The Complainant is Billards Toulet of Bondues, France, represented by Sandie Theolas, France.
The Respondent is Damon Nelson - Manager, Quantec LLC/Novo Point, LLC of Dallas, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2016. On December 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 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 December 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2017.
The Center appointed James A. Barker as the sole panelist in this matter on January 16, 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
The Complainant is the owner of registered trademarks for BILLARDS TOULET registered in France in class 28 for the products billiards and billiard cues, and the mark TOULET registered in France in class 28 for the products gaming, tables, toys, billiard cues or billiard balls. Those marks were respectively registered in February and May 2008. The Complainant also has an internationally registered mark for TOULET.
The Complainant says that it has offered its products under the TOULET mark since 1857. Evidence attached to the Complaint indicates that the mark TOULET is derived from the name of the Complainant’s founder, Louis Toulet.
The Registrar in this case was unable to confirm the date that the disputed domain name was registered by the Respondent. The Complainant claimed that it was registered by the Respondent in April 2006.
At the date of this Decision, the disputed domain name reverted to a website containing a list of simple
pay-per-click links to subjects such as “Billiards Toulet”, “Billiard Pool Table”, “Billiard”, “Toilet Tank Plumbing”, “8 Foot Snooker Table”, among others. 5. Parties’ Contentions A. Complainant
The Complaint is brief. The Complainant says that the disputed domain name is identical to its registered mark for BILLARDS TOULET.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not known by the disputed domain name and has no relationship whatsoever with the Complainant. The disputed domain name does not resolve to an active website created by the Respondent.
The Complainant says that the Respondent has registered and used the disputed domain name in bad faith. The Complainant says that the Respondent knew about its BILLARDS TOULET trademark and incorporated it in the disputed domain name to exploit the recognition and reputation of the Complainant’s mark. The disputed domain name resolves to a parking website featuring a number of pay-per-click sponsored links to other commercial websites. The majority of the links contain the Complainant’s trademarks. While the Respondent’s website includes a message which disclaims responsibility, a domain name registrant will normally be deemed responsible for content appearing on a websites at its domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions, or submit any other communication in connection with this case. 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, immediately after a discussion of the apparent delay between the registration of the disputed domain name and the filing of the Complaint. A. Delay in bringing the Complaint
The Complainant states, with little supporting evidence, that the disputed domain name was registered in 2006. The Registrar stated that it was unable to confirm the registration date of the disputed domain name. With no conclusive evidence on this point, the Panel is prepared to accept the Complainant’s assertion, as it is not contested by the Respondent, and is not otherwise a matter which appears obviously self-serving. If it is correct, it raises the issue of whether the Complainant has delayed bringing proceedings, and whether this is a matter that counts against it.
The time between the 2006 creation date of the disputed domain name and the filing of the Complaint in 2016 is obviously a significant period of time. The UDRP panels have recognized that the Policy contains no limitation period for making a claim and a delay in bringing a complaint does not provide a defense per se under the Policy: Chocolaterie Guylian, Naamloze Vennootschap (N.V.) v. Zeugma,WIPO Case No. D2010-2256. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.10. As such, and even in the absence of an explanation from the Complainant, the Panel has not drawn a negative inference from the delay in the filing of the Complaint. B. Identical or Confusingly Similar
The disputed domain name is only trivially different to the Complainant’s mark. The only difference is the insertion of a hyphen in the disputed domain name. Previous cases under the Policy have found that the insertion of a hyphen does not avoid a finding of confusing similarity: see, e.g., Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281. Given the trivial nature of this difference, the Panel finds that the disputed domain name is virtually identical to the Complainant’s mark.
In these circumstances, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) requires the Complainant to establish also that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. The overall burden of proof remains with the Complainant. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270.
In this case, the Complainant has made out such a prima facie case against the Respondent by pointing to, for example, the nature of the Respondent’s website and relevant prior decisions under the Policy.
The Respondent has submitted no reply to the case against it. There is otherwise no evidence in the case file to suggest that the Respondent might have some rights or legitimate interests in the disputed domain name. The Panel also considers that the Respondent lacks such rights or legitimate interests in the circumstances of bad faith, set out below.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The third matter which the Complainant must provide is that the disputed domain name was registered and subsequently used in bad faith.
Paragraph 4(b)(iv) of the Policy sets out one example of bad faith registration and use, where: “[…] by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your [the Respondent’s] web site 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 web site or location or of a product or service on your web site or location.”
This is what the Complainant says the Respondent has done. The Respondent has registered a domain name that is virtually identical to the Complainant’s BILLIARDS TOULET mark. That mark has been used by the Complainant for a substantial period of time. It has been used by the Complainant for a relatively specialized purpose (in connection with billiard tables and accessories). There is no evidence the Respondent has rights or legitimate interests in those terms. It seems unlikely to the Panel that the Respondent chose to register the exact terms of the Complainant’s mark by accident.
The website at the disputed domain name primarily contains links that relate to the products of the Complainant or, in one case, the Complainant’s own trademark. Even if these links are generated automatically, it can only be because the Respondent has set it up that way. The inevitable inference from the facts of this case is that the Respondent registered the disputed domain name knowing that it would create confusion with the Complainant’s mark and to obtain some revenue from the links on its own website. The Panel considers the evidence of this case support this inference, and there is no evidence to the contrary. Further, the Respondent does not challenge the allegations to this effect made by the Complainant.
For these reasons, the Panel finds that the Complainant has established its case 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 name be transferred to the Complainant.
James A. Barker
Sole Panelist
Date: January 30, 2017
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