The Complainant is Société BIC of Clichy, France, represented by DBK – Société d'avocats, France.
The Respondent is Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2017. On March 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 17, 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 March 28, 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 April 6, 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 April 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 3, 2017.
The Center appointed Dawn Osborne as the sole panelist in this matter on May 18, 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 manufactures and sells disposable everyday products such as pens, lighters and shavers. It is the owner of registered trade marks for BIC for such products in, inter alia, the USA and the European Community and has a French trade mark registration for BIC dating back to 1990.
The Domain Name registered in 2012 has been used to point to sponsored links that offer competing products to the Complainant. The Domain Name has been offered for sale. 5. Parties' Contentions A. Complainant
The Complainant's contentions can be summarized as follows:
The Complainant manufactures and sells disposable everyday products such as pens, lighters and shavers. It is the owner of registered trade marks for BIC for such products in, inter alia, the USA (trade mark No. 2457461, registered on June 5, 2001) and the European Community (trade mark No. 414904, registered on October 16, 1998) and has a French trade mark registration for BIC dating back to 1990 (trade mark No. 1572171, registered on January 26, 1990). The BIC trade mark has been used since the 1950s and is considered famous. The Complainant owns the domain name registered in 1996.
The Domain Name was registered anonymously using a privacy protection service. It leads to a parking web page where the Internet user can find links to the products of the competitors of the Complainant. The Respondent did not answer the Complainant's cease and desist letter.
The Domain Name is confusing to the Complainant's BIC trade mark because it wholly incorporates it adding only the descriptive word "razor" referring to products the Complainant makes. Anyone seeing the Domain Name would think it is associated with the Complainant.
The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not authorized the Respondent to register and/or use any domain name incorporating the BIC mark. The Respondent is anonymous and has not made a legitimate, noncommercial or fair use of the Domain Name.
The Domain Name points to a general page which provides links to a number of web sites offering products in competition to those of the Complainant. This page is not linked to any direct sales from the Respondent, but is a monetisation web site generating revenue via Internet traffic increased by the use of a famous trade mark in the web site address.
The Domain Name has been registered in bad faith. The BIC mark is well-known. The use of the Domain Name in connection to a website displaying sponsored links to other commercial sites amounts to bad faith.
The Domain Name has been offered for sale generally. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Identical or Confusingly Similar
The Domain Name consists of the Complainant's BIC mark (which is registered, inter alia, in France since 1990 for a variety of products including razors), the generic term "razor" and the generic Top-Level Domain ("gTLD") ".com". Confusing similarity is commonly found under the Policy when a respondent merely adds a generic term to a Complainant's mark. The Panel agrees that the addition of the generic term "razor" to the Complainant's BIC mark does not distinguish the Domain Name from the Complainant's trade mark pursuant to the Policy. In fact it may add to confusion as it describes products offered by the Complainant.
The gTLD ".com" does not serve to distinguish the Domain Name from the BIC mark, which is the distinctive component of the Domain Name.
Accordingly, the Panel holds that the Domain Name is confusingly similar to a mark in which the Complainant has rights.
As such the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied. Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact commonly known by the Domain Name.
The Complainant contends that the Domain Name points to a website set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights. The Respondent is using the website attached to the Domain Name for links offering products in competition with those of the Complainant under the Complainant's famous mark which is used in the link headers. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this much later use of the Complainant's famous BIC mark in relation to competing goods confusing. As such it cannot amount to the bona fide offering of goods and services under paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use described in paragraph 4(c)(iii) of the Policy.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the conditions of paragraph 4(a) (ii). Registration and Use in Bad Faith
The Complainant also alleges that the Respondent's use of the Domain Name is commercial and it is using it to make profit by competing with the Complainant in a confusing and disruptive manner. In the opinion of the panelist, the use made of the Domain Name in relation to a pay-per-click website is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers competing goods without any explanation. The use on the Respondent's website of the Complainant's BIC mark, relating to competing specific products and registered by the Complainant long before use by the Respondent, shows that the Respondent is aware of the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site under paragraph 4 (b)(iv) of the Policy which is also likely to disrupt the business of the Complainant under paragraph 4 (b)(iii) of the Policy.
The BIC name is well known for disposable products and the Respondent has offered the Domain Name for sale on "" for at least 350 dollars. As such it seems the Domain Name was also registered for sale for a sum in excess of the reasonable costs associated with the Domain Name under paragraph 4 (b)(i) of the Policy.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(i), 4(b)(iii) and 4(b)(iv). 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.
Dawn Osborne
Sole Panelist
Date: May 31, 2017
Full & Egal Universal Law Academy