The Complainant is Dormeuil Freres, of Palaiseau, France, represented by Selarl Marchais De Candé, France.
The Respondent is Private, of Miami, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2010. On August 13, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On August 19, 2010, GoD, Inc. transmitted by email to the Center its verification response indicating 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 August 24, 2010 providing the indicated registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 24, 2010.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2010.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on October 6, 2010. 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.
On October 12, 2010, the Respondent sent a communication to the Center where he agrees to transfer the disputed domain name and requires the termination of the administrative proceeding. This communication was forwarded to the Panel and to the Complainant on October 13, 2010. 4. Factual Background
Since 1954, the Complainant has registered numerous trademarks worldwide consisting of or containing the mark DORMEUIL in connection with fabrics for men’s clothing.
The Complainant has also registered different domain names to present its activities and goods on the web, including the domain name , which hosts its official website and was registered in 1997.
The disputed domain name was created on July 26, 2010.
The Panel accessed the domain name on October 17, 2010, noting there was no active web page published. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) The Complainant’s trademark DORMEIUL is well-known throughout the world for the softness, comfort and refinement of its men’s clothing and suits.
(ii) The disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name reproduces entirely the DORMEUIL trademark, rightly written with all the letters in their exact place, which as itself has no particular meaning and is therefore highly distinctive. The addition of the ccTLD “.co” (which is required for registration of a Colombian domain name) has no distinguishing capacity in the context of the domain name. The likelihood of confusion is strengthened by the notoriety of the Complainant and its trademark.
(iii) The Respondent has no rights or legitimate interests in the disputed domain name. It is obvious that the Respondent does not have any legitimate interest in using the disputed domain name since the name of the Respondent has no resemblance with the word “dormeuil”. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including its trademarks.
(iv) The disputed domain name was registered and is being used in bad faith. The domain name has been registered for the purpose of attracting Internet users to the Respondent’s website and making unfair benefit of its reputation, by creating a likelihood of confusion between the DORMEUIL trademarks and the domain name and by diverting Internet users to a parking website with links to commercial websites referring to clothing. It is not conceivable that the Respondent registered the disputed domain name without having the Complainant’s widely known DORMEUIL trademark in mind. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
In a late communication, the Respondent referred his intent to settle (previously communicated to the Complainant’s representative’s attorneys in France on September 13, 2010) and argued that he had ceased the use of the domain name since he was informed about the Complaint. 6. Discussion and Findings A. Termination Request
Paragraph 17 (a) of the Rules establishes that “[i]f, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding”.
However, this is not the present case, where just the Respondent has showed interest on a settlement.
Considering that the Respondent has also previously sent a communication to the Complainant’s representative’s attorneys in France on September 13, 2010, offering to send the disputed domain name’s access code, the Panel concludes that the Complainant has not demonstrated interest on the proposed settlement and there is no agreement on this issue. Therefore, this unilateral and late request is here dismissed.
On the merits, Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a 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. B. Identical or Confusingly Similar
Annexes 5-24 to the Complaint demonstrate registrations of DORMEUIL trademarks in several countries since 1954.
The Panel has no doubt that DORMEUIL is a trademark directly connected with the Complainant’s activities. The Panel also recognizes that the DORMEUIL trademark has reached a well-known status in the field of clothing worldwide.
The trademark DORMEUIL is wholly encompassed within the disputed domain name, together with the ccTLD “.co”, term which is also used as an abbreviation – in English – of the word “company”.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademarks. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the domain names in connection with a bona fide offering of goods or services. Indeed, the Complainant filed screenshots of the web pages that were published at the disputed domain name showing pay-per-click pages filled with links to competitor’s websites.
The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is 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; or
(ii) the respondent 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; or
(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 web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
When the disputed domain name was registered the Complainant’s trademark DORMEUIL was already well-known worldwide in the field of clothing. Therefore, it is not feasible that the Respondent could have been unaware of the Complainant’s reputation and business.
Also, the disputed domain name was being recently used as a pay-per-click landing page, displaying sponsored links for third party websites that offer competing products. Therefore, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) obtains click-through revenue from this practice; and
(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promote products offered by competitors.
In situations like this, former UDRP decisions have considered this type of usage of a domain name enough to demonstrate bad faith. For reference on the subject, it is important to point out that the “Respondent’s bad further illustrated by the domain name’s resolution to a PPC parking page with links to websites selling products competing with Complainant’s. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith.” Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415.
The use of privacy services may also help to characterize the bad faith registration described above.
Currently, there is no active website linked to the disputed domain name, but this is not enough to change the Panel’s findings.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Rodrigo Azevedo
Sole Panelist
Dated: October 20, 2010
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