WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Visa Europe Limited v. DomainByProxy.com / Dahai Huang
Case No. D2011-0302
1. The Parties
The Complainant is Visa Europe Limited of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is DomainByProxy.com of Scottsdale, Arizona, United States of America / Dahai Huang of Putian, Fujian, the People’s Republic of China.
2. The Domain Names and Registrar
The disputed domain names <par-carte-bleu.com>, <par-cartebleu.com>, <parcartebleu.com>, <par-carte-bleue.com>, <par-cartebleue.com>, and <parcartebleue.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2011. On February 15, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On February 16, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 17, 2011 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 February 18, 2011.
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 February 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2011.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on March 23, 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.
4. Factual Background
The Complainant is the registered owner of the following trademarks which are used for the purpose of conducting its business:
(a) Community Trademark Reg. No. 000710467, registered on March 24, 1999, for CARTE BLEUE;
(b) Community Trademark Reg. No. 000707067, registered on June 18, 1999, for CARTE BLEUE;
(c) French Trademark Reg. No. 3389090, registered on October 28, 2005, for CARTE BLEUE with device;
(d) French Trademark Reg. No. 3389086, registered on October 28, 2005, for CARTE BLEUE with device;
(e) French Trademark Reg. No. 3389094, registered in France on October 28, 2005, for CARTE BLEUE with device; and
(f) French Trademark Reg. No. 3389087, registered on October 28, 2005, for CARTE BLEUE with device.
The Complainant has also registered a series of the domain names including <cartebleue.com>, <cartebleue.fr>, < cartebleue.net>, <cartebleue.biz>, <cartebleue.info>, <cartebleue.org>, <carte-bleue.fr>, <carte-bleue.net>, <carte-bleue.biz> and <carte-bleue.org>.
5. Parties’ Contentions
The Complainant claims that the disputed domain names are confusingly similar to the Complainant’s trademark CARTE BLEUE. The mere addition of the French word “par” which means “by” in English does not acquire any distinctiveness as it is descriptive.
In respect to the Complainant’s contentions that the Respondent’s lack of rights or legitimate interests in the disputed domain names, the Complainant declares that the Respondent is not the owner of any trademark registration that protects the denomination “carte bleue” or any of the disputed domain names. Furthermore, the Complainant has not licensed or otherwise authorized the Respondent the use of its trademarks as a domain name and denies any relationship between the Complainant and the Respondent.
Finally, the Complainant asserts that the Respondent knew the existence, identity and reputation of its trademarks in France and Europe at the moment of the registration. Furthermore, the Complainant alleges the use in bad faith of the disputed domain names: either redirecting to a parking page with links related to banking or by passive holding.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of the disputed domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “Default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) of the Rules, the Panel “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate.
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. (Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; State of Wisconsin v. Pro-Life Domain, Inc., WIPO Case No. D2003-0432; La Caixa D’Estalvis I Pensions de Barcelona v. José Antonio Bernal, WIPO Case No. D2006-1637). Here, the Respondent has defaulted, and it is appropriate in the present case for the Panel to accept the reasonable facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent, where appropriate.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has made a continuous use of its registered and incontestable marks, in which CARTE BLEUE appears to be a distinctive element, and the Complainant has spent much time, money and effort in promoting the mark, and has established significant good will therein. (In respect of CARTE BLEUE, see SAS Carte Bleue v. Jean Philippe Perl, WIPO Case No. D2010-0535.)
Previous panels have decided that the addition of a generic and descriptive terms to an otherwise distinctive trademark name does generally not remove the confusingly similarity with the trademark (Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809; F. Hoffman La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049.)
Accordingly, in the present case, the addition of the word “par” to the disputed domain names is not sufficient to distinguish new Internet sources from existing service sources. Therefore, the Panel is prepared to accept the submission of the Complainant that the addition of the term “par” to the Complainant’s trademarks in forming the disputed domain names is insignificant and consequently the disputed domain names are confusingly similar to the Complainant’s trademarks.
Moreover, in respect of the disputed domain names <par-carte-bleu.com> and <parcartebleu.com>, previous panels have decided that “essential” or “virtual” identity is sufficient to establish confusing similarity under the first element of paragraph 4(a) of the Policy. Accordingly, in the present case, the fact of writing the adjective in masculine by removing the last letter of the Complainant’s trademarks when registering the disputed domain names is not sufficient to distinguish new Internet sources from existing service sources.
The Panel therefore concludes that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent has no rights to or legitimate interests in the disputed domain names by establishing that the Respondent has not been licensed or otherwise permitted to use any of the Complainant’s trademarks.
Since the Complainant has established such a prima facie case under paragraph 4(a)(ii) of the Policy, the burden is therefore shifted to the Respondent to demonstrate the contrary. In this case, the Respondent has failed to rebut the Complainant’s prima facie case insofar it did not respond to the Complaint. Neither does the use of the disputed domain names appear to the Panel to be in connection with a legitimate noncommercial or fair use, nor to be without the intent to misleadingly divert customers for commercial gain.
Accordingly, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registrations and use of the disputed domain names in bad faith. By not submitting a Response, the Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the disputed domain names in bad faith.
The Complainant has also established that its trademarks have been used extensively in France and known throughout the world. Accordingly, it is very unlikely that the Respondent would have registered the disputed domain names unless it knew either the existence of the trademark CARTE BLEUE or that the disputed domain names might be of some type of economic advantage given the Complainant’s reputation.
In respect of the use of the disputed domain names <par-cartebleu.com> and <par-cartebleu.com>, the Respondent is deriving a financial benefit from web traffic diverted through the disputed domain names to linked websites on the domain parking page. The Panel therefore also accepts that the Respondent has intentionally attracted Internet users to its websites or other on-line locations for commercial gain through confusion as to the source, affiliation or endorsement of the website or location.
And in respect of the use of the disputed domain names <parcartebleu.com>, <par-carte-bleue.com>, <par-carte-bleu.com>, and <parcartebleue.com>, based on previous UDRP decisions, e.g., World Wrestling Federation Entertainment Inc (WWFE) v. M. de Rooij, WIPO Case No. D2000-0290, and given the circumstances of this case, the Panel is also in a position to make a finding of bad faith based on the fact that the websites at the disputed domain names had not been developed: “the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts.”
Given the evidence put forward by the Complainant, and the lack of any response from the Respondent, this Panel finds that the disputed domain names <par-carte-bleu.com>, <par-cartebleu.com>, <parcartebleu.com>, <par-carte-bleue.com>, <par-cartebleue.com>, and <parcartebleue.com> have been registered and are 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 names <par-carte-bleu.com>, <par-cartebleu.com>, <parcartebleu.com>, <par-carte-bleue.com>, <par-cartebleue.com>, and <parcartebleue.com> be transferred to the Complainant.
Dated: March 25, 2011