WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mobsat Group Holding SARL v. Sharon Ting (CTLGDN-564616)
Case No. D2012-0861
1. The Parties
The Complainant is Mobsat Group Holding SARL of Munsbach, Luxembourg, represented by Inlex IP Expertise, France.
The Respondent is Sharon Ting (CTLGDN-564616) of Singapore, Singapore.
2. The Domain Name and Registrar
The disputed domain name <vizadamail.com> is registered with Catalog.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2012. On April 23, 2012, the Center transmitted by email to Catalog.com a request for registrar verification in connection with the disputed domain name. On April 25, 2012, Catalog.com 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 May 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2012. The Center notified the Respondent’s Default on May 25, 2012. On May 27 and on May 28, 2012, the Respondent sent an email communication to the Center.
The Center appointed Daniel Kraus as the sole panelist in this matter on June 8, 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, Mobsat Group Holding SARL is the owner of several trademarks on the sign “vizada” and notably:
- The French trademark VIZADA n°3488129 filed and registered on March 14, 2007 in classes 9, 16, 35, 38 and 42;
- The international trademark VIZADA n°957986 filed and registered on July 13, 2007 in classes 9, 16, 35, 38 and 42 and claiming protection in Australia, Denmark, Finland, United Kingdom of Great Britain and Northern Ireland, Greece, Japan, Republic of Korea, Norway, Sweden, Turkey, Bosnia, Switzerland, China, Cyprus, Spain, Croatia, Italy, Morocco, Moldova, Poland, Portugal, Serbia, Russian Federation.
These trademarks are registered and used in connection with goods and services related to telecommunications by satellite.
The Complainant also currently owns and operates websites from the following domain names:
- <vizada.com> registered on June 1, 2003;
- <vizada.info> registered on January 8, 2008;
- <vizada.net> registered on April 25, 2007;
- <vizada.mobi> registered on April 25, 2007;
- <vizada.fr> registered on April 26, 2007;
- <vizada.biz> registered on June 23, 2008;
- <vizada.us> registered on June 23, 2008;
- <vizadasolutions.com> registered on June 18, 2008;
- <vizadasolutions.net> registered on June 18, 2008;
- <vizadaxchange.com> registered on January 11, 2011;
- <vizadaservices.com> registered on August 10, 2007.
Those domain names are also used in connection with goods and services related to telecommunications by satellite.
At the time the Complaint was filed, the disputed domain name resolved to a web page on which one could read “welcome to the future home of www.vizadamail.com”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <vizadamail.com> is identical or confusingly similar to its VIZADA trademarks and domain names in which it owns exclusive rights. The mere addition of the term “mail” is generic and hence does not have any impact on the risk of confusion.
The Complainant further argues that the Respondent has no right or legitimate interests in respect of the disputed domain name, as there is no relationship between the Respondent and the Complainant.
Finally, the Complainant argues that disputed domain name was registered and is being used in bad faith, in particular due to the fact that despite several letters and reminders, the Respondent has never replied to the letters nor transferred the disputed domain name back to the Complainant.
The Respondent did not submit a formal Response to the Complainant’s contentions. An individual, writing from the email address indicated in the WhoIs contact information for the Respondent, sent two informal email communications to the Center on May 27 and 28, 2012, in which he stated that he had “cancelled the domain”.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established registered trademark rights in VIZADA.
The disputed domain name includes the Complainant’s trademarks in its entirety together with the generic word “mail”. This additional generic term however fails to dispel the connection between the disputed domain name and the trademarks (see e.g. HUGO BOSS AG, HUGO BOSS Trade Mark Management GmbH & Co. KG v. Above.com Domain Privacy / Above.com Legal, Host Master / Transure Enterprise Ltd WIPO Case No. D2012-0273; AutoScout24 Deutschland GmbH. v. Mark Marchese, WIPO Case No. D2005-0777; Lilly ICOS LLC v. Tommy Hillinger, WIPO Case No. D2005-0475; ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034; The Price Company v. Price Club, also known as Tsung-Pei Chang, WIPO Case No. D2000-0664).
The disputed domain name is dominated solely by the element “vizada”, since “mail” is a purely descriptive term, in particular in the field of telecommunications, where it commonly identifies emails, a method of exchanging digital messages from an author to one or more recipients (see e.g. definition on Wikipedia). Thus, the disputed domain name <vizadamail.com> is solely dominated by the element “vizada” which is identical to the Complainant’s VIZADA trademarks.
The Panel finds that the disputed domain name is therefore confusingly similar to the Complainant’s VIZADA trademarks and concludes that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that a respondent has commonly been known by a domain name; and (iii) legitimate noncommercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
It should first be noted that the Complainant has not licensed or otherwise authorized the Respondent to use its trademarks.
As to paragraphs 4(c)(i) and (iii) of the Policy, the Panel concludes that the Respondent cannot be considered to have been using or preparing to use the disputed domain name in connection with a bona fide offering of goods or services, as it merely registered it, parked it and did not make any use of it. But it is difficult to imagine why the disputed domain name could have been registered if it was not to benefit from the reputation of the trademarks VIZADA and by creating a likelihood of confusion with this Complainant’s trademarks. In these circumstances, the Respondent’s behavior cannot be considered to be bona fide nor does it constitute legitimate noncommercial or fair use (see HUGO BOSS AG, HUGO BOSS Trade Mark Management GmbH & Co. KG v. Above.com Domain Privacy / Above.com Legal, Host Master / Transure Enterprise Ltd, WIPO Case No. D2012-0273; MasterCard International Incorporated v. Acme Mail, WIPO Case No. D2008-0701; MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050).
As to paragraph 4(c)(ii) of the Policy, there is no evidence that the Respondent has been commonly known by the disputed domain name.
The Complainant established a prima facie case that the Respondent lacks rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel hence concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Based on the case record, and as discussed above, the Panel is satisfied that the disputed domain name was registered and used exclusively for the purpose of exploiting the reputation of the Complainant and its trademarks VIZADA.
Therefore, in accordance with paragraph 4(b)(iv) of the Policy, the Panel finds that the disputed domain name was registered and used 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 <vizadamail.com> be transferred to the Complainant.
Dated: June 24, 2012