WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CDISCOUNT SA v. D-Max Limited
Case No. D2013-0374
1. The Parties
The Complainant is CDISCOUNT SA of Bordeaux, France, represented by PROMARK, France.
The Respondent is D-Max Limited of Charlestown, Nevis, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <wwwcdiscount.com> (the “disputed domain name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2013. On February 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2013, 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. The Center sent an email communication to the Complainant on February 28, 2013 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 March 6, 2013.
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 March 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2013.
The Center appointed Michael D. Cover as the sole panelist in this matter on April 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
The Complainant is based in France and is a leading company in the world of e-commerce. The Complainant is the proprietor of a number of registered trademarks which consist of or include the name “cdiscount”. These include (European) Community trademark No. 1753342 cdiscount.com filed on July 12, 2000, French trademark No. 3125796 CDISCOUNT VACANCES filed on October 12, 2001 and French trademark No. 3125795 CDISCOUNT VOYAGES also filed on October 12, 2001. These registered trademarks have been renewed since registration and are in full force and effect today. They cover a wide range of goods and services in Classes 9, 28, 39, 41 and 43 of the Nice Classification.
These trademarks are used in connection with the Complainant’s e-commerce website “www.cdiscount.com”, on which and from which a wide range of products are sold. These include products from electrical goods to wine and clothes and so, in a sense, the Complainant’s website is something like an Internet supermarket.
The Complainant is also the owner of numerous domain names which contain the element “cdiscount”. The earliest of these is cdiscount.com, which was registered in October 1998. Most of these domain names redirect the user to the main domain <cdiscount.com>.
The Complainant is one of the leaders in France in e-commerce, with a comparable number of monthly visits as Amazon.com in France.
The disputed domain name was created on January 23, 2004.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant submits that the disputed domain name is confusingly similar to its trademarks in which it has rights. The Complainant submits that the disputed domain name entirely integrates the trademark CDISCOUNT of the Complainant, to which only the three letters “www” have been added. It notes that numerous panels have recognized that the incorporation of a trademark into a disputed domain name may be sufficient to establish that a disputed domain name is identical or confusingly similar to a complainant’s registered trademark. It submits that the addition of other terms to the disputed domain name should not affect a finding that the dispute domain name in question is identical or confusingly similar to the complainant’s registered trademark and cited the decision in LEGO Juris A/S v. Richard Larkins Sets&Reps, WIPO Case No. D2012-1024, in support of that contention.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It says that there is no evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name leads to a parking page with content which offers, amongst other things, products which are sold on the Complainant’s website. The Complainant also states that the Respondent has not been commonly known by the disputed domain name and has acquired no trademark or service mark rights in that respect. Finally, on this aspect of the Complaint, the Complainant submits that the Respondent is not making legitimate or fair use of the disputed domain name and that, on the contrary, the Respondent is clearly acting with intent of commercial gain by misleadingly diverting consumers and tarnishing the Complainant’s trademark or service mark.
The disputed domain name has been registered and is being used in bad faith.
The Complainant sets out the non-exhaustive list of circumstances that shall be evidence of bad faith and notes that the overriding objective of the Policy is “to curb abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another” and cites in support of this contention Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2000-0003.
The Complainant points out that it is very unlikely that the Respondent would have unintentionally registered the disputed domain name, which is confusingly similar to the Complainant’s trademarks. It says that the registration and use of the disputed domain name were clearly motivated by commercial gain on the part of the Respondent and for the purpose of disrupting the Complainant’s business and that the Respondent’s conduct in this case constitutes bad faith use and registration of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.
The Complainant requests that the Panel decide that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant is required to demonstrate on the balance of probabilities that the disputed domain name is identical or confusingly similar to its trademark CDISCOUNT, that the Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The panel accepts the submissions of the Complainant that the disputed domain name is confusingly similar to the trademark CDISCOUNT, in which the Complainant has rights. The Complainant has demonstrated that it has rights in the trademark CDISCOUNT, which it first registered as part of a trademark in August 2001. With regard to confusing similarity, the dominant feature of the disputed domain name is the term “cdiscount” and the Complainant’s trademark has been taken into the disputed domain name in its entirety. The addition of the non-distinctive element “www” does not detract from this. This is supported by, inter alia, Nintendo of America Inc. v. Fernando Sascha Gutierez, WIPO Case No. D2009-0434.
B. Rights or Legitimate Interests
The panel also accepts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been licensed or authorized by the Complainant to use the Complainant’s trademark CDISCOUNT.
Whilst the Respondent has not responded to the Complaint, there is no evidence to suggest that it has, before notice of the dispute, used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services or has been commonly known by the disputed domain name or that the Respondent has been making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. In fact, the submissions and evidence of the Complainant point in quite the opposite direction, with the disputed domain name resolving to a parking website, where links to products of the types of goods sold by the Complainant are offered.
C. Registered and Used in Bad Faith
The Panel notes the submission of the Complainant that the Respondent has registered and used the disputed domain name in bad faith. The Panel notes in particular that the disputed domain name was registered three years after the first registration by the Complainant of a trademark consisting of or including the name “cdiscount”, by which stage in 2004, the Complainant’s use of its trademarks, including as part of the domain name <cdiscount.com> and the relevant website would have been well-known. The Panel accepts the submission of the Complainant that the use of disputed domain name in connection with a parking website and the offering of goods as described already in this decision falls within paragraph 4(b)(iv) of the Policy, in that the Respondent has intention of attempting to attract for commercial gain internet users to that website with the intention of creating a likelihood of confusion with the Complainant’s trademark.
The Panel accordingly finds that the disputed domain name has been registered and used 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,<wwwcdiscount.com> be transferred to the Complainant.
Michael D. Cover
Date: April 25, 2013