WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OVH SAS v. EE, Emre Erim
Case No. D2012-0330
1. The Parties
The Complainant is OVH SAS of Roubaix, France, represented internally.
The Respondent is Emre Erim, of Bursa, Turkey.
2. The Domain Name and Registrar
The disputed domain name <ovhturk.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2012. On February 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2012 the Registrar 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 February 27, 2012 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 March 1, 2012.
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 March 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2012. Nevertheless the Respondent had sent an informal communication on February 27, 2012.
On February 27, 2012 the Center sent an email to the Registrar requesting confirmation, in accordance with ICANN’s Expired Domain Deletion Policy (paragraph 220.127.116.11), as to whether any action was required given that the disputed domain name was due to expire on March 8, 2012. The following day the Registrar confirmed this fact. On March 7, 2012 Complainant paid the renewal of the disputed domain name.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 29, 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, OVH, a web hosting company known for its open source specialization. The company is located at Roubaix, France.
The Complainant has registered the trademark OVH in France, Benelux, European Union “(EU”), Russian Federation, Morocco, India, Argentina, Peru, Australia, Mexico, and Ukraine.
The disputed domain name was registered on March 8, 2010.
5. Parties’ Contentions
The following contentions are summarized from the amended Complaint.
The Complainant contends that its is the legitimate owner of all rights in the trademark OVH registered in France, Benelux, EU, Russian Federation, Morocco, India, Argentina, Peru, Australia, Mexico, and Ukraine. The Complainant also contends that the disputed domain name is confusingly similar to the Complainant's trademark rights. In addition, the geographical designation “turk” is insufficient to distinguish the disputed domain name as referring to an entity other than the Complainant and may suggest to users that the Respondent is related to the Complainant for the territory of Turkey.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name was also registered in bad faith by the Respondent. The Respondent used to be Complainant’s customer. The Respondent is proposing to users to order goods and services from Complainant on its website. The Respondent also quotes Complainant and its datacenter in Paris and Roubaix. The Respondent is using the trademark OVH in order to deceive Internet users into thinking that the disputed domain name <ovhturk.com> corresponds to the website of Complainant’s Turkish subsidiary. After being contacted by the Complainant, Respondent requested the Complainant to extend its OVH subscription for its server kimsufi for a year in exchange of the disputed domain name transfer.
The Complainant requests as a remedy the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions. Nevertheless the Respondent sent an informal communication on February 27, 2012 to the Center and Complainant with the following content:
“Hello. I am the owner of this domain. I registered this domain about 2 years about for a project but did not use it in anyways. A single index page sits there for about 1.5 years promoting ovh sas services.
Nothing more. So there is no need for all this going on. if OVH wants this domain from me just ask!
you can contact me from this address or from the address in whois info […]@sh.cx
I repeat if OVH SAS wants this domain name. All they have to do is to ask me.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements which a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the 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 such domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established trademark rights in OVH as evidenced by the trademark registrations submitted with the Complaint, as mentioned above.
The Panel is also prepared to find that the disputed domain name <ovhturk.com> is confusingly similar to the Complainant’s trademark OVH. The name OVH is clearly the dominant element of the disputed domain name. The Panel has little difficulty in finding that the disputed domain name is confusingly similar to the trademark OVH, as the additional element “turk” is generic or common.
The disputed domain name <ovhturk.com> incorporates in its entirety Complainant's OVH mark. Where a domain name incorporates a complainant's mark in its entirety, this may sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. Adding the geographic term “turk” to Complainant's OVH mark does not alleviate the confusion.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the OVH trademarks. The Complainant has prior rights in the OVH trademarks which precede the Respondent's registration of the disputed domain name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
In its informal communication of February 27, 2012, the Respondent admitted that it was not using the disputed domain name. The statement “I registered this domain about 2 years about for a project but did not use it in anyways” is so vague that cannot be considered a demonstrable preparation for a bone fide offer of goods or services.
The Panel therefore holds that the Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name by the Respondent in bad faith:
“(i) circumstances indicating that you have registered or you have 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 the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The record shows that the Respondent knew of the Complainant at the time of registering the disputed domain name.
The Complainant states, and the Respondent does not denied, that the Respondent used to be the Complainant’s customer several years before registering the disputed domain name. Annex 8 of the Complaint contains copies of bills issued by Complainant to Respondent. In the copy of the correspondence between the Respondent and the Complainant on February 28, 2012 Respondent stated: “I only registered a domain name two years ago thinking of doing something but ending doing nothing. This domain sits there for 2 years, with just a single index.html page telling how good is OVH (emphasis added)”. At the time of filing the Complaint, the content of the disputed domain name had hyperlinks to websites of the Complainant like “www.ovh.es”, “www.ovh.co.uk” or “www.kimsufi.co.uk”.
Thus in view of this Panel, this is enough to show bad faith at the time of registration of the disputed domain name.
After being contacted by the Complainant, the Respondent requested the Complainant to extend its OVH subscription for its server kimsufi for a year in exchange of the disputed domain name transfer.
The Panel finds that the Respondent’s offer to transfer the disputed domain name to Complainant in return for the provision of hosting services is a showing of bad faith registration and use.
The Respondent clearly is in violation of the Policy, paragraph 4(b)(i): "circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name".
The Panel is convinced that the Respondent familiarity with the Complainant and its services compel the conclusion the Respondent was in bad faith from the very beginning.
Currently there is no content in the disputed domain name. Paragraph 4(b) of the Policy lists, without limitation, four circumstances which, if present, "shall be evidence of the registration and use of the domain name in bad faith." These examples recognize that a passive holding of a domain name registration can, in certain circumstances, constitute using the domain name in bad faith. The concept of a domain name being used in bad faith is not limited to positive action. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; CUX, Inc. v. DomainNamesAvailable, WIPO Case No. D2000-0972).
In the present case the Panel concludes that Respondent’s passive holding of the disputed domain name following its registration in bad faith constitutes a use in bad faith of the disputed domain name, preventing as it does the legitimate owner from registering the same domain name.
Accordingly, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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 <ovhturk.com> be transferred to the Complainant.
Pablo A. Palazzi
Dated: April 12, 2012