WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Decitre SAS v. Matias Guillaume
Case No. D2010-0844
1. The Parties
The Complainant is Decitre SAS of Lyon, France, represented by Morgan, Lewis & Bockius, MNP, France.
The Respondent is Matias Guillaume of Cournon, France.
2. The Domain Name and Registrar
The disputed domain name <decitre.org> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2010. On May 26, 2010, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On May 26, 2010, eNom, Inc. 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 June 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 22, 2010.
The Center appointed Isabelle Leroux as the sole panelist in this matter on July 7, 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.
However, the Panel found that Decitre SA did not have good legal standing to act as a Complainant in the present proceedings. As a result of a change of form as a legal entity, the company named “Decitre” is registered as “Decitre SAS” with the French Register of Companies; in addition, the two DECITRE trademarks formerly owned by Decitre SA, invoked by the Complainant, have effectively become the propriety of Decitre SAS, and this change in ownership was registered with Institut National de la Propriété Industrielle on December 23, 2009, and published in March, 2010.
Therefore the Panel issued a Panel Order on July 21, 2010, allowing the Complainant to proceed to a material correction of the Complaint, within five days of the receipt of the first Panel Order by the Complainant.
The Complainant proceeded to a material correction and filed a modified version of the Complaint on July 23, 2010, of which the Center acknowledged receipt on July 26, 2010.
The Panel therefore considers that Decitre SAS has good legal standing to act as the Complainant in the present proceedings.
4. Factual Background
The Complainant is a French company acting as an online and offline book-dealer, which has been operating its services in France for more than a hundred years. “Decitre” is the family name of the founder of Decitre SAS, as well as that of the Complainant’s Chief Executive Officer, Mr. Guillaume Decitre.
The Complainant owns two French trademarks including the name “Decitre”:
- semi-figurative trademark DECITRE, registered under no. 3639563 on March 26, 2009 in classes 9, 16, 28, 35, 37, 38, 39, 40, 41 and 42;
- word trademark DECITRE, registered under no. 96619831 on April 2, 1996 in classes 9, 16, 28, 35, 37, 38, 40, 41 and 42, and duly renewed.
The Complainant also registered the domain names <decitre.fr> on January 15, 1996 and <decitre.com> on October 20, 1998.
The disputed domain name was registered on October 4, 2009.
5. Parties’ Contentions
As mentioned above, the Complainant is the registrant of the domain name <decitre.fr> and of the domain name <decitre.com>.
The Complainant operates the active website “www.decitre.fr”. The domain name <decitre.com> also directs towards the same website. This website is used by the Complainant in order to present its activities and offer books for sale online. Customers may order books and be delivered at their choice of destination.
The Complainant claims that this website has been constantly updated, owned and operated by the Complainant since the registration of domain names <decitre.fr> and <decitre.com> respectively in 1996 and 1998.
As mentioned above, the Complainant is also the owner of two French trademarks DECITRE.
The Complainant contends that the disputed domain name is identical to its French trademarks.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name <decitre.org>.
According to the Complainant, the disputed domain name is used solely to represent an exact copy of the website “www.decitre.fr” operated and published by the Complainant, without any authorization, express or implied, from the latter. In particular, the Complainant claims that the website “www.decitre.org” presents an interface similar to that of the Complainant’s website “www.decitre.fr”, including a payment interface for the books presented.
Consequently, the Complainant asserts that the website “www.decitre.org”, which is presented in French and therefore targets the French territory, has no other purpose but to associate and identify the Respondent with the Complainant’s trademarks, without any authorization from the latter, in order to divert, in his favour, traffic from the Complainant’s website, and possibly illegitimately acquire banking and other personal information relating to Internet users.
Furthermore, the Complainant argues that the disputed domain name was registered and is being used in bad faith, as it is used to operate a commercial website similar to that of the Complainant. According to the Complainant, the Respondent intentionally seeks to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or products or services offered for sale on the latter.
Finally, the Complainant claims that the Respondent attempted to cover for its behaviour, not only by subscribing to the registrar eNom.Inc’s confidentiality protection program, but also by providing allegedly false contact information in order to hide its true identity. Indeed, the Complainant argues that:
- the address provided (31035 rue de la Boule, 44145 Cournon, Auvergne, France) is false;
- the telephone number provided does not conform with French telephone nomenclature.
For all these reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested;
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) that the Respondent has no right or legitimate interest in the disputed domain name; and
(iii) that the Respondent has registered the disputed domain name and is using it in bad faith.
A. Identical or Confusingly Similar
There is no dispute on this point. The disputed domain name <decitre.org> is identical to the Complainant’s trademarks DECITRE in which the Complainant has had trademark rights since April 2, 1996.
The Panel therefore finds that the first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
The disputed domain name was registered by the Respondent on October 4, 2009, long after the Complainant registered the domain names <decitre.fr> and <decitre.com>, respectively in January 1996 and October 1998.
More particularly, the registration of the disputed domain name occurred after the filing and the registration of both DECITRE trademarks by the Complainant, respectively in April 1996 and March 2009.
It is evident from the record that the Respondent has not used, nor made demonstrable preparations to use, the disputed domain name for a bona fide offering of goods or services. On the contrary, the Panel finds that the fact that the Respondent’s website “www.decitre.org” reproduces, for the same activity, without authorization, extracts from the Complainant’s website“www.decitre.fr”, shows that the Respondent had no intention whatsoever to use the disputed domain name <decitre.org> in relation to a bona fide offering of goods or services.
Moreover, no available evidence indicates that the Respondent could be commonly known under the name “Decitre”.
Finally, the Respondent does not make a legitimate noncommercial or fair use of the disputed domain name. The Panel considers that the Respondent’s use of the disputed domain name rather shows the Respondent’s intention to misleadingly divert consumers for commercial gain, if not to tarnish the DECITRE trademarks owned by the Complainant.
In the circumstances, the Panel does not consider that the Respondent can claim to have any rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
It results from an analysis of the evidence communicated by the Complainant, as well as from the website “www.decitre.org”, that the Respondent’s website is, if not identical, at the very least extremely similar to the Complainant’s website “www.decitre.fr”. In particular, the interface (including the payment interface) is exactly reproduced on the Respondent’s website.
Moreover, both of the Complainant’s DECITRE trademarks are reproduced identically on the Respondent’s website, so that Internet users are inevitably led to making the assumption that the website “www.decitre.org” is directly operated by, associated with, affiliated to, or otherwise endorsed by the Complainant.
It flows from these observations that the website “www.decitre.org” is operated by the Respondent with the sole purpose of creating a likelihood of confusion for Internet users.
The reproduction of the Complainant’s website and trademarks further demonstrates an attempt by the Respondent to divert traffic from the Complainant’s websites, possibly with a view to illegitimately acquiring banking and other confidential information relating to Internet users.
The Respondent’s bad faith is finally evidenced by the Respondent’s attempts to hide its true identity by using false contact information (as admitted in Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501). Indeed, as argued by the Complainant, the contact information provided by the Respondent to the registrar eNom, Inc. is not accurate. The city of Cournon does not exist in France, as opposed to a city named Cournon-D’Auvergne, which does not itself correspond to the ZIP Code 44145 as provided by the Respondent, but rather 63800. This explains why the Notification of Complaint could not be delivered by courier to the Respondent. Furthermore, the telephone information provided does not conform with the French telephone nomenclature.
The Panel therefore finds that the third requirement of the Policy is satisfied.
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 <decitre.org> be transferred to the Complainant.
Dated: August 3, 2010