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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Saunier Duval Eau Chaude Chauffage v. Fundacion Private Whois, Domain Administrator

Case No. D2013-1856

1. The Parties

Complainant is Saunier Duval Eau Chaude Chauffage of Fontenay-Sous-Bois, France, represented by Cabinet Santarelli, France.

Respondent is Fundacion Private Whois, Domain Administrator of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <saunierduval-service-apres-vente.com> is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact.

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 Respondent of the Complaint, and the proceedings commenced on November 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 27, 2013.

The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on December 5, 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

Since its creation in 1907, Complainant has specialized in the manufacturing and sale of heating systems and technology.

Complainant is the owner of numerous registered trademarks for the mark SAUNIER DUVAL, including the following:

French Trademark Registration No. 1,208,651, registered July 8, 1982;

French Trademark Registration No. 1,208,652, registered July 8, 1982;

International Trademark Registration No. 389,072A, registered May 26, 1972;

International Trademark Registration No. 641,730, registered August 22, 1995;

International Trademark Registration No. 638,332, registered May 15, 1995.

Complainant is also the owner of numerous domain names incorporating the mark SAUNIER DUVAL, including but not limited to <saunier-duval.fr> and <saunierduval.fr>.

The disputed domain name was registered on December 24, 2012.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has numerous registered trademarks for the mark SAUNIER DUVAL, including the French and International Trademark Registrations listed above, that all pre-date Respondent’s registration of the disputed domain name.

Here, the disputed domain name incorporates Complainant’s trademark in its entirety. The addition of the descriptive element “service-apres-vente” in the disputed domain name (meaning “after sales service”) does not add any distinctive element.

The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

Based on previous UDRP decisions, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.

Complainant’s allegations in the Complaint and evidence submitted on this issue are sufficient to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Respondent has no relationship with Complainant and has no permission from Complainant to use Complainant’s trademark or any domain name incorporating that trademark. Respondent is not commonly known by the name “Saunier Duval”. Nothing in the WhoIs contact information for Respondent implies that it is commonly known by that name.

In July 2013, Complainant’s counsel sent a cease and desist letter to Respondent, but received no response.

The disputed domain name links to a website offering boiler maintenance and repair services, which compete directly with Complainant’s services. Moreover, Respondent’s website also displays Complainant’s trademark, including in design form, as well as other trademarks owned by Complainant.

Respondent has failed to come forward with any evidence demonstrating rights or legitimate interests in the disputed domain name.

The Panel finds that Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. (Policy, paragraph 4(b).)

Complainant registered its trademark SAUNIER DUVAL many years before the disputed domain name was registered. Respondent displays Complainant’s mark in the disputed domain name and also on Respondent’s website, both in word form and design form. Respondent’s website offers services that compete directly with Complainant’s services. It is likely that Internet users who are directed to the website at the disputed domain name will assume that Respondent’s website is associated with Complainant.

Respondent did not reply to Complainant’s cease and desist letter demanding transfer of the disputed domain name.

The evidence indicates that Respondent was aware of Complainant’s trademark rights at the time of Respondent’s registration of the disputed domain name and that the disputed domain name is being used in bad faith.

The Panel finds that Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

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 <saunierduval-service-apres-vente.com> be transferred to Complainant.

Lynda J. Zadra-Symes
Sole Panelist
Date: December 19, 2013

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