comerica Bank v. Cameron David Jackson aka Cameron Jackson,WIPO Case No. D2016-1678; Monster Energy Company v. Cameron Jackson,WIPO Case No. D2016-1868; Volkswagen AG v. Cameron Jackson,WIPO Case No. D2016-1910; Fédération Française de Tennis v. Cameron Jackson,WIPO Case No. D2016-1917.
Respondent has engaged in this pattern of conduct for several years. See, e.g., cases listed in Statoil ASA v. Cameron Jackson,WIPO Case No. D2016-1649.
Respondent’s failure to respond to the Complaint or to provide accurate contact details in accordance with Respondent’s agreement with the registrar are further evidence of bad faith. Consequently, the Panel concludes that the requirements of the third element of Policy paragraph 4(a) are fulfilled. 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 Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Date: January 15, 2017
1 The Panel infers that Respondent receives revenues for diverting traffic via the links appearing on the parking page to which the disputed domain name routes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope,WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site”(citing COMSAT Corporation v. Ronald Isaacs,WIPO Case No. D2004-1082)); Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt,WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd.,WIPO Case No. D2006-1079.
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