WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Conforama Holding v. Whois Privacy Protection Service, Inc./ Profile Group, DNS Manager
Case No. D2011-1976
1. The Parties
The Complainant is Conforama Holding of Lognes, France, represented by Cabinet Santarelli, France.
The first Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America.
The second Respondent is Profile Group, DNS Manager of Wilmington, Delaware, United States of America, represented by Mr. Hammock, United States of America.
2. The Domain Name and Registrar
The disputed domain name <confo.org> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2011. On November 10, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 11, 2011, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 16, 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 November 17, 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 November 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2011. The Response was filed with the Center on December 8, 2011.
The Center appointed Pierre Olivier Kobel as the sole panelist in this matter on December 21, 2012. 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 company active in the retail business of home furnishing, decoration and appliances. It is mainly active in France, but has stores in other European countries, i.e. Switzerland, Luxembourg, Spain, Portugal, Italy and Croatia.
The Complainant is the owner of various trademarks, including the word mark CONFO registered in France on September 5, 1985, under Nr. 1322277 in classes 1 to 45, a trademark with specific font and size CONFO registered in France on June 21, 2002, under Nr. 3170431 in class 35. It is the owner of the international trademark CONFO registered on February 28, 1986, in classes 9, 11, 20, 21, 24, 27 under Nr. 500627 with designations covering the Benelux, Switzerland, Germany, Spain, Croatia, Italy, Morocco, Poland, Portugal, Algeria, as well as other trademarks including the word CONFO followed by another designation, such as CONFO STOCK, CONFO HOME, etc.
The Complainant is the registrant of numerous domain names incorporating its CONFO trademark, such as <confo.com> and <confo.fr>.
The Respondent registered the disputed domain name <confo.org> on September 4, 2011.
5. Parties’ Contentions
The Complainant alleges that the second level domain name registered by the Respondent is identical to its well-known trademark CONFO.
According to Complainant, the Respondent has no right or legitimate interest in the disputed domain name. The Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use its trademark CONFO. The Complainant has never agreed to the registration of the disputed domain name by the Respondent. As a result, the Respondent has no right to the domain name. In addition, the disputed domain name is used as a portal, pointing to other web sites selling among others, furniture and home appliances.
Furthermore, the Complainant alleges that the Respondent has intentionally registered the disputed domain name for the purpose of selling it.
For the above reasons, the Respondent cannot claim to have any legitimate interest in the disputed domain name.
The Complainant also explains that the Respondent can only have registered and used the disputed domain name in bad faith. This is evidenced by the fact that the disputed domain name resolves to a parking website providing links to third-party websites pertaining to furnishing, moreover using references in French such as “salle à manger”, “catalogue meuble”, etc.., i.e. terms corresponding to the core business of the Complainant. The fact that the portal is also reproducing the term “Conforama” is evidence that the Respondent had knowledge of the Complainant and its famous trademark CONFORAMA. Last, the Complainant alleges that the disputed domain name is proposed for sale.
The Complainant is seeking the transfer of the disputed domain name.
In its Response dated December 8, 2011, the Respondent explains that it has a policy against registration or holding domains in violation of legitimate rights holders. At the time it registered the disputed domain name, the Respondent alleges that it was unaware of the Complainant’s trademark. The Respondent deplores the fact that the Complainant made no attempt to contact Respondent prior to the filing of its Complaint. It explains that despite its service consisting in protecting the domain registrant’s identity, it would have received an email from the Complainant and would have responded in compliance with its policy. Under the “legal terms” appearing on its website, the Complainant would have found an email address to send its complaint.
Upon receipt of the initial Complaint filed by the Complainant with WIPO, the Respondent offered to transfer the disputed domain name at no cost to the Complainant, an offer which was allegedly rejected by the Complainant. The Respondent apparently repeated its offer to transfer the disputed domain name at no cost, explaining to the Complainant that it would not indemnify it for its legal expenses, as it had not registered the disputed domain name in bad faith.
The Respondent contends to have acted with the utmost good faith, by repeatedly offering to transfer the disputed domain name at no cost.
In conclusion, the Respondent requests that the Complaint be dismissed and thereupon, commits to immediately transfer the disputed domain name to the Complainant. Alternatively, Respondent requests that the Panel refrain from making any formal finding that the Respondent acted in bad faith and endorses its commitment to transfer the disputed domain name to the Respondent.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for a Complaint to succeed, the Complainant must prove that:
(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.
It is to be noticed first, that the Respondent does not discuss specifically the arguments raised by the Complainant as to paragraph 4(a). The Respondent failed to “respond specifically to the statements and allegations contained in the complaint” (paragraph 5(b)(i) of the Rules). It only alleges that it did not know about the trademarks of the Complainant and acted in good faith after receipt of the Complaint. Instead of reaching conclusions for the right “to retain registration and use of the disputed domain name” (paragraph 5(b)(i) of the Rules), the Respondent is asking for some sort of settlement of the case on the basis of its unilateral commitment to transfer, instead of a decision to transfer.
The Panel has reviewed the decisions cited by the Respondent and other UDRP cases dealing with similar conclusions directly and indirectly cited in Conforama Holding v. BuyDomains.com, Inventory Management, WIPO Case No. D2011-1862, including all cases referred to in paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”). The present Panel finds that contrary to most UDRP decisions referred to in WIPO Overview 2.0, the Respondent did not unambiguously consent to the remedy sought by the Complainant.
This Panel did not find any case actually following the suggestions made by the Respondent. Some panels found that the respondent had simply agreed to such order, some others that the respondent had agreed to the transfer and to the conditions for such transfer according to paragraph 4(a) of the Policy, while others examined whether the conditions for transfer were fulfilled, all leading to an order to transfer the disputed domain name.
This Panel also believes that, besides situations where both parties have reached an agreement as to the outcome of the case, the Policy, under paragraph 4(i), permits only the remedies of transfer or cancellation of the disputed domain name. As far as the duties of the Panel are concerned, not only celerity is an issue (paragraph 10 of the Rules), but legal certainty. In this Panel’s view, that principle requires a clear order by the panel. No room must be left to the concerned Registrar for interpretation or uncertainty as to the implementation of a panel decision.
Therefore this Panel declines to grant the transfer solely on the basis of the respondent’s consent, but elects to proceed to a substantive determination of the merits in accordance with paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant is the owner of the trademark CONFO. Because the added top level domain name (“.org”) may be ignored when assessing the risk of confusion, the Panel finds that the disputed domain name is identical to the trademark of the Complainant. Therefore the Complainant provided sufficient evidence to meet that condition.
B. Rights or Legitimate Interests
The Complainant succeeded in establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. These contentions remained uncontested by the Respondent who did not claim to have any right or legitimate interest in such domain name.
As a result, the Panel finds that the Respondent does not have right or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
As explained in the Complaint, the Respondent used the disputed domain name as a portal for reference to third parties’ websites offering products similar to the Complainant’s. As evidenced by the exhibits submitted by the Complainant, the portal is using terms in French, describing categories of furniture or appliances, to facilitate the use of the web site and the finding of corresponding suppliers.
The Respondent did not contest such claim and failed to offer any explanation for its use of the disputed domain name.
Therefore, the Panel finds that the Respondent acted in bad faith according to paragraph 4(b)(iv) of the Policy.
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 <confo.org> be transferred to the Complainant.
Pierre O. Kobel
Dated: December 27, 2011