The Complainant is FRANCE MATERNITE of Bordeaux, France, represented by IP SPHERE, France.
The Respondent is Adlatus-of-the Day of Belize City, Belize.
The disputed domain name <bébé9.com> [xn--bb9-bmab.com] is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2010. On February 17, 2010, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On February 18, 2010, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 23, 2010. The Center verified that the Complaint together with the amended 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 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 18, 2010.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on March 29, 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 a French company, founded in 1966 operating under the trademark BEBE 9. Furthermore, the Complainant is currently operating a network of stores in that same country as well as an e-commerce website through the domain names <bebe9.com>, <bebe-9.com>, <bebe9-shop.com>, <bebe-9.fr> and <bebe9.fr>. The company offers products for babies and children and maternity products. The domain names <bebe9.eu>, <bebe-9.eu> and <bebe9-shop.eu> are also owned by the Complainant but have not yet been linked to a website.
The Complainant is the holder of trademark registrations in a number of countries worldwide, e.g:
- International trademark registration No. 1001675 for BEBE 9 in class 35, registered on October 6, 2008, designating Benelux, China, Cyprus, Egypt, Poland, Romania, the Russian Federation, Spain and Switzerland;
- French trademark registration No. 083 571 382 for BEBE 9 in classes 3, 5,7-12, 14, 16, 18, 20-22, 24, 25, 28, 35, 36, 41 and 45, filed on April 23, 2008;
- French trademark registration No. for BEBE 9 in classes 12 and 20, registered on May 7, 1997;
- French trademark registration No. 97 670 425 for BÉBÉ 9 in classes 3, 5, 12, 16, 20, 21, 24, 25 and 28, filed in March 26, 1997;
The disputed domain name was registered on January 12, 2007.
On February 17, 2010, the Complainant instituted the present proceedings.
The Complainant has in summary provided the following arguments.
The Complainant asserts that the disputed domain name is identical or, at the very least, confusingly similar to the trademarks of the Complainant. If the the gTLD suffix “.com” is taken away the only difference is the acute accents of the letters “e”.
On its own website and in its stores, the Complainant offers e.g. children's products. The disputed domain name is used as a parking website offering links to third party websites offering similar products.
The website obviously targets French Internet users since the keywords and links contain keywords in French and the links lead to French websites competing with the Complainant.
The Respondent has no trademark rights in the expression “bebe 9”. Neither has the disputed domain name been used in connection with any bona fide offering of goods and services. Furthermore, the Respondent has not been licensed or authorized to use the Complainant's trademarks in any way.
The attraction of the website of the Respondent lies in the disputed domain name which will be understood by Internet users as a reference to the Complainant.
The Respondent was aware of the trademarks of the Complainant and the fact that it enjoyed a reputation in France at the time of registration. The Complainant's trademarks are inherently unusual and not an obvious choice for a domain name unless the intention is to attract attention from the customers of the Complainant. The Respondent uses the disputed domain name in such a way that the goodwill and reputation of the Complainant's trademarks are taken advantage of.
Furthermore, the Respondent has subscribed to a privacy service hiding the true registrant identity behind a company registered as registrant. When the Respondent was alerted of this dispute, the Respondent elected to transfer the domain to another registrar and subscribed to their privacy service anew. The lack of a response to the cease and desist letter sent by the Complainant on December 2009, and the attempt to hide the Respondent's identity constitute strong evidence of the Respondent's bad faith.
The Respondent did not reply to the Complainant's contentions.
The Panel is required to decide the 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 that it deems appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent's domain name has been registered and is being used in bad faith
The Complainant is the holder of the registered trademarks BÉBÉ 9 and BEBE 9 for goods in a number of classes in countries such as France, Benelux, China, Cyprus, Egypt, Poland, Romania, the Russian Federation, Spain and Switzerland.
The Complainant's trademarks are, with the gTLD “.com”, entirely contained in the disputed domain name. The top-level domain is according to well-established consensus incapable of performing any distinctive function, and should not be considered in making this determination.1 The addition of the acute accents does not prevent the confusing similarity with the Complainant's other trademarks.
Consequently, this Panel finds the domain name in dispute to be identical to the trademark BÉBÉ 9 and confusingly similar to the trademark BEBE 9 in which the Complainant has rights.
The summary nature of the UDRP proceedings means that the Complainant must present a prima facie case of the Respondent's lack of legitimate interest in the disputed domain name.
The Complainant has contended that the Respondent has no trademark rights to the disputed domain name. Furthermore, the Complainant has asserted that the Respondent has not been licensed or authorized to use the Complainant's trademarks in any way.
The domain name leads to a website offering links to third parties' websites, some of who are competitors to the Complainant. To the Complainant, this does not constitute bona fide offering of goods and services.
In accordance with Rules paragraph 14(b), the Panel may draw such inferences as are appropriate from the Respondent's failure to reply to the Complainant's assertions and evidence or to otherwise contest the Complaint.2
In view of the submissions of the Complainant, the Panel finds that the Respondent is not connected with the Complainant, but uses the Complainant's marks with an intention to derive commercial advantage from the trademarks of the Complainant. The lack of a reply from the Respondent only adds to this perception. Such use by the Respondent is not legitimate use and does not confer any rights in favor of the Respondent. Hence, the second element is fulfilled.
The Panel agrees with the Complainant on the issue of the distinctive character of the Complainant's trademarks. Moreover, the word and device marks cited above are, the acute accents aside, identical to the disputed domain name. The Panel therefore finds it highly unlikely that the Respondent, unaware of the Complainant's trademarks, went ahead and registered that particular domain name in good faith.
This is further supported by the fact that the disputed domain name is used for as a classic pay-per-click parking page where the links lead to third parties with businesses similar to the Complainant's.
The Panel consequently finds that by using the disputed domain name in this manner, the Respondent has intentionally and for commercial gain attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source of that website (initial interest confusion). There is a strong panelist consensus that Respondent use, which intentionally diverts Internet users to its website, constitutes bad faith use.3
The evidence of bad faith of the Respondent when registering and using the disputed domain name is further supported by the attempt by the Respondent to evade legal action, i.e. by changing domain name registrars and attempting again to remain anonymous after learning of the complaints sent by the Complainant in its cease and desist letter of December 2009.
The Panel finds, particularly in absence of any reply from the Respondent, that the Complainant has fulfilled its evidentiary burden and proved that the disputed domain name has been registered and 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 <bébé9.com> be transferred to the Complainant.
Dated: April 12, 2010
1 See e.g. Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023, D. Ronaldo de Assis Moreira v. Eladio García Quintas, WIPO Case No. D2006-0524 and LDLC.COM v. LaPorte Holdings, WIPO Case No. D2005-0687.
2 See e.g. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
3 See for instance F. Hoffmann-La Roche AG v. DOMIBOT, WIPO Case No. D2006-0327.