WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jean Heitz v. Ghidella, Rosalia

Case No. DAU2011-0023

1. The Parties

Complainant is Jean Heitz of Germigny l'Eveque, France, represented by Novagraaf France SA, France.

The Respondent is Ghidella, Rosalia of New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <argilitz.com.au> is registered with Aust Domains International Pty Ltd dba Aust Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2011. On September 1, 2011, the Center transmitted by email to Aust Domains International Pty Ltd dba Aust Domains, Inc. a request for registrar verification in connection with the disputed domain name. On September 3, 2011, Aust Domains International Pty Ltd dba Aust Domains, 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 September 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2011.

The Center appointed John Swinson as the sole panelist in this matter on October 4, 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 owns a company that specializes in clay products. The Complainant owns several registered trade marks for ARGILETZ including an Australian registered trade mark filed on April 2, 1997.

The Respondent is Rosalia Ghidella. Little information is known about the Respondent as a Response was not filed, but it appears the Respondent is the director of the “Haberfield Naturopathics Center”.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions:

(i) Identical or Confusingly Similar

The Complainant owns several trade marks for ARGILETZ in different countries. Importantly, the Complainant owns an Australian registered trade mark for ARGILETZ filed on, and registered from, April 2, 1997.

It is therefore clear that the disputed domain name is confusingly similar to the Complainant’s trade marks. The trade mark ARGILETZ and the term “Argilitz”, which is the dominant feature of the disputed domain name, are very similar visually, phonetically and conceptually. These terms have the same length and number of characters, in the same order. There is only one letter difference - the sixth letter “e” in the trade mark and “i” in the disputed domain name. This difference does not distinguish the two terms.

Aurally, the two terms are composed of three syllables, the first two being identical and the last being almost identical. Therefore, each term is pronounced very similarly.

The replacement of the vowel “e” by the vowel “i” is not sufficient to exclude a likelihood of confusion as it is contained in the last part of the denomination which is the least perceptible part of the trade mark for consumers.

Moreover, a Google search of the term “Argilitz” leads to a proposed association search on “Argiletz”.

(ii) Rights or Legitimate Interests

The Respondent does not own any relevant trade marks in the term “Argilitz” or “Argiletz”.

The Respondent is not associated with the Complainant or its business, nor does it act on its behalf. The Complainant did not authorize the Respondent to use its trade mark or similar terms. Moreover, the Respondent is not commonly known by the name “Argilitz” or “Argiletz”.

The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services (see Registered or Subsequently Used in Bad Faith, section 6.d).

Therefore, the Respondent has no rights or legitimate interests in the disputed domain name.

(iii) Registered or Subsequently Used in Bad Faith

(a) Registered in Bad Faith

The disputed domain name has never been used for the purposes of the Respondent’s business, being a naturopathic centre. Instead, the disputed domain name first directed to a parking page of Crazy Domains and subsequently to a parking page containing links to competitors of the Complainant in the cosmetic industry. This demonstrates that the Respondent did not register the disputed domain name in order to use it for a legitimate purpose, but to prevent the Complainant from registering it.

It is also noted that the Respondent apparently provides clay therapy in its centers. The Complainant specializes in clay products, specifically for beauty. The prefix “argil” refers to the French term “argile”, meaning clay. It is obvious that the Respondent wanted to create confusion with the Complainant, its products and trade marks when registering the disputed domain name.

Moreover, given the Complainant’s trade marks are used worldwide and notably in Australia, it is unlikely that the Respondent was unaware of the Complainant’s trade marks, domain name and business at the time the disputed domain name was registered.

It cannot be said that the registration of the disputed domain name was merely coincidental considering the fact that the Complainant and Respondent both operate in the beauty industry.

b) Used in Bad Faith

The disputed domain name has never been used by the Respondent in connection with a bona fide offering of goods or services. The Respondent does not sell or promote products through the website resolving from the disputed domain name.

Further, on August 26, 2010 the Complainant’s legal representatives sent a cease and desist letter to the Respondent on behalf of the Complainant outlining the Complainant’s position, insisting that the Respondent cease using the disputed domain name and requesting that the disputed domain name be transferred to the Complainant within two weeks. Further, follow-up letters were also sent to the Respondent with a final cease and desist letter sent on December 30, 2010. However, no action was taken by the Respondent.

Therefore, given the passive holding of the disputed domain name and failure to respond to the Complainant’s communications, it is clear that the Respondent used the disputed domain name in bad faith.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a name, 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

(iii) the disputed domain name has been registered or subsequently used in bad faith.

The onus of proving these elements is on the Complainant.

The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are distinct policies, both share substantial similarities. The Panel finds it therefore appropriate to refer to UDRP precedent when deciding this case.

A. Procedural Issues

The Respondent did not file a Response. While this does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default. However, in accordance with paragraph 4 of the Policy, the Complainant must still support its assertions with actual evidence in order to succeed. (See e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941; Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383).

B. Identical or Confusingly Similar

The Complainant owns several registered trade marks for ARGILETZ. The disputed domain name is <argilitz.com.au>. The “.com.au” suffix is irrelevant when considering this issue. The dominant feature of the disputed domain name, “argilitz”, is different from the Complainant’s trade mark by only one letter. This difference does not alleviate any similarity given that the terms remain almost identical visually and aurally. Accordingly, the Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that a complainant must establish that a respondent has no rights or legitimate interests in the disputed domain name in order to succeed. Paragraph 4(c) of the Policy provides a number of ways in which a respondent may then demonstrate rights or legitimate interests in a disputed domain name.

Here, the Complainant has succeeded in establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. (See Section 5.A, above). Given that the Respondent did not file a Response, the prima facie case established by the Complainant has not been rebutted. As such, the Complainant succeeds on this point.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant succeeds on the second element of the Policy.

D. Registered or Subsequently Used in Bad Faith

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith.

Relevantly, paragraph 4(b)(iv) of the Policy provides that bad faith registration and use will be made out where the respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the respondent’s website or product or service on the website.

Here, the Panel finds that the disputed domain name has been used in bad faith by the Respondent.

First, the Panel finds that the Respondent, most likely, was aware of the Complainant’s trade marks when registering the disputed domain name. The Panel refers to Asian World of Martial Arts Inc. v. Texas International Property Associates, supra and finds here, as there, that “[i]t defies common sense to believe that Respondent coincidentally selected [the] precise domain [name] without any knowledge of Complainant and its […] Trademarks”. (See also, F. Hoffmann-La Roche AG v. MFS Holdings, WIPO Case No. D2010-0307.)

In light of the Respondent’s subsequent use of the disputed domain name, there is nothing to indicate that the Respondent registered the disputed domain name for any reason other than to trade off and financially benefit from the Complainant’s trade marks and as such, registered the disputed domain name in bad faith.

Further, the Panel finds that the Respondent used the disputed domain name in bad faith. While use as a pay-per-click (“PPC”) parking page is not bad faith in and of itself, here it appears that the Respondent intentionally selected the disputed domain name in order to create confusion in the mind of Internet users as to the association between the disputed domain name and the Complainant’s trade marks and thereby generate PPC revenue. The Panel finds that the Respondent attempted to divert Internet traffic to its website in order to generate “pay-per-click revenue” (see e.g., BAB, Inc. v. Eighty Business Names, WIPO Case No. D2010-0478; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Hayward Industries, Inc. v. WebQuest.com, Inc., WIPO Case No. D2009-1493).

Moreover, the fact that the website resolving from the disputed domain name appears to have provided links to websites of the Complainant’s competitors is strong evidence of bad faith. (See e.g., PepsiCo, Inc. v. Charlie Chang, supra; Merrill Lynch & Co., Inc., v. Andrew Miller, WIPO Case No. D2008-1496).

This indicates that the disputed domain name has been used in bad faith.

Finally, the fact that the Respondent did not respond to the Complainant’s cease and desist letters does not assist the Respondent in this regard.

The Panel notes that the Complainant asserts that the Respondent registered the disputed domain name in order to prevent the Complainant from registering it, however the Panel does not need to reach a decision in this regard.

In any event, the Panel finds that the disputed domain name was used in bad faith.

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, <argilitz.com.au>, be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: October 18, 2011