WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sferis v. Sebastian Nowak c/o Sferis.xxx
Case No. D2012-1468
1. The Parties
The Complainant is Sferis of Paris, France, represented by SCP Clairmont, France.
The Respondent is Sebastian Nowak of Zielona Gora, Poland c/o Sferis.xxx of Vancouver, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sferis.xxx> is registered with Domain.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2012. On July 19, 2012, the Center transmitted by email to Domain.com, LLC a request for registrar verification in connection with the disputed domain name. On July 19, 2012, Domain.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 July 20, 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 July 23, 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 July 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2012. The Response was filed with the Center on July 30, 2012.
The Center appointed Sir Ian Barker as the sole panelist in this matter on August 1, 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 a subsidiary of Société Nationale des Chemins de Fer Français, the French state railway company.
The Complainant is the owner of a European Community Trade Mark for SFERIS used in connection with railway works. The trademark application was filed on September 26, 2011 and registered on March 16, 2012. The Complainant has owned since 2002 the domain name <sferis.com> which is used in connection with its business. It also owns the domain names <sferis.fr> (since 2006) and <sferis.eu> (since 2011). The Complainant’s Community Trade Mark application was advertised on December 8, 2011.
The Respondent’s website, accessed by the disputed domain name, leads to a parking page with links to advertisers to websites with sex topics. Examples of the links are to “photossexy”, “photosgay”, “femmes/nue”, “recontres libertines”.
The disputed domain name was registered on January 19, 2012. The Complainant gave the Respondent no authority to reflect its trademark in the disputed domain name.
5. Parties’ Contentions
The disputed domain name is identical to the Complainant’s registered trademark.
The Respondent has no rights or legitimate interests such as would allow him to use the disputed domain name.
The disputed domain name was registered and is being used in bad faith. Sponsored links to “adult” websites unrelated to the Complainant’s products and services seriously tarnish the Complainant’s mark. See Hartsfield Area Transportation Management Association, Inc. v. Max Davidovitch, WIPO Case No. D2006-0743.
Use of the disputed domain name to direct Internet users to adult websites through a parking page is evidence of bad faith use. Several UDRP decisions were cited in support of this submission. Many of the decisions are noted in Compagnie Gervais Danone v. Domain Name Proxy, LLC/Navigation Catalyst Systems, Inc., WIPO Case No. D2010-1444.
The Respondent is making commercial gain through the “click-through” system and is profiting from the confusion of Internet users who think that the Respondent’s website has a connection with the Complainant and its railway-related products.
The disputed domain name leads to a parking page in the French language which shows that the Respondent is targeting the French public. The Respondent comes within paragraphs 4(b)(ii), (iii) and (iv) of the Policy which are stated situations in which bad faith can be inferred.
The Respondent did not file a formal Response addressing the Complainant’s intentions. Rather, he sent emails to the Center. His contentions, as best as can be discerned from those emails, can be summarized thus:
(a) As at the date of the filing by the Complainant of its trademark application (September 26, 2011), there was still a chance to block this trademark from future “.xxx” domain name registration. The “sunrise” period for doing so was September 7 to October 28, 2011.
(b) The Respondent registered the disputed domain name on January 19, 2012, unaware of the Complainant’s trademark application which was not granted until March 16, 2012.
(c) The Respondent did not feel obligated to check on other domain names including the word “sferis”. He had no ability to search country registrations of domain names.
(d) The Respondent paid USD 187.96 to register the disputed domain name and to sign up to a privacy service.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(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 the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s registered trademark. Paragraph 4(a)(i) of the Policy is established.
B. Rights or Legitimate Interests
The Respondent’s rather rudimentary submissions did not establish any of the situations envisaged by paragraph 4(c) of the Policy which would have provided him with a defense, nor any other situations that would give rise to rights or legitimate interests in the disputed domain name.
The Complainant gave the Respondent no permission to reflect its trademark in the disputed domain name. The Panel finds that the Complainant has therefore established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. In the absence of any otherwise legitimate circumstances for the Respondent’s registration of the disputed domain name, inter alia under paragraph 4(c) of the Policy, that fact is sufficient to satisfy Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is able to infer both bad faith registration and bad faith use for the following reasons.
(a) The Respondent did not claim ignorance of the Complainant at the time he registered the disputed domain name. Rather, he said that because the trademark registration application had been filed during the “sunrise” period for .xxx domain names, the Complainant could have objected to the .xxx domain name registration. The Panel finds that the fact that the Complainant did not register its SFERIS trademark as a .xxx domain name during the sunrise period does not give the Respondent a valid reason to register the disputed domain name, which is identical to the Complainant’s trademark; to hold otherwise would put trademark owners in an impractical situation to say the least. Moreover, the Respondent did not register the disputed domain name during the “Landrush” period from November 8 to 25, 2011, which applied to the “sponsored community” of the adult entertainment industry.
(b) In the “General Availability Phase” of the “Sunrise” arrangements those outside the “Sponsored Community” (such as the Respondent) were entitled to register non-resolving .xxx domain names corresponding to their personal names or other words in which they had a legitimate interest, including trademarks. The Respondent did not fit within this category.
(c) The Complainant’s Community Trade Mark application had been advertised before the disputed domain name was registered.
(d) The UDRP decisions referred to by the Complainant show that association of a trademark with a “click-through” pornographic website tarnishes the trademark.
(e) Internet users could be confused into thinking that the Respondent’s website had some application with or support from the Complainant. Paragraph 4(b)(iv) of the Policy is very much in point.
The Panel considers that Paragraph 4(a)(iii) of the Policy has been established.
For all 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 <sferis.xxx> be transferred to the Complainant.
Sir Ian Barker
Date: August 15, 2012