Complainant is SFMI – MICROMANIA of France represented by Cabinet Germain & Maureau of France.
Respondent is poste-express of Cotonou, Benin.
The disputed domain name <consoles-micromania.com> (the “Domain Name”) is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2009. On February 25, 2009, the Center transmitted by e-mail to Tucows Inc. a request for registrar verification in connection with the Domain Name. On February 26, 2009, Tucows Inc. transmitted by e-mail to the Center its verification response confirming that 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 (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 February 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on March 20, 2009.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 26, 2009. 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.
Complainant alleges that it is the largest retailer in France of video games and game consoles, with more than 300 retail outlets throughout the country. Complainant claims to have used the mark MICROMANIA for more than 20 years.
Complainant holds French and international trademark registrations for the mark MICROMANIA going back to 1991 in various international classes. The marks are used in commerce to identify and distinguish Complainant's video games and game consoles.
Respondent appears to reside in the African country of Benin, where, the Panel understands, French is the official language.
Respondent registered the Domain Name <consoles-micromania.com> on July 7, 2008. For several months thereafter, the Domain Name resolved to a French-language website that closely resembles Complainant's own website (located at <micromania.com>). The word “consoles” has the same meaning in both English and French. Consumers visiting Respondent's website were offered for sale video games, consoles, and accessories.
It is further alleged that a number of consumers attempted to make purchases at Respondent's site via credit card, but never received the goods in question. Complainant asserts that Respondent is engaged in “phishing fraud”, and that several consumer complaints have been lodged with the French police.
Respondent's website was shut down by the hosting firm in December 2008, at the request of Complainant's counsel.
Complainant's factual contentions are set forth in the “Factual Background” section above. These contentions are supported with documentary evidence annexed to the Complaint, and undisputed by Respondent. Complainant's arguments will be discussed in the “Discussion and Findings” section below.
Respondent did not reply to Complainant's contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Complainant clearly has rights in the mark MICROMANIA through registration and extensive use. The Domain Name incorporates the entirety of Complainant's MICROMANIA mark and appends the purely descriptive term “consoles”. Because selling consoles is one of Complainant's chief commercial activities, the addition of the term “consoles” to the mark only deepens the confusing similarity between the mark and the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 (Apr. 22, 2003), rightly observed as follows: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.”
As noted above, Respondent did not file a Response and, as such, did not attempt to rebut any of Complainant's assertions or justify its conduct. Complainant contends that Respondent has never been authorized to use Complainant's mark in any manner, including within a domain name. Under the circumstances presented here, this assertion is easily accepted as true.
There is no evidence that Respondent is commonly known by the disputed Domain Name. Moreover, Respondent's maintenance of a website featuring the MICROMANIA mark cannot be considered a bona fide use under the Policy. There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another's trademark in one's domain name and the commercial use of the domain name in a corresponding website do not confer rights or legitimate interests upon the owner of such a domain name. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (Dec. 11, 2000) (“it would be unconscionable to find that a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the complainant's mark and for the same business”).
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Complainant relies chiefly on paragraph 4(b)(iv) of the Policy, quoted immediately above, to support its bad faith argument.
The Panel finds it more likely than not that Respondent had Complainant's mark in mind when registering the Domain Name. In addition to the confusing similarity between the mark and the Domain Name, Respondent's website bears graphic resemblance to Complainant's site, and solicits consumers interested in purchasing the very type of goods that Complainant vends. The Panel therefore concludes that Respondent registered the Domain Name with the intention of seeking to attract, for commercial gain, Internet visitors to his web site by creating confusion between the Domain Name and Complainant's mark.
The Panel also notes that bad faith could be found here on the basis of Respondent's allegedly fraudulent activity in connection with the Domain Name and corresponding website. Respondent did not bother to rebut these serious allegations.
Accordingly, because bad faith registration and use exists under paragraph 4(b)(iv), the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
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 <consoles-micromania.com> be transferred to Complainant.
Robert A. Badgley
Dated: March 30, 2009