The Complainant is Village Candle, Inc. of Wells, Maine, United States of America (“United States”), represented by Bernstein Shur, United States.
The Respondent is Paul Dupre, Dupre Inc. of Brancourt en Laonnois, France. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet SE (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2018. On April 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2018, 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 May 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2018.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 4, 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 operates a business selling candles and related accessories through retail, wholesale and mail order stores in the United States and internationally. The Complainant has used the trademark VILLAGE CANDLE since at least as early as 1992, and has achieved significant commercial success over many years.
The Complainant owns a United States Trademark Registration No. 2,161,759 for VILLAGE CANDLE, registered on June 2, 1998 for candles and retail, wholesale and mail order store services featuring candles and related accessories. The Complainant also owns the domain name which was registered on September 4, 1997.
The Respondent registered the disputed domain name on April 17, 2015. The Respondent served as a distributor of the Complainant’s goods for the European territory, for a short period, pursuant to a Distribution Agreement dated June 7, 2015. This Agreement was subsequently terminated, but the Respondent has refused to transfer the disputed domain name to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to its registered trademark VILLAGE CANDLE. The disputed domain name includes the Complainant’s registered trademark in its entirety and its only addition is the geographic term “Europe”. The Complainant contends that the addition of a geographical term does not serve to distinguish the disputed domain name from the Complainant’s registered trademark.
The Complainant further contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the name Village Candle. The Respondent was obligated under the Distribution Agreement with the Complainant to transfer the disputed domain name upon termination of said Agreement. The Respondent has refused to transfer the disputed domain name despite repeated requests.
The Respondent was fully aware of the Complainant’s registered trademark rights in VILLAGE CANDLE when it registered the disputed domain name. Further, the Respondent was aware of its contractual obligations to transfer the disputed domain name upon termination of the Distribution Agreement. The Respondent, by refusing to transfer the disputed domain name to the Complainant and passively holding the disputed domain name , is engaged in bad faith conduct under the Policy. The Respondent’s passive holding of the disputed domain name is interfering with the Complainant’s business, and this also constitutes bad faith under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in the mark VILLAGE CANDLE by virtue of its United States Trademark Registration No. 2,161,759.
The test for confusing similarity is summarized in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):
“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel finds that the domain name is confusingly similar to the Complainant’s registered trademark VILLAGE CANDLE, as the domain name replicates the entirety of the Complainant’s registered mark. The addition of the geographical term “Europe” does not change the analysis of confusing similarity.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The test for rights or legitimate interests can be found at WIPO Overview 3.0, section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to lack of rights and legitimate interests.
The Complainant has asserted that it had long-standing rights in the registered mark VILLAGE CANDLE, and that the Respondent was in fact aware of those registered rights when it acquired the disputed domain name. The distribution arrangement between the Complainant and Respondent provides tangible evidence of such an awareness. While the existence of the Distribution Agreement could imply some form of legitimate interests, that possibility was removed upon termination of the Agreement.
The Complainant relies on the provisions of the Distribution Agreement, which oblige the Respondent to transfer the disputed domain name upon termination. The Respondent has refused to transfer the disputed domain name despite repeated requests.
Once the Complainant has established a prima facie case, the burden then shifts to the Respondent to bring forward evidence of rights and legitimate interests. The Respondent has not filed any materials in this proceeding.
The Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As set out above, the Respondent registered the disputed domain name with full knowledge of the Complainant’s registered trademark rights in VILLAGE CANDLE. The existence and subsequent termination of the Distribution Agreement between the Parties, followed by the refusal to transfer the disputed domain name, is sufficient to establish bad faith.
In the absence of any response, the Panel is therefore prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain name in bad faith.
The Complainant has therefore satisfied the requirements 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.
Christopher J. Pibus
Sole Panelist
Date: June 18, 2018
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