WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Automobiles Peugeot SA v. Good Domains, Formerly Domains For Sale Inc
Case No. D2002-0805
1. The Parties
Complainant is Automobiles Peugeot SA, of Paris, France.
Respondent Good Domains, formerly Domains For Sale Inc, of Bronx, NY, United States of America.
2. The Domain Name and Registrar
The Domain Name at issue is <wwwpeugeot.com> (the "Domain Name") and the Registrar is eNom Inc., 16771 NE 80th Street, Suite #100 Redmont, WA, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received a complaint (hereinafter the "Complaint") by email on August 28, 2002, and in hardcopy and exhibits on September 3, 2002. On August 29, 2002, the Center acknowledged receipt. On August 28, 2002, the Center transmitted via email to Tucows Inc. a request for registrarís verification in connection with this case. As the indication of the Registrar was not updated, on August 29, 2002, the Center transmitted via email a new request for registrarís verification to eNom Inc. which confirmed the registrantís data and that the Domain Name registration is in "active" status. Having verified that both the registrantís and the registrarís details were not correct, on September 2, 2002, the Center notified to the Complainant the request for an amendment of the Complaint. The amended Complaint was received by email on September 10, 2002, and in hardcopy and exhibits on September 13, 2002.
The Center transmitted on September 16, 2002, to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding and on October 7, 2002, the Notification of the Respondent default.
On October 10, 2002, the Center invited Mr. Luca Barbero to serve as a panelist in the instant case and, having received his Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted on October 14, 2002, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with Uniform Domain Name Dispute Resolution Policy ("Policy"), Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPOís Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
4. Factual Background
The Complaint is based i.a. on French registrations nį 1345350 "PEUGEOT" for use in connection with cars, trucks, motorbikes, spare parts and accessories and nį 1277386 "PEUGEOT" for use in connection with products and services of classes 1. 2. 4-8. 10. 11. 13. 15-17. 19-24. 26. 27.29-34.35-42. (copy of registration certificates were enclosed to the Complaint). The Complainant is also the owner of many international trademark registrations (a list was annexed to the Complaint).
The Respondent registered the Domain Name <wwwpeugeot.com> on November 21, 2001.
5. Partiesí Contentions
The Complainant states that the trademark "PEUGEOT" is inherently distinctive as well as famous, as it has been used in connection with Complainantís products for decades and that it is internationally known that the Complainant has invested important amounts of time and money in developing, manufacturing and marketing the PEUGEOT line of cars and products. The trademark "PEUGEOT" (the last name of a French family who established the PEUGEOT firm for cars) registered for cycles (since 1886) and for cars (since 1891) acquired a very strong notoriety worldwide. The complainant indicates that all the people around the world associate almost automatically the word "peugeot" with the PEUGEOT cars.
The Complainant is the holder of the Domain Name <peugeot.com>, and of the website available at "http://www.peugeot.com".
The Complainant sent to the Respondent a warning letter but the letter returned to sender as unclaimed.
Respondent has not contested the allegations of the Complainant in a Response filed according to article 5 of the Rules and is therefore in default.
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, the 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 domain name registered by the respondent is identical or confusingly similar to a trademark or a service in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
6.1. Domain Name Identical or Confusingly Similar
The Complainant has provided evidence of ownership inter alia of French registrations nį 1345350 "PEUGEOT" for use in connection with cars, trucks, motorbikes, spare parts and accessories and nį 1277386 "PEUGEOT" for use in connection with products and services of classes 1. 2. 4-8. 10. 11. 13. 15-17. 19-24. 26. 27.29-34.35-42.
The Domain Name is confusingly similar to the Complainantís trademark since both the acronym "www" (world wide web) and the addition of the top-level Domain Name ".com" are irrelevant to determine the confusing similarity of the sign. Furthermore, the Respondent takes advantage of a very common typing error by simply adding www to a well known trademark; see also Bank of America Corp. v. InterMos (NAF case n. FA 95092) finding that Respondentís Domain Name <wwwbankofamerica.com> is confusingly similar to Complainantís registered trademark BANK OF AMERICA because it "takes advantage of a typing error (eliminating the period between the www and the Domain Name) that users commonly make when searching on the Internet".
In view of the above, the Panel finds that the Complainant has proved that the Domain Name is confusingly similar to the trademark of the Complainant according to paragraph 4(a)(i) of the Policy.
6.2. Rights and Legitimate Interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute Domain Name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy that:
(a) He has made preparations to use the domain name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
There is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainantís trademark and name under any circumstance.
The Complainant showed convincing evidence that Respondent has made no use of the Domain Name <wwwpeugeot.com> in connection with a bona fide offering of any goods or services. Respondent has linked this Domain Name to a website that has no connection with Complainantís mark and offers horrifying depictions of fetuses aimed at promoting an anti-abortion message. There is no evidence presented that Respondent is connected with an anti-abortion organization.
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Name, according to paragraph 4(a)(ii) of the Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a) (iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís website or other online location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holderís website or location.
The Panel finds that the Respondent was or should have been aware of Complainantís rights in the trademark and of the corresponding site "www.peugeot.com" at the time of registration of < wwwpeugeot.com > see i.a. Samsonite Corp. v. Colony Holding, (NAF case n. FA 94313) finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration.
The Respondentís registration of <wwwpeugeot.com>, that is merely a misspelling of Complainantís website and registered mark, is a circumstance evidencing bad faith as decided against the same Respondent in PNC Financial Services Group, Inc., and PNC Bank, N.A. v. Domains For Sale Inc. (NAF Case No FA0201000104101) transferring the Domain Name <wwwpncbank.com> and in Prada S.A. v. Domains For Sale Inc. (WIPO Case No. D2002-0512) awarding the Domain Name <wwwprada.com>. A number of other cases of this kind of "typosquatting" were decided for the complainants; see i.a. AltaVista Co. v. Stoneybrook, (WIPO Case No. D2000-0886) awarding <wwwalavista.com>, among other misspellings of <altavista.com>, to Complainant and Dow Jones & Co. & Dow Jones, L.P. v. Powerclick, Inc., WIPO Case No. D2000-1259 awarding Domain Names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainant.
At the time of the drafting of the Complaint, the Respondent used the Domain Name to point to an antiabortionist website which included images of aborted fetus; such use, was probably aimed at forcing the Complainant to take immediate action and also aimed at seriously tarnishing the trademark of the Complainant since it was leading Internet user to believe that the siteís content reflects someway the thought and the opinions of the trademarkís owner.
The Domain Name is currently pointing to the website (http://www.e-scripts-md.com/index.asp?referrer=11842) of an "U.S. company specializing in facilitating secure online medical consultations and prescriptions for weight loss management and other FDA approved medications between customers and licensed physicians and pharmacists". Therefore the Respondent is now intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainantís trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website in the sense of paragraph 4(b)(iv) of the Policy.
An additional circumstance evidence bad faith is the name itself of the Respondent, "Domains for sale", adopted in the whois records at the time of registration, which is an indication of the intentions of the Domain Name holder to trade <wwwpeugeot.com>; see inter alia Parfums Christian Dior v. QTR Corporation, (WIPO Case No. D2000-0023) where a notation in the WHOIS registration record stating "This domain is for sale" was considered sufficient evidence of bad faith in the sense of paragraph 4(b)(i) of the Policy. In the present case, the Respondent has subsequently changed the name of the company from Domains For Sale Inc. to "Good Domains" but still declaring the very same address in 5444 Arlington Avenue, # g14 Bronx , NY 10471 (USA) as indicated in the copy of the whois record provided to the Panel as an annex to the first version of the Complaint, subsequent duly amended.
Furthermore, a search conducted in the database of the WIPO and NAF arbitration decisions having as a Respondent "Domains For Sale Inc." or "Good Domains" headquartered in Bronx, NY (USA) has showed i.a. the following cases: Nielsen Media Research, Inc. v. Domains for Sale, Inc. (WIPO Case No. D2002-0020) <nielsenmediaresearch.com>, Peabody Management, Inc. v. John Barry, d/b/a/ Domains for Sale, (WIPO Case No. D2002-0552) <thepeabodyorlando.com>, United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. (WIPO Case No. D2002-0005) <unitedartiststheatres.com>, PNC Financial Services Group, Inc., and PNC Bank, N.A. v. Domains For Sale Inc. (NAF Case No FA0201000104101) <wwwpncbank.com>, Prada S.A. v. Domains For Sale Inc. (WIPO Case No. D2002-0512) <wwwprada.com>, The Rittenhouse Development Company v. Domains For Sale, Inc. (NAF Case No. FA0202000105211) <therittenhousehotel.com>, The City University of New York v. Domains For Sale Inc. (NAF Case No.FA0206000114477) <johnjaycollege.com>, The George Washington University v. Domain World a/k/a Domains For Sale a/k/a John Barry (NAF Case No.FA0208000122140) <georgewashingtonuniversity.com>, Huntington Bancshares Incorporated v. Good Domains (NAF Case No. FA0208000123867) <huntingtonnationalbank.com> all decided for the complainants. The above list of decisions indicates that the Respondent is engaged in a pattern of registration of Domain Names in order to prevent the owners of trademarks from reflecting the mark in a corresponding Domain Name, pursuant to paragraph 4(b)(ii) of the Policy.
In light of the foregoing, the Panel decides that the Domain Name registered by the Respondent is identical to the Complainantís trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
Accordingly, the Panel requires that the registration of the Domain Name <wwwpeugeot.com> be transferred to the Complainant.
Dated: October 28, 2002