WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Marie Claire Album v. Geoffrey Blakely

Case No. D2002-1015

 

1. The Parties

The Complainant is Marie Claire Album of Issy les Moulineaux, France, represented by Béatrice Vrignaud of France.

The Respondent is Geoffrey Blakely of Raleigh, North Carolina, United United States States of of America.

 

2. The Domain Name and Registrar

The disputed domain name <wwwmarieclaire.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the the "Center") on October 31, 2002. On November 1, 2002, the Center transmitted a request for registrar verification in connection with the domain name at issue to Go Go Daddy Software by email. On even date, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the 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 November 11, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2002. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent of his default on December 2, 2002.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on December 9, 2002. 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 asserts to own MARIE CLAIRE trademarks in over 90 countries. In particular, the Complainant lists the following trademarks, and encloses to the Complaint, the relevant documentation:

- MARIE CLAIRE, French registration for N 1712118, covering several classes including classes 16 and 41 (ANNEX C);
- MARIE CLAIRE, French registration for N 1712366, covering all 42 classes (ANNEX D);
- MARIE CLAIRE, International registration N R338976, covering all 42 classes and extended to several countries (ANNEX E);
- MARIE CLAIRE, US registration for N 1224181, covering class 16 (ANNEX F);
- MARIE CLAIRE, US trademark registration N 1974703, covering classes 38 and 41 (ANNEX G).

According to the Complaint, "the MARIE CLAIRE trademark has been used since 1937 in France to designate a women magazine. More than 25 international editions have been launched in the USA, Europe, South Africa, Brazil, Mexico, Australia, Asia Diversification of the MARIE CLAIRE trademark for books, fashion and beauty accessories has also been launched successfully. The MARIE CLAIRE trademark has also many websites such as marieclaire.com, groupemarieclaire.com, marieclaire.fr, marieclaire.jp, marieclaire.com.tr, marieclaire.nl."

All the aforementioned statements are uncontested and some of them are supported by the evidence. Therefore, the Panel takes the view that Complainant's statements are a fair representation of Complainant's activity and intellectual property rights.

 

5. Parties Contentions

A. Complainant

According to the Complaint, the domain name <wwwmarieclaire.com> is identical or at least confusingly similar to the MARIE CLAIRE trademarks in which the Complainant has rights. The addition of the three letters "www", which refer to "world wide web" and are therefore common in the Internet world, have been added to raise confusion among Internet users. To support the fact that the contested domain name is to be considered identical or at least confusingly similar to the various MARIE MARIE CLAIRE trademarks listed above, the Complainant cites some previous UDRP decisions referring to domain names starting with the letters "www". Furthermore, the Complainant cites some previous UDRP decisions in which it successfully challenged MARIE CLAIRE and MARICLAIRE formative domain names.

According to the Complainant, the Respondent lacks rights and legitimate interests in the domain name <wwwmaireclaire.com> because: "After a notice sent by e-mail and registered airmail, the Respondent didnt reply to the Complainant" (ANNEX H); "The Respondent used the domain name for a pornographic website accessible at "http://www.wwwmarieclaire.com"." (ANNEX I), and "if someone writes directly "http://wwwmarieclaire.com", he thinks to be on [the Complainant's] american editions website ("http://www.marieclaire.com") but pornographic pages will also be opened. Therefore, hell have the feeling that its [the Complainant's] website that opened such pornographic pages!"

Finally, in the Complainant's view, the Respondent registered and has been or is using the domain name in bad faith because "Considering use made by the Respondent for pornographic website, its obvious that he wants to damage [the Complainant's] american website and more generally [the Complainant's] well known trademark. The Respondent intentionally attempted to attract for commercial gain internet users to the Respondent s website by creating a confusion with our Trademark and websites".

B. Respondent

The Respondent did not reply to the Complainants contentions. The Panel, in compliance with Paragraph 14 of the Rules, shall therefore proceed to a decision on the Complaint and shall draw such inferences therefrom as it considers appropriate.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is <wwwmarieclaire.com>. The Complaint encloses several documents attesting that the Complainant is the owner of the MARIE MARIE CLAIRE/MARIE-CLAIRE trademarks listed under point 4 above. The Respondent's domain name simply consists of the Complainant's trademark preceded by the letters "www". As the Complainant stresses, the letters "www" cannot be considered distinctive in the Internet world, as they are the abbreviation of "world wide web". Therefore, the only distinctive component of the disputed domain name lies in the words "marieclaire" and the addition of the letters "www" to the Complainant's trademark does not modify the overall impression that the Internet user has of the disputed domain name.

In the light of the foregoing, the Panel concludes that the domain name <wwwmarieclaire.com> is confusingly similar to the Complainant's MARIE MARIE CLAIRE/MARIE-CLAIRE trademarks. The first condition is met.

B. Rights or Legitimate Interests

According to Paragraph 4 (a) of the Policy, the Complainant must prove that the Respondent lacks rights or legitimate interests in the disputed domain name. Since proving a negative circumstance is always difficult and burdensome, and often almost impossible, previous Panel decisions have established that prima facie evidence of the lack of rights or legitimate interests is sufficient to shift the onus of proof from the Complainant to the Respondent.

Under Paragraph 4 (c) of the Policy, the Respondent may demonstrate that he has rights to and legitimate interests in the domain name by proving that:

(i) before any notice of the dispute to the Respondent, the Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; 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 Complainant's trademark.

The Respondent failed to prove any of the above-mentioned circumstances as it did not reply to the Complaint.

The Complainant stated that the Respondent lacks rights or legitimate interests in the domain name <wwwmarieclaire.com> because: (i) the Respondent did not reply to the Complainant written request to cancel or transfer the disputed domain name that was an infringement of the Complainant's trademark rights; and (ii) the Respondent used the domain name for a pornographic website accessible at "http://www.wwwmarieclaire.com" (evidence proving the use of the disputed domain name to operate a pornographic website is enclosed to the Complaint); and (iii) if the Internet user types "http://wwwmarieclaire.com" (and not "http://www.wwwmarieclaire.com") he accesses the Complainant's "american edition's website ("http://www.marieclaire.com") but pornographic pages will also be opened". Therefore, the Internet user will "have the feeling that it's [the Complainant] website that opened such pornographic pages!" (no evidence was attached to the Complaint in support of this statement).

In the Panel's view, the fact that the Respondent did not reply to the Complainant's written request to immediately cancel or transfer the domain name at issue since it allegedly infringed the Complainant's trademark rights, does not necessarily entail that the Respondent lacks rights or legitimate interests in the disputed domain name. However, the fact that the Complainant challenged the registration of the domain name <wwwmarieclaire.com> and filed the Complaint clearly implies that the Complainant never authorized the Respondent to use its trademark, nor to register it as a domain name. Furthermore, nothing in the Complaint shows that the Respondent has been commonly known by the domain name or that there is any other connection between the Marie Claire name and the Respondent.

With respect to the Complainant's statement that if one types "http://wwwmarieclaire.com", he reaches the Complainant's website referring to the domain name <marieclaire.com>, which bears, however, some pornographic pages that are not present in the Complainant's official website, as mentioned above the Complainant did not support this statement with any evidence. The Panel, in line with the powers conferred to it by Paragraph 10 of the Rules, attempted to verify the Complainant's statement by typing the address "http://wwwmarieclaire.com". The Panel has thus verified that the address "http://wwwmarieclaire.com" leads to the Complainant's official website "www.marieclaire.com". However, a barrage of new windows is opened when the visitor tries to leave. The corresponding Internet addresses of these new windows are: "http://www.hotcarolinagirls.com"; "http://www.carolinaasians.com/hcgexit.html"; "http://www.southernschoolgirls.com", "http://www.hotcarolinagirls.com/fullpage.html". It clearly appears to the Panel that the pornographic web pages mentioned above are operated for commercial gain.

In the absence of any reply from the Respondent, the Panel considers that all the circumstances described above are sufficient to establish a prima facie evidence of the Respondent's lack of rights and interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under Paragraph 4 a. (iii) of the Policy, the Complainant must prove two additional requirements, (i) that the disputed domain name was registered in bad faith; and (ii) that said domain name is used in bad faith.

The Panel finds from the Complainant's statements and from the factual situation that the domain name <wwwmarieclaire.com> was registered and is used in bad faith.

First of all, the Panel notes that in the domain name at issue the Complainant's trademark is preceded by "www", which is the acronym for "world wide web". This is a typical case of "typo-squatting", i.e., the registration of a domain name with the purpose of taking advantage of those Internet users who, in an attempt to reach a certain web page mistakenly fail to insert a period between the letters "www" and the domain name they are looking for ( See also Reuters Limited v Global Net 2000, Inc., Case No. D2000-0441; Pig Improvement Company, Inc. v. Platinum Net, Inc., Case No. D2000-1594). Secondly, as also mentioned by the Complainant, the domain name <wwwmarieclaire.com> is automatically redirected to the Complainant's official website ("www.marieclaire.com") before leading the visitor to a series of pornographic windows which are fully accessible only upon payment of a subscription fee.

The Respondent might have challenged the Complainant's contentions, but failed to submit any response. Accordingly, the Respondent did not deny the Complainant's assertions and conclusions contained in the Complaint.

In the light of the foregoing, the Panel reaches the conclusion that the Respondent was aware of the Complainant's trademark rights at the time of the registration of the domain name at issue, and that the addition of the letters "www" before the Complainant's trademark is a clear attempt to intentionally attempt to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or of the pornographic services offered in the Respondent's web pages.

Accordingly, the Panel finds that the domain name <wwwmarieclaire.com> was registered and is being used 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 <wwwmarieclaire.com> be transferred to the Complainant.

 


 

Angelica Lodigiani
Sole Panelist

Dated: December 23, 2002