WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
S.A. Cottet v. Y.G. Cho
Case No. D2012-1244
1. The Parties
The Complainant is S.A. Cottet of Barcelona, Spain, represented by Curell Suñol, S.L.P., Spain.
The Respondent is Y.G. Cho of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <cottet.com> is registered with Name Nelly Corporation.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2012. On June 19, 2012, the Center transmitted by email to Name Nelly Corporation a request for registrar verification in connection with the disputed domain name. On June 20, 2012, Name Nelly Corporation 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 June 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2012.
The Center appointed Joan Clark as the sole panelist in this matter on July 25, 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 the owner of several registrations for the trademark COTTET including Spanish registration No. 0749623 filed on April 17, 1974 covering retail services in shops and through the world-wide web.
The Respondent is the registrant of the disputed domain name <cottet.com> which was created on February 23, 2012, and is scheduled to expire on February 23, 2013.
5. Parties’ Contentions
The Complainant maintains that the disputed domain name <cottet.com> is identical or confusingly similar to the Complainant’s registered trademarks. The Complainant states it is a well-known company in Spain, acting in the field of optical goods and services and has been in the business for more than 100 years. It asserts it is the biggest optician’s shop in Europe with 2,000 square meters. The Complainant also states it is the owner of several COTTET trademarks, including Spanish trademark No. 0749623 filed on April 17, 1974 for “retail services in shops and through the world-wide web”. The Complainant further asserts that the trademark COTTET is well-known in Spain and attaches to the Complaint press articles and acknowledgements from public authorities and universities in support.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name <cottet.com>, is not affiliated with the Complainant, and has not been licensed or otherwise permitted to use the Complainant’s trademarks or to apply for any domain name incorporating the trademark COTTET. Furthermore to the best of the Complainant’s knowledge the Respondent is not known under that name.
The Complainant maintains that the disputed domain name <cottet.com> was registered and is being used in bad faith for the following reasons:
(a) The disputed domain name is being offered for sale, which indicates it was registered for sale for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
(b) The website for the disputed domain name offers sponsored link advertising for which the Respondent is most probably receiving financial consideration. The Respondent is thus using the disputed domain name to attract, for commercial gain, Internet users who are attempting to address the Complainant’s website.
(c) The disputed domain name was registered to prevent the Complainant from reflecting its trademark and company name in a corresponding domain name.
(d) The Respondent has engaged in a pattern of registering domain names with the aim of preventing trademark owners from reflecting their trademarks in a corresponding domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to be successful with respect to the disputed domain name, the Complainant has the burden of proving that the following three elements are present in the Complaint, namely:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of the disputed domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the trademark COTTET, as the generic Top-Level Domain (gTLD) suffix “.com” may not be considered in determining identity or confusing similarity under the Policy. The Panel is satisfied that the Complainant is the owner of the trademark COTTET, in which it has rights. Accordingly the first element to be proved in order for the Complaint to succeed has been established.
B. Rights or Legitimate Interests
As there has been no Response from the Respondent, there is nothing in the record to contradict the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In particular the Complainant asserts that it has not licensed or authorized the Respondent to use the Complainant’s trademarks and that the Respondent is not known under the name “Cottet.” The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the second element to be proved in order for the Complaint to succeed has been established.
C. Registered and Used in Bad Faith
There being no Response, there is no explanation from the Respondent for choosing as his domain name an unusual word which is identical to the Complainant’s trademark, registered some 38 years earlier and stated by the Complainant to be well-known in Spain. In the printouts provided by the Complainant the Respondent states he is the owner of over 32 domain names and offers for sale various domain names including the disputed domain name. Even if the Complainant’s trademarks were not well-known in the Respondent’s country, it was his responsibility under paragraph 2 of the Policy, in registering a domain name, “to determine whether (your) domain name registration infringes or violates someone else’s rights”. Instead of heeding this Policy admonition, the Respondent, according to documents provided by the Complainant, appears to have adopted the contrary policy of deliberately choosing and registering domain names such as <vidatox.com>, <solchem.com> and <baukom.com> in spite of the previously registered trademarks VIDATOX, SOLCHEM, and BAUKOM. This would appear to establish a pattern of conduct of registering domain names utilizing the trademarks of others with the result of preventing the owners of such trademarks from reflecting their marks in corresponding domain names under paragraph (4)(b)(ii) of the Policy. Further, the Panel finds that the disputed domain name was registered and has been used with knowledge of the Complainant’s trademark, either for the purpose of attracting Internet users who were familiar with the Complainant or its trademark by creating a likelihood of confusion with the Complainant’s mark, or for the purpose of selling the disputed domain name, in either case for financial gain.
Accordingly, the Panel concludes that the disputed domain name was registered and has been used in bad faith, and therefore the third element to be proved in order for the Complaint to succeed has been established.
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 <cottet.com> be transferred to the Complainant.
Dated: August 8, 2012