WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ÏD Group v. Nomi Nee / Aero1 Ltd, No Lo / Aerol Ltd
Case No. D2012-2469
1. The Parties
Complainant is ÏD Group of Roubaix, France, represented by Cabinet Degret, France.
Respondent is Nomi Nee of Toronto, Ontario, Canada / Aero1 Ltd, No Lo / Aerol Ltd of Singapore.
2. The Domain Name and Registrar
The disputed domain name <jaccadi.com> is registered with Spot Domain LLC dba Domainsite.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2012. On December 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date of registrar verification, the Registrar 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. On December 20, 2012, the Center sent an email communication for clarification to the Registrar, to which the Registrar replied on December 22, 2012.
The Center sent an email communication to Complainant on December 28, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 31, 2012.
On January 4, 2013, Complainant sent an email communication to the Center. On the same date, Respondent sent an email communication to the Center, and the Center acknowledged receipt of said email on January 7, 2013, inviting the parties to consider a possible settlement. Complainant replied by email on January 8, 2013 that it wished to continue with the administrative proceedings, and on the same date Respondent sent two email communications to the Center.
On January 9, 2013, the Center informed the parties about the continuation of the proceedings, and on the same date Respondent sent an email communication to the Center.
The Center verified that Complaint together with the Amendment to 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 Respondent of the Complaint, and the proceedings commenced on January 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2013. Respondent did not file any formal response, therefore the Center informed the parties on January 31, 2013 that it would proceed to appoint the Panel.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 11, 2013. 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
Complainant is a joint stock company organized under the laws of France with legal domicile in Roubaix, France. Complainant is active in the children fashion business and markets its brands – along with the JACADI brand - through an international network of more than 1100 stores.
Complainant has submitted evidence that it is the registered owner of numerous trademarks worldwide relating to the designation “Jacadi”, including the following:
- Word mark JACADI, French Patent and Trademark Office (INPI), Registration Number: 1642676, Registration Date: February 7, 1991; Status: Active;
- Word/design mark JACADI, Intellectual Property Office of Singapore (IPOS), Registration Number: T8804309J, Publication of Acceptance Date: November 30, 1990; Status: Active.
Complainant, furthermore, evidenced to own various domain names relating to the JACADI brand, inter alia, <jacadi.fr>.
The disputed domain name <jaccadi.com> was created on September 10, 2004; it resolves to a website at “www.jaccadi.com”, which is a typical pay-per-click (“PPC”) site with, inter alia, hyperlinks to commercially active websites of numerous third parties.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant asserts that the JACADI brand has been created in France already at the end of the 1970’s and has been used in relation with high quality children clothes, accessories, furniture, toys, perfumes, fabrics and children care items ever since. Complainant claims that in France the JACADI trademark enjoys a degree of knowledge of more than 80% among the general public and 93% among mothers of children under the age of 15. Complainant concludes that, as a consequence of its very significant marketing and promotional efforts, Complainant has meanwhile developed considerable as well as valuable goodwill and reputation with respect to its JACADI trademark, which thus has reached a well-known and famous status worldwide.
Complainant suggests that the disputed domain name is confusingly similar to Complainant’s JACADI trademark, because (1) the disputed domain name consists of a reproduction of the JACADI trademark with a typo mistake by doubling the letter “c”, (2) the words “Jacadi” and “Jaccadi” are quasi identical (visually and orally) and, finally, (3) the adjunction of the “.com” suffix is of no significance and must not be taken into account.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name, because (1) Respondent has never been and is not currently commonly known by the disputed domain name, (2) Respondent did not register the disputed domain name as a trademark, (3) “Jacadi” is neither a common noun nor a common name, but a pure coined word, and (4) Respondent itself tacitly admits having no rights or legitimate interests in the disputed domain name since Respondent neither answered to Complainant’s Cease and Desist Letter nor did Respondent provide reliable WhoIs information for the disputed domain name.
Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith since (1) given the fame of the JACADI trademark, Respondent cannot have ignored its existence at the time of registration of the disputed domain name, (2) the commercial hyperlinks on the PPC website at “www.jaccadi.com” all relate to Complainant’s activities and (3) Respondent apparently never used the disputed domain name in connection with any bona fide offering of goods or services nor had it made preparations to do so.
Respondent did not file any formal Response to the Complaint, but sent to the Center a number of emails (on January 4, 8 and 9, 2013) in which Respondent stated to be a team of various investors and businessmen owning more than 20,000 domain names and to have registered the disputed domain name as part of a bulk registration together with thousands of other domain names “with no detailed analysis”, including domain names which feature typographical errors.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That 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.
For reasons of clarification as to Respondent’s proper identity, the Panel has noted that by the time of the beginning of this UDRP proceedings, a formal change of the registrant of the disputed domain name had taken place, namely from “Nomi Nee” of Toronto, Canada (as included in Complainant’s original Complaint filed on December 17, 2012) to “Aero1 Ltd, No Lo / Aerol Ltd” of Singapore, Singapore (as confirmed by the Registrar to the Center on December 17, 2012 and as added by Complainant in its Amendment to the Complaint filed on December 31, 2012). The Panel, however, has also taken notice of the fact that the email correspondence sent by Respondent to the Center (on January 4, 8 and 9, 2013) was still signed by “Nomi Nee group”. Therefore, in accordance with Respondent’s own contentions, the Panel finds that Respondent apparently is a group of companies including several entities (e.g. “Nomi Nee” as well as “Aero1 Ltd / Aerol Ltd”) and that for the purpose of this proceedings, reference is made to “Respondent” only.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <jaccadi.com> is confusingly similar to the JACADI trademark in which Complainant has shown to have rights.
The disputed domain name incorporates Complainant’s JACADI trademark in its entirety, except the typo-squatting arising from the addition of a second letter “c”. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I. and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). The fact that the disputed domain name obviously includes a simple misspelling of Complainant’s trademark JACADI varying by just one added letter “c” is not at all in contrast to such finding of a confusing similarity. Typo-squatted domain names are on the contrary intended to be confusing so that Internet users, who unwillingly make common type errors, will enter the typo-squatted domain name instead of the correctly spelt trademark (see also: Intesa Sanpaolo S.p.A. v. Ni Hao/Two Stooges LLC, WIPO Case No. D2011-1640; National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011).
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s still undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate noncommercial or fair use without intent for commercial gain.
Complainant has produced evidence that the disputed domain name resolves to a typical PPC website at “www.jaccadi.com” which in turn redirects Internet users to a variety of third parties’ websites which are not at all specifically tailored to Complainant but connect, inter alia, to some of Complainant’s (direct) competitors on the fashion market.
The Panel, therefore, concludes that the disputed domain name – irrespective of the alleged notoriety of the JACADI trademark throughout the world – obviously alludes to Complainant’s JACADI trademark and fashion business. Such use of the disputed domain name to seek “pay-per-clicks” from those diverted Internet users who are trying to reach Complainant, but due to the confusing similarity of the disputed domain name with Complainant’s trademark JACADI end up with Respondent’s Internet presence at “www.jaccadi.com” is neither noncommercial because it has predominantly the purpose of generating advertising revenues, nor it is fair because Internet users by confusion are brought to a general website with information about a variety of (fashion) matters that are not specifically tailored to Complainant.
Moreover, such use is also not fulfilling the requirements of a bona fide offering of goods or services because (1) Respondent obviously has neither been authorized to use Complainant’s JACADI trademark as a domain name or on Respondent’s website or in any other way and (2) Respondent’s name apparently does not correspond to Complainant’s trademark JACADI nor is any other reasonable explanation apparent why Respondent should rely on the designation “Jaccadi” as it is contained in the disputed domain name, especially given the fact that the mark JACADI apparently is neither a common noun nor a common name, but rather a pure coined word.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.1). According to
Respondent’s own contentions in its email correspondence sent to the Center of January 4, 8 and 9, 2013, Respondent obviously registered the disputed domain name as part of a bulk registration together with thousands of other typo-squatted domain names. The Panel notes that paragraph 2 of the Policy implicitly requires at least some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy (see e.g. Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216). Respondent obviously has not met this prerequisite and in the absence of any other of Respondent’s contentions, therefore, also has not met its shifted burden of production under paragraph 4(c) of the Policy.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s JACADI trademark, by means of a typical typo-squatting to a standardized PPC website in order to generate “pay-per-click” commissions without Complainant’s permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s JACADI trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy (see also: Intesa Sanpaolo S.p.A. v. Moniker Privacy Services / Charlie Kalopungi, WIPO Case No. D2011-0758; Intesa Sanpaolo S.p.A. v. Caribbean Online International Ltd., WIPO Case No. D2007-0816).
In support of this finding, the Panel clearly notes that Respondent registered the disputed domain name without even exploring the possibility of the existence of any third parties’ trademarks rights therein (for this requirement: see e.g. Balglow Finance S.A., Fortuna Comércio e Franquias Ltda. v. Name Administration Inc. (BVI), WIPO Case No. D2008-1216); on the contrary, the Panel finds that Respondent apparently has built up a whole business model on the bulk registration of typo-squatted domain names to redirect to typical PPC websites, thus taking systematically into account to register and make use of domain names in violation of the existing rights of third parties. Also, Respondent apparently provided false WhoIs information for the disputed domain name for both entities “Nomi Nee” as well as “Aero1 Ltd / Aerol Ltd” (e.g. postal mail (DHL) of the Written Notice could not be successfully delivered). Moreover, this Panel finds that the change in the registration details by the time of the beginning of this UDRP proceedings, which is known as cyberflight, may constitute further evidence of bad faith registration and use (see CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited / SA c/o FP, WIPO Case No. D2008-0687).
Those circumstances taken all together throw a light on Respondent’s behavior which strongly supports the finding of a registration and use of the disputed domain name in bad faith.
Therefore, the Panel concludes that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 disputed domain name <jaccadi.com> be transferred to Complainant.
Stephanie G. Hartung
Date: February 22, 2013