WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

France Maternité v. Above.com Domain Privacy/ Host Master, Transure Enterprise Ltd

Case No. D2012-1605

1. The Parties

Complainant is France Maternité of Bordeaux, France, represented by IP SPHERE, France.

Respondent is Above.com Domain Privacy of Beaumaris, Australia and Host Master, Transure Enterprise Ltd of Tortola, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <bebe9-shop.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 9, 2012. On August 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2012, 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 Complainant on August 15, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 17, 2012.

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 Respondent of the Complaint, and the proceedings commenced on August 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 17, 2012.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on September 17, 2012. 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

Complainant is a French company that operates stores nationwide and sells merchandise related to childhood, including, among other things, maternity products. Complainant owns several registrations for the mark BEBE 9 in various countries and classes, including International Trademark No. 1001675 (Registered 2008); French Trademark No. 083571382 (filed 2008); French Trademark No. 97676981 (filed 2007); French Trademark No. 97670425 (filed 2007); and French Trademark No. 1477359 (filed 1988). Due to its marketing and promotions, Complainant’s mark appears to be fairly well-known at least to French consumers and available to others on the Internet as well.

Complainant owns the registration for several domain names that include its BEBE 9 mark, including <bebe9.com> (registered on June 11, 1999), <bebe-9.com,> (registered on August 10, 2007); <bebe9.fr> (registered on June 15, 1999), and <bebe-9.fr> (registered on March 10, 2011). Complainant uses these domain names to connect to an active website through which it offers prospective consumers information about its childhood-related products and services. Complainant owns several other domain name registrations as well. It appears from the papers submitted in the record that shortly before the time Respondent registered the disputed domain name, <bebe9-shop.com> Complainant owned that registration. See also France Maternite v. Adlatus-of-the-Day, WIPO Case No. D2010-0239 (transferring <bébé9.com>).

The disputed domain name <bebe9-shop.com> was registered by Respondent on August 25, 2011.

Respondent has no affiliation with Complainant. Respondent has provided sponsored links from the URL associated with the disputed domain name to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s goods and services. These include links for childhood products offered by competitors of Complainant. Complainant has not authorized these activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions

A. Complainants

Complainant contends that: (i) <bebe9-shop.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not file a reply to Complainants’ contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name <bebe9-shop.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark BEBE 9, and merely adds the descriptive term “shop,” which would indicate to consumers that it is linked to a website where they can shop for, or purchase Complainant’s BEBE 9 products and services. This Panel further notes that the record shows Complainant previously owned the registration for this same domain name.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, L’Oréal SA v. LV Kefeng, WIPO Case No. D2009-1231 (transferring <loreealchina.org> and <maybellinechina.org>); L’oréal v. Chenxiansheng, WIPO Case No. D2009-0242 (transferring <lorealfrance.com>); Inter Ikea v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); and CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>).

This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial 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.”

Respondent did not submit a reply to the Complaint, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users via sponsored links, to websites that are competing with Complainant or Complainant’s goods and services.

Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph (4)(a)(ii) of the Policy, which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where:

“by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”.

As noted in Section 4 of this Panel’s decision, Respondent has a parked webpage at the URL associated with the disputed domain name, with sponsored links to other websites. Several of these offer goods or services by competitors of Complainant. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

Therefore, this Panel finds that Respondent registered and is using the disputed domain name in bad faith in accordance with 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 <bebe9-shop.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: September 24, 2012