WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MILIPOL v. Milipol International
Case No. D2012-0387
1. The Parties
The Complainant is MILIPOL of Paris, France, represented by Cabinet Beau de Lomenie, France.
The Respondent is Milipol International of Abu Dhabi, United Arab Emirates (“UAE”).
2. The Domain Names and Registrar
The disputed domain names <milipolest.com> and <milipolintl.com> are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2012. On February 28, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain names. On the same date, GoDaddy.com, LLC. 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 March 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2012.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 3, 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
Complainant is a French company internationally known for organizing trade shows and exhibitions on the subject of police equipment and civil and military security, and for providing related services.
Complainant is the owner of the trademark MILIPOL, registered in several jurisdictions, including France, Argentina, Brazil, Israel, Japan, Malaysia, Singapore, UAE, the United Kingdom of Great Britain and Northern Ireland, and the United States of America, as well as an International Registration No. 641805 of August 10, 1995 which is extended to Germany, Benelux, Spain, Italy, Portugal, Austria, Switzerland, China, Armenia, Belarus, Russian Federation, Kazakhstan, Romania, Moldova Republic, Ukraine, Serbia, Croatia, Slovenia, Hungary, Macedonia, Bosnia and Herzegovinian, Bulgaria, Poland, Slovak Republic, Czech Republic, Latvia, Montenegro.
Complainant has been using the trademark MILIPOL since the year 1995.
The disputed domain names <milipolest.com> and <milipolintl.com> were registered on December 12, 2011.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant is the owner of the MP MILIPOL and MILIPOL trademarks registered in several jurisdictions. The disputed domain names are confusingly similar to the trademark MILIPOL, and MP MILIPOL. The MP part of the trademark should be disregarded because it is a generic term for military police.
(2) The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain names as the Complainant’s exclusive rights in its registered trademark predates the registration of the disputed domain names, and the Complainant has not authorized the Respondent to use its trademark. In addition, the Respondent has not been commonly known by the disputed domain names and has not made any legitimate use of the disputed domain names in connection with any bona fide offering of goods and services nor could it have done so in light of the Complainant’s rights. The Respondent created the domain names in 2011, many years after the Complainant´s long use of the trademark MILIPOL and almost fifteen years after the Complainant filed its trademark application in the UAE.
(3) The Complainant also contends that the disputed domain names were registered and are being used in bad faith. The Complainant states the Respondent created the disputed domain names on December 12, 2011, i.e. many years after the Complainant began use of its trademark MILIPOL. The Respondent does not associate the disputed domain names with a good faith offering of goods and services since the Respondent is only using the confusingly similar disputed domain names to direct the Internet users to a web page mentioning that “MILIPOL INTERNATIONAL EST is 100% UAE national company and one of the biggest suppliers to military police” with no other information. Internet users seeking the Complainant’s services in trade shows and police equipment may become confused as to the Complainant’s affiliation with Respondent’s <milipolintl.com> and <milipolest.com> disputed domain names. According to Complainant, it is clear that the only reason to register and use the disputed domain names is to generate a confusion in the public’s mind and mistaking it as being associated with or sponsored by the Complainant, or alternatively to disrupt the Complainant’s business. Respondent is intentionally attempting to attract, for commercial gain, Internet users to the disputed domain names by creating a likelihood of confusion with the Complainant’s MILIPOL name and MP MILIPOL trademark and MILIPOL domain names, as to the source, sponsorship, affiliation and/or endorsement of the <milipolintl.com> and <milipolest.com> website.
Complainant requests as a remedy that the disputed domain names <milipolintl.com> and <milipolest.com> be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used by Respondent in bad faith.
Even when a respondent defaults, as is the case here, Complainant must establish and carry the burden of proof on each of the three elements identified above with regard to the disputed domain names. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The disputed domain names wholly incorporates Complainant’s trademark MILIPOL. The fact that the generic words “est” or “intl” are added to Complainant’s trademark does not eliminate the similarity between Complainant’s trademark and the disputed domain names. In fact, the addition of the terms “est” or “intl” to Complainant´s trademark may give the impression that those domain names belong to the subsidiary of the Complainant in Respondent’s jurisdiction.
In numerous cases, it has been held that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.
The Panel thus finds that the disputed domain names are confusingly similar to the trademark MILIPOL in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the disputed domain names. However, it is consensus view among panelists that if Complainant makes a prima facie case that Respondent has no rights or legitimate interests, and Respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then Respondent may lack a legitimate interest in the disputed domain names.
Complainant asserted that Respondent has neither a license nor any other permission to use Complainant’s trademark MILIPOL. Respondent has not denied these assertions. The Panel thus finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names which wholly incorporate Complainant’s trademark.
Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the disputed domain names.
Respondent is not a reseller or agent of Complainant’s MILIPOL. Responding is using Complainant’s trademark without authorization for a website that seem to be a branch or subsidiary of Complainant in UAE. Respondent’s use of the disputed domain names to divert Internet users to another website capitalizing on Complainant’s mark is not a bona fide use pursuant to paragraph 4(c)(i) of the Policy.
Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
Respondent registered two domain names at the same time containing the trademark MILIPOL with the addition of two generic terms “est” and “intl”. It is the view of the Panel that Respondent knew of the existence of Complainant when it registered the disputed domain names.
Respondent also included content in the disputed domain names giving the impression that the disputed domain names are a branch or subsidiary of Complainant in the UAE.
The disputed domain names feature the following content:
“Milipol International Establishment - United Arab Emirates
MILIPOL INTERNATIONAL EST is 100% UAE National Company and one of the biggest suppliers to the Military & Police.
We are sole Agency of famous brands in different items and can be supply in the Gulf region and neighboring states at vary moderate rates and quick delivery.
Any Additional queries please do not hesitate to contact us and we are on your disposal at any time.
In addition, in light of the content of the disputed domain names, it is the view of this Panel that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web sites by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the web sites. It is the view of the Panel that the content of the disputed domain names was designed to create a likelihood of confusion with the Complainant’s MILIPOL name and MP MILIPOL trademark and MILIPOL domain names, as to the source, sponsorship, affiliation and/or endorsement of the <milipolintl.com> and <milipolest.com> website.
In summary, Respondent, by choosing to register and use the disputed domain names, which are confusingly similar to Complainant’s trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain names and the conduct of Respondent as far as the website to which the disputed domain names resolve are indicative of registration and use of the disputed domain names in bad faith.
The conduct described above falls squarely within paragraph 4(a)(iii) of the Policy, and accordingly the Panel concludes that the Respondent registered and is using the disputed domain names 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 names <milipolest.com> and <milipolintl.com> be transferred to the Complainant.
Pablo A. Palazzi
Dated: April 16, 2012