The Complainant is PARROT of Paris, France, represented by Bardehle Pagenberg Dost Altenburg Geissler, France.
The Respondent is Binh An Nguyen of Woodville Gardens, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Aust Domains International Pty Ltd dba Aust Domains, Inc. / D Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2011. On June 16, 2011, the Center transmitted by email to Aust Domains International Pty Ltd dba Aust Domains, Inc. a request for registrar verification in connection with the disputed domain name. Reminder emails were communicated to Aust Domains International Pty Ltd dba Aust Domains, Inc. on June 17, 22 and 23, 2011. On June 24, 2011, Aust Domains International Pty Ltd dba Aust Domains, Inc. transmitted by email to the Center the following response:
“The domain name was registered with us until 17th June 2011 that client decided to delete it.
is registered with D Pty Ltd.
Please contact them for further information.”
On June 24, 2011, the Center transmitted by email to D Pty Ltd a request for registrar verification in connection with the disputed domain name. On June 28, 2011, D Pty Ltd 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 July 6, 2011 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 July 11, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2011. The Center thereafter received or was copied by the Respondent to email communications received on August 6 and 9, 2011.
The Center appointed John Swinson as the sole panelist in this matter on August 9, 2011. 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 company, PARROT, founded in 1994. The Complainant develops wireless devices for mobile phones such as hands-free systems for cars. In 2010 it released a product it named, “AR.Drone”, which is the first quadricopter that can be controlled through Wi-Fi by an iPhone, iPod Touch or iPad. It has received significant publicity, including in Australia, as a unique toy. The Complainant owns various registered trade marks incorporating the term “AR.DRONE” and “AR DRONE”.
Little information is known about the Respondent as a formal response was not filed.
The disputed domain name was registered in the name of The Geebo Group Pty Ltd until June 17, 2011 after which time it was deleted. The disputed domain name was then registered in the name of Binh An Nguyen on June 20, 2011 and remains registered in the name of this person. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions: Identical or Confusingly Similar
The Complainant is a global leader for wireless devices for mobile phones. The Complainant was founded in 1994 and has developed the most extensive range of hands-free systems on the market for cars. In 2010, the Complainant released the AR.Drone product (described above, see section 4).
The Complainant owns numerous trade marks incorporating the terms “AR DRONE” and “AR.DRONE” and has sought to protect these trade marks all over the world in varying forms. Relevantly, the Complainant owns an International Trade Mark, designating Australia, which incorporates the term “AR.DRONE” and which was registered on October 29, 2010.
Moreover, the Complainant’s logo trade mark incorporating the term “AR.DRONE” is currently used in many countries, with the AR.Drone product being sold in countries, including Australia, in store and via the Internet.
The Complainant also owns several domain names incorporating the term “ardrone”.
The disputed domain name is very similar to the Complainant’s earlier registered trade marks, as well as the Complainant’s earlier registered domain name.
Importantly, the dominant elements of the disputed domain name and the Complainant’s trade marks are identical.
Further, the Respondent operates an AR.Drone product fan site from the disputed domain name, but the Complainant has never authorized or licensed such use.
Therefore, given the reproduction of the Complainant’s trade marks in the disputed domain name, it is clear that a likelihood of confusion will be created in the mind of consumers. Rights or Legitimate Interests
The Respondent has no rights in respect of the disputed domain name as the Respondent has no trade mark rights in the term “ardrone”, there is no company with a name corresponding to the disputed domain name with which the Respondent is affiliated and the Respondent has no business relationship with the Complainant and has never been authorized to use its trade marks.
Given the Complainant’s trade marks are well-known, the similarity between the Complainant’s trade marks and the disputed domain name and the distinctive nature of the Complainant’s trade marks, it is clear that the Respondent acquired the disputed domain name for the sole purpose of diverting Internet users from the Complainant’s website to its own.
Finally, the disputed domain name is not connected with a bona fide offering of goods and services and it appears the Respondent may obtain a commercial benefit by incorporating the Complainant’s trade mark in the disputed domain name and misleading Internet users. Thus, the Respondent is taking unfair advantage of the Complainant’s goodwill and it cannot be said that the Respondent has rights or legitimate interests in the disputed domain name. Registered or Subsequently Used in Bad Faith
The Respondent acted in bad faith in registering and using the disputed domain name.
First, it is clear that the Respondent must have been aware of the Complainant and its trade marks when registering and using the disputed domain name because:
(i) the Complainant operates all over the world, including Australia, and is a well-known world leader in electronic products using Wi-Fi technology;
(ii) the Complainant owns worldwide trade marks and uses the trade marks in relation to a miniature helicopter game which has been heavily promoted since January 2010;
(iii) relevant searches conducted on Google retrieve the Complainant’s website as its first result.
Moreover, the Complainant has engaged in significant research and development in developing its Ar.Drone product and has generated publicity for and knowledge about the product since January 5, 2010. The Complainant presented the product at the Consumer Electronics Show in Las Vegas which is one of the biggest international exhibitions in the electronic domain and was awarded the CES Innovation Award. The AR.Drone product has also been presented at many other international exhibitions. Significantly, since August 18, 2010, the AR.Drone has been available in Europe and shortly after worldwide through numerous distributors authorized by the Complainant.
Therefore, it is clear that the Complainant and its Ar.Drone product is well-known and the Respondent cannot have selected the disputed domain name without knowledge of the Complainant’s trade mark rights in the relevant term. It is also submitted that the term does not exist in any language.
Second, it is clear the Respondent acted in bad faith given the disputed domain name and the website it resolves to, will clearly mislead the public into believing it is the official and sole Australian site for the AR.Drone product.
The Respondent is attempting to benefit from the Complainant’s trade marks, reputation and goodwill by acquiring and using the disputed domain name, which is identical to the Complainant’s existing trade marks, and creating a likelihood of confusion in a consumer’s mind. The Complainant submits that the disputed domain name was registered and used to attract, for commercial gain, Internet users by creating this likelihood of confusion.
Therefore, the Respondent is attempting to take unfair advantage of the Complainant’s trade marks and reputation and this unauthorized use and confusion caused to consumers is highly detrimental to the Complainant. B. Respondent
The Respondent did not file a formal response; however he forwarded correspondence with the Complainant to the Center. From this correspondence it is clear that the Respondent is willing to transfer the disputed domain name to the Complainant for a fee. Further, the Respondent contends that he was unaware that the Complainant owned trade mark rights in the relevant terms. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark 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 has been registered or subsequently used in bad faith.
The onus of proving these elements is on the Complainant.
The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are distinct policies, both share substantial similarities. The Panel finds it therefore appropriate to refer to UDRP precedent when deciding this case. A. Procedural Issues
The relevant Respondent for these proceedings is the current registrant of the disputed domain name, Binh An Nguyen. The Panel makes no finding in relation to The Geebo Group Pty Ltd.
The Respondent did not file a formal response; however, he forwarded and copied the Center on numerous communications between the Complainant and Respondent. From this correspondence it is clear that the Respondent is willing to transfer the disputed domain name to the Complainant for a fee. Despite the Respondent’s apparent willingness to transfer the disputed domain name to the Complainant, the Panel considers it necessary to making a finding on the merits of the case as the Respondent’s consent to transfer is conditional.
Relevantly, the Panel distinguishes this case from that in Shady Grove Reproductive Science Center, P.C. v. Texas International Property Associations - NA NA,WIPO Case No. D2009-0447, where there was an unconditional, unilateral consent to transfer the relevant domain name and as such the Panel considered unnecessary to review the facts and arguments, or making any findings on the merits of the matter under the Policy (see also, The Cartoon Network LP, LLP v. Mike Morgan,WIPO Case No. D2005-1132).
Here, the consent to transfer by the Respondent appears to be conditional and as such the Panel will consider the facts and arguments of this case to make a finding under the Policy. Further the Panel agrees with the reasoning in Shady Grove Reproductive Science Center, P.C. v. Texas International Property Associations - NA NA, supra, that a consent to transfer does not “deem” the elements of the Policy satisfied. As such, even though the Respondent appears willing to transfer the disputed domain name to the Complainant, albeit for a fee, the Panel must consider the merits of the case under the Policy.
Moreover, the fact that the Respondent did not submit a formal response, does not automatically result in a decision in favor of the Complainant (see e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941; Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED,WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan,WIPO Case No. D2004-0383). However, the Panel may draw appropriate inferences from a respondent’s formal default. Nonetheless, a complainant must establish all three elements of paragraph 4(a) of the Policy. Where a complaint is based wholly on unsupported assertions, the requested remedy will be denied despite no formal response having been filed.
Finally, while the Panel is under no obligation to consider the correspondence forwarded to the Center by the Respondent, in these circumstances, the Panel has reviewed the material in order to better understand the factual circumstances of the case. B. Identical or Confusingly Similar
The Complainant owns several registered trade marks incorporating the terms “AR.DRONE” and “AR DRONE”. This is the dominant feature of the Complainant’s numerous trade marks. The disputed domain name is . It is therefore clear that the disputed domain name and the Complainant’s trade marks are confusingly similar and as such, the Complainant must necessarily succeed on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(b) of the Policy provides that a complainant must establish that a respondent has no rights or legitimate interests in the disputed domain name. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
Here, the Complainant has succeeded in establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name (refer to Section 5.A, above). Given the Respondent did not file a formal response, the prima facie case established by the Complainant has not been rebutted. As such, the Complainant must necessarily succeed on this point.
Specifically, the Respondent has not demonstrated a bona fide use or, intention to use, the disputed domain name or name corresponding to the disputed domain name in connection with an offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. This is evidenced by the fact that the Respondent is using the disputed domain name in connection with the Complainant’s product and trade marks without authorisation, to create the impression of being officially affiliated with the Complainant and its trade marks.
The Panel acknowledges the prevailing differing opinions with respect to fan sites however in this instance finds that the Respondent does not have rights or legitimate interests in the disputed domain name as the Respondent is intentionally misrepresenting himself as being in some way associated with the Complainant, its trade marks and products (see e.g., Russell Peters v. George Koshy and Navigation Catalysit Systems, Inc., WIPO Case No. D2009-0173). D. Registered or Subsequently Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered or subsequently used in bad faith. While the Policy sets out instances of bad faith registration and use, these circumstances are not exhaustive. Here, the circumstances suggest that the Respondent registered the disputed domain name in bad faith.
The Panel finds the Respondent must reasonably have known of the Complainant and its trade marks when registering and using the disputed domain name. This is clear given:
(i) the Complainant’s trade marks were registered and used extensively prior to the Respondent registering the disputed domain name;
(ii) the significant publicity generated by the Complainant’s marketing and advertising activities; and
(iii) the very fact that the Respondent is using the disputed domain name in connection with the Complainant’s trade marks and products.
Therefore, as the Respondent is attempting to represent the website operating from the disputed domain name as an official website affiliated with the Complainant, it is clear that the Respondent has acted in bad faith. It appears the Respondent is attempting to intentionally mislead the public and Internet users.
The Respondent claims he was unaware that the Complainant owned trade mark rights in the relevant terms. However, this does not indicate an absence of bad faith on the part of the Respondent as he nevertheless intentionally attempted to mislead Internet users by creating an appearance of association and affiliation with the Complainant and its product, brand and reputation. Further, in light of the strong reputation of the Complainant’s brand and product, the Respondent ought reasonably have assumed that the Complainant owned the relevant trade mark rights.
Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith. 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.
John Swinson
Sole Panelist
Dated: August 24, 2011
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