WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pixmania SAS v. Philip Gahan
Case No. DME2010-0009
1. The Parties
The Complainant is Pixmania SAS of Paris, France, represented by DDG Deprez, Guignot et Associés, France.
The Respondent is Philip Gahan of Kent, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed Domain Name <pixmania.me> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2010. On November 17, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed Domain Name. On November 17, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”)(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 November 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2010.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on December 22, 2010. 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 “Pixmania Sas” is an European e-tailer of consumer electronic goods and “Pixmania” was launched in 2000 as part of the Fotovista SA group of companies. According to the Complaint, the Complainant’s website “www.pixmania.com” has attracted 6,000,000 customers and 11,000,000 unique visitors, and the Complainant’s business employs more than 1.000 employees and it is present in 26 countries.
The Complainant is the owner of the following trademarks:
- French trademark PIXMANIA No. 3137587 filed and registered on December 18, 2001 for products and services of classes 16, 38 and 40;
- French trademark PIXMANIA No. 3233158 filed and registered on June 25, 2003 for products and services of classes 9, 16, 35, 38, 40, 41 and 42;
- International trademark Registration PIXMANIA No. 784903 filed and registered on June 14, 2002 for products and services of classes 16, 38 and 40;
- International trademark Registration PIXMANIA No. 823869 filed and registered on October 23, 2003 for products and services of classes 9, 16, 35, 38, 40, 41 and 42;
- CTM trademark PIXMANIA No. 3253481 filed on June 2, 2003 and registered on April 11, 2005 for products and services of classes 9, 16, 35, 38, 40, 41 and 42.
Moreover, the Complainant is the owner of several domain names such as <pixmania.com>, <pixmania.fr>, <pixmania.info>, <pixmania.lu>, <pixmania.co.uk>, <pixmania.de>, <pixmania.si> and so on.
The Domain Name <pixmania.me> was created on January 26, 2010.
5. Parties’ Contentions
The Complainant contends the following:
(a) the disputed Domain Name is confusingly similar to the trademark of the Complainant because:
- it reproduces the Complainant’s trademark in its entirety;
- the addition of the top level domain such as “.me” has to be ignored when assessing the issue of similarity between a disputed domain name and a trade mark because it is a functional necessity.
(b) The Respondent has no rights or legitimate interests in respect to the Domain Name because:
- the Respondent is not affiliated in any way with the Complainant;
- the Complainant has never given the Respondent any authorization to use the Complainant’s trademark;
- the disputed Domain Name is not derived from the Respondent’s name as recorded in its WhoIs details.
(c) The Domain Name was registered and is being used in bad faith because:
- the Respondent used the disputed Domain Name for a commercial purpose, in particular in order to sell electronic products which compete with those offered by the Complainant;
- the Respondent used the disputed Domain Name with the expectation of taking advantage of the reputation of the Complainant’s trademark and company name;
- the Complainant is well known in the country of the Respondent, the United Kingdom, where the Complainant runs the website “www.pixmania.co.uk”, and therefore at the time of the registration of the disputed Domain Name the Respondent was likely aware of the Complainant’s rights in the PIXMANIA trademark;
- the Respondent did not answer the cease and desist letter sent by the attorney of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name <pixmania.me> incorporates the word “pixmania” which constitutes the Complainant’s trademark and company name.
The only difference between the disputed Domain Name and the trademark of the Complainant is the addition of the suffix “.me”. As stated in several prior UDRP decisions, the addition of the top level domain to the trademark is irrelevant in determining any distinctiveness to the Domain Name, because it is a necessary component of the Domain Name itself (see i.e., Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457).
Therefore the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Complainant has several trademark registrations for PIXMANIA and owns several domain names comprehensive of the trade mark PIXMANIA, which is also part of its company name. As indicated above, it has been proven that the Complainant has rights in the PIXMANIA trademark.
The Respondent has not filed any Response in this case. There is a prima facie indication in the evidence provided to the Panel that there are no rights or legitimate interests in the Domain Name on the part of the Respondent, see paragraph 4(c) of the Policy (and see Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media, WIPO Case No. D2007-0840; UPIB, Inc. v. Texas Internet, WIPO Case No. D2004-0073).
Moreover, the Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark PIXMANIA, nor has the Respondent been authorized to register and use the disputed Domain Name.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed Domain Name.
C. Registered and Used in Bad Faith
The Domain Name was exploited by the Respondent to offer for sale online electronics products which were in some cases in direct competition to the ones offered by the Complainant.
In the Panel’s view, the Respondent was likely aware of the existence of the PIXMANIA mark owned and used by the Complainant. Only someone who was familiar with the Complainant’s mark and its activity would have registered the Domain Name inclusive of such trademark (see Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0850; AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd., WIPO Case No. DCC2004-0001; British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A, WIPO Case No. D2004-0131; Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487).
There is no information as to any business activity of the Respondent that would justify the registration and the use of the disputed Domain Name, nor is there evidence of any rights or legitimate interests in said Domain Name by the Respondent. The Panel believes that, taking the entire case record into account, and in the absence of any rights or legitimate interests and the absence of any contrary evidence from the Respondent, the Respondent’s registration of a Domain Name confusingly similar to the Complainant’s trademark was done in bad faith (see Accor v. Howell Edwin, WIPO Case No. D2005-0980; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395; Banca Sella s.p.a. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
As a further indication of bad faith registration, after receiving the Complaint, the Respondent has indicated on its website that the disputed Domain Name is “on sale”.
The Panel is of the opinion that the Respondent has registered the disputed Domain Name with the intent to profit from the reputation of the famous trademark of the Complainant, by using a Domain Name that is confusingly similar to the Complainant’s mark. See paragraph 4(b)(iv) of the Policy.
Taken together with the fact that the Respondent has not filed any Response in this proceeding in support of any good faith registration or use, the Panel believes that the Complainant has demonstrated that the disputed Domain Name has been registered and 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, <pixmania.me> be transferred to the Complainant.
Dated: January 5, 2011