WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Conforama Holding v. LeaseDomains.com / Domains By Proxy, LLC, DomainsByProxy.com
Case No. D2012-1105
1. The Parties
The Complainant is Conforama Holding, Lognes, France, represented by Lorraine Clavier, France.
The Respondent is LeaseDomains.com, Illinois, United States of America / Domains By Proxy, LLC, DomainsByProxy.com, Scottsdale, Arizona, United States of America
2. The Domain Name and Registrar
The disputed domain name <conforama-catalogue.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2012. On May 29, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the disputed domain name. On May 30, 2012, GoDaddy.com, LLC 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 May 31, 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 June 1, 2012. The Center verified that 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 June 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2012. Apart from the email communications from the Respondent regarding transfer of the domain name, further discussed below, no official Response was filed with the Center.
The Center appointed William A. van Caenegem as the sole panelist in this matter on July 26, 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.
The Respondent in this matter, in a nameless email of May 31, 2012 requested that the Center transfer the disputed domain name to the Complainant. On the same day the Center in its response advised the Respondent to contact the Complainant for possible settlement negotiations. On June 1, 2012 the Center emailed the Complainant, referring to the Respondent’s email in attachment and requesting the Complainant to confirm whether the proceedings were to be suspended for the parties to reach a settlement or whether the Center should proceed. On June 5, 2012 in a further nameless email to the Center, copied to the Complainant, the Respondent again asked whether the disputed domain name could be transferred immediately to the Complainant. On June 6, 2012 the Center reiterated that the Respondent should contact the Complainant directly for possible settlement negotiations. On June 6, 2012 the Complainant in an email to the Center advised that it had proposed to the Respondent to settle the matter amicably subject to the costs incurred by the Complainant in the proceeding being refunded by the Respondent. The Complainant indicated that since the Respondent had not responded to this offer, the Complainant wished to pursue the present proceedings. The Center proceeded with the case accordingly. The Respondent then sent a further email to the Center on June 6, 2012 indicating it did not have any money to be able to pay for anything and also that it definitely wished to transfer the disputed domain name.
4. Factual Background
The Complainant has a number of trade mark registrations for the mark CONFORAMA, among them the French registration No 1513512 of April 19, 1979 in relation to goods and services in International Classes 1 to 42; International trade mark registration No 448422 of October 1979 in relation to goods in International Classes 2, 6, 7, 8, 11, 17, 20, 21 and 27; and a number of French, Community and international trade mark registrations for CONFORAMA plus Device.
The disputed domain name was registered on December 19, 2011.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name consists of its trademark CONFORAMA and the addition “catalogue”, with the standard suffix. The Complainant has a number of trade mark registrations for CONFORAMA, and CONFORAMA plus Device. The disputed domain name contains the Complainant’s trademark in its entirety, which forms its most distinctive part. According to the Complainant the addition “catalogue” is a descriptive term in the French language and specifies what is to be found on an associated website. The Complainant contends that the addition does not serve to distinguish the disputed domain name from the Complainant as it has a long tradition of distributing catalogues of its products. The term therefore increases the confusing similarity with the Complainant’s trademark and therefore the Complainant contends that the Respondent made deliberate use of the term to confuse consumers.
The Complainant asserts that the trademark CONFORAMA is well-known and that given its fame, the disputed domain name is bound to create confusion as to its origin and affiliation. Moreover, the Complainant owns a number of domain names such as <conforama.fr> and <conforama.com>.
The Complainant asserts that it has neither authorized nor acquiesced in the use of the trademark CONFORAMA by the Respondent, nor licensed, contracted or otherwise permitted its incorporation in the disputed domain name. Nor has it authorized the use of the corresponding email address […]@domainsbyproxy.com which may cause confusion amongst Internet users who presume this is the Complainant’s official email address, according to the Complaint.
The Complainant also asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The website to which the disputed domain name resolves lists rival third party websites, which does not constitute a legitimate bona fide use of the disputed domain name under the Policy and does not confer legitimate interests. Further the Complainant asserts that the Respondent registered the disputed domain name with the intention of selling it, as it offered it for sale on the website to which the disputed domain name resolves, and can thus not claim legitimate noncommercial fair use.
The Complainant contends that the disputed domain name was registered and used in bad faith. It resolves to a parking website with links to third party furniture businesses. The website is in French and uses French terms and expressions relating to the furniture business. The Complainant contends that use of a domain name to point to websites that offer sponsored links to other websites with competing products, and is directed to French users being in the French language, establishes bad faith on the part of the Respondent.
Further, the Complainant contends that the Respondent must have been aware of the Complainant’s mark CONFORAMA as it is a well-known mark, and inclusion of well-known marks is in itself evidence of bad faith. The Respondent has also chosen to hide its identity by anonimising itself and by using an email address incorporating the Complainant’s trademark, further evidencing bad faith. The Respondent has also offered the disputed domain name for sale on the website to which it resolves. The Respondent “LeaseDomains” has also had adverse UDRP decisions against it in the past, according to the Complainant.
The Complainant contends that all these factors amount to evidence of bad faith on the part of the Respondent.
The Respondent did not file a response. The Respondent did indicate in a number of emails to the Center that it wished to transfer the disputed domain name to the Complainant. However, the Respondent did not accede to the Complainant’s request for reimbursement of the expenses incurred in these proceedings. Therefore the Complainant chose to continue the proceedings and no settlement or amicable transfer was achieved.
Given the positions taken by the parties, the Panel therefore considers it appropriate to render a decision in this matter rather than to suggest suspension for the sake of pursuing settlement further.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s trademark CONFORAMA. However, the disputed domain name wholly incorporates the Complainant’s trademark CONFORAMA as its initial and most prominent and distinctive part. The addition of “catalogue”, a descriptive word with clear association to the Complainant’s business of furniture supply does not distinguish the disputed domain name from the Complainant’s mark. To the contrary, through clear separation by way of a dash, and because the term “catalogue” is associated with the furniture business which is generally and in the particular case of the Complainant conducted by way of regular delivery of catalogues, the association with the Complainant and its furniture business is further reinforced.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark CONFORAMA.
B. Rights or Legitimate Interests
The Complainant’s trademark CONFORAMA is distinctive and has an extensive reputation in relation to furniture retailing in France. The Complainant did not license or authorize the Respondent to use the trademark in any form, or to incorporate it in the disputed domain name. The Respondent does not conduct any business under the mark or business name Conforama, and is not known under that mark.
Further, the website to which the disputed domain name resolves is a parking site containing a list of hyperlinks to rival product providers. This practice does not give rise to rights or legitimate interests in the Respondent, as it relies on a deceptive connotation of association with the Complainant’s business to direct consumers to rival websites for the sake of commercial gain by way of click-through licenses or the like. Registration and use of the disputed domain name in this manner are an illegitimate commercial means of taking advantage of the reputation of the Complainant without any justification.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name contains the Complainant’s trademark CONFORAMA in its entirety. The relevant trademark is distinctive and has an established reputation in the furniture retailing trade in France. Further, the Respondent has incorporated the term “catalogue”, a common method of promoting furniture sales, and listed links on the website to which the disputed domain name resolves to rival furniture businesses. These facts indicate that the Respondent must have been well aware of the Complainant’s rights in the trademark CONFORAMA in relation to the furniture trade at the time of registration. Therefore the Panel is persuaded that the disputed domain name was registered in bad faith.
Further, the website to which the disputed domain name resolves contained an offer to sell it to third parties, as well as the already referenced links to rival furniture supplier websites. This indicates that the Respondent intended to turn the reputation of the Complainant’s trademark to its own financial advantage, without having any right or entitlement to do so. This indicates bad faith on the part of the Respondent, who as concluded above must, on the facts, have been well aware of the Complainant’s reputation for furniture retailing.
Therefore the Panel holds that the Respondent has registered and used 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 <conforama-catalogue.com> be transferred to the Complainant.
William A van Caenegem
Date: July 24, 2012