The Complainant is Marie Claire Album of Issy-les-Moulineaux, France, internally represented, France.
The Respondent is WhoisGuard, Inc. of Panama / Yuan Xufu of Shenzhen, Huananchen, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameCheap, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2013. On August 26, 2013, the Center transmitted by email to NameCheap, Inc. a request for registrar verification in connection with the Domain Name. On August 28, 2013, NameCheap, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named First Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 2, 2013 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 September 5, 2013 to include the Second Respondent. The Second Respondent is the underlying registrant whilst the First Respondent is a privacy/proxy registration service. For the purposes of this decision they will be referred to jointly and severally as the “Respondent”.
The Center verified that the Complaint together with the amended the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy) as adopted by doMEn, d.o.o. (doMEn), the registry operator of the .ME TLD on April 30, 2008; the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) approved by doMEn on October 1, 2012; 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 September 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2013. On September 6, 2013 the Center received an informal e-mail communication from the Respondent in Chinese. The Respondent did not submit any further formal response. Accordingly, the Center notified the parties of the commencement of the panel appointment process on September 27, 2013.
The Center appointed Karen Fong as the sole panelist in this matter on October 4, 2013. 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 September 6, 2013 the Respondent sent an email to the Center in Chinese requesting that the Complaint be filed in the Chinese language. The Center responded in both Chinese and English that the language of the Registration Agreement was English and the proceeding should therefore be in English. The Panel agrees with this. 4. Factual Background
The Complainant publishes the well-known magazine “Marie Claire” worldwide. It publishes 73 editions in 35 countries on five continents and in 18 languages. It sells a total of 53 million copies each year. The Complainant also operates a variety of licensed products including leather goods, clothing, home linen and jewellery under the brand MARIE CLAIRE in several countries including in Europe, Asia and the United States of America (“USA”). The Complainant owns trade mark registrations for MARIE CLAIRE in multiple jurisdictions including Europe, the USA, China and Panama. The earliest trade mark registration dates back to 1937.
The Respondent registered the Domain Name on June 28, 2013. The Domain Name was connected to a pay-per-click webpage page which also had an offer for sale of the Domain Name for USD 1,000. At the time of the writing of this Decision, the website is no longer active. On July 18, 2013, the Complainant sent a cease and desist letter to the Respondent. The Complainant received a response in English that the Domain Name could be sold to the Complainant. A second letter from the Complainant reiterating its rights elicited a response from the Respondent – “3000 Euros”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the MARIE CLAIRE trade mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a 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 Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark MARIE CLAIRE and also that MARIE CLAIRE is a well-known trade mark.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark MARIE CLAIRE forms the entirety of the Domain Name. For purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the country code Top-Level Domain “.me”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant alleges that the Respondent failed to advise what rights they have in connection to the MARIE CLAIRE name after it was given notice to transfer the Domain Name to the Complainant or cancel it. The Complainant also alleged that the Respondent has no rights to it except for cybersquatting and/or sale of the Domain Name to the Complainant.
The Respondent has defaulted and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. Further, paragraph 14 of the Rules provides that the Panel may draw such inferences from such a default as it considers appropriate.
Accordingly, the Panel infers from the Respondent’s silence that the Complainant’s allegations are, in fact, correct. The Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. D. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s MARIE CLAIRE mark when it registered the Domain Name. The Domain Name comprises the Complainant’s well-known trade mark in its entirety. In the Panel’s view this is clear evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Names was in bad faith. The Respondent offered to sell the Domain Name for EUR 3,000. The website connected to the Domain Name also had on it an offer for sale of the Domain name for USD 1,000. This is evidence of circumstances that Respondent 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 for valuable consideration in excess of their documented out-of-pocket costs directly related to the Domain Name. The Panel further notes that the website connected to the Domain Name contained pay-per-click links, inter alia, related to the Complainant’s field of business.
The above is clearly bad faith under paragraph 4(b)(i) and (iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Names are in bad faith. 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.
Karen Fong
Sole Panelist
Date: October 9, 2013
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