WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gimex International Groupe Import Export v. Infobox Media
Case No. D2010-2283
1. The Parties
The Complainant is Gimex International Groupe Import Export of Palaiseau, France, represented by Pontet Allano & Associes Selarl, France.
The Respondent is Infobox Media of Blackpool, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <izebag.com> is registered with Total Web Solutions Limited trading as TotalRegistrations (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2010. On December 29, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 2010, the Registrar 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 January 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2011.
The Center appointed Christian Schalk as the sole panelist in this matter on February 10, 2011. 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 Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.
The language of the proceedings is English.
In addition to the Complaint, the Complainant made a supplemental filing to the Center on February 18, 2011 which has been forwarded to the Panel on February 21, 2011. In accordance with paragraphs 10 and 12 of the Rules, it is in the discretion of the Panel whether to accept such a supplemental filing. The Panel decides that the supplemental filing will not be taken into consideration. The Rules state clearly that one Complaint has to be filed which should include all arguments and material to support these arguments. Given the expedite nature of the proceedings, that paragraph.10(b) of the Rules require that the Panel shall treat the parties equally and that it is only up to the Panel to request further statements or documents from either of the parties (paragraph 10 of the Rules) a supplemental filing can be accepted only under very special circumstances. There are no such circumstances in this case since the supplemental filing contains only further evidence to support the Complainant’s arguments made already in the Complaint.
4. Factual Background
The Complainant is a producer of isothermal bags, ice buckets and bags for carrying, displaying and chilling bottles. These products have been marketed by the Complainant since 2006 under the trademark ICEBAG in 35 countries.
The Complainant has various trademark rights in the term ICEBAG, for instance:
- French Trademark registration No. 06/3451187 for ICEBAG, with filing date of September 15, 2006, covering goods and services in Int. classes 16 and 21;
- United States Trademark registration No. 3474553 for ICEBAG, with filing date of November 11, 2006, covering goods and services in Int. classes 16 and 21;
- International Trademark registration No. 980685 for ICEBAG, with registration date September 30, 2008, which protection has been extended to Austria, Japan and the Russian Federation, covering goods and services in Int. classes 16 and 21;
- European Community Trademark registration No. 8132664 for ICEBAG, with priority date of March 3, 2009, covering goods and services in Int. class 21.
The disputed domain name was registered on August 27, 2009. A printout of the “www.izebag.com” website of January 6, 2011 shows that the disputed domain name resolved to a website which displayed in its centre in a prominent way a drawing of a bag containing a bottle of sparkling wine. The bag displayed the Complainant’s trademark. On the right side of this website it is written: “Welcome to the world of the Ice Bag, the new and stylish innovative way to keep your drinks cold. The Ice Bag’s sleek design is available in many forms, sizes (…) click to find out more”
In a printout of the same website of December 17, 2010, the disputed domain name resolves to a website where it was written in a prominent way:
“Welcome to Izebag.com
For the latest izebag news click here.
Welcome to the world of the Icebag – an innovative and stylish way to keep bottled drinks chilled and ready to enjoy (…)
We have now extended our range of products to include beerbags – for chilling up to 6 beers or other drinks, and also LED flashing ice buckets and frozen ice block orders.
To learn more about the icebag or our range of drink cooling products email – email@example.com.
Click here to buy icebags”
On another page of the website, there was a headline:
“Izebag – The Icebag Wine Chiller”
The Complainant became the first time aware of the Respondent when a person from Scotland wrote a letter to the Complainant on October 14, 2009. In this letter, this person wrote that she had seen the Complainant’s original products during her holidays in France. In this context, this person referred to the Respondent’s website where the Icebag products shown there apparently lacked some details which the original products have.
On April 12, 2010, the Complainant sent a cease and desist letter to the Respondent.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to a trademark to which the Complainant has rights. Both words, “icebag” and “izebag” have the same number of letters and are phonetically and visually very close. The Complainant explains that the Respondent has simply replaced the letter “c” in the word “icebag” by the letter “z” (izebag) and that both words are pronounced identical, especially in the United Kingdom where the Respondent lives. In this context, the Complainant cites Louis Vuitton v. Net-Promotion, WIPO Case No. D2000-0430 and Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323 to support its arguments.
The Complainant alleges also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant explains that the Respondent has no trademark rights in the term “izebag”, that this term is not part of a company name or any commercial name of the Respondent and that the Respondent is not known by the disputed domain name. The Complainant believes that the disputed domain name is used to operate a website and that the purpose of this site is to divert the Complainant’s consumers by the means of the closeness of the disputed domain name with the Complainant’s mark ICEBAG, to offer for sale goods which are identical to the Complainant’s one and to frequently use this domain name. The Complainant concludes, therefore, that the use of the disputed domain name is made only for lucrative goals and cannot be considered as a bona fide offering of goods and services.
The Complainant alleges further that the disputed domain name was registered and has been used in bad faith. The Complainant explains that in accordance with the corporate website of the Respondent, its activities are in the field of web-based solutions, design of websites, software and computer programming. However, the website operated under the disputed domain name displays and offers for sale a range of plastic bottle buckets and wine chillers. The Complainant argues, that such an activity has no relation with the Respondent’s activities mentioned on its corporate website. The Complainant concludes, therefore, that the Respondent did not register the disputed domain name for its own use, but for the purpose of renting this registration to a competitor of the Complainant, for a valuable consideration exceeding the Respondent’s out-of-pocket cost directly related to the disputed domain name.
The Complainant alleges further that the disputed domain name is being used in bad faith. To support its arguments the Complainant explains that the disputed domain name is used to operate a website displaying and selling goods which are identical to the Complainant’s ones. It argues that the products called “Card Bag” and “Add Bag” on the Respondent’s Izebag website are slavish copies of the Complainant’s models called “Business” and “Flyer”. The Complainant states in this context that its models are registered as designs in France, in the United States and as European Community design and that the Respondent infringes the Complainant’s rights in these designs.
The Complainant contends also that the terms “icebag” and “icebags” appear on many occasions on the Respondent’s website which constitutes an infringement of the Complainant’s trademark rights. The Complainant states further that the Respondent has copied several advertising text developed by the Complainant and used in its own brochures and in a press release in 2007 which the Respondent uses now on its website.
For all these reasons, the Complainant is convinced that the use of the disputed domain name by the Respondent has no other purpose than to create confusion with the Complainant’s mark and goods, to attract in this way the Internet users, and to sell them identical goods, diverting them from the Complainant’s genuine products. The Complainant cites in this context a testimony of a citizen of Edinburgh which in its view shows that this person mistook the goods on the Respondent’s website for the Complainant’s ones.
The Complainant believes also that the Respondent’s bad faith use is increased by the fact that the Respondent did not respond to the Complainant’s cease and desist letter of April 12, 2010.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the complainant has proven that each of the following three elements is present:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in the term ICEBAG. The disputed domain name is not identical but confusingly similar with the Complainant’s trademarks. The Complainant’s ICEBAG trademark and the disputed domain name have the same number of letters. The only difference is the second letter in both words (“c” and “z”). Phonetically and visually, the terms “icebag” and “izebag” are very close. In many languages, both terms have a nearly identical pronunciation. This is especially the case in the English language which is the official language in the United Kingdom where the Respondent lives. In the Panel’s view, this is a clear case of “typosquatting” because the Respondent takes advantage of possible misspellings by Internet users who are unaware of the fact that they have typed the Complainant’s trademark incorrectly in the Internet browser and get directed to the Respondent’s website. This risk is even higher when the mark is from another language from that of the Internet user’s mother tongue (see, for instance, Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043; Deutsche Bank Aktiengesellschaft v New York TV Tickets Inc., WIPO Case No. D2001-1314; Louis Vuitton v. Net-Promotion, WIPO Case No. D2000-0430; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323).
The “.com” suffix in the disputed domain names does not affect the determination that the disputed domain name is nearly identical with the term ICEBAG in which the Complainant has trademark rights (see also: Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936, Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and further references).
For all these reasons the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
According to the material brought before the Panel, and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark.
The Respondent has also not rebutted the Complainant’s allegations on the Respondent’s lack of rights and legitimate interests and has not provided the Panel with any explanations as to whether this is the case or not or whether there are indeed legitimate reasons for the choice of the domain name. On the contrary, it appears to the Panel that the Respondent is unfairly capitalizing on the reputation and goodwill established by the Complainant (see, e.g. Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043; Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554) by directing the disputed domain name to its own website where it offers products which are very similar to the Complainant’s ones for sale but also because the Respondent continued this behaviour even after the Complainant had sent a cease and desist letter to it.
The Panel has therefore serious doubts as to the legitimacy of the Respondent’s registration of the disputed domain name, and finds that the requirement of paragraph 4(a)(ii) of the Policy is also met .
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy, paragraph 4(b) sets forth four non-exclusive circumstances which are evidence of bad faith registration and use of domain names:
(1) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is 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
(2) 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
(3) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that, to its knowledge the registration of the domain name will not infringe the rights of any third party.
Given the fact that the disputed domain name is directed to a website which offers products which are nearly identical to the Complainant’s products and uses commercial language similar to expressions used by Complainant on its website and in press releases, the Panel finds that the Respondent must have been aware of the Complainant’s trademark when it registered the disputed domain name (see, Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864). Therefore, the Panel believes that the Respondent registered the disputed domain name in bad faith.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.
The Respondent registered the disputed domain name, which differs in one letter from the Complainant’s trademark. Both words are pronounced nearly identical in many languages and there are also very minor differences in their visual impression if both terms would be compared side by side. Therefore, it is very likely that Internet users mistyping the Complainant’s trademark in the Internet browser field will not notice this error. They get directed to a website which offers products nearly identical to the Complainant ones and which other content such as commercial language has apparently been taken from earlier versions of the Complainant’s website. Internet users may believe that this is a website either of the Complainant itself or associated with it. They may also believe that they buy products from the Complainant while in reality, they are purchasing only the Respondent’s products. Therefore, the Panel is convinced that the Respondent registered and used the disputed domain name to take advantage of such typical typing errors in order to direct innocent Internet users to the Respondent’s website where they get confused over the true identity of the website owner and the products offered therein. “Typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration per se. (see e.g. Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043; Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107 (citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011); ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (finding that the practice of “typosquatting”, of itself, is evidence of the bad faith registration of a domain name). Furthermore, the fact that Internet users after typing in a confusingly similar domain name reach the Respondent’s website offering similar contents, there is an implied act of unfair competition (deception of the consumer). Such an act is also an evidence of bad faith.
In the Panel’s opinion, another indication for bad faith use in the present circumstances is that the Respondent has not responded to the Complainant after receipt of the Complainant’s cease and desist letter but continued its behaviour for several months.
Given all facts and circumstances of this case, the Panel finds therefore, that the disputed domain name has been registered and is being used in bad faith.
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 <izebag.com> be transferred to the Complainant.
Dated: February 24, 2011