WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Visa Europe Limited v. Name Administration Inc. (BVI)
Case No. D2010-1531
1. The Parties
The Complainant is Visa Europe Limited of the United Kingdom of Great Britain and Northern Ireland, acting through its subsidiary in Paris, France, represented by Inlex Conseil, France.
The Respondent is Name Administration Inc. (BVI) of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, Ph.D., Esq., United States of America.
2. The Domain Name and Registrar
The disputed domain name <premiercard.net> is registered with iRegistry Corp. (fka) Domain Name Sales Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2010. On September 10, 2010, the Center transmitted by email to iRegistry Corp. (fka) Domain Name Sales Corp. a request for registrar verification in connection with the disputed domain name. On September 10, 2010, iRegistry Corp. (fka) Domain Name Sales Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the disputed domain name and providing the Respondent’s contact details. The Center sent an email communication to the Complainant on September 17, 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 September 21, 2010. The Center has verified that the Complaint together with the amended Complaint satisfy 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 proceeding commenced on September 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 12, 2010. The Response was filed with the Center on October 12, 2010.
The Center appointed Sebastian Hughes, Christophe Caron and Alan L. Limbury as panelists in this matter on November 30, 2010. The Panel finds that it was properly constituted. Each member of 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
A. The Complainant
The Complainant is a company incorporated in the United Kingdom and the owner of trade mark registrations in France for the PREMIER word trade mark and the PREMIER and global map device trade mark, and the owner of CTM registrations for two PREMIER and global map device trade marks, registered with priority dates of October 10, 1996, August 27, 2004, December 1997 and August 27, 2004, respectively (the “Trade Marks”). The Complainant is also the owner of the domain name <premier.tel>.
B. The Respondent
The Respondent is a company incorporated in the Cayman Islands.
C. The Disputed Domain Name
The disputed domain name was first registered on December 19, 2005. It appears to have been registered by the Respondent on April 28, 2008 following the abandonment of its initial registration.
5. Parties’ Contentions
The following facts are alleged by the Complainant in the Complaint.
The Complainant is very well-known and provides more than 200 banks with a wide range of credit cards for use by individual and corporate customers. The Complainant is one of the main credit card companies in France and its PREMIER products and services offered under the Trade Marks are well-known in France.
The disputed domain name is confusingly similar to the Trade Marks as it comprises the word “premier” together with the descriptive word “card”.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no rights in respect of the name PREMIER whether as a trade mark or whether in respect of reputation acquired through use of the disputed domain name. The Complainant has not licensed or otherwise authorised the Respondent to use the Trade Marks or the disputed domain name. The Respondent is not commonly known by the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Respondent, by registering the disputed domain name, has benefited from the Trade Marks’ notoriety. Customers who would like to obtain information regarding the Complainant’s products and services under the Trade Marks, in conducting an Internet search using the keywords “premier” and “card”, will be directed to the Respondent’s website to which the disputed domain name is resolved (the “Website”). As a consequence, the Respondent’s registration of the disputed domain name is obstructing the Complainant from performing communications via the Internet.
The Trade Marks hold a wide notoriety in France. It is obvious that when the Respondent registered the disputed domain name, the Respondent clearly knew of the existence of the Trade Marks. This clearly means that the Respondent is blocking the disputed domain name by preventing any third party having a legitimate interest such as the Complainant from using it.
The Respondent is using the disputed the domain name as a parking website for products and services linked to banking cards. This is not a bona fide commercial use and is depreciating the value of the Trade Marks.
The following facts are alleged by the Respondent in the Response.
The word “premier” is commonly used by a variety of parties, including other parties in France, in connection with premium credit card services and is not exclusively or distinctively associated with the Complainant in connection with such services. There are numerous third party trade mark registrations in Europe and France comprising the word “premier” relating to banking and credit card services.
The Complainant chose to omit from the Complaint facts within the Complainant’s knowledge relevant to the proceeding, including prior correspondence between the parties, and the fact the Complainant’s two CTM registrations for the PREMIER and global map device marks are subject to pending cancellation proceedings. This suggests the purpose of the proceeding is to obtain an advantage in respect of the pending CTM cancellation proceedings by attempting to obtain a hoped-for default decision in order to shore up the Complainant’s questionable rights in respect of its CTM registrations. The Complainant should have disclosed the cancellation proceedings under the Policy as pending related proceedings.
Internet users in France would be unlikely to use the word “premier” in conjunction with the word “card” when conducting Internet searches for credit cards. They would be more likely to use the French word “carte” than the English word “card”.
For all of these reasons, the disputed domain name is not confusingly similar to the Trade Marks.
The Respondent is using the disputed domain name legitimately, in respect of the Website which provides paid links to third party websites. The Website is entirely in English. The Complainant’s sole word mark PREMIER is registered only in France, and while the Complainant claims it is well-known there, it does not follow that if the Respondent were seeking to pass itself off as the Complainant, the Respondent would proceed to operate exclusively in English. On the basis of language alone – both in the use of the English word “card” instead of the French word “carte”, and in the use of an English website – the Respondent does not have and has not had the Complainant in mind in the use of the disputed domain name.
The word “premier” in the consumer credit industry, as in many industries, is normally used to indicate a premium service of some kind. The term “premier” is used in that descriptive sense by a number of substantial credit issuers other than the Complainant both within and outside of France.
Where a domain name consisting of common terms is demonstrably used for an advertising purpose suggested by the primary meaning of the constituent components of the domain name itself, such use is not illegitimate under the Policy.
The Complainant has failed to demonstrate that the Respondent, in operating an English language domain name for an English language website, is somehow attempting to illegitimately profit from the Trade Marks registered and used in respect of the French market.
Similarly, the Complainant has failed to establish that the Respondent, in registering the disputed domain name and operating the Website in this way, is attempting to divert customers of the Complainant to the Website.
The Respondent had no knowledge of the Complainant’s rights in the Trade Marks when it registered the disputed domain name. In respect of those of the Trade Marks registered in France, the French INPI did not make its trade mark database available online until very recently. When the Complainant’s representatives sent an email to the Respondent on May 14, 2008, shortly after the registration of the disputed domain name by the Respondent, seeking withdrawal of the registration, they referred only to one of the CTM registrations for the Trade Marks. Furthermore, the Complainant’s representatives did not refer to any other rights of the Complainant, including the other three registrations for the Trade Marks, when invited by the Respondent’s representatives in their reply of July 8, 2008 if there was any further information to be brought to their attention.
The Complainant does not want the Panel to know about this pre-proceeding correspondence between the parties.
Accordingly, the Complainant has not demonstrated that the disputed domain name has been registered and used in bad faith.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate the date of registration of the disputed domain name.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not generally exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
It is commonly accepted that, in determining confusing similarity, the graphic element of device or logo marks is to be disregarded.
The disputed domain name comprises the word “premier” together with the generic word “card”. The Panel finds that the word “premier” is the predominant part of the disputed domain name.
In the present case, the Panel concludes that the addition of the non-distinctive word “card” does not serve to distinguish the disputed domain name from the Trade Marks in any way.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
The Panel refutes the suggestion of the Respondent’s representatives that, in omitting reference to the pending cancellation actions in respect of the Complainant’s CTM registrations, the Complainant has acted in any way improperly and has failed to disclose pending related proceedings under the Policy. As at the date of the Complaint, and pending any possible unfavourable decisions in respect of the CTM cancellation actions, the Complainant remains the lawful registered owner of both CTM registrations and, in the context of this UDRP proceeding, the Panel considers the Complainant is under no obligation to disclose the fact there are pending cancellation actions in respect of its CTM registrations. In any event, even if the Complainant’s CTM registrations were at some stage in the future to be cancelled, the Complainant would still be able to assert rights in the word “premier” by virtue of its French registrations for the word mark PREMIER and for the PREMIER and global map device mark.
The Panel makes no finding in respect of the assertion of the Respondent’s representatives that the Complaint was filed in order to shore up the Complainant’s trade mark rights in respect of the pending CTM cancellation actions. Such assertion is unsupported by any cogent facts and is in any event not a relevant factor to be taken into account by the Panel in reaching its decision under this limb of the Policy, or otherwise.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to you of the dispute, your use 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). you (as an individual, business, or other organisation) have been commonly known by the domain name even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent's registration of the disputed domain name by several years. There is therefore a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has stated that it did not know of the Complainant or its registration for the Trade Marks when the Respondent registered the disputed domain name.
The Respondent has registered the disputed domain name comprising the common words “premier” and “card” for the purpose of earning revenue by setting up pay-per-click advertising links on the Website to third party websites. There is nothing under the Policy which prohibits such conduct, and there have been several decisions in which it has been held that operation of pay-per-click websites can amount to a bona fide offering of goods or services under the Policy (see, for example, Dial-a-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764).
The crucial issue in respect of this proceeding is whether the Respondent was aware of the Trade Marks at the time it registered the disputed domain name. The Complainant has asserted that the Respondent clearly had knowledge of the Complainant and its Trade Marks at that time. The Respondent has stated that it did not have any such knowledge. The lack of distinctiveness of the wording component of the Trade Marks lends weight to the Respondent's arguments, as do the facts the Complainant has used the Trade Marks primarily if not solely in the French market, whereas the Website operates entirely in the English language.
This proceeding is analogous to Exotiq Properties Ltd. v. David Smart, WIPO Case No. D2009-1672 in which it was held as follows:
“It is for the Complainant to establish… that the Respondent has no rights or legitimate interests in the disputed domain name. Where a disputed domain name corresponds to a less distinctive mark or group of marks, this burden tends to be higher than it might otherwise be. Although each case must be assessed on its own merits and evidence, in general it is inherently more likely that a respondent may have a legitimate interest in using a more descriptive domain name. Given the phonetically descriptive nature of the term “exotiq”… the relatively scant evidence of distinctiveness provided by the Complainant, and the Respondent's prima facie plausible claim to a legitimate interest in the use of the name, the Panel finds that the Complainant has not discharged its burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name”.
The Panel is not convinced on the facts of this case that the business conducted by the Respondent under the disputed domain name does not amount to a bona fide offering of goods or services. The Panel therefore concludes that the Respondent has produced sufficient evidence to establish its rights or legitimate interests in the disputed domain name. The Panel thus finds that the Complaint has failed to fulfil the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Having found that the Complainant has not satisfied the second limb under the Policy, it is not strictly necessary for the Panel to determine whether the disputed domain was registered and has been used in bad faith. However, the Panel finds, on the evidence, the Complainant has also failed to establish bad faith registration and use under the third limb of the Policy.
The use of the word “premier” in connection with the marketing and promotion of premium banking and credit services (and, indeed, in respect of a wide range of goods and services in numerous industries), both in France and worldwide, is widespread.
The lack of cogent evidence filed with the Complaint, other than the Complainant’s registrations for the Trade Marks, to support the Complainant’s claim that the Respondent knew of the Trade Marks at the time of registration of the disputed domain name, and the Respondent's assertion that it had never heard of the Complainant when it registered and commenced use of the disputed domain name, gives rise to the inference that the disputed domain name has not been registered and used in bad faith.
The Panel makes no finding as to the assertion of the Respondent’s representatives that the Complainant sought to deliberately conceal the pre-filing correspondence between the parties from the Panel. The correspondence comprises nothing more than an assertion of rights and a request for withdrawal of the Respondent’s registration, which request was refused by the Respondent’s representatives. The Panel would however observe that the mere existence of such correspondence, and the failure of the Complainant’s representatives to include the correspondence with the Complaint, is unlikely of itself to provide any solid basis for inferences of (1) mala fides on the part of the Complainant and/or its representatives; and (2) lack of bad faith registration and use on the part of the Respondent.
The Respondent is not a direct competitor of the Complainant in respect of the supply of credit card services seeking to disrupt the Complainant's business, but is simply operating a pay-per-click website providing links to third party websites (albeit third party websites of entities operating in the same industry as the Complainant). Many of such entities also make use of the word “premier” as trade marks in respect of the marketing and promotion of their banking and credit card products and services.
In the Panel’s view, the wording component of the Trade Marks is descriptive. It has been held that a respondent should be free to register domain names comprising common or generic terms on a “first come, first served” basis as long as they are used descriptively (National Gardening Association, Inc. v. CK Ventures Inc., NAF Case No. FA0911001294457; Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161).
For all the foregoing reasons, the Panel concludes that the Complainant has failed to establish that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has not been made out.
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Dated: December 14, 2010