WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OVH SAS v. Charal Investment Tust, R.D. Larach
Case No. D2012-1552
1. The Parties
The Complainant is OVH SAS of Roubaix, France, internally represented.
The Respondent is Charal Investment Tust, R.D. Larach of Newton, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <oovh.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2012. On August 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2012, the Registrar 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 August 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2012. The Center notified the Respondent’s Default on September 7, 2012. On the same date, the Respondent transmitted one email communication to the Center and another email communication to the Complainant. The Complainant replied on September 8, 2012 and the Center acknowledged receipt of the communications on September 10, 2012.
The Center appointed David Perkins as the sole panelist in this matter on October 4, 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. It has been necessary to extend the period for issuing a decision in this case to the date indicated under paragraph 7 below.
4. Factual Background
4.1. The Complainant
4.1.1 The Complainant was created in 1999. Its name OVH is an acronym for “On Vous Héberge”. In English this translates as “We Host You”.
4.1.2 The Complainant, which is headquartered in France, has subsidiary companies in 15 other countries worldwide, one of which is in the United States of America which is where the Respondent is located.
4.1.3 The Complainant provides webhosting services through dedicated servers, private servers, domain registrations and email services. It business is described more fully at its French language website at “www.ovh.com”.
The Complainant claims to be the biggest webhosting provider in France and the European Union, and the fourth biggest worldwide. The Complainant states that its hosts over 18 million websites, holds 2.5 million domain names and operates 120,000 servers.
The OVH registered trademarks
4.1.4 The Complaint exhibits registrations for the mark OVH in the European Union and some 15 other countries. The registrations are principally in International Classes 9, 35-36, 38-39 and 41-42. The earliest registration is in France (Classes 35, 38 and 41) which dates from August 4, 1999. The Community Trade Mark was applied for on September 27, 2006 and was registered on September 13, 2007. All the other registrations post date the CTM and were registered variously between October 2008 and July 2011.
The <ovh.com> domain name
4.1.5 The Complainant is the registrant of the <ovh.com> domain name, which was created on February 7, 1997.
The notoriety of the OVH name and mark
4.1.6 The Complaint exhibits a document from Netcraft dated 2012 entitled “Hosting Provider Switching” which identifies the Complainant as the fourth largest in the world after AmeriNOC: Softlayers Inc and GoDaddy Inc; see, in this respect paragraph 4.1.3. above.
4.1.7 The Complaint also exhibits a number of journal articles relating to the Complainant. These are dated between July 21, 2011 and November 16, 2011 from the publications, IT Expresso: L’Express: Challenge: PCINpact: Les Echoes and Le Journal du Net. Those publications all focus on the Internet market. The item from Challenge dated September 9, 2011 concludes in the following terms:
“Their (the founders of the Complainant) goal is now to conquer North America.”
4.1.8 The Complaint exhibits an extract from GOOGLE to illustrate that when OVH is typed into a search engine the Complainant company is immediately identified with links to its websites.
4.2 The Respondent
4.2.1 The Respondent is the registrant of the disputed domain name which was created on July 4, 2006.
4.2.2 As noted in paragraph 3 above, the Respondent replied to the Complaint on September 7, 2012. three days after the due date for his Response stating that it was aware of the due date of Response but had forgotten due to personal circumstances and further requesting the opportunity to submit a Response. The Center acknowledged receipt of the Respondent’s communication on September 10, 2012 informing it that if it chose to submit a late Response, the late response would be bought to the Panel’s attention and that it would be in the Panel’s sole discretion whether to consider it in the rendering of its decision. Nothing further has, however, been received from him by the Center.
4.2.3 Nevertheless, exhibited to the Complaint are two emails from the Respondent dated June 22, 2012 and July 2, 2012. The first is responsive to a letter forwarded by the Registrar to the Respondent from the Complainant dated June 14, 2012. The Respondent refers to it as a “C&D letter” (Cease & Desist letter). That letter is not exhibited to the Complaint. In the Respondent’s letter of June 22, 2012 he states the following:
- The disputed domain name was purchased from the Registrar by the Respondent on August 8, 2008.
- The reason for the purchase was that the Respondent and his partner were going to develop a health website named “Our Ovo-Vegetarian Home” directed to ovo-vegetarians, who eat eggs.
- However, because of other commitments, no website was developed and, consequently, the disputed domain name was “parked” with Namedrive.
- The Respondent claimed that he and his partner own “… many health-related domains, especially ones like vegan, vegetarian, weight loss, etc.”
- The disputed domain name
“… once being parked, began to attract FREE GAME DOWNLOAD links, ads, impressions and we decided to leave it like that. It has been parked the same way and with no keyword and featuring almost exclusively free download ads for a long time. And if you are curious is making ZERO, as in $0.00 as far as the parking company records go. We own many domains and do not recall if it has been parked at other companies in the past. … .”
- The disputed domain name has been for sale for the greater part of the time since the Respondent purchased it in August 2008.
4.2.4 By the email dated July 2, 2012 the Respondent stated that he and his partners and associates were prepared to sell the disputed domain name to the Complainant for US $1,199.00. The letter also asserted that the domain name is valuable,
“… because it has three superb letters (O, H and V) plus a double O at the start makes it pronounceable and highly valuable. The acronym represents endless company names, person’s names, phrases etc.”
5. Parties’ Contentions
Identical or Confusingly Similar
5.1.1 The Complainant’s case is that the disputed domain name incorporates their registered OVH trademark in its entirety. The addition of an additional letter “o” as a prefix is, the Complainant says, a deliberate misspelling typical of cybersquatters, citing the decision in National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,
WIPO Case No. D2002-1011. In that case the Complainant’s trademark was “Minor League Baseball” and the disputed domain name was <minorleaugebaseball.com>, the letter “u” being placed before rather than after the letter “g” in “league”.
5.1.2 The Complainant also relies on decisions under the Policy which have held that incorporation of a trademark into the disputed domain name amounts to confusing similarity, citing Prada S.A. v. Cybershop Co., Ltd. WIPO Case No. D2002-0662 and Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. The former involved the trademark “Wal-Mart” and the domain name <wal-martsucks.com> and the latter the trademark “Britannia Building Society” and the domain name <britanniabuildingsociety.org>.
Rights or Legitimate Interests
5.1.3 The Complainant’s case is that its first registration of OVH in 1999 predates creation of the disputed domain name on July 4, 2006 and its acquisition by the Respondent on August 8, 2008. The Complainant says that it has neither licensed nor otherwise authorised use by the Respondent of the OVH trademark. Nor, the Complaint states, is there any evidence that the Respondent has been commonly known by the disputed domain name: Policy paragraph 4(c)(ii).
5.1.4 The Complainant also asserts that there is no evidence of bona fide use by the Respondent of the disputed domain name before being put on notice of this dispute: Policy paragraph 4(c)(i). Nor, the Complainant says, has the Respondent provided any evidence about his proposal to use the disputed domain name for health website: see, paragraph 4.2.3. above.
5.1.5 Finally, the Complainant asserts that the Respondent has been making commercial use of the disputed domain name contrary to paragraph 4(c)(iii) of the Policy. In that respect, the Complainant refers to both the Respondent’s offer to sell the disputed domain name and also to its use to derive pay-per-click revenue from the website to which it resolves “http://oovh.com”. Exhibited to the Complainant are screenshots from that website, which illustrate advertisements for webhosting services competitive with those offered by the Complainant. The Complaint cites Compagnie Générale des Etablissements Michelin v. Transure Enterprise Ltd, Host Master / Above.com Domain Privacy, WIPO Case No. D2012-0045 in support of its contention that such use of the disputed domain name is not a legitimate use. In that case the Complainant’s trademark was the well-known MICHELIN mark and the disputed domain name was <guidemicheline.com>, which resolved to a pay-per-click website with links to tires, hotel and restaurant businesses and maps, all being products and services of the Complainant.
Registered and Used in Bad Faith
5.1.6 As explained in paragraphs 4.1.6 above, the Complainant’s case is that, in its particular market of providing webhosting and related services, OVH is a very well known mark. From the screenshots of the website to which the disputed domain name resolves, it is - as noted in paragraph 5.1.5 above - apparent that it contains links to services which compete with those webhosting and related services. Accordingly, the Complainant concludes that the Respondent’s statement in the email of June 22, 2012 that he had no knowledge of its business under the OVH name and mark prior to receiving the cease & desist letter of June 14, 2012 is highly improbable.
5.1.7 Further, given the notoriety of OVH in its market, the Complainant asserts that it is reasonable to say that, when the Respondent acquired the disputed domain name in August 2008, it should have been aware of the OVH mark. In that respect, the Complainant refers to the representation and warranty made by the Respondent in paragraph 2 of the Policy that registration of the disputed domain name would not infringe upon or otherwise violate the rights of any third party and that the Respondent would not knowingly used that domain name in violation of any applicable laws or regulations. In support of that contention, the Complainant cites Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517 and City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643. In the former the trademark was CAESARS PALACE and the disputed domain name <caesarspalacepoker.com> which resolved to a portal providing links to gaming and poker websites. In the latter the trademark was MUMMY’S GOLD and the disputed domain name <mummygold.com>. The Complainant operated an online gaming business under the name “Mummy’s Gold Casino” which received over 500,000 visits per month and the disputed domain name resolved to a website promoting the Complainant’s Internet gaming site. The Panel in that case found that bad faith under paragraph 4(b)(iv) of the Policy could arise from bad faith use even though the disputed domain name might have been registered or acquired in good faith.
5.1.8 Consequently, the Complainant asserts that the circumstance in this case - namely, the parking of the disputed domain name at a website with links to businesses offering services competing with those of the Complainant - demonstrates a bad faith use under paragraph 4(b)(iv) of the Policy.
5.1.9 The Complainant also asserts bad faith under paragraph 4(b)(i) of the Policy, relying upon the Respondent’s offer to sell the disputed domain name at a price in excess of its out-of-pocket costs directly related to that domain name: see, paragraph 4.2.4 above. The Complainant cites in this respect the decisions in Merck KGaA v. Sunmeet Jolly, WIPO Case No. D2004-0195 and Credit Agricole S.A. v. Wang Rongxi, WIPO Case No. D2012-0258. In the former, the Complainant’s mark was MERCK, the disputed domain name <merckindia.com> and the Respondent had offered to sell that name for US D4,900.00 or to license it to the Complainant for a monthly fee. Held, that this demonstrated bad faith under paragraph 4(b)(i) of the Policy. In the latter the Complainant’s trademark was CREDIT AGRICOLE, the disputed domain name <creditagricole.mobi> and the respondent had offered to sell that name for US D5,000.00. Held, that this also demonstrated an indication of bad faith.
5.1.10 The Complainant’s case is that the bad faith requirement of paragraph 4(a)(iv) of the Policy is met by reason of the facts that (1) the disputed domain name does not consist of a single or combination of descriptive or generic word(s); (2) that domain name was registered in 2006 after first registration of the OVH trademark in 1999; (3) that the misspelling of the OVH with an additional letter “o” as a prefix is indicative of the practice of typosquatting; and (4) that the disputed domain name resolves to a website containing links to businesses competing with that of the Complainant. As to that, the Complainant says that the Respondent cannot rely on its lack of control over the links appearing on the website, since decisions under the Policy have held that a domain name registrant will normally be deemed responsible for content appearing on a parking website. In that connection, the Complainant cites Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; and Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
5.2.1 As noted in paragraph 4.2.3 above, the Respondent’s case is principally set out in its email of June 22, 2012 and relies upon rights and legitimate interests in the disputed domain name and its good faith registration and use of that domain name. First, the Respondent says that it acquired the disputed domain name in August 2008 in good faith. It had never heard of the Complainant or the OVH mark before receipt of the cease & desist letter of June 14, 2012. Furthermore, its acquisition took place before the Complainant’s OVH trademark was registered.
5.2.2 Second, before being put on notice of this dispute the Respondent had a bona fide intention to use the disputed domain name for a vegetarian website; paragraph 4.2.3 above. Hence, the Respondent has rights and legitimate interests in the disputed domain name.
5.2.3 Third, having failed to implement that website, the disputed domain name has been parked at a website attracting “FREE GAME DOWNLOAD links, ads, impressions” and has generated no revenue from such links; paragraph 4.2.3 above. Hence, this is a legitimate and bona fide use of the disputed domain name.
5.2.4 Fourth, as a further sign of its good faith the Respondent offered to sell the disputed domain name to the Complainant for a reasonable amount and even indicated that he would consider a counter-offer. But, the Complainant failed to respond to that offer; paragraph 4.2.4 above.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent’s 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 domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the disputed domain name.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 The Complainant has established rights in the OVH registered trademark the earliest bring August 1999. The Complainant has further established to the satisfaction of the Panel that in the context of webhosting it is and has for some time been well known under and by reference to the name and mark OVH.
6.6 The Complainant’s OVH mark is incorporated entirely within the disputed domain name. The difference between the two resides in the addition in the disputed dome name of a second letter “o” as a prefix before the OVH trademark. In the Panel’s opinion, this is not, as the Complainant asserts, an obvious misspelling of the OVH trademark and, consequently, does not amount to typosquatting.
6.7 However, although there may be a phonetic difference between the trademark and the domain name, visually the overall impression is, in the Panel’s view, very similar and the additional letter “o” prefix to the disputed domain name does not distinguish it from the OVH trademark. Consequently, the Panel’s view is that the disputed domain name is confusingly similar to the Complainant’s OVH trademark and the Complaint meets the requirements of paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interest
6.8 There is no evidence to substantiate the Respondent’s case - set out in the email of June 22, 2012 - that he and his partner acquired the disputed domain name in August 2008 with a view to using it for a vegetarian website as explained in paragraph 4.2.3 above. Furthermore, despite the Respondent’s statement in that email that he would provide particulars of his other health-related domain names to WIPO as evidence of the intention to use the disputed domain name for that purpose, none have been provided. Consequently, the Panel concludes that the respondent has failed to demonstrate the evidence required by paragraph 4(c)(i) of the Policy.
6.9 As to paragraph 4(c)(iii) of the Policy, despite the fact that the website to which the disputed domain name resolves does link to “free game downloads” - as stated in the Respondent’s June 22, 2012 email - it also contains numerous links to other products and services. The screenshots from that website exhibited to the Complaint link, for example, to chat rooms; advertisements for office premises; online dating; archiving photographs; sports coaching services; tennis holidays for children in the 9-7 year age range; website development services; sale of perfumes; sale of Italian designed furniture; multitrack recording and mixing software for audio production; video production, etc. The website also contains numerous links to webhosting services which, as explained in paragraph 4.1.3 above, are the core business of the Complainant in which the Complainant is the fourth largest provider worldwide; see, also paragraph 4.1.6 above.
6.10 In this Panel’s view. it is not sufficient for the Respondent to say that he has no control over the use to which the disputed domain name has been and, continues to be put once that name is parked for the purpose of generating click-through revenue. The Complainant’s case in this respect - summarised in paragraph 5.1.5 above - is, in the Panel’s opinion, correct and, consequently, the Respondent fails to demonstrate rights or legitimate interests under paragraph 4(c)(iii) of the policy.
6.11 Paragraph 4(c)(ii) of the Policy does not arise for consideration.
6.12 Consequently, the Complaint meets the requirement of paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
6.13 The Complainant’s case under paragraph 4(b)(i) of the Policy is rejected. There is no evidence that the disputed domain name was either originally registered or subsequently (2008) acquired by the Respondent primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
6.14 There is no evidence of the price for which the disputed domain name was acquired by the Respondent for comparison with its offer to sell that domain name in the July 2, 2012 email; paragraph 4.2.4. above. However, in any event that offer appears to the Panel to have been a bona fide attempt by the Respondent to resolve the present dispute.
6.15 However, as already found, the Complainant has had rights in the registered trademark OVH since 1999 (in France), followed by registration of its CTM in September 2007 (see, paragraph 4.1.4 above) and in its particular markets is very well-known under that name and mark. The Respondent does not say it expressly when the disputed domain name was parked as a pay-per-click website, except that it has been advertised for sale on the parking page “… for most of the past four years …. .”. In other words, it appears from shortly after August 2008 when it was acquired by the Respondent. The Respondent cannot, however, quite simply, deny responsibility for the use to which the disputed domain name has been put and as, according to the Respondent, he is the owner of “… many health-related domains …” and we own many domains …” [email of June 22, 2012] he must be presumed to be well aware of the representation made under paragraph 2 of the Policy. As that paragraph concludes:
“It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
6.16 Here, the Respondent’s case is that the disputed domain name with the additional letter “o” is highly distinctive and valuable [Respondent’s July 2, 2012 email], will not be confused by Internet users searching for the Complainant under its OVH name and mark and is being used in a legitimate and bona fide manner. But where, as in this case, the Panel decides that the disputed domain name is confusingly similar to the Complainant’s OVH mark, that the Respondent has failed to demonstrate rights or legitimate interests in that domain name, continued use of the domain name as described above cannot constitute indicia of good faith.
6.17 Despite the Respondent’s protestations in its emails and its statement of intent to submit a Response to this Complaint - Respondent’s email to the Center of September 7, 2012 - and the Center’s reply of September 20, 2012 no Response has been filed. In that reply the Center stated:
“If you wish to make a late Response to the Complaint, the Center will bring the Response to the Panel’s attention (when appointed), and it will be at the sole discretion of the Pale to consider it.”
6.18 In all the circumstances, the Panel concludes that there is evidence of bad faith use under paragraph 4(b)(iv) of the Policy and that, accordingly, the Complaint meets the requirement of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <oovh.com> be transferred to the Complainant.
Dated: November 14, 2012