WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAFT v. Pearson Network, SA
Case No. D2006-1432
1. The Parties
The Complainant is SAFT, Bagnolet, France, represented by Hirsch & Associés, France.
The Respondent is Pearson Network, SA, Panama, Republic of Panama.
2. The Domain Name and Registrar
The disputed domain name <saftpowersystems.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2006. On November 13, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On November 16, 2006, Moniker Online Services, LLC 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 “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 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2006.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on January 5, 2007. 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 a large and widely known French company that manufactures industrial batteries and other forms of power and energy technology, operates internationally and has used the name “Saft” in its business since 1918.
The Complainant owns a wide range of international registered trademarks in the name ”Saft”. It is currently the registered owner of the following trademarks:
(a) Trademark No. 1 582 211, registered in France on March 27, 1990, for SAFT;
(b) Trademark No 565 957, registered in the United States of America on October 28, 1952 for SAFT;
(c) International Registration No. 2R 150 350 registered on October 16, 2002, for SAFT; and
(d) numerous other international trademarks registered for SAFT.
The Respondent registered the disputed domain name on November 6, 2004.
5. Parties’ Contentions
The Complainant alleges that the contentious domain name <saftpowersystems.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant’s registered trademarks SAFT, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on its registered SAFT trademarks and says that the domain name is confusingly similar to them, because the Respondent has simply taken the entirety of the trademark and added the expression ‘powersystems’ which is a common and descriptive term and does not effect any distinction between the goods of the Complainant and the goods being promoted by the domain name. This, it says, gives rise to confusion with the Complainant’s trademarked products.
The Complainant contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because the facts show that the Respondent has no contractual relationship with the Complainant, has no authority to use the SAFT trademark in its domain name and that it could not bring itself within any of the provisions of paragraph 4(c) of the Policy.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because according to the Complainant the only interpretation that can be put on the known facts is that the Respondent registered the domain name with the intention of selling it to the highest bidder, has tried to sell it for an exorbitant sum and has in the past used it not for a legitimate purpose, but to divert internet traffic to a website offering so called ‘psychic readings’. This conduct, the Complainant says, is evidence of bad faith registration and use within the meaning of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
It is thereby possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the domain name; and
C. The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the domain name <saftpowersystems.com> is confusingly similar to the Complainant’s wide range of registered trademarks for SAFT referred to above, details of which are set out in evidence submitted by the Complainant.
That is so because the Respondent has taken the entirety of the trademark and simply added to it the common or descriptive term ‘powersystems’. It has been held many times by UDRP panels that where, as in the present case, the main thrust of the domain name is the trademark itself, such additions do not distinguish the domain name sufficiently to avoid a finding of confusing similarity: see the cases cited by the Complainant: Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, WIPO Case No. D2000-0477, Parfums Christian Dior v. 1 Netpower, In., WIPO Case No. D2000-0022, Chernow Communs, Inc. v. Kimball, WIPO Case No. D2000-0119 and F. Hoffmann-La Roche AG v. Spiral Matrix, WIPO Case No. D2006-0781. This has been held to be especially so when the generic words that are added are merely descriptive of the Complainant’s business or the products it supplies. Thus, in Rada Mfg. Co. v. J. Mark Press a/k/a J. Mark Cutlery, WIPO Case No. D2004-1060, the domain names <radacutlerysales.com>, and <radaknives.com>, were held to be confusingly similar to the Complainant’s trademark RADA because the additions to the trademark of the words ‘cutlery’ and ‘knives’ were common and descriptive words and the products that the Complainant actually made.
Accordingly, as in the present case, where <saftpowersystems.com> merely adds to the trademark a description of the generally understood nature of the Complainant’s trademarked products, confusion between the domain name and the trademark is by that means confirmed rather than diminished. See also, to the same effect, Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275, where the domain name <catmachines.com> was held to be confusingly similar to the complainant’s mark CAT and where it was noted that “the addition of the word ‘machines’ as a suffix to the word ‘cat’ in the domain name under consideration does not serve to distinguish the domain name from the trademark CAT, but rather would reinforce the association of the [c]omplainant’s trademark with its primary line of products”.
It has also been held many times that a generic top level domain such as ‘.com’ may not be used to negate a finding of confusing similarity that is otherwise present on the evidence.
Accordingly, the domain name is identical to a series of trademarks in which the Complainant has rights as owner, and it has therefore established the first of the three elements that it must make out.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 or service mark at issue.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until December 13, 2000 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not made any attempt to rebut this prima facie case, and the Panel concludes that the Respondent has no such rights or legitimate interests in the domain name.
The fact that the Respondent chose, without the Complainant’s authorization, the Complainant’s famous name as the major part of its domain name and then linked it to the website “www.psychicrealm.com” which claimed to give ‘psychic readings’, calls for an explanation, which the Respondent could have given but has not. In the absence of such an explanation by the Respondent, the Panel will assume that ”any evidence of the Respondent would not have been in [its] favour”: Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273.
The Complainant has therefore established that the Respondent has no rights or legitimate interests in respect of the domain name, and has thus made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
(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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Complainant relies on paragraph 4(b)(i) and (iv) of the Policy.
As to the first provision, the Panel finds that on the balance of probabilities, the Respondent registered the domain name primarily for the purpose of selling it to the Complainant for more than its out-of-pocket expenses and more likely for as much as it could get.
The Panel reaches that conclusion from the uncontradicted evidence showing that, in the first place, the Respondent simply appropriated the name of the Complainant’s trademark without any authority and for which it appears not to have a legitimate use. Secondly, when the Complainant offered to buy the name for a reasonable sum, the Respondent demanded 4,200 United States dollars, clearly a sum far in excess of its out-of-pocket costs in registering the name and a sum immediately raising the inference that the Respondent had never had a legitimate reason for registering the name.
The Panel can therefore draw no inference other than the fact that it was the Respondent’s intention from the time of registration to make money by selling the domain name either to the Complainant as the owner of the SAFT trademark or one of its competitors who might want the name.
Such conduct falls squarely within paragraph 4(b)(i) of the Policy and shows bad faith registration.
As to paragraph 4(b)(iv) of the Policy, the evidence submitted by the Complainant derived from “www.archive.org” and contained in Annex 12a shows that at least from November 28, 2004 until November 18, 2005, the domain name <saftpowersystems.com>, incorporating as it did the Complainant’s famous trademark SAFT, was linked by the Respondent to the website “www.psychicrealm.com”. This was a site promoting numerology, horoscopes, astrology, tarot readings and similar services. The website shows clearly that those services were available upon joining a club which could be done by payment of the prescribed membership fee.
It appears from these facts that, at least during the period specified, the Respondent was intentionally attempting to attract internet users to the on-line location “www.psychicrealm.com”, that it did this by creating confusion between the domain name <saftpowersystems.com> and the Complainant’s trademark SAFT, and that the confusion so created was as to whether the services offered on the website were approved or endorsed in some way by the Complainant.
As the Respondent’s whole modus operandi linking the domain name with “www.psychicrealm.com” was clearly being carried out for commercial purposes, because of the fee required to obtain the services offered on the website, the Respondent’s conduct falls squarely within paragraph 4(b)(iv) of the Policy and constitutes bad faith use.
Accordingly, the Complainant has established both bad faith registration and use and has therefore made out the third of the three elements that it must establish.
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 <saftpowersystems.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: January 19, 2007