WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toluna SAS v. Private Registration, WhoisGuardService.com
Case No. D2011-1151
1. The Parties
Complainant is Toluna SAS of Levallois-Perret, France, represented by Cabinet Moutard, France.
Respondent is Private Registration, WhoisGuardService.com of Nanjing, China.
2. The Domain Name and Registrar
The disputed domain name <wwwtoluna.com> is registered with Nanjing Imperiosus Technology Co. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2011. On July 8, 2011, the Center transmitted by email to Nanjing Imperiosus Technology Co. Ltd. (the “Registrar”) a request for registrar verification in connection with the disputed domain name. On July 8, 2011, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On July 13, 2011, the Center sent a communication to the parties in both Chinese and English regarding the language of the proceeding, noting that the Complaint had been submitted in English and that Chinese was the language of the registration agreement confirmed by the Registrar. In view of the language discrepancy, the Center requested that Complainant submit satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English, or a Chinese translation of the Complaint, or arguments in favor of English being recognized as the language of the proceeding. The Center also invited Respondent to comment regarding the language of the proceeding. On July 13, Complainant sent a communication to the Center requesting that English be the language of the proceeding, citing the use of English in the disputed domain name’s content and the additional time and costs associated with translating the Complaint as reasoning. Respondent did not comment regarding the language of the proceeding.
The Center contacted the Registrar again on July 20, 2011 requesting clarification as to whether the disputed domain name had been locked. On July 20, 2011, the Registrar contacted the Center via e-mail and confirmed that the disputed domain name was locked. The Center sent a further e-mail to the Registrar on July 21, 2011 noting that the WhoIs status for the disputed domain name identified its current status as “OK” rather than “locked” or “transfer prohibited” and again requested confirmation that the disputed domain name was locked. There is no response from the Registrar to this communication in the record.
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 Respondent of the Complaint, and the proceedings commenced on July 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 12, 2011.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on August 17, 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
Complainant is a French company specializing in market research, surveys, and opinion polling. Complainant has provided evidence confirming its ownership of multiple trademark registrations for its TO LUNA and TOLUNA trademarks in word and design form for goods and services related to market research, surveys, and opinion polling which cover the European Community, the United States of America, China, Australia, and Japan. Complainant has also provided evidence of its ownership of the <toluna.com> domain name.
The disputed domain name is <wwwtoluna.com>. The disputed domain name was created on April 6, 2011 and displays advertisements and links to websites.
There is little information in the record regarding Respondent. Respondent’s identity is not disclosed in WhoIs reports relating to the disputed domain name. The Registrant name appears to be a WhoIs privacy service, identified as Private Registration, WhoisGuardService.com of Nanjing, China. All correspondence pertaining to this Complaint has been directed to this entity.
5. Parties’ Contentions
Complainant claims that the disputed domain name <wwwtoluna.com> is very similar to the TO LUNA and TOLUNA trademarks in which Complainant has rights because it is composed of TOLUNA and the prefix "www", which Complainant cites as non-distinctive due to its use as a domain name prefix. Complainant alleges that users are likely to be confused by the content of the disputed domain name because it incorporates links to competitors of Complainant which provide services similar to those provided by Complainant. Complainant further alleges that confusion is likely due to the French and English language content featured at the disputed domain name because these languages are spoken in countries where Complainant has trademark rights in TO LUNA and TOLUNA. Complainant believes that consumers will be misled by the disputed domain name due to its content and similarity to Complainant’s trademarks and that consumers in search of Complainant’s products and services will be directed to websites of Complainant’s competitors as a result.
Complainant maintains that Respondent has no rights or legitimate interests in the disputed domain name because (1) there is no evidence of the disputed domain name being used by Respondent in connection with a bona fide offering of goods and services, (2) Respondent has not been commonly known by the disputed domain name, and (3) Respondent’s use of the disputed domain name to display links to third party websites of Complainant’s competitors is illegitimate commercial use and unfair use. Complainant further alleges that the links to third party websites of Complainant’s competitors are monetized pay-per-click links and that Respondent is compensated each time these links are accessed by Internet users. Finally, Complainant alleges that Respondent’s registration and use of the disputed domain name is an attempt to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks, and that consumers are likely to believe that Complainant is operating or has approved the content of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Language of the Proceeding
The Panel has reviewed the communication received from Complainant regarding the language of the proceeding. The Panel also notes that all of the Center’s communications have been transmitted in both Chinese and English and that Respondent has chosen not to participate in this proceeding. Based on the foregoing, the Panel agrees that English should be the language of the administrative proceeding in this case.
A. Identical or Confusingly Similar
Complainant has established trademark rights in TOLUNA. These rights pre-date the creation of the disputed domain name on April 6, 2011 and are recognized in multiple jurisdictions including Respondent’s jurisdiction (China).
The disputed domain name incorporates Complainant’s TOLUNA trademark in its entirety. It has been held that the incorporation of a trademark in its entirety into a domain name is generally sufficient to establish that the domain name is identical or confusingly similar to the trademark at issue. See, e.g. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001- 0505. The incorporation of the letters “www” into the disputed domain name does not avoid a likelihood of confusion; these letters actually increase the likelihood that users would mistakenly arrive at the disputed domain name when in search of Complainant’s products and services on account of an error entering the full website address (i.e., “www.toluna.com”). It has been held in previous UDRP cases involving similarly composed domain names that the use of “www” in this manner constitutes typosquatting. See, e.g., InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck, WIPO Case No. D2000-0069 (finding that the disputed domain name <wwwinfospaces.com> was confusingly similar to the complainant’s INFOSPACE trademark, holding that the addition of "www" before complainant’s mark in the domain name did not avoid confusion, rather appeared to be an attempt to “take advantage of mistakes that consumers are likely to make when intending to enter [c]omplainant’s website address”) and Christian Dior Couture v. Mumbai Domains, WIPO Case No. D2010-2274 (holding that the domain name <wwwdior.com> was confusingly similar to the complainant’s DIOR trademark because it “self-evidently embodies the [c]omplainant’s famous DIOR mark in classic typosquatting form”).
The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
As noted above, Complainant has provided evidence of its prior rights in the TOLUNA trademark. These rights precede the creation of the disputed domain name.
The disputed domain name <wwwtoluna.com> incorporates Complainant’s trademark in its entirety. There is no evidence indicating that Respondent is licensed to use Complainant’s TOLUNA trademark, that Respondent is associated or affiliated with Complainant, or that Respondent has any other rights or legitimate interests in the term “toluna” or the letter string “wwwtoluna”. As such, Complainant has made out its prima facie case, which Respondent has not rebutted.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent’s registration of the disputed domain name incorporating Complainant’s TOLUNA trademark in its entirety is evidence of bad faith. It is difficult to believe that Respondent was unaware of Complainant given that the similarities between the disputed domain name and Complainant’s TOLUNA trademark and Complainant’s <toluna.com> domain name. Complainant’s trademark TOLUNA is an arbitrary trademark with no apparent meaning in any language. The combination of this trademark in its entirety with the letter string "www" is clearly an example of typosquatting and bad faith. Prior UDRP panels have found use of arbitrary trademarks in their entireties in similarly composed domain names to be evidence of bad faith registration. See, e.g., Compagnie Gervais Danone v. Transure Enterprise Ltd / Privacy, WIPO Case No. D2009-1019 (finding that respondent must have been aware of the complainant’s ACTIVIA trademark when registering the domain name <wwwactivia.com> given its use of the ACTIVIA trademark in a “typo-squatted structure” and the lack of any meaning associated with “activia”) and MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS, WIPO Case No. D2008-0009 (finding bad faith registration, noting that the incorporation of the complainant’s MAACO trademark and the prefix “www” to compose the disputed domain name <wwwmaaco.com> “strongly suggests an intent to create confusion with [c]omplainant’s mark”).
It is clear that the disputed domain name is being used in bad faith. The disputed domain name resolves to a page which displays links to websites of third parties which offer goods and services which travel in the same channels of trade as those provided by Complainant. Links displayed include “Market Research Earn Money” for <merrilledge.com>, “Paid Focus Groups” for <eurekafacts.com>, “Get Paid for Your Opinion” for <opinionoutpost.com>, “Free Paid Survey” for <onepinion.com>, and others. It is clear that these third parties compete with the goods and services sold under Complainant’s TOLUNA trademark. Use of a website incorporating another party’s trademark to display third party links to goods which compete with those sold under the trademark at issue demonstrates a deliberate effort to trade off the goodwill associated with the trademark. See, e.g. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728. Respondent’s use of the disputed domain name is diverting traffic from Complainant’s websites. This is bad faith use and such conduct falls within the scope of paragraph 4(b)(iv) of the Policy.
The Panel finds that there is evidence of bad faith registration and use. Accordingly, the requirements of paragraph 4(a)(iii) have been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <wwwtoluna.com> be transferred to Complainant.
Kimberley Chen Nobles
Dated: August 29, 2011