The Complainant is Sanutri AG of Bern, Switzerland, internally represented.
The Respondent is Hello Domain of New York, United States of America, represented by Leffler Marcus & McCaffrey LLC, United States.
The disputed domain name <céréal.com> [xn--cral-bpab.com] is registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2010. On April 14, 2010, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On April 19, 2010, Melbourne IT Ltd 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 April 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2010. The Response was filed with the Center on May 10, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on May 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 has registered marks for “céréal”, in classes 5 and 30 relating to, respectively, dietetic substances registered for medicinal use, and flour and preparation made from cereals, bread, pastry and confectionery. The Complainant's registrations include a Community mark registered in October 2006, marks registered in Israel and Lebanon in 2005, an International mark registered in 1998, and its earliest registered mark in France in 1980. The Complainant provided evidence (copies of registration certificates) to that effect, attached to the Complaint.
The Complainant operates websites at “www.céréal.eu” and “www.céréalbio.eu”.
The disputed domain name was created on August 30, 2007 (as indicated in the WhoIs details confirmed by the Registrar).
The Complainant wrote to the Respondent by letter dated January 5, 2010, giving the Respondent notice that it would “initiate the legal procedure”, failing the Respondent's agreement to transfer the disputed domain name. The Respondent did not reply to this correspondence.
The Complainant provides evidence of its registered marks, under a heading stating that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant says that the Respondent does not have any rights in the disputed domain name. The Respondent is not referred to or known under the term comprising the disputed domain name.
The Complainant, finally, says that the disputed domain name was registered and has been used in bad faith. The Complainant says that the only objective for the Respondent's acquisition of the disputed domain name was for resale. The Complainant refers to a website at “www.dominiosinternet.com” to which (as admitted in the Response) the disputed domain name reverted on February 25, 2010. That website contained the following statement in English and Spanish:
“Domains for sale at us$789 (€ 580) each
Special Investors: 20 domains at us$8,000 (€ 5.600)
If someone is interested in buying the whole portfolio, please send us an offer”.
(The Complainant provides no direct evidence that the disputed domain name was mentioned explicitly on that website, or direct evidence of the relationship between that website at the purported offer for sale of the disputed domain name.)
The Complainant says that the Respondent, which received notice of this dispute by its correspondence dated January 5, 2010, “did not consider it convenient to approach applicant to transfer the aforementioned domain name to him, nor to justify any right former to that of the applicant one.”
The Respondent says that the disputed domain name is no more than a common word in widespread use in a descriptive sense. The Respondent refers to the definition of “cereal” by Merriam Webster. Further, the Respondent says that a search of company names on the website Hoover's (“www.hoovers.com”) for the word “cereal” returned 5,817 company names from all over the world, almost all unrelated to the Complainant, and the majority of which contain the word “cereal.” A search under the database of the United States Patent and Trademark Office reveals that there are 312 trademark records containing the word “cereal.”
The Respondent says that it has used the website at “www. céréal.com” to redirect to “www.dominosinternet.com”, another website for which the domain name is owned by the Respondent and which contained a directory of domain names which are for sale by the Respondent. There is no possibility of confusing this site with the Complainant or its dietetic and organic products business.
The Respondent says that it is in the business of purchasing and selling generic domain names, which is a legitimate business under the Policy. The Respondent refers e.g. to The Landmark Group v. DigiMedia.com. L.P., NAF Claim No. 285459.
The Respondent also denies having registered and used the disputed domain name in bad faith. Having the intent to sell a domain name does not demonstrate bad faith. Furthermore, the Respondent was unaware of the Complainant's trademarks until it received a notice of this action. The Respondent says that it received no notice of the Complainant's communication to it of January 5, 2010, because it was not sent to the Respondent's address.
The Respondent requests a finding of reverse domain name hijacking against the Complainant.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows.
There is no dispute that the Complainant has registered marks incorporating the term “céréal”. Prior panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is distinctive. See e.g. FHG Holdings Pty Ltd d/b/a Click Business Cards v. DOMIBOT, WIPO Case No. D2006-0669.
The Respondent seeks to rebut this presumption. The Respondent suggests that the domain name merely incorporates the generic English term “cereal”. In other words, the Respondent makes the implicit argument that the Complainant cannot establish its case under paragraph 4(a)(i) of the Policy because the term included in the disputed domain name has a generic association, different to that associated with the Complainant's mark.
The difficulty with this argument is that the Respondent does not mention the obvious difference between the generic term “cereal” in English and the term “céréal”, as incorporated in the disputed domain name. There was no evidence in this case that the latter term, including the acute accents over the letters “e”, reflects a term commonly spelled in English or any other language. The disputed domain name is an International Domain Name (IDN) using the accented “é” not found in the ASCII character set. It is, as such, not a URL that is relevantly identical to the English term “cereal”. (ASCII stands for the American Standard Code for Information Interchange. The ASCII code is the numerical representation of a character such as ‘a', and includes representations for each letter of the English alphabet.)
It is well established that the gTLD extension (“.com”) is to be disregarded for the purpose of comparison under paragraph 4(a) of the Policy. Disregarding that extension, it is self-evident that the disputed domain name is relevantly identical to the Complainant's registered mark. Whether or not the term also has some generic connotation does not affect that conclusion for the purpose of the first element of the Policy. As such, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
The Respondent argues that it has rights or legitimate interests in the disputed domain name based on the descriptive nature of the term “cereal” which it incorporates. The Respondent refers e.g. to The Landmark Group v. DigiMedia.com. L.P., NAF Claim No. 285459 for the proposition that “As long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this is a business model that is permitted under the Policy.” The Respondent also refers to General Machine Products Company. Inc. v. Prime Domains (alk/a Telepathy, Inc.), NAF Claim No. 92531. The Respondent says that, in that case, the then respondent demonstrated a legitimate interest by proving “that it is in the business of selling generic and descriptive domain names.”
As noted above, the difficulty with this argument is that it glides over the differences between the generic English word “cereal” and the character set “céréal” included in the disputed domain name. The Respondent presented evidence of the dictionary definition in English for “cereal”. However, no evidence was presented in this case that the term “céréal”, as such, appears in any English dictionary or that it has any other meaning in another language.
The term “céréal” clearly has close phonetic and visual similarities to the English term “cereal” as well as the similar French term “céréale”. But it is not identical to either of those terms. In its best light to the Respondent, it might be argued that the use of the non-ASCII character “é” in place of the ASCII character “e” has little or no significance. See Confédération Nationale Du Crédit Mutuel v. Reinhard Herrmann, WIPO Case No. DTV2009-0008. In that case, however, this observation was made in the context of whether the then complainant's mark was identical or confusingly similar to the domain name then in dispute. See similarly, France Printemps v. Reinhard Herrmann, WIPO Case No. D2007-0971. That case did not directly address the question of whether rights in such an IDN might arise because of some similarity with a term in another language.
Alternatively, it might be argued that the accented “é” in this case does have significance, for the purpose of determining whether or not the Respondent has rights or legitimate interests. As noted above, this is because the term“céréal”, as accented, does not appear in any English dictionary. To that extent, it cannot be said that the term is merely descriptive. This case is, therefore, different to some prior cases concerning IDNs, such as Domisys SAS v. Wachter Consulting Inc., WIPO Case No. D2008-0767, which concerned the registration of terms that were, as such, generic. (In that case, the domain name <matériel.net> included a generic French term.)
The Panel accepts that the disputed domain name is similar, phonetically and visually, to the English term “cereal”. But the Respondent has not argued that it has rights because that term is similar to a generic term. The Respondent simply says that it has registered a generic English term. The Panel accepts that a respondent may, depending on the circumstances, demonstrate rights or legitimate interests in registering common dictionary words. But the same principles do not apply to terms that are merely similar, however closely, to dictionary terms. Previous panels have had no difficulty making findings adverse to respondents in circumstances where a disputed domain name is similar, but not identical, to a generic term. See e.g. Booz-Allen & Hamilton Inc. v. Servability Ltd, WIPO Case No. D2001-0243, where the then panel rejected the respondent's argument that it had registered the term “booz” as a phonetic equivalent of the English term “booze”.
There is no other evidence in this case that the Respondent has rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. Paragraph 4(b)(i) provides that there is evidence of bad faith where a domain name is acquired “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the 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.” The Respondent in this case states that it is in the business of acquiring domain names primarily for resale, and the disputed domain name reverted to a website for that primary purpose.
In these circumstances, absent provided evidence that the disputed domain name (an IDN incorporating French accents) has a descriptive meaning in the language relied on by the Respondent (English), and where the disputed domain name is identical to the Complainant's registered mark, the Panel also infers that the disputed domain name was registered and has been used in bad faith within the meaning of paragraph 4(b)(i) of the Policy. The fact that the disputed domain name was advertised generally for sale, and that the Respondent did not approach the Complainant directly, is no bar to such a finding. See e.g. Millennium & Copthorne International Ltd. v. Blanche McGovern, WIPO Case No. D2000-0318.
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 <céréal.com> [xn--cral-bpab.com] be transferred to the Complainant.
James A. Barker
Dated: June 8, 2010