Complainant is Onduline of Levallois Perret, France, represented by Cabinet Harle et Phelip, France.
The Respondent is Private Registration DO of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <onduclair.com> is registered with Bargin Register Inc. (“Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2011. On July 5, 2011, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the disputed domain name.
Despite several attempts to contact the above indicated Registrar, no reply was received by the Center. Consequently, the Center proceeded on the basis that the appropriate steps had been taken to prevent registrant breach of paragraph 8(a) of the Policy. Moreover, the Center proceeded in this case on the basis that, for the adjudication of disputes concerning or arising from use of the domain name, the domain name registrant had submitted in its Registration Agreement (“RA”) to the jurisdiction of the courts where the Registrar was located.
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 July 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2011.
The Center appointed M. Scott Donahey as the sole panelist in this matter on August 22, 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.
Complainant has several registered trademarks for the mark ONDUCLAIR, the earliest of which issued in 1989. The mark has been registered in conjunction with building materials. As both the Registrar and the Respondent are residents of Grand Cayman, a British Overseas Territory, the trademark registration in the United Kingdom, which issued on May 4, 1993, is the most relevant, (Complaint, Annex 3). The trademark is used in connection with polycarbonate sheets used in the construction industry. (Complaint, Annex 4).
Respondent registered the disputed domain name at issue on January 29, 2009. (Complaint, Annex 1). Respondent uses the disputed domain name to resolve to a website with listed links corresponding to products offered for sale by Complainant, including “Panneaux onduclair” (the French language equivalent of the English “Onduclair sheets”) and “Polycarbonate”. (Complaint, Annex 7). When one clicks on the links indicated, a user is taken to the web sites of Complainant’s competitors. (Complaint, Annex 8).
Complainant alleges that the disputed domain name is identical to its ONDUCLAIR registered trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that Respondent has registered and is using the disputed domain name in bad faith.
Respondent did not file a response to Complainant’s allegations.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
Lack of Registrar Response
Despite repeated attempts by the Center to contact the Registrar in this case to ascertain whether the contact information was correct, to insure that the disputed domain name registration had been locked (such obligation deriving implicitly from the prohibition on registrant transfer of a domain name registration during a pending UDRP proceeding under paragraph 8(a) of the UDRP), and to confirm (or otherwise) the jurisdiction to which the domain name registrant had submitted in its Registration Agreement, the Registrar failed to respond. The apparent lack of diligence by some registrars in complying with their obligations under the Policy and even, as in the present case, ignoring those obligations entirely, is apparently becoming an increasing problem. See e.g. Automobiles Peugeot v.Privacy Protect.org/Domain Adminstrator, Domain Tech Enterprises, WIPO Case No. D2011-1002. The apparent failure in a number of documented instances to effectively motivate registrar compliance under the existing limited domain name system does not bode well for the planned potentially unlimited gTLD rollout proposed by ICANN for January of 2012. This panelist requests that ICANN be notified of its observations in this decision for investigation and follow-up as appropriate, including with respect to the extent of non-compliance by the concerned registrar in this particular case, as well as to (hopefully) serve to inform and motivate registrar-compliance efforts more generally.
This Panel finds that the disputed domain name is identical to Complainant’s ONDUCLAIR mark.
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
(WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), Paragraph 2.1.)
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, this Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name is used to resolve to a website that contains terms descriptive of products supplied by Complainant under its registered trademark ONDUCLAIR, which terms serve as links when clicked on by a user. The links resolve to web sites at which products of Complainant’s competitors are offered for sale. This constitutes bad faith registration and use. (YAHOO! INC. v. David Murray, WIPO Case No. D2001-1319.)
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the domain name, <onduclair.com>, be transferred to Complainant.
M. Scott Donahey
Dated: September 7, 2011