WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Covea (Société de groupe d’assurance mutuelle) v. The Web Group
Case No. D2011-0499
1. The Parties
The Complainant is Covea (société de groupe d’assurance mutuelle) of Paris, France represented by Cabinet Laurent & Charras, France.
The Respondent is The Web Group of Washington, District of Columbia, United States of America represented by David Cohen, United States of America.
2. The Domain Name and Registrar
The disputed domain name <covea.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2011. On March 17, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 17, 2011, GoDaddy.com, Inc. 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 March 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2011. The Response was filed with the Center on April 13, 2011. The Complainant filed supplemental filings on April 5 and 15, 2011. The Respondent filed a supplemental filing on April 26, 2011.
For reasons given below this Panel has admitted the additional submissions filed on April 5, April 15 and April 26, 2011.
The Center appointed James Bridgeman as the sole panelist in this matter on April 28, 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 a mutual insurance group company (Société de groupe d’assurance mutuelle) organised under the laws of France.
The Complainant is the registered owner of the following trademarks:
French Registered Trademark No. 99 830 034 COVEA filed on December 15, 1999 and registered in class 36;
Community Trade Mark No. 2 018 729 COVEA filed on December 26, 2000 and registered in class 36;
French Registered Trademark No. 02 3 148 945 filed on February 20, 2002 and registered in classes 9, 35, 36, 37, 38, 41, 42, 44 and 45.
Community Trademark No. 2 612 521 filed on March 11, 2002 and registered in classes 9, 35, 36, 37, 38, 39, 41, 42, 44 and 45.
The Respondent is the owner of over 3,000 Internet domain names.
According to the Registrar’s WhoIs database the disputed domain name registration was created on March 21, 2004.
5. Parties’ Contentions
The Complainant submits that it is a leading mutual insurance group in France in the field of risks involving property and liability insurance, business and individual health and is the registered owner of the above-listed trademark registrations for the COVEA trademark.
The Complainant submits that members of its group of companies include GMF, MAAF and MMA, which the Complainant submits are all very well-known insurance companies in France and in other jurisdictions having 10 million members and customers, 25,000 employees and 3,000 points of sale and one in four French households is insured by one of the Complainant’s group.
The Complainant submits that the disputed domain name is identical to the Complainant’s COVEA trademark.
The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant submits that “covea” is an invented word having no significance in any language except as the trademark and corporate name adopted by the Complainant.
The Complainant submits that the COVEA mark is used exclusively by the Complainant. The Complainant has submitted evidence in the form of a search conducted at the website “www.saegis.com” to support its claim that the 36 Community and International trademark registrations containing the word “covea” designating insurance products and services all belong to the Complainant, its subsidiaries or affiliated parties. The Complainant has also provided evidence in the form of a GOOGLE search to support its claim that the word “covea” is not used by any third parties.
The Complainant submits that there is no information available on the web concerning the Respondent’s activities. The Respondent has not been licensed or otherwise permitted in any way by the Complainant to use its trademarks or any other confusingly similar signs, nor has the Complainant acquiesced in any way to the registration and use of the COVEA mark by the Respondent.
The Complainant further submits that the Respondent has parked the disputed domain name on a link farm page advertising the services of third parties in competition with the Complainant. There are several links to insurance services proposed in the French language on the website to which the disputed domain name resolves. The Complainant submits that it is well established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to gods and/or services competitive with the trademark owner, does not establish rights or legitimate interest. In support of this submission the Complainant cites the decisions of the panels in VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925; Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139; Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368 and Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881.
The Complainant submits that the disputed domain name was registered and is being used in bad faith and in particular submits that the disputed domain name was registered primarily for the purpose of attracting, for commercial gain, Internet users to a parking website by creating a likelihood of confusion with the Complainant’s COVEA trademarks. The Complainant submits that typically such websites offer domain name holders the opportunity to earn pay-per-click revenue by re-directing Internet users to pages of advertising links and thus capitalising on the goodwill of the chosen domain name.
The Complainant submits that the Respondent is intentionally misleading for commercial gain, Internet users to one or more competing websites in an effort to confuse and mislead customers; and that the Respondent’s conduct is designed to disrupt and hard the Complainant’s business by diverting potential customers away from the Complainant’s authentic website resulting in loss of sales and damage to goodwill.
The Complainant further submits that the disputed domain name is offered for sale on the parking page to which it resolves and this indicates a speculative intention on the part of the Respondent.
The Complainant submits that the word “covea” is not a word that a trader would legitimately choose unless seeking to create an impression of an association with the Complainant. The Respondent’s choice of the disputed domain name was not accidental and must have been made with the Complainant’s trademarks in mind.
The Complainant further submits that the Respondent is the owner of 3,808 other domain names and that therefore it can be legitimately presumed that the Respondent is engaged in cyber-squatting.
In Additional Submissions, the Complainant submitted a Reverse WhoIs Report of a search against the Respondent’s contact email firstname.lastname@example.org. The search disclosed that the Respondent is the owner of a number of celebrity domain names such as <bonjovi.org>, <chistinaaguilera.com>, <travolta.org>, and <johnny-cash.net>. The search further disclosed that the Respondent has registered a number of domain names incorporating famous trademarks such as <escada.info>, <dunlop.org>, <arsenalfootballclub.com>, <bon-marche.org>, <Christies.info>, <edf.info>, <calgage.org>, <mymango.com>, <pacci.com>.
The Complainant further submits that despite its denials, the Respondent has knowledge of France by being the registrant of the domain names <chiracaveclafrance.net>, <la-petite-france.com>, <lehavre.org>, <nanterre.org>, <legion-etrangere.com> and <legionetrangere.org>.
The Respondent submits that this is a malicious proceeding containing a number of inaccuracies. Respondent submits that upon receipt of the Complaint it contacted Complainant’s counsel requesting that the Complaint be withdrawn but was rejected out of hand.
The Respondent submits that this proceeding is an attempt at Domain Name Highjacking on the part of the Complainant.
The Respondent submits that the word “covea” is a commonplace term which has been used commercially by others.
The Respondent submits that Complainant registered at least nine domain names incorporating its alleged mark from the year 2000, four years prior to the Respondent’s registration of the disputed domain name but chose not to register the disputed domain name.
The Respondent denies that it registered the disputed domain name with the intention of selling it to the Complainant, disrupting the Complainant’s business, preventing it from registering a domain name reflecting its mark or to confuse others.
The Respondent submits that it merely registered a short five letter word that it knew was not a trademark in its country of residence and which it believed was not in use by any other entity. The Respondent submits that the Complainant is not known outside of France. A search of Wikipedia, the websites of New York Times, Washington Post, LA Times and the Wall Street Journal against the word “covea” reveals no results. A search against the term “covéa” on French Wikipedia provides a result but that it not the Respondent’s language. A search of the traffic demographics for “covea.eu” which appears to be the Complainant’s primary domain name reveals 100% of its traffic derives from France.
The Complainant has failed to provide any evidence of its presence on the Internet when the disputed domain name was registered in 2004. The Complainant’s current primary domain name “covea.eu” was registered in 2006. The Complainant’s corporate domain name used at that time would be “covea.fr” registered in 2000 but according to Archive.org, this domain name pointed to an under construction page until June 12, 2008.
The Complainant clearly knew the registration process on various domain names but chose not to register the domain name in issue. By the end of 2001, the Complainant registered the following domain names: <covea.fr>, <covea-fleet.com>, <covea-risks.com>, <covea-finance.com>, <covéa.com>, <covea-risks.fr>, <covea-fleet.fr>, <covea.be>, <covea.biz>.
The Complainant has been selective in the evidence of trademark rights submitted in the Complaint limiting the search results to class 36 for insurance related products and services. It failed to provide details of two valid registrations for the COVEA trademark in 2004 viz. Sanofi-Synthelabo of France filed a Benelux trademark application on July 28, 1989 and CO.VE.A. SCRL of Italy filed on July 26, 2000.
The Respondent further submits that an active business in Italy has used the domain name <covea.it> since it was registered in April 21, 1997 and applied for trademark registration in July 26, 2000. Another Italian entity uses the term “Covea Vetri” as a mark and uses the domain name <vetreriacoveavetri.com>. Furthermore the term is used as a brand name by Covea Cruise for hard cases for Apple iPhones in the United Kingdom.
The Respondent submits that it put the disputed domain name to bona fide use prior to any notice of the dispute by parking it at the SEDO website. The links are generated by SEDO and its partners without any input from the Respondent. A cached page of the site for February 25, 2011 shows that any advertising links are travel related and none are directed at any entity in France or relating to the insurance industry.
There is a disclaimer on the parked page which inter alia states that the domain name owner maintains no relationship with third party advisors.
The advertising links do not appear when the parked page is accessed in France because SEDO maintains a geo-tagging control and serves different pages depending on the visitors’ country.
The Respondent denies that the word “covea” is an invented word and states that it means thou shalt not in Latin.
The Complainant submits that due to delay in bringing this Complaint the Complainant has acquiesced and waived its rights to bring this Complaint.
As to the Complainant’s rights, the Respondent submits that the Complainant did not exist as a legal entity until 2003 and the repeated references to the Complainant’s rights going back to 1999 are erroneous. The Complainant acquired three of the registrations on November 26, 2004, an unspecified date, and November 24, respectively. The fourth registration was made on March 22, 2004 which post-dated the registration of the disputed domain name. The Respondent has absolutely no trademark rights in the United States. The Respondent has failed to provide any evidence of actual use of the COVEA trademark before or even after the disputed domain name was registered.
The cases cited by the Complainant should not be relied upon as with two exceptions they each were either undefended cases and/or relating to circumstances where both parties resided outside the United States. The two exceptions can be distinguished because in <vivocelares.com> the panel found that the disputed domain name was a “unique combination of terms associated with the Complainant” and in <n2phone.com> the panel found that the respondent effectively admitted that it registered the domain name to attract Internet users as a promotional device.
The Respondent submits that the Respondent’s general manager has sworn under oath that as a matter of fact he had no knowledge of the Complainant or its alleged mark when registering the disputed domain name. The Respondent submits that it is implausible to assume that a United States citizen should be aware of a French insurance company with no activity in the United States and with no new coverage. The Respondent submits that the application of the principle of constructive notice under these circumstances is ridiculous and citing Board of Trustees of the University of Arkansas v. FanMail.com, LLC, WIPO Case No. D2009-1139 argues that a finding of actual notice is required.
The Respondent submits that the Complainant’s argument that there should be a presumption of bad faith where a respondent holds a large number of domain name registrations or is earning pay-per-click revenue has been rejected repeatedly by panellists under the Policy. Citing Banco do Brasil S.A. v. The Universal Kingdom, LLC, WIPO Case No. D2008-0389 and Board of Trustees of the University of Arkansas v. FanMail.com, LLC, supra.
The panel in Supremo n.v./s.a v. Rao Tella (supremo.com), WIPO Case No. D2001-1357 noted that “[v]arious WIPO decisions have shown that one cannot infer that just because a mark is well-known in its home country, the mark is well-known in another country...”
In a response to the Complainant’s supplemental filing, the Respondent objects to the admission of new evidence by the Complainant and re-asserts that the Complainant has not produced any evidence of bad faith registration. The Respondent submits that the other domain names referred to by the Complainant are irrelevant as there is not a shred of evidence that the disputed domain name was registered in bad faith.
6. Discussion and Findings
The Response was filed late, the Complainant filed Additional Submissions and the Respondent filed a reply to the Additional Submissions. As all of these documents were filed before the file was sent to the Panel and there appears to be no prejudice to either party or to the process by admitting them, in the interest of fairness, this Panel has considered each of these documents in making this decision.
The Respondent has submitted that this Complaint should be dismissed because of delay on the part of the Complainant. This Panel is of the view that while in certain circumstances delay on the part of a Complainant may be relevant to the decision on the substantive merits of a Complainant’s case, the Policy does not confer any jurisdiction on an administrative panel to dismiss for delay. The Respondent’s application to dismiss is refused.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in respect of the disputed domain name to obtain an order that a domain name should be cancelled or transferred:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted evidence that it is the owner of the trademark COVEA through its above-listed CTM and French trademark registrations.
It is well established under the Policy that in comparing the disputed domain name and the Complainant’s mark the applicable top-level suffix in the domain name (“.com” in this case) may be ignored as it is a technical requirement for registration. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In the circumstances, this Panel finds that the disputed domain name is identical to the COVEA trademark in which the Complainant has rights and the Complainant is entitled to succeed in the first element of the test in paragraph 4 of the Policy.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. In such circumstances the burden of production shifts to the Respondent to rebut Complainant’s prima facie case.
The Respondent as owner of over three thousand domain names is engaged in a business that involves the registration and use of domain names for re-sale and/or the generation of pay-per-click revenue. The disputed domain name is identical to the Complainant’s trademark and the Respondent has arranged for it to resolve to a parking page on which it is offered for sale and on the balance of probabilities is generating pay-per-click revenue for the Respondent.
Paragraph 5(c) of the Policy gives examples of how a respondent may demonstrate rights or legitimate interest in a domain name. The general view of panellists as set out below is that the mere use of a domain name as the address of a parking page that contains advertising links, as in this case, does not amount to use in connection with a bona fide offering of goods or services as contemplated by paragraph 5(c)(i) of the Policy; there is no evidence that the Respondent has been commonly known by the disputed domain name as contemplated by paragraph 5(c)(ii) of the Policy; and the Respondent is not using the disputed domain name for noncommercial or fair purposes as contemplated by paragraph 5(c)(iii) of the Policy.
The Respondent’s claim that it has rights or legitimate interest in the disputed domain name is mainly based on a misunderstanding by the Respondent that the second element of the test in paragraph 4(a)(ii) of the Policy. While the Complainant’s rights in a mark and/or domain name are relevant they are not the central issue. The central issue in paragraph 4(a)(ii) is the Respondent’s rights and not the Complainant’s rights. In the present case the Respondent has not provided any evidence that it has acquired such rights.
The Respondent’s central argument is that because of the territorial limitation of the Complainant’s trademark and reputation, the Respondent is entitled to use the domain name and has consequently acquired rights or legitimate interest in the disputed domain name by using the domain name as the address of a pay-per-click revenue generating parking page.
The WIPO Overview 2.0 addresses the question as to whether a registrant may acquire rights or legitimate interest in a domain name by parking it at a pay-per-click site in the following terms:
“Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" [see also paragraph 3.8 below] or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
In the present case the disputed domain name is identical to the Complainant’s trademark. The mark is a coined or invented word – the Respondent has argued that the word means thou shalt not in Latin but it is most unlikely that the Complainant or anyone else for the most part connects the word with the Latin phrase. The Respondent has not suppressed pay-per-click advertising relating to the trademark value of the domain name. While the Respondent has referred to a cached page from the <covea.com> website dated February 25, 2011 which show advertising links related to travel, The Respondent has provided evidence of how the SEDO parking page appears in France. Both the sample parking page submitted by the Respondent and the cached page from the website dated March 15, 2011 submitted with the Complaint show links to a number of insurance categories specifically life, retirement, auto, home and health. (“assurance vie, assurance retraite, assurance auto, assurance habitation, assurance santé”). This indicates that the Respondent is providing links to competitors of the Complainant.
In the circumstances, this Panel finds that the Respondent has failed to prove that it has rights or legitimate interest in the disputed domain name and the Complainant is therefore entitled to succeed in the second element of the test in paragraph 4(a) of the Policy also.
C. Registered and Used in Bad Faith
On the evidence COVEA is an invented word uniquely and exclusively adapted as a trademark by the Complainant’s group of companies. The Complainant and its predecessors in title had established rights in the COVEA trademark prior to the initial registration of the disputed domain name on March 21, 2004.
The Respondent has filed a declaration from its principal that in which he denies knowledge of the Complainant’s rights when the Respondent acquired the disputed domain name. Given the limitations of the procedure under the Policy this Panel must decide whether to accept this statement on the balance of probabilities taking into account the other evidence in the file.
It strikes the Panel as improbable that the Respondent would accidently choose and register a word such as “covea” which happens to be the trademark of a large French corporation. The Respondent has pointed to a meaning in Latin of the term “covea”, but does not appear to be using the disputed domain name in connection with such claimed meaning, but rather as a pay-per-click advertising site on which links to Complainant’s competitors appear.
This Panel accepts the Respondents argument that the mere fact that it holds three thousand domain names should not in itself raise any presumption of bad faith on the part of the Respondent. However the fact that the Respondent holds a number of domain names which are the names of famous personalities and well known trademarks, casts doubt on the bona fide of the Respondent and consequently the veracity of the declaration. Furthermore, the Respondent has proven itself to be a sophisticated domainer and the Complainant has provided evidence that the Respondent holds domain names that refer specifically to France.
The unusual character of the coined word “covea” leads this Panel to find that on the balance of probabilities the disputed domain name was selected and registered because it was identical to the Complainant’s COVEA trademark and with the intention of taking predatory advantage of the Complainant’s goodwill and reputation.
The Respondent has allowed the disputed domain name to be used as the address of a website on which there are links to a number of insurance categories specifically life, retirement, auto, home and health. (“assurance vie, assurance retraite, assurance auto, assurance habitation, assurance santé”)
Furthermore the Respondent is offering the disputed domain name for sale and in the circumstances this Panel accepts the Complainant’s submission that such use indicates a speculative intention on the part of the Respondent.
In the circumstances this Panel finds that on the balance of probabilities the Respondent has registered or acquired the disputed domain name in the full knowledge that it is identical to the Complainant’s COVEA trademark for the purposes of taking predatory advantage of the association of the disputed domain name with the COVEA trademark for the purpose of selling the domain name for commercial gain.
Furthermore on the evidence before this Panel by using the disputed domain name as the address of a parking page on which there are links to a competitors of the Complainant, the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s COVEA mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the website. In the circumstances the disclaimer referred to by the Respondent does not provide a defence for the Respondent because Internet users seeking the Complainant will have accessed the Respondent’s website before they become aware of the disclaimer and they will be introduced to the advertising links, both competitive with the Complainant and other links that may divert them away from the Complainant simultaneously with the disclaimer.
This Panel therefore finds that the disputed domain name was registered and is being used in bad faith and the Complainant has therefore also succeeded in the third and final element of the test in paragraph 4(a) of the Policy. The Complainant is entitled to succeed in the Complaint.
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 <covea.com> be transferred to the Complainant.
Dated: May 12, 2011