WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MEETIC v. Rene Vilmont

Case No. D2019-0412

1. The Parties

The Complainant is MEETIC of Paris, France, represented by Nameshield, France.

The Respondent is Rene Vilmont of Barcelona, Spain.

2. The Domain Name and Registrar

The disputed domain name <meetic.email> is registered with 1&1 IONOS SE. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2019. On February 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2019, 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 March 1, 2019 providing the registrant 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 1, 2019.

On March 1, 2019, the Center sent a communication to the Parties, in English and Spanish, regarding the language of the proceeding. On March 1, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 and 4, the Center formally notified the Respondent, in English and Spanish, of the Complaint, and the proceedings commenced on March 8, 2019. In accordance with the Rules, paragraph 5, the due date for a response was March 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2019.

The Center appointed Gustavo Patricio Giay as the sole panelist in this matter on April 24, 2019. 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 MEETIC is a French online dating service that owns several trademark registrations containing the word MEETIC, including the following:

- International trademark MEETIC registration number 783549, registered on May 27, 2002;

- European Union trade mark MEETIC registration number 005046594, registered on June 21, 2007;

- French trademark MEETIC registration number 3505029, registered on June 6, 2007;

- International trademark MEETIC registration number1089074, registered on July 22, 2011;

- European Union trade mark MEETIC registration number 010145654, registered on December 1, 2011.

The Complainant also owns and communicates on the Internet through various domain names, the main one being <meetic.com>, registered on October 30, 2001.

The disputed domain name <meetic.email> was registered on August 14, 2015. It redirects to a website displaying information regarding tarot and finding love, and a phone number to contact a medium.

5. Parties’ Contentions

A. Complainant

The Complainant claims to be the leader in online dating services across Europe with 6,5 million visitors in 15 countries and 13 languages.

The Complainant also argues that the disputed domain name <meetic.email> is identical to the trademark MEETIC in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.

More specifically, the Complainant contends that the Respondent is not known as the disputed domain name but as “Rene Vilmont”, and that the Respondent is not related in any way to the Complainant.

No authorization nor license has been granted by the Complainant to the Respondent to make any use of the trademark MEETIC, or apply for registration of the disputed domain name.

The term “meetic” is an invented word, which has a meaning only related to the Complainant.

At the time of the of the disputed domain name registration, MEETIC had a strong presence in Europe, both as an organizer of event and launcher of several apps. Thus, the Respondent knew or should have known about the Complainant and its trademark when it registered the disputed domain name.

The Complainant asserts that the Respondent, by profiting of the notoriety of the Complainant’s trademark and services, uses the disputed domain name to offer services unrelated to the ones provided by the Complainant and that the Respondent registered and uses the disputed domain name in bad faith by disrupting the Complainant’s business and creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.

Finally, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

According to information received by the Center from the concerned Registrar, the language of the registration agreement for the disputed domain name is Spanish.

The Complainant filed the Complaint in English, despite indicating that the language of the registration agreement for the disputed domain name is German.

As mentioned above, the Center sent a communication to the Parties, in English and Spanish, regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

Given the provided submissions and the circumstances of this case, the Center decided to: (1) accept the Complaint in English; (2) accept a Response in either English or Spanish; and (3) appoint a Panel familiar with both languages.

Furthermore, the Center has indicated that the Panel may choose to write a decision in either language, or request translation of either party’s submissions.

Pursuant to Rules, paragraph 11, in absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise.

Paragraph 10(b) of the Rules provides that the Panel shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case and paragraph 10(c) of the Rules provides that the Panel shall ensure that the administrative proceeding takes place with due expedition.

The Complainant has submitted a request that English be the language of the proceedings, to which the Respondent has not replied.

To require the Complainant to translate the Complaint and all supporting documents into Spanish would cause an unnecessary burden to the Complainant and unnecessarily delay the proceeding.

In view of the fact that the Respondent was notified in both English and Spanish by the Center of the nature and deadlines pertaining to the proceeding as well as the issue of the language of the proceeding, the Panel does not consider it prejudicial to the Respondent if English were adopted as the language of the proceeding. The proceeding would be unduly delayed if the Complaint and annexes thereto had to be translated into Spanish. In keeping with the Policy aim of facilitating a relatively time and cost-efficient procedure for the resolution of domain name disputes, the Panel decides that the appropriate language for the proceeding is English.

6.2 Substantive Elements of the Policy

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:

(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(II) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(ill) The disputed domain name was registered and is being used In bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has proved that it has rights in the trademark MEETIC.

The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.

In this case the disputed domain name <meetic.email> contains the Complainant’s trademark MEETIC in its entirety.

For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Thus, for the test for confusing similarity of this first prong the Panel shall disregard the “.email” included in the disputed domain name.

The Panel therefore finds that the disputed domain name is identical to the trademark MEETIC in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations and evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant submits that it has never granted the Respondent with the right to use or register the trademark MEETIC as a domain name or for any other reason.

The Panel notes the nature of the dispute domain name, which is identical to the Complainant’s trademark MEETIC, and carries a high risk of implied affiliation (section 2.5.1 of WIPO Overview 3.0).

The Panel considers that the Respondent’s use of the disputed domain for displaying information regarding tarot and finding love, and a phone number to contact a medium cannot be considered a bona fide offering but rather an attempt to capitalize on the reputation and goodwill of the Complainant’s mark or otherwise mislead Internet users.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complaint also succeeds on the second prong.

C. Registered and Used in Bad Faith

The Respondent registered the disputed domain name that contains a third party’s trademark without authorization. The Respondent could not ignore the existence of the MEETIC trademark when it registered the disputed domain name on August 14, 2015 because MEETIC was well -known in Europe before that time, and because MEETIC is a fanciful word, therefore it is difficult to conceive that the use of the disputed domain name is not related to the Complainant’s activities. This assumption is further proved by the fact that the disputed domain name entirely contains the Complainant’s trademark MEETIC.

In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. As such, a cursory Internet search would have disclosed the MEETIC trademark and its use by the Complainant. As such, a presumption arises that that the Respondent was aware of the Complainant and its trade marks when it registered the disputed domain name, particularly given that the disputed domain name is identical to the Complainant’s mark. Registration of a domain name that incorporates a complainant’s trade mark suggests opportunistic bad faith.

The misappropriation of a well-known trademark as a domain name by itself constitutes bad faith registration for the purposes of the Policy. See, inter alia, Aktiebolaget Electrolux v. Domain ID Shield Service Co., LTD / Dorian Cosentino, Planeta Servidor, WIPO Case No. D2010-1277; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.

In light of the above, it is inconceivable that the Respondent was not well aware of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Indeed, the Respondent’s purpose in registering the disputed domain name incorporating MEETIC was very likely to capitalize on the reputation of Complainant’s trademark by diverting Internet users seeking information about this distinctive sign to its own website published. See Hoffmann-La Roche Inc. v. Doroven, WIPO Case No. D2010-1196.

Moreover, the disputed domain name has been registered long after the filing and registration of the Complainant’s trademark MEETIC.

With respect to the use in bad faith, as described above, the disputed domain name directs to a webpage displaying information regarding tarot and finding love, and a phone number to contact a medium.

Many panels have found the respondent acting in bad faith where the respondent sought or realized commercial gain from the use of a domain name identical or confusingly similar to a complainant’s trademark. See Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666, and Zinsser Co. Inc., Zinsser Brands, Co. v. Henry Tsung, WIPO Case No. D2006-0413.

The Panel finds that the Respondent is intentionally attracting Internet users for commercial gain to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

In light of the above, the Panel considers that the disputed domain name was registered and is being used in bad faith and that the third prong of paragraph 4(a)(iii) of the Policy has therefore been fulfilled.

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 <meetic.email> be transferred to the Complainant.

Gustavo Patricio Giay
Sole Panelist
Date: May 8, 2019