The Complainant is L'AIR LIQUIDE Société anonyme pour l'Etude et l'Exploitation des Procédés Georges Claude of Paris of France, represented internally.
The Respondent is MERTRON LAND, S.L, Jordi Vila of Barcelona, Spain.
The disputed domain name <airliquide.mobi> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2010. On January 28, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 28, 2010, eNom 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 February 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for response was February 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 22, 2010.
The Center appointed Daniel Kraus as the sole panelist in this matter on March 3, 2010. 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 Complainant in this administrative proceeding is L'AIR LIQUIDE Société anonyme pour l'Etude et l'Exploitation des Procédés Georges Claude, a French joint stock liability company famous in the field of gases for industry, health and the environment. The Complainant is present in 75 countries, including in Spain since 1909, where it has a subsidiary.
The tradename of the Complainant is AIR LIQUIDE.
The Complainant owns the following French trademarks registered with the French Institut National de la Propriété Intellectuelle (INPI):
- AIR LIQUIDE, registered under No 95 571 348 on May 12, 1995 in classes 5, 10 and 44, for such products and services as, inter alia, pharmaceuticals, healthcare, fungicide and other cleaning products, surgery and medical devices; it was renewed on April 12, 2005;
- AL AIR LIQUIDE, registered under No 93 451 236 on January 19, 1993, in classes 1, 3, 5, 6, 7, 9, 10, 11, 12, 37, 39, 40 to 44, for products and services as, inter alia, chemicals for the industry, staple ores and alloys, various kinds of scientific equipment, transportation, packing and storing services, various other services in the field of travel, healthcare, computers; it was renewed on January 9, 2003.
The Complainant also owns the community trademark AL AIR LIQUIDE registered under the No 000.089.003 filed on April 1, 1996 and renewed on April 2, 2006.
Finally, the Complainant owns the following Spanish trademarks AL AIR LIQUIDE and an international trademark designating Spain:
- Spanish trademark registered on February 11, 1998 under No 2.142.008 and No 2.142.009 in class 4, and renewed on May 23, 2008;
- Spanish trademark registered on January 17, 2001 in classes 5, 10 and 42, under No 1.995.409, 1.1995.410 and 1.195.411, and renewed on October 20, 2005 under No 2.674.110;
- International TM designating Spain, registered under No 603.829 on June 29, 1993, in classes 1, 6, 9, 39 and 42.
The name AIR LIQUIDE, protected by the above trademarks has been used by the Complainant or on its behalf and for its benefit. The Complainant owns and operates a website at “www.airliquide.com” which references a list of local websites under the heading “Air Liquide” around the world. The list mentions an active website for Spain, “www.es.airliquide.com”.
The domain name <airliquide.es> was registered on December 22, 2006 by the Complainant's Spanish subsidiary.
The Complainant claims that the disputed domain name reproduces the words registered in its verbal and semi-figurative trademarks, being identical to the verbal trademarks and confusingly similar with the semi-figurative ones.
The Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name for the following grounds:
- The Respondent is a Spanish company in the business of real estate which is not known by a name similar to the disputed domain name;
- The terms “Air” and “Liquide” are not descriptive words in which the Respondent might have an interest;
- The Complainant never consented to the use by the Respondent of its trademarks, trade name and corporate name;
- The Respondent registered the domain name after the registration of the Complainant's trademarks, and the URL attached to the disputed domain name gives access to a pornographic site displaying on its home page “www.airliquide.mobi” and “www.tiaslocas.net”, the latter also being a domain name registered by the Respondent.
The Complainant finally asserts that the disputed domain name was registered and is being used in bad faith, due to the following facts:
- The Complainant's trademarks are famous marks having been used worldwide for many years, and the choice by the Respondent of a domain name referring to a major company in the industry of air and gases does not result from a coincidence;
- The domain name is used to give access to a pornographic site, in a way which damages the Complainant's reputation;
- The Respondent registered the disputed domain name primarily for the purpose of luring people, through the use of a respectable name, to a commercial pornographic website and to divert to its own profit the Complainant's reputation.
The Respondent did not reply to the Complainant's contentions.
In order for a 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 proves, as required by paragraph 4(a) of the Policy, that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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 Center has employed the required measures to notify the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
According to the Rules, paragraph 5(b)(i), a respondent is expected to: “respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In the event of a default, Rules, paragraph (14)(b) foresee that: “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. And, finally, as stated by the panel in Double Eagle Brands N.V. v. Jonathon Maneval, WIPO Case No. D2009-0168, “where the respondent chooses not to present any such evidence to dispute the claims of the complainant, an inference may be made […] that he accepts the factual claims of the complainant, or even that he does not wish to respond or defend his perceived interest in the disputed domain name”.
The Panel shall hence decide on the basis of the evidence supplied by the Complainant.
The Complainant has established it is the owner of the trademark AIR LIQUIDE, which has been registered internationally by the Complainant already in the early 1990s.
In L'Air Liquide v. MIC, WIPO Case No. D2001-1246, the panel held that “Air Liquide is a famous trademark due to the activities of the group that owns the trademark …” and that “Air Liquide is strongly associated with the Complainant”. Same is valid in the present case.
As previously held by WIPO UDRP panels, including in a <.mobi> domain name case (Double Eagle Brands N.V. v. Jonathon Maneval, WIPO Case No. D2009-0168), the “test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the domain name's use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107)”.
In the present case, there is no doubt that the disputed domain name reproduces the words registered in the verbal and semi-figurative trademarks of the Complainant and are identical to the verbal trademarks and confusingly similar with the semi-figurative trademarks of the Complainant. The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the domain name within the meaning of paragraph 4(a) of the Policy.
This finding is based on the following, non-disputed, circumstances brought forward by the Complainant:
- There is no indication in the file that the Respondent is commonly known under the disputed domain name;
- The Respondent is not the owner of any trademark;
- The Respondent is using the domain name to tarnish the Complainant's trademark when directing the disputed domain name to “Tias Locas.net”, a pornographic website.
Furthermore, the Respondent has not provided 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.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph (4)(a)(ii) of the Policy is also satisfied.
The proof that the domain name was registered and used in bad faith may be based, in particular but without limitation, on circumstances described in paragraphs 4b(i),(ii), (iii) and (iv) of the Policy. In the present case, the Panel finds the following:
- As suggested by the Complainant, the choice by the Respondent of a domain name referring to a major company in the industry of air and gases does not result from a coincidence. The Respondent could not be unaware when registering the domain name <airliquide.mobi> in February 4, 2009, of the Groupe Air Liquide, its activities, including in Spain, its trademarks and its domain names;
- The domain name is used to give access to a pornographic site, in a way which damages the Complainant's reputation. In several WIPO UDRP decisions it has been found that the fact of registering a famous sign or a well-known sign as a domain name in order to divert the consumers towards a pornographic site establishes a registration in bad faith (Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc, WIPO Case No. D2001-1314; Endemole Entertainment UK PIc v. Guido Scherpenhuyzen, WIPO Case No. DTV 2001-0023; and Endemol Développement v. Julien Houlier, WIPO Case No. D2002-1048);
- The Respondent registered the domain name <airliquide.mobi> primarily for the purpose of luring people, through the use of a respectable name, to a commercial pornographic website and to divert, to its own profit, the Complainant's reputation. In this Panel's view, the display of the Complainant's domain name on the Respondent's website “www.tiaslocas.net” further confirms this.
The Panel notes here that this corresponds to a recent decision in which the Respondent was implicated with similar facts (see Solred, S.A. v. Jordi Vila, Mertron Land S.L., WIPO Case No. D2009-1549).
The Panel therefore concludes that the Complainant has satisfied the requirements 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 name <airliquide.mobi> be transferred to the Complainant.
Dated: March 15, 2010