WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fidler v. Texas International Property Associates
Case No. D2010-1388
1. The Parties
The Complainant is Fidler of Paris, France represented by Tmark Conseils of France.
The Respondent is Texas International Property Associates of Dallas, Texas, The United States of America.
2. The Domain Name and Registrar
The disputed domain name <stellaforest.com> (“the domain name”) is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2010. On August 17, 2010, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name. On August 18, 2010, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The registrar Compana LLC also confirmed on August 28, 2010 that the disputed domain name <stellaforest.com> is placed on registrar lock status.
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 August 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2010.
The Center appointed Pravin Anand as the sole panelist in this matter on September 30, 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.
On October 18, 2010, due to exceptional circumstances, the decision due date was extended to October 25, 2010.
4. Factual Background
The following information is taken from the Complaint and the material placed on record by the Complainant. In the absence of any Response, Rule 5(e) of the Rules requires that, absent exceptional circumstances, the Panel must decide the dispute "based upon the Complaint." The Panel accordingly takes the following matters as sufficiently proved.
The Complainant and its Rights
The Complainant is a French company conducting business activities in the field of women’s fashion since 1998. Besides operating under the corporate name Stella Forest, the Complainant is also the owner of the trademark STELLA FOREST bearing No. 98736289 registered with the INPI under classes 18 and 19 for “leather and imitation leather, animal skins, trunks and suitcases, umbrellas and walking sticks, whips and saddlery, clothing, apparel, footwear, headgear”. The said trademark has been owned by the Complainant since June 10, 1998.
Moreover, the Complainant has also been the owner of the domain name <stellaforest.fr> since July 12, 2004.
It is further contended by the Complainant that the trademark STELLA FOREST is distinctive in character and can only be associated with the Complainant with respect to the fashion industry as well as otherwise. The Complainant has further placed material on record showcasing the reputation and goodwill emanating from the trademark STELLA FOREST. The Complainant has relied upon articles published in various reputed magazines such as; Unique, Elle, Avantages, Cosmopolitan, Femmes Actuelles, Femmes d’Aujourd’hui, etc.
The Complainant further hosts a website “www.stellaforest.fr”, through which it claims to sell jewelry, shoes, clothing, etc.
The Respondent and the Domain Name
The domain name <stellaforest.com> was registered on June 23, 2005. The Respondent is also the administrative, billing, and technical contact for the said domain name. The WhoIs printout for the domain name shows that the record was last updated on June 24, 2010.
The domain name <stellaforest.com> is used for a parked website proposing different sponsored links for fashion (Links “Vêtements Femme” that means “Clothing Women”, “Chaussures” that means “Shoes”, “Collection Bijoux”, that means “jewels”, “Dual Mode”, that means “Dual Fashion”).
Internet users who enter the domain name of <stellaforest.com> and click the above mentioned links are directed to websites of competitor companies in the field of fashion.
5. Parties’ Contentions
The Domain Name is Identical or Confusingly Similar to a Trademark in which the Complainant has Rights
The Complainant is the owner of the trademark STELLA FOREST (French trademark No. 98736289, filed on June 10, 1998). The Complainant’s corporate name is Stella Forest, which has been registered at the French Company since June 8, 1988 under No. 419 493 341.
The Complainant claims that the domain name <stellaforest.com> is identical to the Complainant’s trademark and corporate name STELLA FOREST and similar to its domain name <stellaforest.fr>.
The Complainant contends that the Respondent, on the impugned website, has also provided links to websites hosting and selling goods and services similar to that of the Complainant, thus adding to the confusion.
The Respondent has no Rights or Legitimate Interests in the Domain Name
The Complainant contends that a search on the International, Community, French and American Trademark databases indicate no trademark registration containing the words “stella forest” in the name of the Respondent, Texas International Property Associates.
The Complainant further contends that the Respondent has never been commonly known by the domain name <stellaforest.com>. Further, the search of “Texas International Property Associates + Stella Forest” on the popular internet search website “www.google.com” delivered absolutely no results in reference to the use of the expression “stella forest” in relation with the Respondent, which proves that lack of legitimate interests.
The Respondent has Registered and used the Domain Name in Bad Faith
The Complainat contends that the domain name was registered and used with a mala fide intention by creating a likelihood of confusing the Internet user with the registered trademark STELLA FOREST.
That the French company Fidler whose corporate name Stella Forest has an activity since 1998 in fashion for women. It is the owner of the domain name “stellaforest.fr”, which was registered on June 12, 2004, previous to the registration of the domain name <stellaforest.com>, by the Respondent.
The choice of Stella Forest for registering a domain name cannot be done randomly in so far as this expression is obviously distinctive and especially original for a fashion activity.
The Complainant further contends that the Respondent is a habitual cybersqautter and has placed reliance on a number of similar proceedings decided against the Respondent.
Further, the domain name <stellaforest.com> is parking website providing links to the websites of various competitors of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [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.
Paragraph 15(a) of the Rules requires the Panel to:
"… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable."
Paragraph 5(e) of the Rules provides that, if a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. By paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of the Rules.
A. Identical or Confusingly Similar
The Panel has no difficulty in finding this part of the Complaint proved.
The Complainant has proved beyond any doubt that it is the owner of the trademark STELLA FOREST (French Trademark Registration No. 98736289). The Corporate name of the Complainant is STELLA FOREST (Registration No. B 419 493 341, since July 8, 1998). The registered trademark and corporate name is identical to the domain name, leaving aside the generic “.com”. Such difference is too insignificant to distinguish the domain name from the Complainant’s marks and the “confusingly similar” test, provided for in paragraph 4(a)(i) of the Policy is clearly met. Further, a domain name that incorporates the entire trademark of a Complainant shall be held to be identical or confusingly similar to the Complainant’s registered trademark, in keeping with the decisions in EH New ventures Inc. v. WW Processing, WIPO Case No. D2003-0007: Inland Homebuilding Group Inc. v. Douglas Blymier and Flashmasters Photography Inc., WIPO Case No. D2003-0111and Philip Morris Inc. v. r9.net., WIPO Case No. D2003-0004.
B. Rights or Legitimate Interests
The Policy requires that a complainant must prove each of the elements in paragraph 4(a) and it might be thought that proving the negative (that the respondent does not enjoy some right or legitimate interest in the domain name at issue) could pose particular difficulties for the Complainant, but it is generally accepted that once a complainant had made a prima facie case that the respondent does not have rights or legitimate interests, it is for the respondent to rebut such prima facie case by demonstrating its rights or legitimate interests in the domain name. The Sony Kabushiki Kaisha v. Sony.net, WIPO Case No. D2000-1074 is an apt case that discusses this very point. The Panel agrees with such approach.
In the present case, the Complainant has not licensed or otherwise granted permission to the Respondent to use the domain name, which is identical to the registered mark and corporate name of the Complainant. In this Panel’s view, this alone is enough to call for some response, to provide an opportunity for the Respondent to prove that some rights or legitimate interests exist on its part. The Respondent failed to provide any such response that might have convinced this Panel that the Respondent does indeed possess certain rights or legitimate interest with regard to the domain name.
An Internet search on the International Community, French and American Trademarks databases indicated that Texas International Property Association possesses no trademark STELLA FOREST, proving that the Respondent does not have any rights. Furthermore, the Respondent does not seem to have any business relating to leather, imitation leather, animal skins, trunks and suitcases, umbrellas and walking sticks, whips and saddlery, clothing, apparel, footwear, headgear; for which the Complainant received a trademark.
In such circumstances, this Panel is of the opinion that there is no reason for the Respondent to have selected the domain name of <stellaforest.com>, unless the Respondent was aware of the fact that the Complainant possessed the trademark. This Panel is of the view that it is highly improbable that anyone who was unaware of the Complainant or its registered trademarks would have come up with the domain name <stellaforest.com>, by sheer chance. The probability of such coincidence is extremely low.
The Respondent seems to have never been commonly known by the domain name <stellaforest.com>. An Internet search in the popular search engine, “www.google.com”, revealed no reference to the use of the expression “stella forest” in relation to the Respondent. This indicates a lack of clear interest.
In the absence of any formal response to this proceeding by the Respondent, the Panel finds that the Respondent does not have any rights or legitimate interests in the domain name <stellaforest.com>. The Respondent was given sufficient opportunity to respond to the Complainant. If the Respondent had been using the domain name bona fide or for some legitimate or fair purpose, proof in that regard should have been submitted in response to the Complaint.
In light of the foregoing reasons, this Panel concludes that the Respondent possesses no rights or legitimate interests in the domain name <stellaforest.com>.
C. Registered and Used in Bad Faith
The Panel finds that this part of the Complaint is also sufficiently proved. The reasons are provided below.
i. The domain name <stellaforest.com> is identical to the Complainants registered trademark.
ii. There is no evidence of the Respondent ever having carried on any business to which (or in which) the expression “stella forest” might have any significance.
iii. There is no evidence as to why the Respondent has chosen the domain name <stellaforest.com>.
iv. The domain name <stellaforest.com> was registered and used in bad faith so as to create a likelihood of confusion with the established and the registered trademark, STELLA FOREST which was registered before the domain name.
v. The domain name <stellaforest.fr> was registered on July 12, 2004, prior to the registration of the domain name <stellaforest.com>.
vi. The trademark STELLA FOREST is distinctive and original with respect to a fashion activity and is extremely popular in France.
vii. Links in the websites associates with domain name <stellaforest.com> lead uses to various sponsored links for fashion. All of which is in the French language, purportedly to deceive the French users into believing that they are accessing the original domain name <stellaforest.fr> and are indeed accessing the domain name of the established and the popular the Complainant.
viii. The Respondent has featured as a Respondent in a number of UDRP cases. From 2007 to 2009, a total of at least 111 (one hundred and eleven) decisions have been decided against the Respondent. All such decisions ordering the Respondent to transfer the domain name to the complainants.
ix. The domain name <stellaforest.com> has possibly been created by the Respondent to accrue financial profits every time an Internet user accesses such domain name and activates any of the sponsored links on the website.
x. By obtaining such domain name, the Respondent prevents the Complainant, in whom the registered trademark of STELLA FOREST is vested from owning a similar domain name and thus promoting the company online.
In light of the reasons mentioned above in paragraphs i to x, this Panel finds that the domain name <stellaforests.com> was registered and used by the Respondent mala fide. The Panel also finds that the sole intent of the registration of such domain name was to deceive the Internet users into believing that they were accessing the website of the Complainant. Thus, the above mentioned circumstances constitute mala fide registration and use under the paragraphs 4(b)(i) and 4(b)(iv) 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 <stellaforest.com> be transferred to the Complainant.
Dated: October 25, 2010