The Complainant is SINBAR, Paris, France, represented by Tmark Conseils, France.
The Respondent is N/A, Basingstoke, Hampshire, United Kingdom.
The disputed domain name <uksolex.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2009. On May 14, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On May 14, 2009 Tucows 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 May 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2009. The Respondent did not submit any response within the given deadline. Accordingly, the Center notified the Respondent's default on June 9, 2009.
The Center appointed Christian Schalk as the sole panelist in this matter on June 17, 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.
The Panel has reviewed the record and confirms the Complaint's compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The language of the proceedings is English.
The Complainant is a manufacturer of motorcycles. According to the website “www.solex-international.com”, eight million SOLEX motorcycles have been sold for many years until 1988. From this time, the SOLEX trademark obviously still enjoys a high reputation for a special type of motorcycles. Since 2006, the Complainant has launched a new motorcycle with electric engine under the trademark E-SOLEX which the company markets in France and in the Benelux countries in accordance with the website “www.solex-international.com”.
The Complainant owns a number of trademark rights in the term “solex” in class 12 notably in relation with motor cycles and bicycles, for instance,
- UK trademark registration No. 377415, application date March 27, 1917;
- Canadian trademark registration No. 30945, application date February 15, 1922;
- US Registration No. 0429565, application date March 15, 1946;
- International registration No. 191165 with protection in 14 European countries as well as in Algeria, Egypt and Vietnam, application date March 2, 1956
The Respondent has registered the disputed domain name on September 16, 2008.
The disputed domain name resolves to a website which offers for sale a motorcycle called Black'n Roll. There, it is said that this motorcycle supposes to be a modern version of the Velosolex motorcycles that is produced by a company called Mopex. When clicking on “dealer”, Internet users are directed to a website where manufacturers of Black'n Roll motorcycles are dealers for their motorcycles in the UK.
The Complainant submits that the disputed domain name is confusingly similar, to the Complainant's trademark SOLEX. The Complainant argues that the disputed domain name consists of the Complainant's trademark SOLEX to which the geographical term “uk” is appended together with the gTLD suffix “.com” and that the addition of the gTLD “.com” is a technical element and should not be taken into consideration in the comparison of the trademark SOLEX and the disputed domain. The Respondent argues further that the addition of a geographical term to a trademark does not alter the fact that the disputed domain name is confusingly similar to his trademark SOLEX.
The Complainant believes also that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant explains that the Respondent uses the disputed domain as link to its website whose business is to promote its own motorcycle, a moped called “Black'n Roll. Therefore, the Respondent uses the notoriety and reputation of the Complainant's trademark SOLEX to promote his own product. The Complainant explains further that he has not licensed or otherwise permitted the Respondent to use any of its trade mark or any variation thereof, or to apply for or use any domain name incorporating any of those trademarks or any variation thereof.
The Complainant submits further that the dispute domain name was registered and is being used in bad faith. The Complainant asserts that the Respondent must have known the mark SOLEX at the time of the registration of the disputed domain name, in view of its field of activity (commercialization of motorcycles) and due to the fact that the trademark SOLEX is well known. The Complainant believes further that the disputed domain name is also used in bad faith by the Respondent since he makes an illegitimate commercial use of the disputed domain by using this domain name to promote the same kind of products than those offered by the Complainant. By this way the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's SOLEX trademark.
The Respondent sent an email a few minutes after the Center had notified him that he had not replied to the Complainant's arguments within the deadline. In this e-mail the Respondent states that if the Complainant “would be prepared to compensate [him] in the amount of 500 Euros for the inconvenience and costs of redesigning [their] website and setting a new domain etc., [the Respondent] would have no problem with refraining from using the uksolex.com domain name.” The Respondent states further that the domain name was bought in good faith and that there was “no intention of causing any problems with any competing company”.
The Panel shall decide a 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 it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the complainant has proven that each of the following three elements is present:
(i) the 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.
The Panel finds that the Complainant has established trademark rights in the term SOLEX. The Complainant owns old trademark registrations for the term “solex”. In accordance with the very few, even poor material brought before the Panel, the SOLEX trademarks have apparently not been used between 1988 and 2006. This suggests that such trademarks risked being subject of cancellation actions for what may have been long years of continuous non-use use after 1993. However, the available evidence does show that Complainant has marketed motorcycles under the term E-SOLEX since 2006. The use of the term E-SOLEX instead of SOLEX constitutes a deviation from the trademark as it has been registered. However, it can still be regarded as use of the old SOLEX trademark registrations since the letter “E” is widely understood as an abbreviation of the generic term “electronic”. The addition of a generic term to a distinctive trademark such as SOLEX still constitutes use of SOLEX as a trademark in most jurisdictions of the world.
The Panel finds further, that the disputed domain name is confusingly similar with the Complainant's trademarks. As indicated by the Complainant and in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see, InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076; Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565 and Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002.
In this case, the term “uk” is a well known abbreviation for United Kingdom and therewith obviously a generic term. Given the fact that the website to which the disputed domain name resolves seems to be a website of a manufacturer of motorcycles which are obviously modern versions of former well-known products of the Complainant, it is likely that the disputed domain name could be understood by Internet users finding <uksolex.com> on search engines or elsewhere as providing a link to a website belonging to the Complainant or being sponsored by the Complainant and there by increases the likelihood of confusion (see also, Koninklijke Philips Electronics N.V. v. Anpol, WIPO Case No. D2001-1151, and Koninklijke Philips Electronics N.V. v. Jaaska (or Jääskä) Kaketti, WIPO Case No. D2001-0231).
According to the material brought before the Panel, and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark. Moreover, the Respondent uses the disputed domain as link to a website where he promotes its own motorcycles, a moped called “Black'n Roll. Therefore, the Respondent uses the notoriety and reputation of the Complainant's trademark SOLEX to promote his own product. This shows that the Respondent registered the disputed domain name for clear commercial purposes. Such behaviour cannot constitute a legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non-exclusive criteria for the Complainant to show bad faith registration and use of domain names:
(1) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is 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
(2) 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
(3) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a well-established principle under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that the domain name registrant represents and warrants to the registrar that, to its knowledge the registration of the domain name will not infringe the rights of any third party.
Given the high reputation of the Complainant among manufacturers and drivers of motorcycles, and the fact that the Respondent's website explicitly makes references to the Complainant's former products, the Panel finds that the Respondent was aware of the Complainant's trademark when he registered the disputed domain name (see, Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864). Therefore, the Panel believes that the Respondent registered the disputed domain name in bad faith.
The Panel finds further, that the Respondent appears to have chosen the domain name in order to make Internet users believe that the Respondent is somehow linked with the Complainant like, for instance, an authorised representative of the Complainant for the UK.
Therefore, the Panel believes that the only purpose of having registered and subsequently used the disputed domain name was to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark and services and thus to take commercial advantage also of the Complainant's trademark and its reputation. Such behaviour constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
Another indication for bad faith use of the disputed domain name is the fact that the Respondent has asked for a compensation of 500 Euro which appears to exceed by more than 90% the usual cost for registration of a domain name.
For all these reasons the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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 <uksolex.com> be transferred to the Complainant.
Dated: July 2, 2009