WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Didier Guérin and Didier Guérin SAS v. Web Advertising, Corp.
Case No. D2007-0247
1. The Parties
The Complainants are Mr. Didier Guérin and Didier Guérin SAS, Paris, France, represented by Association d’avocats BMS, France.
The Respondent is Web Advertising, Corp., Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <didierguerin.com> is registered with BelgiumDomains, LLC, (herein the “domain name in dispute”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2007. On February 20, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On February 26, 2006, BelgiumDomains, 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 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 March 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2007.
The Center appointed J. Nelson Landry as the sole panelist in this matter on April 12, 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 Didier Guérin is the owner of the trademark DIDIER GUÉRIN bijoutier, registered on February 19, 1999, in France with the in association with precious metals and their alloys for use in jewelry, watch and clock-making and chronometric instruments (herein the “Trademark”). The Trademark was first used by the company DIDIER GUÉRIN HOLDING SAS and then by the company DIDIER GUÉRIN SAS. The Complainant Didier Guérin is the chairman and main shareholder of the latter company and he granted use and exploitation of the Trademark to the companies of DIDIER GUÉRIN SAS group, which group currently operates 21 sales outlets in France under the trade name “DIDIER GUÉRIN”.
According to the evidence adduced, Mr. Didier Guérin is a very well-known professional, active for more than thirty (30) years, in the field of retail trade in watches, clocks and jewelry.
The Complainant has on December 22, 1999, applied for and obtained the registration of the following close-connected domain names: <didierguerinbijouterie.com>, <didierguerinjoaillerie.com> and <groupedidierguerin.com> and of <didierguerin.fr> domain name, on November 6, 2000.
The Complainants have not granted any rights to the Respondent relating to the Trademark and have no relationship with the Respondent.
The domain name in dispute was registered on February 1, 2006.
Upon finding about the registration of the domain name in dispute in 2006, the Complainants took the initiative in the period of May to December 2006, of registering neighboring domain names, in “.fr”, “.eu” and “.net”, in order to protect their legitimate rights relating to the name “didierguerin”, namely: <didierguerinbijouterie.fr>, <didierguerinjoaillerie.fr>, <groupedidierguerin.fr>, <didierguerinbijouterie.eu>, <didierguerinjoaillerie.eu>, <groupedidierguerin.eu>, <didierguerin.eu>, <didier-guerin.eu>, <didier-guerin.com> and <didier-guerin.fr>.
5. Parties’ Contentions
The Complainants contend that the domain name in dispute is confusingly similar to the Trademark in which the Complainants have rights in any form, such as: (...) patronymic names relying on in a decision of the Court of Justice of the European Communities, dated September 16, 2004, confirming the principle of the validity of the filing of a patronymic name as a trademark, subject to the general principle of distinctiveness and in which they have rights pursuant to the French registration mentioned above.
The Complainants represent to have rights in many other domain names incorporating DIDIER GUÉRIN registered, such as <didierguerin.fr>, <didierguerinbijouterie.com>,<didierguerinjoaillerie.com>, and <groupedidierguerin.com>, all registered in 1999 and 2000.
The Complainants further represent that while there are differences, the signs of the domain name in dispute are similar to those characterizing the Trademark and add that such differences have been considered in prior UDRP decisions, where the panel stated that it is unnecessary to search for exact identity between the signs of the domain name in dispute and the ones of the Complainants’ trademarks in order to characterize confusion, since the signs in question are confusingly similar; see Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D 2000-0299. Similar decisions were issued with respect to the disputed domain name <dodialfayed.com>, considered as confusingly similar (in spite of the addition of “al”, considered insignificant) to the trademark “DODI FAYED”, filed by the Complainant. See Harrods Limited v. Robert Boyd, WIPO Case No. D2000-0060, the missing letter M in the trademark; Playboy Enterprises International, Inc. v. Good Samaritan Program, WIPO Case No. D2001-0241, and the abbreviation of the trademark in Société pour l’oeuvre et la mémoire d’Antoine de Saint-Exupéry v. The Holding Company, WIPO Case No. D2005-0165. In each of these cases the transfer of the domain name was ordered.
The Complainants further submit that the absence of the term “bijoutier” [jeweler] from the domain name, the differences in the case letter format, the elimination of space between the words “didier” and “guerin” are consequently, minor differences and without legal significance as far as the likelihood of confusion.
Furthermore, according to the Complainants, the addition of the generic top-level domain (gTLD) name “.com” is unlikely to avoid, in itself, the risk of confusion with the Trademark of the Complainants. (See, Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr. WIPO Case No. D2000-1525; Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D 2000-0299); Champagne Lanson v. Development Services / MailPlanet. corn, Inc; WIPO Case No. D2006-0006.
The Complainants submit that the Respondent is not commonly known by the domain name in dispute insofar as there is no resemblance between the name constituting the domain name (didierguerin) and the corporate name of the Respondent (Webadvertising, Corp).
Finally in respect of possible confusion, the Complainants allege that the Respondent has in its home page under the domain name in dispute a list of hypertext links referring directly to certain direct competitors of the Complainants in the sector of distribution of jewelry, watch and clock products, for products similar to the ones covered by Trademark registration in France. Such links, their association with competitors and their updating operation have been demonstrated by third party investigation and evidence thereof.
The Complainants submit that the facts in this case clearly show that the domain name in dispute was deliberately registered and used by the Respondent which has at least twice engaged in similar practices in order to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainants’ trademark , for the purpose of diverting the Internet users to commercial links and websites of the Complainants’ direct competitors are, as held before in similar UDRP decisions proof of registration and use of it in bad faith. (See Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319; Netwizards, Inc. v. Spectrum Enterprise, WIPO Case No. D 2000-1768; Park Place Entertainment Corporation v. Anything.com Ltd, WIPO Case No. D2002-0530 and Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031.)
Finally, the Complainants state that the Respondent is familiar with these kinds of bad faith practices. Twice such domain names registered by it in similar fashion were ordered to be transferred by panels in UDRP decisions, See Edmunds.com, Inc. v. Web Advertising, Corp, WIPO Case No. D2006-1380 and Fifth Third Bancorp v. Web Advertising, Corp., WIPO Case No. D2006-1225.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainants prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have 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.
A. Identical or Confusingly Similar
The Complainants, as it appears from their evidence and detailed representations substantiated with elaborate explanations of the legal basis supporting the protection of the Trademark by the registration in 1999, of the name of an individual, Didier Guérin associated therein with his profession, identified with the descriptive term “bijoutier” for jeweler, have amply demonstrated that Didier Guérin, as owner and Didier SAS, as licensee, have respective rights in the Trademark DIDIER GUÉRIN bijoutier. The Complainants in registering the various domain names mentioned above, before and also after discovering the registration and use of the domain name in dispute, have thus built a family of Trademark, corporate trade names and domain names around the name Didier Guérin which distinctiveness is now well established.
The domain name in dispute differs from the Trademark solely by the addition of the top level domain name “.com” and the deletion of the descriptive word “bijoutier” and the space between the two words. It has been held in numerous UDRP panel decisions cited by the Complainants, that such modifications do not alter the fact that otherwise the domain name in dispute incorporates the distinctive terms “Didier Guérin” of the Trademark of the Complainant Didier Guérin with which it is confusingly similar. See Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299; Harrods Limited v. Robert Boyd; WIPO Case No. D2000-0060; Playboy Enterprises International, Inc. v. Good Samaritan Program, WIPO Case No. D2001-0241 and Société pour l’oeuvre et la mémoire d’Antoine de Saint-Exupéry v. The Holding Company, WIPO Case No. D2005-0165, cited by the Complainants to support their contention.
The Panel finds that the domain name in dispute is confusingly similar to the Trademark DIDIER GUÉRIN bijoutier.
The first criterion has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainants have made more than a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute by stating that the Respondent has never been known by the name Didier Guérin or the domain name in dispute and furthermore that the Complainants have never given a license nor in any way authorized the Respondent to make use of the Complainants’ Trademark or the domain name in dispute.
Finally there is no evidence that the Respondent has ever engaged in any legitimate business under the Complainants’ Trademark. To the contrary there is ample evidence in Exhibit 4, the detailed verification report of the agency for the supervision of programs that the domain name in dispute is used by the Respondent to divert Internet visitors who reach the website at the address of the domain name in dispute believing that they are reaching that of the Complainants are diverted to competitive sites of the Complainants in the same field of precious metal used in the jewellery business.
The Panel finds that the Respondent does not have any rights or legitimate interests in the domain name in dispute.
The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainants contend with ample reasons that the domain name in dispute was registered and used in bad faith.
The likelihood of confusion of the domain name and the Trademark of Complainants associated with the lack of resemblance between the domain name in dispute and the corporate name of the Respondent and the list of hypertext links referring directly to certain direct competitors of the Complainants in the same sector of activities are all facts which support a finding that the domain name in dispute was registered in bad faith as held in the UDRP cases cited by the Complainants. (See Edmunds.com v. Ultimate Search, Inc., WIPO Case No. D2001-1319; Netwizards, Inc. v. Spectrum Enterprise, WIPO Case No. D2000-1768; Park Place Entertainment Corporation v. Anything.com Ltd, WIPO Case No. D2002-0530 and Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031.
This finding of not only registration in bad faith but also of use of the domain name in dispute in bad faith by reason of the said list of hyperlinks mentioned above herein is further corroborated by the past activities of the Respondent which has at least twice engaged in similar practices in order to attract for commercial gain, diverted Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainants’ Trademark , for the purpose of diverting the Internet users to commercial links and web sites of the Complainants’ direct competitors. The UDRP panel decisions cited by the Complainants have held that such activities are proof of registration and use of it in bad faith. See Edmunds.com, Inc. v. Web Advertising, Corp., WIPO Case No. D2006-1380 and Fifth Third Bancorp v. Web Advertising, Corp., WIPO Case No. D2006-1225.
The Panel finds that the domain name in dispute has been registered in bad faith and used in bad faith.
The third criterion has been met.
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 <didierguerin.com> be transferred to the Complainants.
J. Nelson Landry
Dated: April 26, 2007