WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MEB v. Above.com Domain Privacy / Transure Enterprise Ltd
Case No. D2012-1001
1. The Parties
The Complainant is MEB of Paris, France, represented by Inlex IP Expertise, France.
The Respondents are Above.com Domain Privacy of Beaumaris, Australia and Host Master, Transure Enterprise Ltd of Tortola Virgin Islands (British), United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ericbompart.com> is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2012. On May 11, 2012, the Center transmitted by email to Above.com Inc. a request for registrar verification in connection with the disputed domain name. On May 16, 2012, Above.com, Inc. 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 May 21, 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 amendment to the Complaint on May 25, 2012.
The Center verified that the 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 June 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2012.
The Center appointed Nuno Cruz as the sole panelist in this matter on July 5, 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
The Complainant MEB, is a French registered company, which was created by Mr. Eric Bompard, who currently acts has its CEO.
MEB is also the majority shareholder in the French company ERIC BOMPARD SA, which under this trade name ERIC BOMPARD sells cashmere products in France and in several other countries (Germany, Switzerland, Belgium, Hong Kong and China) through some 40 shops.
MEB/ERIC BOMPARD SA sells its products since 2004 through its website “www.eric-bompard.com”.
MEB is the legitimate owner of the following trademarks ERIC BOMPARD:
- French Trademark No. 92417823, registered on the May 5, 1992, in classes 14, 18 and 25;
- French Trademark No. 83572983, registered on the April 29, 2008, in classes 01, 02, 03, 04, 05, 06, 07, 08, 09, 10, 11, 12, 13, 15, 16, 17, 19, 20, 21, 22, 23, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45;
- Community Trademark No. 4355699, registered on March 23, 2005, in classes 24, 25 and 35;
- International Trademark No. 784208, registered on June 27, 2002, in classes 24 and 25.
MEB is also the owner of the following domain names:
<eric-bompart.com>, registered on January 25th, 2007;
<ericbompard.com>, registered on July 1st, 2004;
<eric-bompard.com>, registered on January 5th, 1999;
<ericbompard.fr>, registered on May 16th, 2008;
<eric-bompard.fr>, registered on January 7th, 1999;
<eric-bompard.co.uk>, registered on June 16th, 2004;
<eric-bompard.us>, registered on March 23rd, 2006;
<eric-bompard.asia>, registered on December 2nd, 2007;
<ericbompard.asia>, registered on April 8th, 2008;
<eric-bompard.com.ca, registered on March 21st, 2006.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Eric Bompard denomination has been used for many years and has gained an unquestionable name recognition in the cashmere clothing field, due in particular to its use in a lot of countries worldwide.
The Complainant also contends that the disputed domain name is confusingly similar to the trademarks and domain names in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Finally, the Complainant alleges that the disputed domain name has been registered and is being used in bad faith, since it is obvious that the Respondent could not ignore that the Complainant owns many rights on the patronymic name ERIC BOMPARD.
The Complainant contends that the Respondent had no good reasons to register the disputed domain name but to make money (by selling the disputed domain name to the Complainant or by taking advantage of the well-known character of ERIC BOMPARD trademark generating more “pay per click” traffic on its web page.
The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The identity of the Respondent
The Respondent was originally named in the Complaint as “Above.com Domain Privacy”. Upon receiving the usual request from the Center for verification of the registrant, the registrar advised that the registrant, or holder of the disputed domain name, was “Transure Enterprise Ltd.” from Virgin Islands (British). The Amended Complaint named both parties as Respondent in this case.
Assessment of the case
In absence of any reply to the Complainant’s contentions, Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint.
The Panel may also draw appropriate inferences from the Respondent's default, under paragraph 14(b).
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceeding:
(i) the disputed domain name is identical or confusingly similar to a 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 and is being used in bad faith.
A. Identical or Confusingly Similar
As established the Complainant is the legitimate owner of several trademarks ERIC BOMPARD and of the corresponding domain name <eric-bompart.com> and several “eric-bompard” or “ericbompard” domain names (Policy, paragraph 4(a)(i), Rules, paragraph 3(b)(viii), (b)(ix)(1)).
The disputed domain name i.e. <ericbompart.com> is very similar to the Complainant’s trademarks ERIC BOMPARD, since the only difference in the disputed domain name is the last letter – a “T” instead of a “D”. Furthermore, in several countries, the disputed domain name is pronounced in the same way as the ERIC BOMPARD trademarks and domain names of the Complainant. Whereas in some languages (e.g. French) the letters “T” and “D” as final consonants are mute, in other languages (e.g. English, Portuguese and Spanish) these letters are phonetically almost identical, thus the pronunciation of the words “bompard” and ” “bompart” is practically undistinguishable.
Moreover, the disputed domain name is in effect a reproduction of the domain name <eric-bompart.com> of the Complainant.
Therefore, the Panel finds that the disputed domain name i.e. <ericbompart.com> is confusingly similar to the trademark ERIC BOMPARD (and incidentally to domain names <eric-bompart.com>, <eric-bompard.com> or <ericbompard.com>) meaning that the first criterion of the Policy has been met.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain registration is that the Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a 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.
Some UDRP panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See, e.g., Charles Jourdan Holding AG v. AAIM , WIPO Case No. D2000-0403.
As the Respondent has not filed any response in this proceeding, the Panel may accept as being true all reasonable allegations made by the Complainant (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the defences provided under requirements of paragraph 4(c) of the Policy.
In any case, after analysing the record of this case, the Panel is persuaded that a prima facie showing under paragraph 4(a)(ii) has been made.
It is uncontested that the Respondent has not been authorized to use the Complainant’s trademark ERIC BOMPARD on the Respondent’s website or to appropriate the mark for use as a domain name, and there is no indication that the Respondent has ever been commonly known by the disputed domain name.
In view of the above, there is no evidence either that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, since the Complainant asserted that the Respondent was intentionally using the Complainant’s trademarks and rights to increase the traffic to its website and the websites of others.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
The evidence submitted by the Complainant sufficiently constitutes that the trademark “ERIC BOMPARD” is well-known in particular in France, and that its ERIC BOMPARD products are delivered to various countries all over the world.
The registration of a domain name that is practically identical to a well known trademark by a party that has no legitimate connection with the mark or relationship with the owner of the mark, generally constitutes bad faith registration.
Also, in the present case, after analysing the printouts of the website “www.ericbompart.com” to which the disputed domain name relates, the Panel considers that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks as to the source, sponsorship or endorsement of the website (Annex 6 of the complaint).
Thus, the Panel finds that the disputed domain name was registered and is being used in bad faith, so that the third element of paragraph 4(a) of the Policy is met.
7. Decision
For all the foregoing reasons, the Panel orders that the disputed domain name <ericbompart.com> be transferred to the Complainant, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules.
Nuno Cruz
Sole Panelist
Dated: July 19, 2012