WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DIM SAS v. BIO FUSION HEALTH PRODUCTS, INC
Case No. D2010-0979
1. The Parties
The Complainant is DIM SAS of Perret, France, represented by Cabinet Germain & Maureau, France.
The Respondent is BIO FUSION HEALTH PRODUCTS of Rapid City, South Dakota, United States of America.
2. The Domain Name and Registrar
The disputed domain name <dimfusion.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2010. On June 15, 2010, the Center transmitted by email to GoDaddy.com, Inc a request for registrar verification in connection with the disputed domain name. On June 17, 2010, GoDaddy.com, Inc. 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 June 26, 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 June 29, 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 July 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 23, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on July 28, 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.
4. Factual Background
The factual background is taken from the submissions of the Complainant.
The Complainant is a French company in business in the manufacture and supply of articles of clothing, including underwear. The company has existed since 1953 and the scale of its business is the employment of about 2000 people and an annual turnover recently in the order of 440,000,000 Euros. The company advertises heavily with the services of well-known film producers and photographers.
The Complainant is the registrant of the following trademarks:
DIM, French trademark, registration number 1413016,
August 4, 1977 and renewals, class 25;
DIM (stylised), French trademark, registration number 1361813,
July 1, 1986 and renewals, classes 1 to 42;
DIM (word), United States trademark, registration number 3707865,
November 28, 2008, class 25;
The Complainant also claims rights in the following unregistered trademark:
DIM FUSION, in respect of underwear for men, in use since at least as early as 2006.
There is no information available about the Respondent except for the registration details of the disputed domain name.
The disputed domain name appears to have been registered on September 17, 2009.
5. Parties’ Contentions
The Complainant produces documentary evidence in support if its contention that the trademarks listed above are its exclusive property. Documentary evidence of a number of the Complainant’s other trademarks embodying the word DIM is also annexed.
In respect of the unregistered trademark DIM FUSION, the Complainant contends that it has acquired sufficient goodwill in the trademark that it would be clearly associated with the Complainant. In support of this contention the Complainant submits documentary evidence including a copy of its website; catalogues printed in the years from 2006 to 2010; invoices and labels.
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it has rights. The incorporation of the common word “fusion” in the disputed domain name does nothing to diminish confusing similarity with the Complainant’s trademark DIM. The gTLD designation “.com” may be disregarded in the context of the determination of confusing similarity. The disputed domain name <dimfusion.com> is therefore confusingly similar to trademarks in which the Complainant has rights
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent has no connection with it and has never been authorised to use the Complainant’s trademark. The Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; is not known as and does not trade under the disputed domain name; and makes no legitimate use of it.
The Complainant further contends that the Respondent has registered and is using the disputed domain name in bad faith. Documentary evidence is produced in order to demonstrate that the function of the disputed domain name is to offer sponsored links to other websites in categories including cosmetics, cars and education. Included is a link in French to an apparent supplier of DIM underwear. Thus, the Respondent was aware of the Complainant’s trademark. The Respondent is relying on the goodwill embodied in the Complainant’s trademark in order to attract visitors for the purpose of generating revenue, constituting use of the disputed domain name in bad faith, and the Respondent’s activity also amounts to passing off, unfair competition and trademark infringement.
The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the trademark DIM. Furthermore, on the basis of the uncontested evidence produced by the Complainant as to the extent of its usage of the mark DIM FUSION over a period of some years, the Panel is satisfied that for the purpose of this proceeding the Complainant has demonstrated sufficient rights in that unregistered trademark. The Panel will proceed solely on the basis of the unregistered trademark DIM FUSION.
The Panel finds the disputed domain name <dimfusion.com> to be confusingly similar and identical to the unregistered trademark DIM FUSION in which the Complainant has established rights within the meaning of paragraph 4(a)(i) of the Policy. The absence of a punctuation space between “dim” and “fusion”, and the presence of the gTLD designation “.com”, are of no consequence in the determination of confusing similarity under the Policy in this case.
B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. The Panel accepts the Complainant’s certified and uncontested statement that it has had no connection with the Respondent and has not permitted it to use the Complainant’s trademark. The Respondent has not availed itself of the opportunity provided under paragraph 4(c) of the Policy or otherwise to refute the prima facie case made out by the Complainant, and the Panel, upon the available evidence, cannot envisage any grounds whereby the Respondent could demonstrate rights or legitimate interests in the disputed domain name. The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location.”
The Panel has examined the nature and function of the Respondent’s website to which the disputed domain name resolves. According to the evidence, it may reasonably be concluded that the website of the disputed domain name exists for the purpose of referring visitors to other websites by means of hyperlinks, that is to say, a viewer who sees an advertised product or service on the Respondent’s website may click on the associated link and be transferred to the website of the advertiser. This activity is a well known revenue-generating business model, known as click-through or pay-per-click, in which at least some of the remote advertisers pay a commission to the referrer for each referral. This style of business may be entirely legitimate and is widely adopted as the means of funding or subsidising websites that offer a public or private service, such as a news or weather service or a book exchange.
The pay-per-click business model may not be legitimate, however, if it is used to attract viewers, directly or through the use of search engines, by the unauthorised display of another’s trademark. In the present instance it is clear that the Respondent intends to attract visitors by portrayal of the Complainant’s trademark DIM FUSION in the disputed domain name without authority, then to confront visitors with links to advertisers. Many of the offered links are in fields unrelated to the Complainant’s business, such as chemicals, vehicles or the treatment of tobacco addiction. Some are related to the Complainant’s business, such as “Lingerie pour femme”. It is not possible to conceive of any plausible reason for the existence of the Respondent’s website other than the generation of revenue, which in turn relies on the display of the Complainant’s trademark. The Respondent has offered no explanation for its activity.
The Panel finds that the Respondent has registered and used the disputed domain name for the purpose of intending to attract visitors for commercial gain by confusion with the Complainant’s trademark as to the sponsorship of the Respondent’s website, constituting bad faith within the meaning of paragraphs 4(b)(iv) and 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, <dimfusion.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: August 11, 2010