WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SCM France (formerly Editions Aixoises Multimédia) v. PrivacyProtect.org/Cyber Domain Services Pvt.Ltd.
Case No. D2011-0953
1. The Parties
The Complainant is SCM France (formerly Editions Aixoises Multimédia) of Paris, France, represented by Pierre-Olivier Lambert, Esq., France.
The Respondent is PrivacyProtect.org of Queensland, Australia and Cyber Domain Services Pvt.Ltd. of Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <lesbonscoins.com> is registered with Tirupati Domains and Hosting Pvt Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2011. On June 6, 2011, the Center transmitted by email to Tirupati Domains and Hosting Pvt Ltd a request for registrar verification in connection with the disputed domain name. On June 8, 2011, Domains and Hosting Pvt Ltd. 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 June 10, 2011 the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 17, 2011.
The Center verified that the Complaint, together with the amendment to 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 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2011. The same trademark as in the present proceedings.
The Center appointed J. Nelson Landry as the sole panelist in this matter on August 1st, 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.
On August 9, 2011, the Complainant requested the Center to bring to the attention of the Panel a recent decision involving the same Complainant and its same Trademark, SCM France (anciennement Editions Aixoises Multimédia) contre Private Whois Service, WIPO Case No. D2011-0891 which consideration of the decision will be commented under item 6 herein.
4. Factual Background
The Complainant operates since 2006, under its trademark LE BON COIN the Internet website <leconcoin.fr>, which enables users to publish, free of charge, local classified advertisements in more than 400 categories, such as, without limitation, cars, furniture, personal computers and other computer products, clothing, books, CDs/DVDs, toys/games and numerous other products. This service is also available on mobile phones.
The Complainant owns the French trademark LE BON COIN registered on April 7, 2006, in France, in association with classes 09, 16, 35, 36, 38, 39, 40, 41 and 42 to designate advertising services, business management services, commercial administration, rental of advertising space and dissemination of advertising matter, i.e., publication of classified advertisements (herein the “Trademark LE BON COIN” or the “Trademark”).
The Complainant registered on May 26, 2006 and owns the domain name <leboncoin.fr>.
The Complainant site’s attendance is impressive as it appears from the following data: 15 million classified advertisements available on the web site; 5 billion pages viewed each month; 3 million visits per day; 500 000 new classified advertisements posted each day; 15 500 000 mobile users of 43 400 000 persons equipped with a cell phone; the site ranked 18th in the list of the most visited websites by mobile phone users and 12th most visited site in France; in 2010, 3.2 million at least having posted one classified ad and one person out of 5 residing in France and finally, the domain name <leboncoin.fr> has been the 2nd most popular request in the Google/Zeitgeist ranking, behind Facebook considering that; 1/3 of the Internet users visiting the Complainant’s website.
The Respondent registered the disputed domain name on February 22, 2007 and it was updated on January 28, 2011.
The Complainant has never authorized, licensed or otherwise permitted the Respondent to use its Trademark LE BON COIN nor to register and use the disputed domain name, and the Complainant does not have any type of business relationship or affiliation with the Respondent.
5. Parties’ Contentions
The Complainant submits that while the disputed domain name which has in English the same meaning as the good corners is not identical to the Complainant’s Trademark which is in the singular sense, however, the disputed domain name incorporates the whole of the Complainant’s Trademark and conveys the same meaning to the reader in the plural sense and can therefore be easily confused by an Internet visitor.
According to the Complainant, the disputed domain name, <lesbonscoins.com> is the same expression in the plural form as the Trademark LES BONS COINS of the Complainant and also of its registered domain name <leboncoin.fr> and its Trademark LE BON COIN is comprised of generic and descriptive terms which can be translated as “the good corner” and the disputed domain name is comprised of the same generic and descriptive words in the plural form and translated as “the good corners”. Both, the disputed domain name and the Complainant’s Trademark, are phonetically similar and incorporate the predominant element of the Trademark. These slight variations of domain names with a registered trademark have previously been considered by earlier UDRP panels in their decisions to conclude to confusing similarity. See Humana, Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323; Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578 and Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.
The Complainant further submits that the dominant element of the disputed domain name is identical to the Complainant’s Trademark except for the addition of the letter “s” which does not alter the overall impression of the similarity of the disputed domain name and the Complainant’s Trademark whether considered from a conceptual, visual, phonetic or an idea suggested point of view. The Complainant therefore contends that the disputed domain name is confusingly similar to its Trademark. See Institut Straumann AG v. Core-Vent Corporation, WIPO Case No. D2000-0404.
The likelihood of confusion is further confirmed by the practice of typosquatting that the Respondent engaged in herein. See ACCOR v. Brigit Klostermann, WIPO Case No. D2005-0627; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.
According to its searches in trademark data bases, the Complainant did not find any trademark including the words “les bons coins” registered in the name of the Respondent in France or in any of the European countries and therefore, contends that the Respondent does not hold any trademark rights for these terms and further adds that the registration of the disputed domain name does not establish any rights or legitimate interests for the Respondent in respect of the disputed domain name. See National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118.
The Complainant contends that the Respondent is not known under the trade name or corporate name “Les Bons Coins” pursuant to searches it has made and the website at the address of the disputed domain name does not provide any information about the Respondent.
The Complainant states that it has never authorized, licensed or otherwise permitted the Respondent to use its Trademark LE BON COIN nor to register and use the disputed domain name and that it does not have any type of business relationship or affiliation with the Respondent.
Considering the fact that the disputed domain name is operated in connection with the offering of sexually explicit and pornographic content and images, the Complainant represents that the Respondent is not making a bona fide use of the disputed domain name. The Complainant concludes his representations on the second criterion in stating that the Respondent has no rights or legitimate interests in the disputed domain name.
According to the Complainant, since the registration of the disputed domain name was made subsequent to the registration of its Trademark LE BON COIN and of the Complainant’s domain name <leboncoin.fr> when the services offered by the Complainant were becoming more and more popular with the French public, along with the growing revenue from the online services of the Complainant, the registration of the disputed domain name comprising French words to operate a website available in France cannot be regarded as fortuitous since a simple search on available trademark data bases by the Respondent would have caused the Respondent to discover the existence and registration of its Trademark.
The Complainant contends that the confusing similarity between the Complainant’s Trademark and the disputed domain name confirms that the Respondent had the intention to attract for commercial gain Internet users to its website by creating a likelihood of confusion with its Trademark and that the presence of sexually explicit and pornographic contents on the Respondent’s website is also capable of tarnishing the Complainant’s Trademark and therefore contends that these facts and activities constitute prima facie evidence substantiating that the domain name is used in bad faith. Furthermore such conclusion of reputation and Trademark tarnishment has been highlighted before by panels in similar UDRP cases. See ABB Asea Brown Boveri Ltd. V. Quicknet, WIPO Case No. D2003-0215; America Online v. Viper, WIPO Case No. D2000-1198; MatchNet PLC v. MAC Trading, WIPO Case No. D2000-0205; America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661; Caesars World, Inc. v. Alaiksei Yahorau, WIPO Case No. D2004-0513.
The Complainant concludes in submitting that the disputed domain name was registered and used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Admissibility of the recent case brought to the attention of the Panel by the Complainant
The Center, at the request of the Complainant, submitted on August 9, 2011, for consideration by the Panel the recent decision rendered in respect of the same Trademark of the Complainant. In this recent decision, a similar offer was made subsequent to the delay stipulated in the Policy and the Rules but in respect of the admissibility of additional observations made by the Complainant which is not exactly the case herein where the Complainant brings to the attention of the Panel, additional jurisprudence or an earlier decision.
While this earlier decision did involve the same Trademark, as in the present case, the facts pertaining to the rights and activities in bad faith of the Respondent are in part different. The two points of interests that might be applicable herein are, first the analysis and finding of the Panel in respect of the trademark rights of the Complainant and second the content on the website of the respondent which contains references to explicit pornographic content as in the present case.
The Panel is satisfied with the impressive evidence already adduced by the Complainant in respect of its Trademark, its use prior to the registration of the disputed domain name and the continued use and substantial increase in popularity as substantiated with significant data reported herein on the one hand and the clear representations well supported with reference to earlier panel decisions on the other hand.
The Panel herein does not see the need to rely on the earlier finding of the Panel in the said recent decision referred to support this Panel’s own finding other to observe that both panels come to a common decision as to the rights of the Complainant in its registered Trademark and the activities of the Respondent using the disputed domain name in bad faith.
7. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for the domain name to be cancelled or transferred:
(i) 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
(ii) The 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.
A. Identical or Confusingly Similar
In this particular situation, the registered Trademark in issue is associated in classes 09, 16, 35, 36, 38, 39, 40, 41 and 42 with advertising services, business, management services and other kind of services as describes herein and these services are rendered in the posting of local classified advertisements on the Internet at a website address “leboncoin.fr”. The Trademark LE BON COIN was registered in France on April 7, 2006 and the website under the domain name <leboncoin.fr> was registered subsequently. According to its evidence, the Complainant operates its Internet website under the Trademark LE BON COIN since 2006, pursuant to the registration of the tradename LE BON COIN.FR since May 2006, the date on which it was enrolled with the Registry of companies of Paris in respect of its commercial activities relating to the provision of said Internet and e-commerce services.
While the impressive data showing the popularity of the Complainant’s website with Internet visitors, in Annex K of the Complaint, includes substantial data and information of about 2010 and does not segregate data prior to and after the registration of the disputed domain name, one can appreciate that these development and reputation were built and enlarged progressively since May 2006 to be significant prior to February 22, 2007, the date on which the disputed domain name was registered.
The Panel finds that the Complainant has rights in the Trademark LE BON COIN which was used since at least May 2006.
The disputed domain name comprises the whole of the Trademark LE BON COIN to which the letter “s” has been added to the three terms to put the said terms in the plural. The idea conveyed by the Trademark in the singular and the disputed name in the plural is the same, even phonetically. The other difference is that the gTLD suffix “.com” has been added. As represented by the Complainant, this is a form of typosquatting that has been considered for many years by numerous panels which have determined that such activity or practice is creating domain names confusingly similar to the trademark in issue. The Panel considers and endorses the citation of the Complainant in the decision ACCOR v. Brigit Klostermann, supra and Ross-Simons, Inc. v. Domain.Contact, supra. The Panel does not see the need to reiterate the other panels’ decisions referred to by the Complainant herein to find that the disputed domain name is confusingly similar to the Trademark of the Complainant.
The Panel finds that the first criterion has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name, is not making any legitimate non-commercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant’s Trademark. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademark.
The Complainant has clearly shown that pursuant to searches to find the evidence of the Respondent known by operating under or associated with the expressions “le bon coin” or “les bons coins” it has not located any facts to support such possibility which is not surprising when you consider these two French expressions on the one hand and the fact that the Respondent, registrant of the disputed domain name, and the Registrar are respectively located in Australia and India, predominantly English speaking as the first or second language.
As the Complainant represents, upon relying on earlier panel decisions, such as National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, supra, the mere registration of a domain name does not establish rights or legitimate interests in respect of a domain name and the kind of activities engaged in by the Respondent under the disputed domain name, such a typosquatting and redirecting confused internet visitors to sexually explicit and pornographic advertisements for a profit do not constitute use of the disputed domain name in good faith, but the contrary.
Finally considering that the disputed domain name was registered without the consent, authorization or acquiescence of the Complainant, the Panel concludes that there is no evidence in support of the Respondent on this criterion and therefore the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain name was registered and used in bad faith.
At the time that the Respondent registered the disputed domain name on February 22, 2007, the Complainant had already registered its Trademark LE BON COIN, its registration of trade name as a business concern and the domain name <leboncoin.fr> , at which address he had been operating its Internet website <www.leboncoin.fr> under its Trademark and already had significant use of the Trademark and good will associated therewith.
The Panel considers that the selection and registration of the disputed domain name comprised of the same three French words otherwise identical to the Trademark and the Complainant’s domain name, both consisting of the same words in the singular form cannot be a coincidence, particularly when the registrant and registrar are from Australia and India, non- French speaking countries. These facts combined with the finding herein that the Respondent was not known nor has before used “les bons coins” as a tradename or a trademark are sufficient, in this Panel’s view, to conclude that the choice of the disputed domain name was deliberate and it was registered in bad faith.
This bad faith, initiated with the registration, is not an isolated fact, it is the first step of a plan colored by bad faith as it appears from the use of the disputed domain name as the address of a website operated by the Respondent to advertise sexually explicit and pornographic contents. As already decided by many earlier panels, this publication of sexually explicit and pornographic content does, in fact, tarnish the Trademark of the Complainant as well as the goodwill and notoriety of its services. This characterization of bad faith use of a domain name is at least characterized by panels since more than a decade. As held by the panel in the case MatchNet plc v. Mac, supra, the earliest of many decisions cited by the Complainant in this respect, the panel stated that “the Respondent has used its website to furnish sexually explicit and pornographic material under the domain name and in the circumstances, given the likelihood of confusion, there is a prima facie case that this could tarnish the Complainant’s goodwill in its common law service mark”. The Panel concurs with this statement and does not see the need of reproducing the numerous additional citations from subsequent decisions mentioned by the Complainant.
The substantial evidence adduced by the Complainant is convincing, has not been the basis of any response, comment or challenge and this silence of the Respondent in the present situation is not a surprise to this Panel.
The Panel finds that the disputed domain name has been registered and used in bad faith by the Respondent and that the third criterion has been met.
The Panel concludes that:
(a) the disputed domain name <lesbonscoins.com> is confusingly similar to the Complainant’s Trademark;
(b) the Respondent has no rights or legitimate interests in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lesbonscoins.com> be transferred to the Complainant.
J. Nelson Landry
Dated: August 15, 2011