WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

ANOVO v. Moniker Privacy Services / Alexander Lerman

Case No. D2008-1049

 

1. The Parties

The Complainant is ANOVO (a Societé Anonyme, registered under French Law) of Boulogne-Billancourt, France, represented by Cabinet Plasseraud, France.

The Respondent is Alexander Lerman of Berkeley, California, United States of America, represented by John Berryhill, Ph.d., Esq. When the Complaint was first filed, Moniker Privacy Services of Pompano Beach, Florida was initially designated as Respondent because the domain name was registered in their name. Moniker Privacy Services claimed to be acting as nominee for Mr. Lerman, who was then subsequently identified as the beneficial owner of the Domain Name and substituted as the Respondent in these proceedings.

 

2. The Domain Name and Registrar

The disputed domain name <anovo.com> (the “Domain Name”) is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2008. On July 11, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On July 11, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 17, 2008 providing the registrant and contact information disclosed by the registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 18, 2008. The Center verified that the amended 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 July 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 11, 2008.

On August 11 and 12, 2008 the Center received email communications from the Respondent’s representative, indicating the Respondent was willing to voluntarily transfer the Domain Name to the Complainant, and inviting the Complainant to agree to suspend the proceedings to allow the transfer to take place. On August 13, 2008, the Center notified the Complainant regarding the procedures for suspension and possible resumption of the proceedings and the treatment of fees paid in these circumstances, and requested the Complainant to confirm whether or not it wished to proceed with a suspension request by August 15, 2008. On August 13, 2008 in reply to the Center’s request, the Complainant’s representatives duly confirmed that the Complainant did not wish to request a suspension but wanted the case to proceed to a Decision.

The Center appointed Keith Gymer as the sole panelist in this matter on August 25, 2008. 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, ANOVO, is a French Societé Anonyme, incorporated since at least 1992 (Appendix 1 to the Complaint), and provides support services for multimedia and communications businesses.

ANOVO is the owner of various trade mark registrations incorporating the mark ANOVO, including, in particular, Community Trade Mark registration 1136027 for the mark A NOVO in classes 9, 37 and 42 dating from April 13, 1999.

According to the original WHOIS records, the registrant of the Domain Name was shown as “Moniker Privacy Services”. The Domain Name record was first created on May 7, 2007 and last amended (prior to the Complaint) on December 20, 2007. Following notification of the Complaint, Moniker Privacy Services identified the current beneficial owner of the Domain Name registration as Mr. Alexander Lerman, but did not specify whether Mr. Lerman was the original owner of the Domain Name when it was first registered.

 

5. Parties’ Contentions

A. Complainant

The Complainant made extensive submissions in the Complaint, supported by various exhibits in eight associated Appendices. Relevant edited extracts from the Complaint are reproduced below:

The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (Policy, para. 4(a)(i)):

- The Complainant, ANOVO, is the owner of several trademark Registrations and in particular:

- A NOVO, French registration n° 98 766 674 of December 29, 1998 claiming goods an services in classes 9, 37 and 42;

- ANOVO, French registration n° 99 788 679 of April 26, 1999 claiming goods and services in classes 9, 37 and 42;

- A NOVO (figurative), French trademark registration n° 99 818 760 of October 21, 1999 claiming goods and services in classes 9, 37 and 42;

- A NOVO, Community trademark registration n° 001136027 filed on April 13, 1999 and registered on October 3, 2003, with a priority right based on French registration n° 98 766 674 and claiming goods and services in classes 9, 37 and 42;

- A NOVO Enabling Digital Technology (figurative), Community trademark registration n° 004502217 filed on June 21, 2005 and registered on June 12, 2006, claiming goods and services in classes 9, 37, 38, 39, 40, 41 and 42;

- A NOVO Enabling Digital Technology (figurative), International registration n° 881 431 of December 12, 2005, based on the above mentioned Community trademark registration, claiming goods in classes 9, 37, 38, 39, 40, 41 and 42 and a protection in China, Norway, Russian Federation and United States of America;

- ANOVO keep your digital world smiling (figurative), Community trademark application n° 006607337 filed on January 25, 2008 claiming goods and services in classes 9, 37, 38, 39, 40, 41 and 42;

- The contested domain name reproduces identically the term ANOVO which corresponds to Complainant’s trademark and other protected Intellectual Property rights. The term ANOVO is the sole and unique element constituting the contested domain names without any adding. This identical reproduction needs not to demonstrate any similarity and is sufficient to establish the infringement of the sign ANOVO and he risk of confusion.

The Respondent has no rights or legitimate interests in respect of the domain name; (Policy, para. 4(a)(ii)):

- The Respondent has, to our best knowledge, no rights or legitimate interest in respect of the domain name since it has no prior rights, as trademarks or corporate/trade name, on the complainant’s trademarks.

- [T]he Respondent was informed of the Complainant’s prior rights several times and lastly on February 15, 2008. Strangely enough, the Complainant received an email from the Registrar around December 2007, indicating that “take 20% off anovo.com…”. Furthermore, and in absence of reply, the Complainant, not reluctant to find an amicable settlement to the matter, placed a bid on the Registrar’s website to acquire the contested domain name. At this stage, the Complainant received finally a reply from the Respondent via his/her duly authorized Registrar, including a proposal of acquisition of the contested domain for an amount of 275,000 USD. [Copies of emails were provided in Appendices to the Complaint]. The Respondent was and is therefore with no doubt fully aware of the existence of the prior rights above cited. From there can be construed the absence of legitimate interests in respect of the contested domain names (re. amongst other cases, WIPO Case No. D2006-0871 Blemain Group v. Mr. Stuart Frost).

- As concerns the use of the domain name, the Respondent simply parked the contested domain with loads of pay-per-click links, all in relation with the goods and services covered by the Complainant’s trademark rights. For complete information, please refer to screenshots of the popup “weather bar” and the home webpage of the contested domain. [Copies were provided in Appendix to the Complaint]

The domain name was registered and is being used in bad faith. (Policy, paras. 4(a)(iii), 4(b))

Paragraph 4(b) of the Policy contains a non-exhaustive list of what shall constitute bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy and in particular in the third one which stipulates that bad faith is found when “you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor”. This example of the non-exhaustive list includes necessarily the disruption of the business of the Complainants whether it is a competitor or not and even more considering that the contested domain names are the major brand of the complainants.

- As mentioned above, from the attitude of the Respondent, on top of not having any legitimate interest or rights to the contested domain names, it clearly appears that the use of it was made in bad faith. The Respondent clearly used the domain name to generate pay-per-click revenue from advertising links to external websites, including websites of some of the Complainant’s competitors.

Moreover, the proposed amount of 275,000 USD for the acquisition of the contested domain depict a situation where the Respondent was and is aware of the value of the Complainant’s trademarks and is wishing to take a “piece of the cake”.

Such attitude must be construed as a bad faith use of a domain according to the “Policy” and the decisions taken over the years by your Centre (re. amongst other cases, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager WIPO Case No. D2007-0062).

- It is also clear from what follows that the registration was made in bad faith. Indeed, the Respondent hides himself/herself behind “whois privacy services”. The argument that this service is used against spam attack or other similar argument cannot be prosperous. The Respondent when contacted did not reply at all or when he/she did, this was through a third party, with, on top of it, a view to sell the contested domain.

Again, and in accordance with the decisions of the Centre and in application of the “Policy”, the registration in bad faith is clearly demonstrated (re. amongst other cases, The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658] WIPO Case No. D2007-1438)

The Complainant requested the remedy of transfer of the Domain Name.

B. Respondent

The Respondent made no formal Response to the Complainant’s contentions.

However, in subsequent correspondence from the Respondent’s representative to the Complainant’s representatives (and which was copied to the Center by the Respondent’s representative), it was asserted that “The domain name was registered among a batch of names and believed to be a latin derivative of some kind. In view of the concerns noted in your complaint, Mr. Lerman has no objection to the transfer of the domain name to your client.” The Respondent’s representative proposed a suspension of the proceedings to enable the transfer to take place.

When the Complainant’s representatives declined to request a suspension in these circumstances, the Respondent’s representative noted (again by email copied to the Center):

“…“the decision of the Panel” in similar circumstances is along these lines:

http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0479.html

The Respondent has asked the Panel to transfer the disputed domain name to the Complainant (which is the same relief that the Complainant seeks). These circumstances are similar to the previous cases of The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132; Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207, and a previous decision involving the Complainant: Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336.

The Panel agrees with the following comments from the Cartoon Network case:

“[T]his Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules, the Panel can proceed immediately to make an order for transfer.”

[…]

The Complainant did not agree to settle and chose to continue with these proceedings. This decision was of course open to the Complainant. However, the Panel must agree with the Respondent’s comments that in doing so, the Complainant has only caused further delay in having the disputed domain name transferred to it.

The Panel accordingly decides that the disputed domain name should be transferred to the Complainant without determination of the elements of paragraph 4(a).”

 

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that

(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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.

In the present case, the Respondent’s representative has referred to certain previous Decisions as having relied upon paragraph 10 of the Rules to order transfer of a domain name without making a finding as to the substantive requirements of the Policy.

Paragraph 10, “General Powers of the Panel” of the Rules provides that:

(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.

(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.

(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

(e) A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.

The present Panel respectfully disagrees with the views apparently expressed by some previous Panels in relation to the scope of powers granted to the Panel under Paragraph 10 of the Rules. The present Panel does not believe that paragraph 10 provides dispensation to disregard the fundamental substantive requirements of the Policy. Paragraph 4(a) of the Policy expressly requires that of parts (i), (ii) and (iii):

“In the administrative proceeding, the complainant must prove that each of these three elements are present.”

Whilst Paragraph 10 of the Rules may permit a Panel to abbreviate the analysis, particularly where the Respondent has not disputed the Complainant’s case, it cannot be acceptable or desirable, in this Panel’s view, to dispense with any analysis at all. At the very least, the Panel would submit, the Complainant must be found to have established a prima facie case on the three parts of Paragraph 4(a).

Consistent with the approach stated in many previous cases, the fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.” It is this Panel’s opinion that this does not mean a default decision is automatically to be issued in favour of the Complainant. Consequently, the Panel must proceed with at least a basic assessment of the Complaint on its merits.

Nor is it necessarily true that a complainant will only cause further delay by having a case taken to a decision rather than having the proceedings suspended in reply to a respondent’s reported intention to facilitate a transfer of the domain name at issue. Past experience suggests that such expressed intentions may also be employed as a delaying tactic by a Respondent (see e.g. President and Fellows of Harvard College v. Texas International Property Associates - NA NA, WIPO Case No. D2008-0597.)

Furthermore, in cases where a respondent believes that it is likely to lose, it may also prefer to propose a transfer simply to avoid having itself identified on the list of UDRP respondents.

The Panel considers it quite understandable that a complainant, having gone to the trouble and expense of preparing and filing a Complaint, might not wish to allow the respondent to avoid a formal decision at such a late stage.

A. Identical or Confusingly Similar

The Domain Name is <anovo.com>.

The Complainant has demonstrated that it has a company name registration for ANOVO dating from at least 1992 and a Community Trade Mark registration for the mark A NOVO dating from 1999, both of which rights predate the earliest date of registration of the Domain Name, regardless of whenever the Respondent may actually have acquired it.

The Complainant asserted a number of other trade mark registrations and applications. The Panel has disregarded those with later application dates than the earliest date of registration of the Domain Name. The Panel has also disregarded two French registrations cited by the Complainant, but which were apparently registered in the name of another entity, General Electronique, whose connection with the Complainant was not explained in the Complaint.

Nevertheless, the Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights, and the requirements of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to the Respondent of the dispute, 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark 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 trade mark or service mark at issue.

The Respondent has made no claims to any rights of its own: plainly, neither he nor Moniker Privacy Services (as the nominal original registrant) is known by the Domain Name; nor does he claim to have made any legitimate use of the Domain Name.

Rather, the evidence in the Complaint suggests that the Respondent has used the Domain Name for a website, in the manner characteristic of those domainers who seek to monetize domain names by setting up pay-per-click (“PPC”) links to mislead or divert Internet users and to skim-off income by trading off the reputation and goodwill of an unrelated third-party trademark owner. In the Panel’s view, piggybacking on another’s goodwill and reputation in this way is parasitic, and is not a bona fide offering or use. The consequence will undoubtedly be to mislead consumers in general and customers seeking the Complainant in particular.

Consequently, the Panel holds that the Respondent has no rights or legitimate interests in respect of the Domain Name; the requirements of paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith

Under Paragraph 4(b) of the Policy, the following are relevant examples of the sort of conduct which a Panel may take (without limitation) as evidence of registration and use in bad faith:

(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [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, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the 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 Respondent’s] website or location.

For the same reasons as in B. above, the Panel considers the example of paragraph 4(b)(iv) of the Policy most directly applicable in the present case.

In the Panel’s view, the unchallenged evidence shows that the Respondent has been in the business of monetizing the Domain Name through exploitation of PPC links in a parasitic fashion (as described above) to trade off the Complainant’s goodwill and reputation, and registered and is using the Domain Name in bad faith for that purpose. The Panel accepts that there may be situations where individuals do not wish to disclose their private addresses because of threats to their personal safety. However, in the Panel’s view, there would have to be exceptional reasons indeed for any ordinary business to conceal its identity and contact details. The evidence shows that the Respondent’s website was operated as a simple business to generate commercial income from PPC links. But the Respondent provided no apparent means for identifying who was running the business behind it – no legal identification of where it was based, and no contact details. These are omissions, which might be expected of dodgy, fly-by-night operators who don’t want to be subject to any clear legal jurisdiction or otherwise to evade responsibility for the consequences of their activities. The Panel does not suggest that the present Respondent necessarily falls into any such particular category. However, the Respondent has offered no explanation to explain why his true identity needed to be concealed, and why he failed to provide any business identification, location and contact information on his website.

Consequently, the Panel concludes that the Complainant has established a prima facie case that the Respondent has registered and used the Domain Name to profit from confusion with the Complainant’s identical name and mark.

For the purposes of the Policy, therefore, the Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is also met.

 

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 <anovo.com> be transferred to the Complainant.


Keith Gymer
Sole Panelist

Dated: September 8, 2008