The Complainant is Schmidt Groupe of Lièpvre, France, represented by Osmose Avocats, France.
The Respondent is Privacydotlink Customer 1028415 of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Gustavo Winchester of Belo Horizonte, Brazil. 2. The Domain Name and Registrar
The disputed domain name is registered with Uniregistrar Corp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 21, 2017. On February 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2017, 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 February 27, 2017 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 March 1, 2017.
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 March 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 24, 2017.
The Center appointed Cherise Valles as the sole panelist in this matter on April 12, 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 a French manufacturer of kitchen units founded in 1934 which has a presence in more than 20 countries worldwide. The Complainant has used the mark CUISINES SCHMIDT for more than 30 years in France and Europe, and the term "Schmidt" (the name of the Complainant's founder) as a brand for its products in France, Europe and worldwide since the Complainant's creation.
The Complainant is the owner of multiple trademark registrations in France for the CUISINES SCHMIDT marks (registered under the Complainant's previous name of SALM). These include the following:
- French trademark registration No. 1451133 for CUISINES SCHMIDT, registered on October 21, 1987, in class 20;
- French trademark registration No. 1500700 for CUISINES SCHMIDT, registered on November 29, 1988, in classes 11 and 21; and
- International trademark registration No. 532502 for CUISINES SCHMIDT, registered on December 19, 1988 in class 20.
The Complainant has also registered the domain name , which the Complainant has used to promote its business since 1998.
The disputed domain name was registered on August 30, 2005. The disputed domain name resolves to a website displaying pay-per-click links. 5. Parties' Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights:
- The disputed domain name is confusingly similar to the Complainant's registered CUISINES SCHMIDT trademark, in light of the fact that it differs from the Complainant's trademark by only one letter.
The Respondent lacks rights or legitimate interests in the disputed domain name:
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith:
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
- the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a response in this proceeding and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant's trademark.
The Complainant is the sole and exclusive owner of the CUISINES SCHMIDT mark. The Complainant is the owner of multiple trademark registrations worldwide for the trademark CUISINES SCHMIDT, as indicated in Section 4 above.
The disputed domain name differs only from the Complainant's CUISINES SCHMIDT mark in that the letter "s" has been removed from the end of the word "cuisines". This removal does not avoid confusing similarity, and is likely to be an imperceptible difference for Internet users. The registration of the disputed domain name is an act of typosquatting, whereby the Respondent has aimed to redirect consumers attempting to reach the Complainant's website.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: "[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws appropriate inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have established that in order to shift the burden of proof to the Respondent, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent is not commonly known by the disputed domain name. The Complainant has never authorized the Respondent to use its trademarks or to register a domain name comprising its trademarks. There is no legal or commercial relationship between the Complainant and the Respondent which would entitle the Respondent to use or register the disputed domain name. Previous Panels have found that in the absence of any license or permission from the complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name can reasonably be claimed. See, for example, LEGO Juris A/S v. DomainPark Ltd, David Smith, A Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138.
The term "Schmidt" is the surname of the Complainant's founder and has no particular meaning. In the kitchen trade business, the term "Schmidt" has been long associated with the Complainant's business. A Google search for the term "Schmidt" directs Internet users primarily to the Complainant's website and articles regarding the Complainant's business (and exclusively to such results for the first two Google pages of the search). The Panel finds that the combination of the terms "Schmidt" and "cuisine" refer in the consumer's mind to the products and services commercialized by the Complainant. The Complainant can legitimately claim to have rights and interests in a domain name which wholly comprises the terms "Schmidt" and "cuisine", whereas the Respondent cannot.
The disputed domain name was registered on August 30, 2005, by which time the Complainant's CUISINES SCHMIDT trademarks had been used extensively, and were well-known, worldwide particularly in the kitchen trade industry. The Respondent must therefore have been aware of the Complainant's rights in the CUISINES SCHMIDT trademarks at the time of the registration of the disputed domain name, especially because the disputed domain name differs from the Complainant's marks by only one letter. Given the distinctiveness of the Complainant's trademarks and domain name, it is highly unlikely that the Respondent independently conceived of the disputed domain name without reference to the Complainant's trademarks and business. The Respondent has no basis to claim to have been using the trademark CUISINES SCHMIDT without having been aware of the Complainant's rights to it. This suggests that the Respondent's interests cannot have been legitimate.
The Respondent is using the disputed domain name to promote the business of the Complainant's direct competitors through pay-per-click links that lead Internet users to their websites, and to offer for sale the disputed domain name. The Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has 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 respondent's website or location or of a product or service on its website or location.
The website at the disputed domain name displays links that redirect Internet users towards competing products and services offered by the Complainant's direct competitors, including a website which provides ideas and advice to consumers on how to set up a kitchen – one of the services offered by the Complainant on its own website. In addition, one of the links on the website at the disputed domain name directs Internet users to an online auction platform which offers for sale the disputed domain name. The Panel finds, in the circumstances of the case, that the Respondent intentionally registered and is using the disputed domain name primarily to attract users for commercial gain by creating confusion with the Complainant's mark, or alternatively for the purpose of selling it to the Complainant or one of the Complainant's competitors. The Respondent's use of the Complainant's trademark within the disputed domain name for profit is not good faith use in accordance with the Policy. See The Manufacturers Life Insurance Company v. Jan Fishman, Fishman Lawyers,WIPO Case No. D2016-0511.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name 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.
Cherise Valles
Sole Panelist
Date: May 1, 2017
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