WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Automobiles Peugeot v. PrivacyProtect.org / Domain Administrator, Domain Tech Enterprises
Case No. D2011-1002
1. The Parties
1.1 The Complainant is Automobiles Peugeot of Paris, France, represented by Nameshield, France.
1.2 The Respondent is PrivacyProtect.org of Queensland, Australia / Domain Administrator, Domain Tech Enterprises of Santiago, Chile.
2. The Domain Name and Registrar
2.1 The disputed domain name <clic-peugeot.com> (the “Domain Name”) is registered with Power Brand Center Corp. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2011. As at the date of the Complaint, the publically available WhoIs record for the Domain Name recorded “PrivacyProtect.org” as the registrant of the Domain Name. As the name suggests “PrivacyProtect.org” is the name of the “privacy service” offered by the Registrar to its registrants.
3.2 On June 15, 2011, the Center transmitted by email to the Registrar the first of eight requests for registrar verification in connection with the Domain Name. Despite the Center’s multiple requests for registrar verification of registrant details to the concerned Registrar, no response was received from the Registrar. The Center proceeded with the administration of the case on the basis of the available information in the Registrar’s publicly-available WhoIs database, and formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2011.
3.3 On July 7, 2011, the Registrar transmitted by email to the Center. It commenced as follows:
“The management at Power Brand Center apologizes for any delays in responding to you. Our mail server upgrade caused our systems to crash and resulted in so many problems”
3.4 The email did not respond to the individual questions raised by the Center in its verification request. However, it did provide the registration date and renewal date of the Domain Name and provided the following contact information for the underlying registrant of the Domain Name as “Domain Administrator” of “Domain Tech Enterprises” and an address in Santiago, Chile.
3.5 As a consequence the Center sent an email communication to the Complainant later that day providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint if it so wished. The Complainant filed an amended Complaint on July 11, 2011.
3.6 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”).
3.7 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 July 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2011.
3.8 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 18, 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
4.1 The Complainant is the well-known French car company. It is the successor in business to a family business founded in 1858 and which first began producing automobiles in 1891. It is currently the second largest car marker in Europe.
4 2 The Complainant is the owner of various trade marks around the world which comprise or incorporate the term “Peugeot”. These include:
(i) Madrid international trade mark registration No. 424890 dated August 17, 1976 in class 12 and valid in various states comprising stylized text in the following form:
(ii) French registered trade mark No. 3031219 for the words “CLIC PEUGEOT” dated May 30, 2000 in classes 12 and 38
4.3 The Complaint promotes its activities from various websites operating from various domain names including <peugot.com> and <clicpeugeot.com>. These domain names were first registered in 1995 and 2000 respectively.
4.4 The identity and legal status of the Respondent is not entirely clear but would appear to be a person or entity that trades under the name “Domain Tech Enterprises” and is based in Santiago Chile.
4.5 According to the publically available WhoIs data the Domain Name was registered in 2004.
4.6 As at, or shortly prior to, the date that the initial Complaint was filed, an Internet user entering the Domain Name into his browser would be taken to a web page that gears all the signs of being generated by a “pay-per-click” or “domain name parking” service”. The page contained a number of links under the headings “recherches relatives”, the majority of which appear to be car related given the numerous references to “voitures” and “automobile”.
4.7 A similar web page continues to operate from the Domain Name as at the date of the decision.
5. Parties’ Contentions
5.1 The Complainant contends that the Domain Name is confusingly similar to its PEUGEOT trade marks and identical to its CLIC PEUGEOT trade mark.
5.2 The Complainant maintains relying upon Croatia Airlines d.d. v Modern Empire Internet Ltd., WIPO Case No. D2003-0455 that having made a prima facie case that a respondent has no rights or legitimate interest in a domain name the burden passes to the respondent of demonstrating such rights or interests. In this respect, the Complainant contends that the Respondent is not affiliated with or authorized by the Complainant in any way. Further, it asserts that “since its registration” the Domain Name has displayed a landing page with “pay-per-click” advertising links.
5.3 On the issue of bad faith the Complainant claims that “a finding of bad faith can be made where the Respondent ‘knew or should have known’ of a complainant’s trade mark rights, but nevertheless registered and used a domain name incorporating a mark”. It further contends that the Respondent has registered the Domain Name to “create confusion and to redirect [...] Internet users to its French commercial links”.
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 The Panel will address the three aspects of the Policy listed above in turn. Before it does so it is convenient briefly to comment on the actions of the Registrar in this case.
A. Registrar Conduct
6.5 A troubling aspect of this case is the three week delay between the Center sending a verification request and the Registrar responding to the same. That failure to respond despite repeated follow up requests from the Center, resulted in an initial delay before the Center formally notifying the commencement of proceedings and then a further delay given the Center’s decision to give the Complainant an opportunity to amend the Complaint following the Registrar’s email of July 7, 2011.
6.6. Further, the email sent by the Registrar on July 7, 2011 did not fully respond to the various questions put to the Registrar in the verification email. For example, the verification request asked the Registrar to identify the language of the registration agreement applicable to the Domain Name. This was so that the Center could verify the prima facie language of the proceedings under paragraph 11 of the Rules. Instead of answering that question, the Registrar asserted that “the primary contact language for our company is English but Spanish is acceptable”.
6.7 Further, although the verification response when it was sent confirmed that the Domain Name had been “Register locked”, it was not clear when this had happened. Any delay on the part of a registrar in locking a domain name the subject of proceedings raises the risk that prior to lock a domain name may be transferred to a third party contrary to paragraph 8(a) of the UDRP.
6.8 These are far from trivial matters. For example, in Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited & Others, WIPO Case No. D2008-1675 the repeated failure by the registrar in that case to respond reasonably quickly to Center verification requests was one of the factors that lead to the panel inviting the Center to bring the registrar’s conduct to the attention of ICANN with a view to ICANN taking such further steps as it considered necessary. In that case the panel also took notice of ICANN's “Draft Advisory Concerning Registrar Best Practices to Protect Registrants upon Initiation of a Uniform Domain Name Dispute Resolution” published in December 2008. This states that registrars “should cooperate, in a timely fashion, with Provider requests” and suggests a deadline for responding of 2 business days from the making of the request.
6.9 A review of decision in which the Registrar would be involved, would suggest that its response to verification requests to date has been erratic. For example, in some cases verification requests have been dealt with immediately (see, for example, Virgin Enterprises Limited v. Trade Out Investments Ltd/Power Brand Centre Corp., WIPO Case No. D2011-0640 and Allstate Insurance Company v. PrivacyProtect. org / Purple Bucquet, WIPO Case No. D2011-0003 ) whilst in others the Center has needed to send chasing emails and the time for response has been longer than 2 business days (see, for example, Toyo Tire & Rubber Co. Ltd. v. Privacy Protect.org / Domain Tech Enterprises, Domain Administrator, WIPO Case No. D2011-0479 and Wikimedia Foundation Inc. v. Gerente de Dominia, CSRUS Enterprises, WIPO Case No. D2011-0911).
6.10 The Registrar has apologised on this occasion for its delay in responding and blames a “system crash”. However, no further explanation is given as to why this “crash” led to a three week delay and it is concerning that a registrar’s IT systems are insufficiently robust that a “mail server upgrade” could interfere for so long with the registrar’s ability to deal properly with a UDRP verification request.
6.11 The Panel in this case has decided not invite the Center to bring the Registrar’s failures to the attention of ICANN. However, panels in future cases may take a different view if these failures are repeated or continue. No doubt the Center will bring this aspect of this decision to the attention of the Registrar in any event.
B. Identical or Confusingly Similar
6.12 The Panel accepts that the Domain Name is virtually identical to the Complainant’s CLIC PEUGEOT mark. The only difference is the “.com” TLD and the use of a “-“ to represent a space. Further, the Panel accepts that the Domain Name is confusingly similar (as that term is understood under the Policy) to the Complainant’s PEUGEOT marks. The addition of the word “clic” and “-“ does not so detract from the term “Peugeot” included in the second level of the Domain Name as to prevent a finding of confusing similarity. The Complainant has accordingly made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
6.13 Many UDRP panels have adopted the approach of saying that where prima facie none of the examples of rights or legitimate interests laid out in paragraph 4(c) of the Policy apply, then the respondent carries the burden of showing such a right or interest. The Complainant has put forward this argument in its Complaint. It is an approach that the Panel could perhaps also have followed in the current case. However, the Panel prefers to deal with this issue in a somewhat more direct manner.
6.14 It is clear in this case that the Domain Name is being used by the Respondent for use with a “domain name parking” or “pay-per-click” service. It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party's rights and reputation in that term, then it may have a legitimate interest in the domain name (see Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another's mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267). Indeed, such a finding is a positive indicator of the fact that no right or legitimate interest exists (see Premier Farnell Corp. v. BlueHost.com, Bluehost Inc / Newark del Peru S.A., WIPO Case No. D2010-2111).
6.15 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question; is the Respondent using the Domain Name with the Complainant's marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.16 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained under that heading below, the Panel has reached the clear conclusion that the Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the Complainant's trade marks. In the circumstances, the Panel has little difficulty in reaching a positive finding that the Respondent has no rights or legitimate interests in the Domain Name. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
6.17 The Panel has formed the clear view that the Domain Name has in this case been both registered and used to take advantage of confusion with the Complainant's PEUGEOT and CLIC PEUGEOT marks. The Domain Name has no obvious generic or descriptive meaning and the only credible reading of the Domain Name is as a reference to the Complainant’s goods and services and marks. Indeed, it seems that the Domain Name is intended to be a minor variant of the domain name <clicpeugeot.com> previously registered and used by the Complainant. It is difficult to conceive of any legitimate use of the Domain Name and even had the Domain Name never been used by the Respondent, this Panel would have concluded that there has been bad faith registration and use (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 as elaborated upon in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/Fayalobi Interaction Management, WIPO Case No. D2008-0455 and La Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grozea Romica, WIPO Case No. D2008-1377).
6.18 The position becomes even clearer when one considers the use that has been made of the Domain Name. As the Panel has already stated, the Domain Name has at least recently been used in connection with a “pay-per-click” or “domain name parking” service. It is now well-known how these sorts of services operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA, WIPO Case No. D2007-1143).
6.19 The generation of revenue from domain name parking or pay-per-click activities is not necessarily activity in bad faith. It is perfectly legitimate to use a domain name for such purposes where the registrant is seeking to take advantage of any generic or descriptive reading of the Domain Name. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (see, for example, Express Scripts, Inc., supra).
6.20 The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent's website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay-per-click site that it then becomes clear that the website is unconnected with the trade mark holder.
6.21 Here, given that the Domain Name has no generic meaning, the only sensible interpretation of the material before the Panel is that the Domain Name is being used in order to take advantage of that “initial confusion”. That current use is also evidence of the Respondent’s intentions at the time of registration (even though the Panel recognises that this registration may have taken place approximately 7 years previously).
6.22 The Complainant has easily made out the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <clic-peugeot.com> be transferred to the Complainant.
Matthew S. Harris
Dated: August 24, 2011