WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RueDuCommerce v. Raquel Cano Martinez
Case No. DCC2011-0003
1. The Parties
The Complainant is RueDuCommerce of Saint Ouen, France, represented by Chain Association d'Avocats, France.
The Respondent is Raquel Cano Martinez of Barcelona, Spain.
2. The Domain Name and Registrar
The disputed domain name <alapage.cc> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2011. On May 10, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 11, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 24, 2011.
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 May 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2011. The Respondent did not submit any formal response. The Respondent submitted informal communications on May 25 and May 26, 2011.
The Center appointed Luca Barbero as the sole panelist in this matter on June 30, 2011. 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 operates in the French e-market and is the owner of the French trademark registration No. 3320881 for ALAPAGE, registered on October 22, 2004 in classes 9, 16, 28, 38, 41 and 42; of the French trademark registration No. 99813867 for ALAPAGE.COM, in all classes; of the French trademark registration No. 3320880 for ALAPAGE.COM, registered on October 22, 2004, in classes 9, 16, 28, 38, 41 and 42; and of the Community trademark registration No. 1572718 for ALAPAGE.COM, filed on March 23, 2000, in classes 9, 16, 35, 36, 38, 39, 41 and 42.
The Complainant is also the owner of the domain names <alapage.com>, registered on May 30, 1996, and <alapage.fr>, registered on November 11, 1997.
The Respondent registered the disputed domain name <alapage.cc> on December 2, 2010.
5. Parties’ Contentions
The Complainant states that RueDuCommerce is a leader in the French e-market and that it realized a 352,6 million Euros turnover in the years 2009 / 2010. The Complainant’s site “www.alapage.com” represents an audience of more than 2.5 millions single visitors each month, with a large offer of products and 3.2 millions clients.
The Complainant contends that the disputed domain name <alapage.cc> is identical to the registered trademarks in which the Complainant has rights.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent registered the disputed domain name 10 years after the registration of the Complainant’s trademark, when the Complainant had already developed large notoriety and solid audience.
Moreover, the Complainant points out that <alapage.cc> has never been used by the Respondent in connection with any active web site, since it has been merely pointed to an Internet page displaying the phrase “This website is coming soon”. The Complainant emphasizes that the Respondent’s passive holding is preventing the Complainant from using the disputed domain name. The Complainant concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
With reference to the circumstances evidencing bad faith, the Complainant states that the Respondent registered the disputed domain name with the purpose of generating traffic to its site by attracting Internet users confused by the similarity with the Complainant’s mark.
The Complainant also contends that the Respondent’s passive holding of the disputed domain name is preventing the legitimate owner from using it and constitutes bad faith. The Complainant informs the Panel that it sent a cease and desist demand letter to the Respondent and that she refused to transfer the domain name.
The Respondent sent communications via email to the Center after the notification of the Complaint, expressing her intention to cancel the disputed domain name spontaneously and stating that the disputed domain name has never been active and has never been used in bad faith. The Respondent also notes that the disputed domain name was “going to be used as a personal blog without any commercial interest and with no relation [with] alapage.com”.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name has been registered and is being used in bad faith.
(ii) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(iii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
A. Identical or Confusingly Similar
The Complainant has provided evidence of trademark registrations for ALAPAGE.COM and ALAPAGE in France. In addition, the Complainant has also submitted evidence of ownership of a Community trademark ALAPAGE.COM.
As mentioned in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") “[t]he threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion.
The Panel finds that the disputed domain name <alapage.cc> is substantially identical to the trademark in which the Complainant has rights, since the mere addition of the top level domain “.cc” may be excluded from consideration as being merely functional component of a domain name. See i.a. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).
In the case at hand, the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, that has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the disputed domain name.
Indeed, the Respondent, by redirecting <alapage.cc> to a web site under construction since the registration, has simply passively held the disputed domain name. Moreover, the Respondent herself declared that she never used the disputed domain name actively and that she would like to delete it as soon as it is technically possible.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
“(i) circumstances indicating that the holder has registered or has 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.”
The Panel notes that, in light of the use of ALAPAGE as a trademark and a domain name since more than ten years in connection with the e-commerce web site of the Complainant, the Respondent was more likely than not aware of the Complainant’s trademark at the time of the registration.
With reference to the issue of the non use of the disputed domain name by the Respondent, the Panel finds that in this case the “passive holding” infers bad faith. As also established in a number of prior UDRP cases the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding; see i.a. the landmark case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel also considers that the registration by the Respondent of a domain name substantially identical to the Complainant’s mark, the lack of any explanation submitted to the Panel as to Respondent’s interest in the registration and use of the disputed domain name via the submission of a Response in the present procedure and the fact that the Respondent herself expressed in a three lines communication after having received the Complaint her intention to cancel the registration instead of indicating the availability to transfer the disputed domain name, are additional circumstances from which it can be inferred bad faith.
Thus, in light of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <alapage.cc> be transferred to the Complainant.
Dated: July 15, 2011