Complainant is EKKIA SAS of Haguenau, France, represented by MCS Avocats, France.
Respondent is LINECOM of Seoul, Republic of Korea.
The disputed domain name <equitheme.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2009. On August 24, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On August 25, 2009, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 7, 2009.
The Center appointed Gary J. Nelson as the sole panelist in this matter on October 21, 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 owns French Trademark Registration No. 93477938 for EQUITHEME. The application resulting in this registration was filed on July 22, 1993.
Complainant owns various “equi-theme” based domain names.
Respondent appears to have registered the <equitheme.com> domain name on January 1, 2007.
Complainant is a French company which manufactures and sells horse riding equipment and sportswear around the globe. Examples of Complainant's products include saddles, bridles, ropes, whips, gloves, boots, hats, vests, coats and jackets.
Complainant owns registered trademarks for EQUITHEME in France, the European Community, and Canada. Complainant also owns an International Registration for EQUITHEME with rights extended into Australia, Switzerland, China, Japan, Liechtenstein, Monaco, Russian Federation and the United States of America.
Complainant has trademark rights in EQUITHEME that predates the registration of the domain name <equitheme.com> by Respondent.
The disputed domain name is identical or confusingly similar to Complainant's EQUITHEME trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the <equitheme.com> domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Complainant has registered its EQUITHEME trademark in France. The filing date for this registration precedes the registration date of the disputed domain name (i.e., July 22, 1993 versus January 1, 2007). Accordingly, the Panel finds that Complainant has established rights in the EQUITHEME trademark pursuant to Paragraph 4(a)(i) of the Policy. See Janus Interantional Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
The Panel finds that Respondent's <equitheme.com> domain name is identical to Complainant's EQUITHEME trademark.
The addition of a generic top-level domain name, such as “.com,” is not sufficient to create a distinct domain name capable of overcoming a claim of confusingly similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
The Panel finds that Complainant has proven the requirement of paragraph 4(a)(i) of the Policy.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no legitimate interests in the contested domain names).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the <equitheme.com> domain name, or that it is commonly known by any name consisting of, or incorporating the term, “equitheme.” In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of Complainant; (2) complainant's rights in its related trademarks precede respondent's registration of the contested domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the <equitheme.com> domain name predates Complainant's rights in the EQUITHEME trademark.
Respondent has established a passive website associated with the <equitheme> domain name. Respondent's failure to develop an active website corresponding to the disputed domain name is evidence supporting the conclusion that Respondent has no right or legitimate interests in this domain name. See Pharmacia & Upjohn AB v.Dario H. Romero, WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the Complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford, WIPO Case No. D2000-1167 (finding no rights or legitimate interests in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
Complainant has proven the requirement of the Policy, paragraph 4(a)(ii).
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Respondent is maintaining the disputed domain name as a passive website. Because the Panel cannot conceive of how Respondent could legitimately use this domain name in light of how it is presently attempting to merely sell the <equitheme.com> domain name, the Panel finds this action is sufficient evidence that Respondent registered and is using the disputed domain name in bad faith. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (finding bad faith where respondent made no use of the domain name in question and there are no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose).
Further evidence of bad faith registration and use is the attempt by Respondent to sell the <equitheme.com> domain name to Complainant for EURO4,000 when Respondent in all likelihood incurred registration costs of approximately EURO10. This attempt to sell a domain name, containing a well-known trademark of another, for profit in excess of renewable costs associated with the registration of the domain name is sufficient evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy. See Justin Kent Luhrs v. Steve Regan, WIPO Case No. D2002-0671 (finding bad faith in offering domain name for sale for USD400).
Complainant has proven the requirement of Policy, paragraph 4(a)(iii).
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, <equitheme.com>, be transferred to the Complainant.
Gary J. Nelson
Dated: October 31, 2009