WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Conforama Holding v. BuyDomains.com, Inventory Management
Case No. D2011-1862
1. The Parties
The Complainant is Conforama Holding of Lognes, France, represented by Santarelli, France.
The Respondent is BuyDomains.com, Inventory Management of Waltham, United States of America (“USA”), represented by NameMedia, Inc., USA.
2. The Domain Name and Registrar
The disputed domain name <conforama.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2011. On October 31, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same date, eNom 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 November 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2011. The Response was filed with the Center on November 28, 2011.
The Center appointed Edoardo Fano as the sole panelist in this matter on December 7, 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 language of the proceeding is English, being the language of the Registration Agreement according to paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Conforama Holding, based in France, a well-known company retailer in the field of furnishing, home appliances, decoration and electronical products. The first store opened in France in 1967 and today they operate in 6 more European countries.
The Complainant is the owner of various trademark registrations for CONFORAMA in different countries, including:
- French Trademark Registration CONFORAMA, No. 1101589, registered in 1979 and duly renewed;
- International Trademark Registration CONFORAMA, No. 448422, registered in 1979 and duly renewed;
- Community Trademark Registration CONFORAMA and device, No. 3829587, registered in 2005.
The Complainant provided evidence in support of the above-mentioned trademark registrations.
The Complainant also owns various domain names, among which <conforama.com> and <conforama.fr>.
The Respondent’s domain name <conforama.net> was registered on April 15, 2003. At the time of the Complaint being filed, the disputed domain name pointed to a webpage displaying several links to furnishing websites expressed in the French language.
5. Parties’ Contentions
The Complainant states that the disputed domain name <conforama.net> is identical to its trademark CONFORAMA, since the gTLD extension “.net” is not to be taken into consideration when examining identity or similarity between a trademark and a domain name.
Moreover, the Complainant affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register and/or use the disputed domain name and it is not making a noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith.
In fact, the Complainant’s trademark CONFORAMA is a well-known registered trademark, owned by a French company operating in the furnishing field, and the website at the disputed domain name consists of sponsored links in the French language addressed to the furnishing field.
The Respondent denies that the disputed domain name was registered in bad faith but nonetheless stipulates to transfer the disputed domain name to the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Before considering the above there is a preliminary issue to be addressed, namely whether or not it is necessary, in light of the Respondent's consent to transfer the disputed domain name to the Complainant that this Panel should proceed to a decision.
As analysed by the panel in The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 (and subsequently by the panels in Bharat Sanchar Nigam Limited (BSNL) v. Domain Hostmaster, WIPO Case No. D2007-1800 and Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320), panels, when faced with a “unilateral consent to transfer,” have taken three different approaches. Some panels have granted the relief requested on the basis of respondent's consent without a review and analysis of the facts supporting the complaint. Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; SLUMBERLAND FRANCE V. CHADIA ACOHURI, WIPO Case No. D2000-0195. Others have held that the consent to transfer is effectively a concession that the three elements of the Policy have been satisfied, and ordered transfer on this basis. Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; DESOTEC N.V. v. JACOBI CARBONS AB, WIPO Case No. D2000-1398. Still other panels have proceeded to analyze whether the evidence submitted satisfies the three elements of the Policy. Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co., WIPO Case No. D2003-0745.
In the present case:
On the one hand, the Respondent is stating that the disputed domain name was not registered in bad faith but just following its policy to register domain names that become eligible for registration through expiration and deletion, and only those domain names that incorporates common words or phrases, descriptive terms, geographic terms, and/or combinations of the same for which the available evidence suggests that no single party has exclusive rights;
On the other hand, the Complainant, when offered by the Center the possibility to request the suspension of the proceeding and try to reach a settlement between the parties, replied that the Respondent already proposed to transfer the disputed domain name to the Complainant, but stated in its proposal to hold protectable rights on the disputed domain name, a statement the Complainant cannot accept and this is the reason why the Complainant prefers to pursue the present proceeding.
Given the above statements of the Respondent and the Complainant, the Panel does not think to be in the position to order the transfer of the disputed domain name without consideration of the three elements of paragraph 4(a) of the Policy.
Paragraph 10 of the Rules sets out the General Powers of the Panel as follows:
“(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.”
Paragraph 15(a) of the Rules provides that:
“(a) A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.[…]”
Paragraph 4(a) of the Policy, having set out the three elements of a compliant complaint concludes: “In the administrative proceeding, the complainant must prove that each of these three elements is present.”
Taking those provisions into consideration, the Panel reckons that in the present case the presence of the three elements should be duly analysed.
In fact, it is not a case in which the the consent to transfer can be treated as a concession that the three elements of paragraph 4(a) of the Policy are present, since the Respondent is clearly denying to have registered the disputed domain name in bad faith.
As far as the Complainant’s position is concerned, the Panel agrees with those panelists who consider that once a Complainant has started proceedings under the Policy and paid the relevant fee, it is entitled to a proper decision on the merits (Sanofi-aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909; Davis+Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./Demand Domains Inc., WIPO Case No. D2008-1162).
Furthermore, as stated by the panel in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320, “[…] proceeding to a proper consideration of the three elements of paragraph 4(a) of the Policy reduces the risk of an injustice (e.g., the transfer of a domain name to a complainant with no relevant trade mark rights)”.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark CONFORAMA both by registration and acquired reputation and that the disputed domain name <conforama.net> is confusingly similar to said trademark.
It is well accepted that a top-level domain, in this case, the country code “.net”, may be ignored when assessing identity of a trademark and domain name (see, e.g., VAT Holding AG v Vat.com, WIPO Case No. D2000-0607).
The Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
The assertion of the Respondent that its policy is to register domain names that become eligible for registration through expiration and deletion, and only those domain names that incorporates common words or phrases, descriptive terms, geographic terms, and/or combinations of the same for which the available evidence suggests that no single party has exclusive rights does not seem to be pertinent with the present case, since the Respondent is not stating that the disputed domain name is a common word or phrase, a descriptive term, a geographic term, especially when used in the furniture field as it was used by the Respondent in the relevant website.
The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) 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 the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that 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
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.”
The Panel is of the opinion that the Respondent in the present case has to be considered as a “domainer”, or better still a “professional/sophisticated domainer”.
In recent years there have been several decisions under the Policy regarding the issue of domainer acquisitions of large numbers of domain names in circumstances where the acquiring domainer may not have actual knowledge of possible trademark’s right of a third party on the domain name being purchased, especially when the purchasing is automated.
Although the Policy was created to deal primarily with cybersquatters, several panels have notwithstanding decided to apply the Policy to cases where professional/sophisticated domainers acquiring bulks of domain names by considering the failure of the respondents to conduct proper trademark rights search before purchasing the domain names may be support of evidence of bad faith within the meaning of paragraph 4(a)(iii) of the Policy (mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
In fact several UDRP panel decisions have considered the specific responsibility of sophisticated domainers, by saying that “it is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights” (see Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448). Therefore in this Panel’s view people who make a living from registering vast numbers of domain names must make a reasonable effort to ensure that they are not infringing trademark rights of third parties, either registered or unregistered, without engaging in what is usually called “willful blindness” to the existence of such rights.
As stated by the three-member panel in the mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141: “Although there may be no obligation that a domain name registrant conduct trade mark or search engine searches to determine whether a domain name may infringe trade mark rights, a sophisticated domainer who regularly registers domain names for use as [pay-per-click] landing pages cannot be willfully blind to whether a particular domain may violate trade mark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge.”
And also, “[…] an even more thorough search would also include search engine searches to see what new websites may exist that use a name identical or confusingly similar to the domain name at issue even in the absence of a trade mark application or registration. […] Similarly, Yahoo! and Google offer highly effective search engines to determine the most relevant references on the Internet in response to a particular search term. Searching of this kind is particularly appropriate for companies that operate [pay-per-click] landing pages […] In this context, registrants that run [pay-per-click] landing page businesses cannot be willfully blind to whether the domain names they register are similar to trademarks and are pulling up [pay-per-click] advertising related to those trademark rights [..]. It is reasonable to infer, based upon the circumstantial evidence available, that Respondent, a sophisticated party in the [pay-per-click] landing page business, must have been aware of the relevant trademark”.
This Panel completely agrees with the view of the panel in Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320, who “believes it appropriate that purchasers of domain names should be taken to have knowledge of (a) what they have purchased and (b) how their domain names are being used. Accordingly, if a domain name, which they have purchased incorporates a third party's trade mark of which they are likely to have knowledge, they should be treated as having acquired that domain name knowingly and knowingly to have put the domain name to the use to which it is being put. Were it otherwise, automated bulk transfers of domain names would be the perfect shield for abusive registrations”.
Therefore the Respondent in the present case should have known that the disputed domain name, when registered, corresponded to a registered trademark of a third party, and should have been aware of the fact that it was using it in bad faith since the links in the website at the disputed domain name, even if automatically generated, were in French, the language of the Complainant’s home country, and referred to the furnishing field, that is the main business of the Complainant.
Considering the above, the Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied.
For all 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 <conforama.net> be transferred to the Complainant.
Dated: December 12, 2011