The Complainant is Moulin Rouge of Bruxelles, Belgium, represented by Casalonga Avocats, France.
The Respondent is Paul Helyer of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2018. On March 22, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2018, the Registrar transmitted by e-mail 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 April 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2018.
The Center appointed Luca Barbero as the sole panelist in this matter on May 3, 2018. 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 the trademark MOULIN ROUGE, which has been used in connection with the famous cabaret establishment founded in Paris in 1889.
The MOULIN ROUGE cabaret was immortalized by the painter Henri de Toulouse-Lautrec, and several international stars have performed on stage at the Moulin Rouge, including Ella Fitzgerald, Liza Minelli, Frank Sinatra, Elton John, who followed in the footsteps of French celebrities such as Maurice Chevalier, Jean Gabin, Edith Piaf and Yves Montand.
Millions of spectators have seen the MOULIN ROUGE show, which continues to be a very popular Parisian attraction known worldwide.
The Complainant is the owner, amongst others, of the following trademark registrations for MOULIN ROUGE:
- European Union trademark registrations Nos. 110437 for MOULIN ROUGE (word mark), filed on April 1, 1996 and registered on November 5, 1998, in classes 3, 14, 18, 25, 32, 33 and 41; and 263004 for MOULIN ROUGE (word mark), filed on May 23, 1996 and registered on June 23, 1998, in class 24;
- United Kingdom trademark registration Nos. 1209919 for MOULIN ROUGE (word mark), filed and registered on December 23, 1983, in class 3; and 1329686 for MOULIN ROUGE (word mark), filed on December 15, 1987 and registered on September 7, 1990, in class 33.
Information about the MOULIN ROUGE theatre, performances and services have been provided for over 17 years through the website at the domain name , registered in the name of the Complainant’s affiliated company Bal du Moulin Rouge.
The disputed domain name was registered on April 26, 2005 and has not been pointed to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trademark MOULIN ROUGE, since it reproduces the trademark in its entirety with the addition of the terms “the musical”, which are descriptive of services provided under the trademark.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name because:
i) The Complainant has no relationship with the Respondent and has not provided it any license, permission or authorization to use the mark;
ii) The Respondent has no trademark rights for MOULIN ROUGE, since a search conducted on trademark databases for trademarks filed in the name of the Respondent revealed no results;
iii) The disputed domain name does not include the name of the Respondent or a name that is otherwise commonly used to identify the Respondent and nothing in the WhoIs records indicates that the Respondent is or has been commonly known by the disputed domain name;
iv) There is no evidence of the Respondent’s use or preparation to use the disputed domain name in connection with a bona fide offer of goods or services, since the Respondent has not used the disputed domain name since its registration and one could assume that the only intent of the Respondent was to sell the disputed domain name to the Complainant for valuable consideration exceeding the costs directly related to the disputed domain name.
The Complainant submits that the Respondent registered the disputed domain name in bad faith since it knew or should have known of the Complainant’s prior registered and well-known trademarks. The Complainant also stresses that the Complainant’s knowledge of the mark MOULIN ROUGE is demonstrated by the use in the disputed domain name of the terms “the musical”, which are directly linked to the services of musical entertainment provided by the Complainant under its trademark.
The Complainant asserts that the fact that the Respondent does not currently use the disputed domain name does not preclude the Panel from finding bad faith and alleges that the fact that it has never been used since its registration in 2005 can only lead to conclude that its sole purpose was to sell the disputed domain name to the Complainant.
The Complainant also states that Internet users may believe that the disputed domain name refers to the Complainant’s official website and concludes that the Respondent or any related entity is using the website at the disputed domain name to intentionally misdirect users searching for information about the Complainant and its services, by creating a likelihood of confusion with the Complainant’s trademark.
The Complainant also highlights that it is a well-established principle that registration of a domain name that is confusingly similar to a well-known trademark by an entity which does not have a relationship with such mark can amount to sufficient evidence of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the trademark MOULIN ROUGE based on the trademark registrations cited under Section 4 above.
The disputed domain name incorporates the trademark MOULIN ROUGE in its entirety, with the addition of the terms “the musical” and the generic Top-Level Domain (“gTLD”) suffix “.com”.
As found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of geographic or descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In addition, as stated in section 1.11 of the WIPO Overview 3.0, the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test.
The Panel notes that the terms “the musical” added to the Complainant’s trademark in the disputed domain name are not distinctive in any way; on the contrary, they are descriptive of a type of entertainment service provided under the trademark MOULIN ROUGE.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademark or the disputed domain name.
Moreover, there is no evidence that the Respondent might have been commonly known by the disputed domain name or that it might have used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use before receiving any notice of the dispute.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Panel finds that, in light of i) the prior registration and use of the Complainant’s trademark MOULIN ROUGE in the field of theater, musical entertainment and derived products, ii) the well-known character of the trademark, and iii) the Respondent’s combination of the mark in the disputed domain name with the terms “the musical”, which are descriptive of a type of service provided by the Complainant under the trademark, the Respondent very likely registered the disputed domain name having the Complainant’s trademark in mind.
Moreover, in view of the fame of the Complainant and its trademark, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.
With reference to the use of the disputed domain name, the Panel notes that is has not been pointed to an active website. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In the case at hand, in view of i) the well-known character of the Complainant’s trademark; ii) the Respondent’s registration of a domain name confusingly similar to the Complainant’s trademark; iii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; and iv) the Respondent’s failure to respond to the Complaint, the Panel finds that the passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use.
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by 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.
Luca Barbero
Sole Panelist
Date: May 16, 2018
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