WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Parrot S.A. v. Whois Service, Belize Domain WHOIS Service
Case No. D2007-0779
1. The Parties
Complainant is Parrot S.A. of Paris, France, represented by S.C.P. Henri Leclerc, France.
Respondent is Whois Service, Belize Domain WHOIS Service of City of Belmopan, Belize.
2. The Domain Name and Registrar
The disputed domain name <parrotbluetooth.org> is registered with Domain Contender, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2007. The Complaint first denominated “BELIZE DOMAIN WHOIS SERVICE” as Respondent in this proceeding. On June 4, 2007, the Center transmitted by email to Domain Contender, LLC a request for registrar verification in connection with the domain name at issue. On June 6, 2007, Domain Contender, LLC transmitted by email to the Center its verification response stating that “Whois Service” is listed as the current registrant of the domain name and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 12, 2007. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on June 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 6, 2007.
The Center appointed Torsten Bettinger as the sole panelist in this matter on July 20, 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
Complainant is Parrot S.A., a French company which was created in 1994 and is today one of the world leaders in the technology field related to voice recognition and signals for embedded and mobile application. Complainant is operating the domain name <parrot.biz> in connection with its products.
Complainant is the registered owner of numerous trademarks worldwide, inter alia International Trademark Registration No. 650645 PARROT, registered on February 14, 1996 and UK Trademark Registration No. 93471187 PARROT, registered on June 4, 1993, both registered in intl. class 9.
The disputed domain name was registered on February 5, 2006 and is being used in connection with a parking website providing links to third parties’ websites.
Complainant sent cease and desist letters to Respondent on April 27, 2007 and May 9, 2007 asking to cease the exploitation of Complainant’s trademark and to transfer the disputed domain name. Respondent did not reply.
5. Parties’ Contentions
Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, Complainant argues that the disputed domain name is confusingly similar to the trademark PARROT in which Complainant has exclusive rights as it fully includes the trademark and trade name PARROT and the additional term BLUETOOTH, which is a third party’s trademark and trade name used in connection with wireless short-range communications technology intended to replace the cables connecting portable and/or fixed devices while maintaining high levels of security. Even though Complainant is using the Bluetooth technology on a non-exclusive basis within its products, the combination of the two trademarks leads to the false assumption that Complainant and the Bluetooth consortium is forming one single entity or developing products in common and therefore is source of confusion.
In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion Complainant states that:
- Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services because his use of the disputed domain name in connection with a parking website providing links to Complainant’s competitors causes an infringement of Complainant’s rights and can therefore not be regarded as a bona fide use within the meaning of paragraph 4(c)(i) of the Policy;
- Respondent is not known as a distributor or reseller of PARROT products;
- Respondent has not obtained any permission from Complainant to reproduce the trademark PARROT in a website or a domain name.
In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that
- Respondent has registered and is using the domain name in order to attract web users to its website and to gain pay per click revenues which is evidence of bad faith;
- The disputed domain name is better ranked in the list of hits generated, when the term “parrotbluetooth” is entered into a Google search, than Complainants, resellers and the Bluetooth consortium. Therefore, Respondent’s reservation of the disputed domain name causes loss of commercial visibility to the mark PARROT and, also, disrupts business of Complainant and its resellers;
- Respondent is engaged in domain name parking activities which is further evidence of bad faith since it constitutes an intentional attempt to attract, for commercial gain, internet users to its website.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
In determining the likelihood of confusion, the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D200l-l480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D200l-0505).
While the term “parrot” may be a dictionary term, the disputed domain name wholly incorporate Complainant’s trademark PARROT, used in the technology field related to voice recognition and signals for embedded and mobile application. The fact that the word “bluetooth” is added to Complainant’s trademark does not eliminate the similarity between Complainant’s trademark and the disputed domain name. The Panel further notes that Complainant is legitimately but not exclusively using the Bluetooth technology with its products. The additional word “bluetooth” describes a technology used by Complainant and therefore is not sufficient in this case to eliminate the confusing similarity between the domain name and the trademark PARROT.
It is well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).
The Panel thus finds on balance that the disputed domain name <parrotbluetooth.org> is confusingly similar to Complainant’s mark PARROT in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy. This finding, and indeed the entire decision, is without prejudice to any rights that may be asserted by Bluetooth SIG, Inc., and implies no judgment as to what may be appropriate between Complainant and Bluetooth SIG, Inc., based on any arrangement between them.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires Complainant to prove that Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if Complainant makes a prima facie case that Respondent has no rights or legitimate interests, and Respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then Respondent may lack a legitimate interest in the domain name.
Complainant asserted that Respondent has neither a license nor any other permission to use Complainant‘s trademark PARROT. Respondent has not denied these assertions. The Panel thus finds that Complainant has made a prima facie case showing that Respondent has no rights or legitimate interests in the disputed domain names which wholly incorporates Complainant‘s mark.
Respondent has not provided any Response or evidence (of circumstances) of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Respondent is not a reseller of Complainant‘s PARROT products, but is using Complainant‘s trademark to divert Internet users to a parking website with links to commercial websites of Complainant’s competitors.
The use of the domain name as a parking website is not a bona fide non-commercial use pursuant to paragraph 4(c)(iii) of the Policy, even if the content on the parking website is not developed by Respondent but provided by the Parking Service Provider.
Further, nothing in the record suggests that Respondent is making any other legitimate non-commercial use of the domain name or registered the domain name as a descriptive, non-source identifying domain name in order to inform about Complainant‘s product or related matters.
Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Panel is also convinced that Respondent registered and has been using the domain name in bad faith.
The domain name is a combination of the words “Parrot” and “Bluetooth”. The word “Parrot” itself is a generic word and could very well conceivably be legitimately registered and used as a domain name by third parties, for example absent of intent to profit specifically from the good will in Complainant’s PARROT mark. However, the combination of the two words lead to the assumption that Respondent has not registered the word “Parrot” as a generic word but rather as a reference to Complainant, which is using the Bluetooth technology within its products. Therefore, the Panel is convinced that Respondent had positive knowledge of Complainant and its trademark PARROT and therefore has registered the domain name in bad faith.
Furthermore, the domain name is also being used in bad faith. Screen shots of Respondent’s web page at “parrotbluetooth.org” show that the website of the disputed domain name redirects users to a parking website that provides links to third parties which sell Bluetooth-related products. Such parking website typically offers domain name holders to earn click through fees for redirecting Internet users to competing websites and thus capitalizing on the goodwill of the third party’s trademark.
This qualifies as bad faith under paragraph 4(b)(iv) in that Respondent’s use of the domain name attempts to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website.
Moreover, Respondent’s default in this proceeding reinforces an inference of bad faith.
The Panel therefore concludes that Respondent registered and is using the domain name <parrotbluetooth.org> in bad faith and that the requirement of the paragraph 4(a)(iii) of the Policy is satisfied.
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 <parrotbluetooth.org> be transferred to Complainant. This transfer is ordered without prejudice to any rights that might be asserted by Bluetooth SIG, Inc.
Dated: August 7, 2007