The Complainant is MMA IARD, of Le Mans, France, represented by Deprez Dian Guignot, France.
The Respondent is Laurent Granier, of Woodland Hills, California, United States of America.
The disputed domain names <mutuelledumansassurance.com> and <mutuelledumans.com> (“the Domain Names”) are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2008. On December 3, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names. On December 3, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2008. On December 22, 2008, Respondent submitted 4 emails, of which the Center acknowledged receipt. Since Respondent, after being requested thereto by the Center, did not confirm that these emails were his complete and final Response and Respondent did not submit anything else by December 29, 2008, in the circumstances the Center regarded said emails as Respondent's Response.
The Center appointed Jacques de Werra as the sole panelist in this matter on January 22, 2009. 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.
Complainant is a French insurance company which was founded in 1828, with a merger in 1922, and which nowadays operates on the basis of a network of 1,500 general agents and of 2,000 points of sale. Complainant is the owner of the following trademarks (“the Trademarks”):
- International semi-figurative trademark LES MUTUELLES DU MANS ASSURANCES No. 625531, registered on October 18, 1994, covering classes 36 and 39 for insurance services;
- French semi-figurative trademark MMA MUTUELLES DU MANS ASSURANCES No. 99781215, registered on March 17, 1999, covering classes 9, 14, 16, 18, 25, 28, 34, 36, 38 and 39 for insurance services.
Complainant alleges that the Domain Names are confusingly similar to the Trademarks. Since Respondent is not a licensee of Complainant and has never been authorized to use Complainant's Trademarks, Respondent has no rights whatsoever to use them.
Furthermore, Complainant claims that Respondent has registered and uses the Domain Names in bad faith, essentially because the Domain Names have been registered and are being used in order to harm the Complainant's reputation, whereby Complainant emphasised that the parties have already been involved in a very similar domain name dispute relating to other domain names (i.e. <Mutuellesdumansassurances.com> and <Mutuellesdumansassurance.com>, “the Previous Domain Names”) in which the transfer was ordered by the panel (See MMA IARD v. Laurent GRANIER, WIPO Case No. D2008-1026).
By various emails of December 22, 2008, Respondent has requested that the dispute shall be decided before “a real judge” thereby challenging the jurisdiction under the Policy and has therefore requested the serving of a writ at his official address in the United States.
He has also requested the return of the Previous Domain Names (which were transferred to Complainant in the above mentioned proceedings) as well as an amount of USD 5 million as damages for each of these two domain names and for other unspecified “damages and penalties”.
Pursuant to Paragraph 4 (a) of the Policy, Complainant must prove:
(i) that Respondent's Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The first of the Domain Names (<mutuelledumansassurance.com>) is almost identical to the Trademarks to the extent that it constitutes the singular form (i.e. “mutuelle” and “assurance” without “s”) of the verbal element of the Trademarks. As held in the preceding dispute involving the parties (MMA IARD v. Laurent GRANIER supra), there can be no doubt that such little difference cannot prevent the first of the Domain Names (<mutuelledumansassurance.com>) from being confusingly similar to Complainant's Trademarks (see Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043; Debevoise & Plimpton LLP v. Keyword Marketing, Inc. / Web Advertising, Corp., WIPO Case No. D2007-1679).
The Panel further holds that the second of the Domain Names (<mutuelledumans.com>) is also confusingly similar to the Trademarks, given that it incorporates all the distinctive elements of the Trademarks, as the missing word (“assurance” for insurance) is purely descriptive.
In the light of the above, the Panel finds that the Domain Names are confusingly similar to Complainant's Trademarks. Therefore, Complainant has established that the condition of paragraph 4(a)(i) of the Policy is met.
Respondent uses the Domain Names and the connected websites to complain about and protest against the Complainant (as well as against third parties allegedly involved in a scandal which is described on these websites).
As held by other Panels (including in the dispute between the same parties about the Previous Domain Names), even though protest sites may have a legitimate purpose as an expression of free speech, protest sites should not mislead Internet users by channelling them to a website that they did not want to visit by trading on a complainant's mark. Protest disseminated through the powerful tools of the Internet is generally legitimate if the protest is transparent and such transparency starts with choosing a domain name which reflects the protest as opposed to a domain name which implies an affiliation to the trademark holder (see Banque Cantonale de Genève v. Primatex Group S.A., WIPO Case No. D2001-0477; Hollenbeck Youth Center, Inc. v. Stephen Rowland, WIPO Case No. D2004-0032 and MMA IARD v. Laurent GRANIER supra).
In this case, the Panel considers that the protest disseminated on the websites connected to the Domain Names is not transparent and thus cannot justify a legitimate interest of Respondent in the Domain Names.
For these reasons, the Panel holds under Paragraph 4(a)(ii) of the Policy that Respondent has no rights or legitimate interest in the Domain Names.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. The circumstances in this case do not appear in the list. Indeed, a pure protest site, i.e. one confined to criticism rather than commercial gain, is unlikely to fall conveniently into any of the listed circumstances. However, that has not prevented other panels from finding bad faith in such circumstances. The non-commercial character of a website and the absence of a competitive relationship between complainant and respondent in issue has not prevented panels from finding bad faith. See Banque Cantonale de Genève supra; Hollenbeck Youth Center, Inc. supra and MMA IARD v. Laurent GRANIER supra.
In this case, Respondent obviously knew of Complainant and of the Trademarks at the time of registration of the Domain Names, and the Panel is of the view that his registration and use of the Domain Names was undertaken to disrupt Complainant's activities, to prevent Complainant from making use of its Trademarks, and to expand the audience for criticism by misleading Internet users into the “source, sponsorship, affiliation, or endorsement” of Respondent's websites linked to the Domain Names, by means of the initial confusion caused by selecting the Domain Names which are confusingly similar to Complainant's Trademarks for his websites, which was held as a bad faith registration and use by other Panels. See Union Square Partnership, Inc., Union Square Partnership District Management Association, Inc. v. unionsquarepartnership.com Private Registrant and unionsquarepartnership.org Private Registrant, WIPO Case No. D2008-1234.
On this basis, the Panel is satisfied that Complainant has met the condition of Paragraph 4(a)(iii) of the Policy.
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 names <mutuelledumansassurance.com> and <mutuelledumans.com> be transferred to the Complainant.
Jacques de Werra
Dated: February 5, 2009