The Complainant is Place des Tendances of Boulogne Billancourt, France, represented by Tmark Conseils, France.
The Respondent is Luca Mueller of Unterfoehring, Germany.
The disputed domain name <placesdestendances.com> (the “Disputed Domain Name”) is registered with About Domain Dot Com Solutions Pvt. Ltd. d/b/a www.aboutdomain.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2010. On February 15, 2010, the Center transmitted by email to About Domain Dot Com Solutions Pvt. Ltd. d/b/a www.aboutdomain.com a request for registrar verification in connection with the Disputed Domain Name. On February 24, 2010, after several reminders, About Domain Dot Com Solutions Pvt. Ltd. d/b/a www.aboutdomain.com 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 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 18, 2010.
The Center appointed Jacques de Werra as the sole panelist in this matter on March 25, 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 is the owner of a French word trademark PLACE DES TENDANCES (application number 07 3474 840) for goods and services in classes 18, 20, 24, 25, 35 and 38 which was applied for on January 17, 2007 and the registration of which was notified on June 15, 2007 (the “Trademark”).
The Complainant operates a website at the domain name <placedestendances.com> on which it commercialises fashion articles for men, women and babies.
The Disputed Domain Name was registered on May 23, 2008.
The Complainant first claims that the Disputed Domain Name is confusingly similar to the Trademark given that it consists of the Trademark to which the letter “s” has been added in the first word (i.e. “places” instead of “place”).
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, because, to the best of the Complainant's knowledge and information, the Respondent is not making any use of the Disputed Domain Name in connection with a bona fide offering of goods and services or he is not known by the Disputed Domain Name. The Respondent is further not making a noncommercial use of the Disputed Domain Name.
The Complainant finally claims that the Respondent registered and uses the Disputed Domain Name in bad faith because the Disputed Domain Name was registered after the application for the Trademark was filed. In addition, the Complainant operates a website for the sale of fashion articles for men, women and babies under the domain name <placedestendances.com> while the Disputed Domain Name contains links to products competing with those offered by the Complainant so that the Respondent is attracting Internet users to the Respondent's web site for commercial gain, by creating a likelihood of confusion with the Complainant's Trademark and Complainant's domain name as to the source, affiliation, or endorsement of the Respondent's web site or of a product or service on the Respondent's web site or location.
The Complainant also claims that the Respondent is known to be a cyber-squatter who has been found in breach of the Policy in three previous decisions rendered against him in UDRP proceedings.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that a complainant must prove each of the following three elements in order to succeed in a UDRP proceeding. Thus, for a complainant to succeed, it must prove all of the three elements under the Policy:
(i) the respondent's 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 respondent's domain name has been registered and is being used in bad faith.
The Panel is satisfied that the Complainant has rights to the Trademark as resulting from its French trademark registration.
A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name replicates the Trademark subject to the change of only one single letter, which is obviously not sufficient to avoid a confusing similarity.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the conditions of paragraph 4(a)(i) of the Policy are met.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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 has been commonly known by the domain name, even if it has acquired no trademark 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 trademark or service mark at issue.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In this case, the Panel finds no evidence that the Respondent ever had any rights or legitimate interests in the Disputed Domain Name. Based on its uncontradicted allegations, the Complainant has demonstrated that the Disputed Domain Name hosts a website providing links to third party websites in what appears to be a “click-through” site being part of a domain name parking program, whereby some of these links point to products competing with those offered by the Complainant on its official website (i.e., <placedestendances.com>).
The Panel further acknowledges that the Complainant never authorized, licensed or permitted the Respondent to use the Trademark in any manner and that the Respondent is not commonly known by the Disputed Domain Name.
On this basis, the Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name and similarly that the Respondent has not established any rights to or any legitimate interests in the Disputed Domain Name.
The Panel is consequently satisfied that the Complainant has established that the second requirement of paragraph 4(a) of the Policy is met.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In this case, based on the uncontradicted evidence filed by the Complainant, the Panel finds that the Respondent registered the Disputed Domain Name and uses it for the purposes of monetary gain by providing links to sites which are unrelated to the ones of the Complainant or are in some cases even competing with the products of the Complainant. Such use of the Disputed Domain Name can only be explained by the intent of the Respondent to attract Internet traffic by capitalizing on the Complainant's Trademark. This type of use of the Disputed Domain Name constitutes sufficient evidence of the bad faith of the Respondent under paragraph 4(b)(iv) of the Policy. See Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968 and Imperial Chemical Industries PLC v. RareNames, WIPO Case No. D2006-0124.
It has also been shown by the Complainant that the Respondent has engaged in a pattern of conduct in registering domain names which are confusingly similar to third party trademarks which constitutes another confirmation of the bad faith of the Respondent, as evidenced by the different UDRP decisions which have been rendered against him. See, e.g., Sykes Cottages Limited v. NA Luca Mueller, WIPO Case No. D2009-1130.
For all these reasons, the Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to 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 <placesdestendances.com> be transferred to the Complainant.
Jacques de Werra
Date: April 7, 2010