WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beta et Companie v. Duan Xiang Wang / Huang Kuan You

Case No. D2012-1153

1. The Parties

The Complainant is Beta et Companie of Colombes, France, represented by Casalonga Avocats, France.

The Respondents are Duan Xiang Wang and Huang Kuan You of Guang Dong, China.

2. The Domain Name and Registrar

The disputed domain name <viedemerde.com> is registered with eName Technology Co., Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2012. On June 6, 2012, the Center transmitted by email to eName Technology Co., Ltd. a request for registrar verification in connection with the disputed domain name. On June 7, 2012, eName Technology Co., Ltd. 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 June 8, 2012 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 June 13, 2012, listing the current Registrant of the disputed domain name, Huang Kuan You, as a second Respondent. On July 14 and 15, 2012, the Complainant forwarded additional annexes to the Complaint.

On June 8, 2012, the Center transmitted an email to the Parties in both the Chinese and English language regarding the language of the proceeding. On June 13, 2012, the Complainant confirmed its request that English be the language of the proceeding. The Respondents did not submit their comments by the specified date.

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 Respondents of the Complaint, and the proceedings commenced on June 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2012. The Respondent 2 filed a Response with the Center on July 4, 2012.

On July 26, 2012, the Complainant submitted a supplemental filing, replying to the Response (“Supplemental Filing”).

The Center appointed Jonathan Agmon, C. K. Kwong and Yong Li as panelists in this matter on August 17, 2012. The Panel finds that it was properly constituted. Each member of 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 Beta et Companie LLC, a French company that has owned the domain name registered for <viedemerde.fr> since December 10, 2008. Under the domain name <viedemerde.fr>, the Complainant operates a micro blogging website that lists anecdotes of a few sentences that are submitted by members, telling the inconveniences of daily life (“VDM website”). Each anecdote is evaluated and critiqued by other members.

The Complainant is the owner of a French trademark registration no. 3560094 – VIE DE MERDE, with the registration date of February 29, 2008.

The Complainant operates its VDM website in different languages and under various domain names incorporating the mark VIE DE MERDE, including: <viedemerde.fr>, <viedemerde.info>, <vie-de-merde.com>, <viedemerde.eu>, <viedemerde.be>, <viedemerde.biz>, <viedemerde.net>, <viedemerde.org>, and others.

The disputed domain name <viedemerde.com> was originally registered on February 1, 2007.

At the time of filing the Complaint, on June 6, 2012, the holder of the disputed domain name was the Respondent 1 - Duan Xiang Wang. On June 7, 2012, the disputed domain name was allocated to the Respondent 2 - Huang Kuan You.

The disputed domain name <viedemerde.com> currently resolves to a search engine webpage.

5. Parties’ Contentions

A. Complainant

The Complainant argues that in 2008 its VDM website was ranked 9 in a Google search for the term “viedemerde”. The Complainant further contends that the VDM website was among the 342 most visited websites in France in December 2011.

The Complainant further argues that the VDM website reached 40,000 daily visits within 2 months of its launch. The Complainant further contends that approximately 400,000 copies of books and comic books that contain stories that were published on the VDM website were sold.

The Complainant further argues that the Complainant’s trademark has become very popular among the public, which associate it with the Complainant. The Complainant further contends that the public expects the disputed domain name to be registered under the Complainant’s name.

The Complainant further argues that transferring the disputed domain name to Respondent 2 after the Complaint was filed constitutes cyberflight.

The Complainant further argues that on June 11, 2012, a representative of Respondent 1 contacted the Complainant’s representatives and offered the transfer of the disputed domain name for consideration of monetary compensation.

The Complainant further argues that the disputed domain name is identical to the Complainant’s trademark, as it consists of the Complainant’s trademark in its entirety.

The Complainant further argues that the disputed domain name was allocated to Respondent 1 on March 14, 2010.

The Complainant further argues that Respondent 1 had engaged in a pattern of cyber and typo squatting.

The Complainant further argues that the Respondents have not used the disputed domain name in connection with a bona fide offering of goods or services. The Complainant further contends that the disputed domain name is used to operate a parking webpage, which contained sponsored links, provided links relating to jokes and was offered for sale on a third party website.

The Complainant further argues that the Respondents are not commonly known by the disputed domain name.

The Complainant further contends that the Respondents never sought or were granted permission to make use of the Complainant’s trademark.

The Complainant further argues that the disputed domain name was registered and is being used in bad faith. The Complainant further contends that the Respondents are taking unfair advantage of consumers’ recognition of the Complainant’s distinctive trademark and divert consumers to the disputed domain name for financial gain.

The Complainant further argues that the Respondents have known of the Complainant’s rights in the VIE DE MERDE mark, when acquiring the disputed domain name.

For all the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

Respondent 1 failed to submit a response.

The Response was filed by Respondent 2.

Respondent 2 first argues that he does not engage in any malicious use of the disputed domain name.

Respondent 2 further argues that he purchased the disputed domain name on June 6, 2012 and learned of the Complainant’s website subsequently.

Respondent 2 further argues that he should not be held responsible for the prior use of the previous holders of the disputed domain name.

Respondent 2 further argues that he purchased the disputed domain name before the adjudication in these proceedings commenced in order to operate his own website. Respondent 2 further contends that he devoted much effort to promote the disputed domain name, which has been active for over a month, and already enjoys of number of loyal users.

Respondent 2 further argues that the disputed domain name is his Internet dream and main source of income.

Respondent 2 further argues that he applied for a Chinese trademark registration in China for the mark VIEDEMERDE and that the Complainant does not own a registered trademark in China for the mark VIEDEMERDE.

For all the above reasons, Respondent 2 requests that the Complaint be dismissed.

6. Discussion and Findings

A. Preliminary Issue – Language of the Proceeding

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by 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, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding be English.

The Respondents did not respond to the Complainant’s request that the language of the proceeding be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

As a general rule, complaints should be in the language of the registration agreement or where there are mitigating factors in a language in which a respondent is known to be proficient, and that neither party should use the language requirement for other purposes (General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645). Having read the Complaint and the Response filed by Respondent 2, the Panel is satisfied that no injustice has been caused by the processing of the Complaint in English and the Response in Chinese.

Accordingly, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondents for these proceedings to be conducted in English and Chinese and for its decision to be rendered in English.

B. Preliminary Issue – The Complainant’s Supplemental Filing

The Panel must determine as a preliminary matter whether the Complainant’s unsolicited Supplemental Filing should be considered.

The Rules do not indicate that the parties have the right to submit supplemental responses without the request of the Panel. The rationale for limiting the number of filings by the parties is to enable the conduct of the proceeding in an efficient and speedy manner.

In the present case, the Complainant submitted a Supplemental Filing without filing a proper request and awaiting the Panel’s decision. The Panel does not find any exceptional circumstances to justify accepting the unsolicited Supplemental Filing and decides that the Supplemental Filing is excluded from the case file and will not be regarded in this Panel’s decision. To avoid doubt, this exclusion is made after the Panel reviewed the Supplemental Filing and finds that nothing contained therein would have changed the outcome of the present decision.

C. Cyberflight and Respondent Identity

The disputed domain name was allocated to Respondent 2, after the Complaint was filed with the Center. This fact raises concern of cyberflight.

“Cyberflight” is an attempt to delay a UDRP proceeding by changing the domain name registration details or registrar after learning of the complaint (See PREPADOM v. Domain Drop S.A. (PREPADOM-COM-DOM), WIPO Case No. D2006-0917). Transferring the disputed domain name during a pending proceeding is considered cyberflight and is in direct violation of the Policy paragraph 8(a). As was asserted by the UDRP panel in Humana Inc. v. CDN Properties Incorporated, WIPO Case No. D2008-1688, “there is no bright line rule regarding what constitutes a “pending proceeding”, prior cases have found that process starts from the filing of the complaint rather than from the formal commencement of the proceedings. See PREPADOM v. Domain Drop S.A., WIPO Case No. D2006-0916 or Imperial Chemical Industries, PCL. v. Oxford University, WIPO Case No. D2001-0292.”

Paragraph 8(a) of the Policy, prohibits the Registrant from transferring the disputed domain name during a pending proceeding.

It is evident to the Panel from the facts of the case, supported by the evidence that was provided by the Complainant, including the June 11, 2012 letter from representative of the Respondent 1 offering to transfer the disputed domain name to the Complainant for monetary compensation, that the transfer of the disputed domain name was an act of cyberflight. As will be specified below, such conduct constitutes bad faith (See A.H. Belo Corporation v. King TV and 5 Kings, WIPO Case No. D2000-1336).

The Panel finds the naming of both Duan Xiang Wang and Huang Kuan You as Respondents in this proceeding proper, noting the lack of bright line rules regarding the “initiation” of the proceeding or when such proceeding becomes “pending” (See The Bread Becker s, Inc. v. Belize Domain WHOIS Service Lt and Comar Ltd., WIPO Case No. D2009-0787). Therefore, for purposes of discussion of the Policy elements, the Panel shall therefore treat both Respondent 1 and Respondent 2 together as Respondents in this proceeding.

D. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant is the owner of a French trademark registration no. 3560094 – VIE DE MERDE, with the registration date of February 29, 2008.

The disputed domain name <viedemerde.com> integrates the Complainant’s VIE DE MERDE trademark in its entirety.

The disputed domain name differs from the VIE DE MERDE trademark by the addition of the general Top Level Domain (gTLD) suffix “.com”.

The addition of the gTLD suffix “.com” to the disputed domain name does not avoid confusing similarity in these circumstances (see, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The gTLD suffix “.com” is typically without significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.

E. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain name, the burden shifts to the Respondents to show that it has rights or legitimate interests in respect to the disputed domain name., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) Paragraph 2.1,

In the present case, the Complainant has demonstrated that the Respondents lack rights or legitimate interests in respect of the disputed domain name.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondents to use the VIE DE MERDE trademark, or a variation thereof.

Respondent 1 did not provide a response and accordingly has not presented any evidence of any rights or legitimate interests it may have had in the disputed domain name. Respondent 2 contended that it uses the disputed domain to operate his own website. Respondent 2 did not contend that he has previous rights in the mark VIE DE MERDE. Respondent 2 claims to have filed a trademark application for the mark VIEDEMERDE. However, the Respondent 2 failed to provide any proof for this assertion.

Having regard to all the facts and allegations in this case, the Panel is satisfied that non of the circumstances numerated in paragraph 4(c) of the Policy are present.

Accordingly, the Respondents have failed to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain name.

F. Registered and Used in Bad Faith

The Complainant must show that the Respondents registered and are using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith for purposes of paragraph 4(a)(iii).

The uncontested evidence provided by the Complainant demonstrated that Respondents received the allocation of the disputed domain name on March 14, 2010 and June 7, 2012.

The usual examination of “registration and use in bad faith” is to be conducted from the day the disputed domain name was registered.

According to the evidence provided by the Complainant, the Complainant’s mark and website established vast goodwill at the time the Respondents registered the disputed domain name under their names and it is hard to believe that the Respondents were not aware of the Complainant and its mark. This is especially true for the cyberflight transfer of the disputed domain name to Respondent 2 on June 7, 2012.

It is suggestive of the Respondents’ bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The disputed domain name is confusingly similar to the Complainant’s trademarks. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095).

The Complainant also provided sufficient evidence to prove that the disputed domain name was used to direct Internet users to a parking webpage containing pay-per-click links that direct users to websites that offer various goods and services. This constitutes bad faith registration and use of the disputed domain name as Complainant’s trademark was being used in it for commercial gain. (See Schur International A/S v. Jorge Massa, WIPO Case No. D2009-0450). The disputed domain name currently appears to be parked and not actively used. UDRP panels have found that such “use” of a website may not prevent a finding of bad faith, having regard to the totality of the circumstances. (See WIPO Overview 2.0, paragraph 3.2)

Also, as established above, Respondent 1’s transfer of the disputed domain name after it was informed of the Complaint constitutes cyberflight. UDRP panels have ruled that cyberflight is indicative of bad faith registration and use under paragraph 4(b)) (See Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).

Finally, the Respondents failed to provide a reasonable justification for choosing the disputed domain name. The Panel notes that failure to provide evidence which would support the arguments made by a respondent can serve against the respondent. This is because this Panel assumes that if such evidence existed, such evidence would have been furnished to the Panel in a timely manner.

The Complainant argued that the Respondents engaged in cybersquatting and typosquatting. Although such pattern of conduct can be considered as “cybersquatting”, in light of the above, it is unnecessary to decide whether the evidence on this point would warrant a finding of bad faith.

Based on the evidence presented to the Panel, including the time the disputed domain name was allocated to the Respondents, the Respondents’ use of the disputed domain name, the Respondents’ conduct of cyberflight and the lack of any feasible justification for registration of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 <viedemerde.com> be transferred to the Complainant.

Jonathan Agmon
Presiding Panelist

C. K. Kwong
Panelist

Yong Li
Panelist

Dated: August 31, 2012