WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CIAT - Compagnie Internationale André Trigano v. Milan Kovac
Case No. D2012-2465
1. The Parties
The Complainant is CIAT - Compagnie Internationale André Trigano of Paris, France, represented by Brema-Loyer, France.
The Respondent is Milan Kovac of Bratislava, Slovakia.
2. The Domain Name and Registrar
The disputed domain name <andretrigano.com> (the “Domain Name”) is registered with Hebei Guoji Maoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co., Ltd dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2012. On December 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 17, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 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 amended Complaint on December 21, 2012. The Center sent an email communication to the Parties on December 18, 2012 requesting the Parties to submit their comments regarding the language of the proceeding. The Complainant submitted its request that English be the language of the proceeding on December 20, 2012. No submission was received from the Respondent by the specified due date.
The Center verified that the Complaint together with the amended 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 December 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2013.
The Center appointed Mihaela Maravela as the sole panelist in this matter on January 21, 2013. 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 is a French-based company registered with the French trade registry since 1973, and a fairly-known European provider of hotel, camping and booking of campground accommodation services. It was founded by Mr. André Trigano, currently the company’s President of the Supervisory Board. Mr. André Trigano is also a well-known figure in at least some area of France, for his both commercial and political activity.
The Complainant is the owner of the French trademark LES ETAPES ANDRE TRIGANO, No. 1349083, filed on April 3, 1986.
The Complainant is also the owner of several Community trademark registrations integrating the name of its founder, “André Trigano”, including:
a. VACANCES ANDRE TRIGANO, Registration No. 006535991, filed on December 7, 2007;
b. CAMPINGS ANDRE TRIGANO, Registration No. 010465532, filed on December 2, 2011;
c. ANDRE TRIGANO HOLIDAYS, Registration No. 010465573, filed on December 2, 2011;
d. ANDRE TRIGANO, Registration No. 010465466, filed on December 2, 2011.
The Complainant further owns several domain names, also comprising the name of its founder, “André Trigano”, including <andre-trigano.com>, created on November 18, 1997 and continuously used since.
The Domain Name was registered on January 4, 2007. At the time of filing the Complaint, the Domain Name resolved to a portal website hosting sponsored listings to various third party websites offering services in the same field as the Complainant, and also to two of the Complainant’s official websites (“www.vacancesandretrigano.com” and “www.campeole.com”).
5. Parties’ Contentions
The Complainant makes the following contentions:
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant points that it is one of the European leaders in the field of hotels, camping and booking of campground accommodation services, and that in the performance of its business it relies on trademark registrations, both French national registrations (since 1986) and Community registrations, which incorporate as a distinctive part the name of the Complainant’s founder, Mr. André Trigano. Also, it is stated in the Complaint that the Complainant is the owner of several domain names comprising the distinctive name André Trigano (the oldest, <andretrigano.com>, since 1997), and has been using such domain names substantially and continuously to date.
The Complainant further indicates that the surname and the first name of Mr. André Trigano are unusual in France, so that the trademarks evoked are highly distinctive for goods and services concerned (hotels, restaurants, rental of tents, booking of accommodation in campsites).
The Complainant purports that the Domain Name reproduces the distinctive and dominant part of the Complainant’s trademarks and domain names, namely the patronymic name “André Trigano”, which obviously creates a risk of confusion with the prior trademark LES ETAPES ANDRE TRIGANO and the prior domain names of the Complainant, especially that the Domain Name redirects to websites of competitors of the Complainant and also toward two of the official websites of the Complainant.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant states that it has not granted, assigned, licensed, sold or transferred any rights in its trademarks, domain names, company name or patronymic name to the Respondent, and the fact that the Complainant had not registered the Domain Name itself cannot give any rights therein to the Respondent.
Further, it is claimed that the denomination “André Trigano” is neither a common noun, nor a common name; therefore the choice of a domain name made of this denomination is only motivated by the will to create an illegitimate association with the Complainant.
The Complainant also contends that the Respondent is not using the Domain Name in connection with any bona fide offering of goods and services, since its only purpose is to divert the Internet users to commercial/advertisement sites by using the Complainant’s notoriety.
The Domain Name was registered and is being used in bad faith.
The Complainant claims that the Respondent should have reasonably known of the Complainant’s existence when he registered the Domain Name, as he could have easily found the Complainant’s rights by searching the name “André Trigano” as a keyword on Google search engine. Bad faith registration and use are also proven by the fact that the disputed registration prevents the Complainant from reflecting its main trademark in the most needed and valuable gTLD, notably in order to promote its activity, which seriously harms and disrupts Complainant’s business.
Further, the Complainant alleges that the Respondent deliberately inserted links on the website attached to the Domain Name to websites of the Complainant’s competitors, with the intent to cause harm to it, and to two of the Complainant’s websites, without prior authorization (“www.campeole.com” and “www.vacancesandretrigano.com”).
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceeding
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complaint and the amended Complaint were both submitted in English.
As confirmed by the Registrar in its email communication of December 17, 2012, the language of the Registration Agreement is Slovak.
The Complainant, upon receiving a notification from the Center that the language of the Registration Agreement was Slovak, submitted a request for this dispute to proceed in English, providing therewith arguments and evidence in support of the language of the proceeding being English.
The Complainant put forth the following arguments on the issue of the Respondent being familiar with the English language:
b. Correspondence with the Registrar was conducted in the English language, while the Registrar’s website incorporates English, which shows the Respondent’s familiarity with this language;
c. The Respondent has a history of registering domain names which pointed to websites incorporating English words;
d. The Respondent has been previously involved in UDRP proceedings carried in English.
The Complainant further indicates that translations into Slovak would substantially and disproportionately increase their costs.
The Respondent has been given fair opportunity to object to the Complainant’s choice of English as the language of the proceeding but no language submission has been filed by the Respondent, nor has he in any way participated in the proceeding.
The Panel notes that the website to which the Domain Name resolves includes significant content in English, therefore being reasonable to assume that the Respondent is able to communicate in English. Furthermore, the Respondent had fair opportunity to object to the Complainant’s language request.
The Panel further notes that the Respondent has been involved in some twenty prior UDRP cases, in most of which the proceedings were carried in English pursuant to the panel finding the Respondent to have sufficient knowledge of the English language (including Louise Rennison v. Milan Kovac, WIPO Case No. D2012-0211; John Greed Jewellery Ltd v. Privacy--Protect.org/Milan Kovac, WIPO Case No. D2011-1532; B & Q plc v. Milan Kovac, WIPO Case No. D2011-1420; Barclays bank Plc v. BARCLAYSCAPITALCAREERS.COM Privacy--Protect.org/Milan Kovac, WIPO Case No. D2011-1015; The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069).
The Panel further takes due note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which states that: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (paragraph 4.3) and of the established practice in determining the language of the proceeding so as to ensure fairness, equality of arms and an inexpensively as possible dispute resolution avenue to both parties (see L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585; Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Crocs Inc. v. Alex Xie, WIPO Case No. D2011-1500).
Under these circumstances, exercising the discretion conveyed upon it as per paragraph 11 of the Rules judicially and with fairness to both Parties, the Panel determines that the English language as the language of the proceeding shall best balance the positions of both parties and therefore allows the proceeding to be conducted in English.
B. Respondent’s Identity-Due process
According to initial WhoIs domain name search enquiries, submitted by the Complainant in evidence, the Respondent had used the privacy service offered by the Registrar and was only known as “ANDRETRIGANO.COM, Privacy Protect, General Delivery/Poste restante, 855 Tianyaoqiao Lu, 2000 Shangai, China”. During the course of the verification process, the Registrar, in response to the Center’s verification request, subsequently provided the registrant name of “Milan Kovac”, with the contact details as set out above.
This suggests that a privacy service was in use, to shield the identity of the Domain Name registrant from the general public. In general, there may be wholly legitimate reasons for a person wishing to protect privacy by means of a proxy service. As has been noted by previous UDRP panels, the use of privacy services is becoming an increasingly common occurrence, and is a trend which is likely to continue. Under such arrangements the name of the “true” underlying or beneficial registrant is typically not displayed in the registrar’s publicly accessible WhoIs database, and is instead disclosed (if at all) only after the Complaint has been filed.
Further, where information is available to the Center through either a change in the registration information or through a communication from the Registrar to the provider, the Center generally invites that the Complainant amend its Complaint. Consequently, the Complainant amended its Complaint and named “Milan Kovac” as the Respondent.
Paragraph 1 of the Rules defines Respondent as the “holder of a domain-name registration against which a complaint is initiated”. The Panel must therefore identify the appropriate Respondent(s) in this case. This leads to the question, addressed by previous UDRP panels as well, whether a privacy service provider should be considered as the Respondent or one of the Respondents in the administrative procedure, should the identity of the real registrant be disclosed before the procedure starts. In such previous cases UDRP panels either (1) treated both the initially listed registrant (privacy service provider) and the subsequently disclosed registrant as the Respondent (Ohio Savings Bank v. 1&1 Internet, Inc. and David Rosenbaum, WIPO Case No. D2006-0881; Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642; TDS Telecommunications Corporation v. Registrant  Nevis Domains and Registrant  Moniker Privacy Services, WIPO Case No. D2006-1620); or (2) elected to disregard the privacy service provider entirely and to analyze only the acts of the underlying registrant (Costco Wholesale Corporation and Costco Wholesale Membership Inc. v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638; The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services , WIPO Case No. D2007-1438; Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070).
Seeing that the Registrar provided the information regarding the Domain Name registrant before the proceedings were formally notified (see Hoffmann-La Roche Inc. v. Aditya Roshni, Web Services Pty, WIPO Case No. D2008-1086), that “Milan Kovac” is the confirmed Domain Name holder and that the Complainant named “Milan Kovac” as the Respondent, the Panel elects to treat Milan Kovac as the Respondent in this case.
Based on the methods employed to provide the Respondent with notice of the Complaint and on the Respondent’s obligation under the Registration Agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center. The Panel is satisfied that the Complaint was properly notified to the Respondent, that “Milan Kovac” is the registrant of the Domain Name and therefore the Respondent.
Because the Respondent has defaulted in providing a response to the allegations of the Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (paragraph 14(a) of the Rules), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations (paragraph 15(a) of the Rules).
“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 15(a) of the Rules).
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The Panel has verified, in accordance to paragraph 4.5 of the WIPO Overview 2.0, the trademark registrations indicated by the Complainant in its Complaint and is satisfied that the Complainant is the owner, inter alia, of the following registrations:
a. LES ETAPES ANDRE TRIGANO, French Registration No. 1349083, filed on April 3, 1986;
b. VACANCES ANDRE TRIGANO, Community Registration No. 006535991, filed on December 7, 2007;
c. CAMPINGS ANDRE TRIGANO, Community Registration No. 010465532, filed on December 2, 2011;
d. ANDRE TRIGANO HOLIDAYS, Community Registration No. 010465573, filed on December 2, 2011;
e. ANDRE TRIGANO, Community Registration No. 010465466, filed on December 2, 2011.
The Panel has no doubt that “André Trigano” is a term directly connected with the Complainant’s offering of services in relation to hotels, restaurants, rental of tents, booking of accommodation in campsites, as it is incorporated both in the Complainant’s business name and in its trademark registrations, as conveyed above.
While the UDRP does not specifically protect personal names, in situations where a personal name, or a dominant part of it, is also registered as a trademark and is used as a distinctive identifier of goods or services - such as “André Trigano” - the protection is accepted (see paragraph 1.6 of the WIPO Overview 2.0; see also Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540; Chinmoy Kumar Ghose v. ICDSoft.com and Maria Sliwa, WIPO Case No. D2003-0248; David Pecker v. Mr. Ferris, WIPO Case No. D2006-1514; Jacques Chardeau, inter alia v. MindViews, LLC, WIPO Case No. D2008-0778; Vanisha Mittal v. firstname.lastname@example.org, WIPO Case No. D2010-0810; Institut Merieux v. Summit Services LLC, WIPO Case No. D2011-0974).
Moreover, the Panel notes that “André Trigano” is the distinctive and dominant element of the Complainant’s prior trademarks: the words “etapes”, “vacances” or “campings” are generic terms.
As to the matter of confusing similarity for the purposes of the Policy, the Panel has proceeded to compare the Domain Name to the trademark rights which have been proved.
The Domain Name incorporates entirely, and is formed of the distinctive part of the Complainant’s trademarks, namely the personal name of the Complainant’s founder, “André Trigano”, serving to accentuate the likelihood of confusion between the Domain Name and the Complainant's trademark. It would hence be reasonable to presume that an Internet user would normally associate the Domain Name and the Complainant’s trademark. The use of the trademark in connection with other words does not lessen the confusing similarity between the Domain Name and the Complainant’s trademark.
In the absence of any argument to the contrary from the Respondent, this Panel concludes that, on balance, the Domain Name is confusingly similar to the Complainant’s trademarks, therefore the requirement of paragraph 4(a)(i) of the Policy is satisfied.
D. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:
(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.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of the disputed domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of proof shifts to the respondent (See paragraph 2.1 of the WIPO Overview 2.0).
In the present case, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in respect of the Domain Name. Namely, the Panel notes that the Respondent is not commonly known by the Domain Name and that the Respondent registered and began using the Domain Name after the Complainant had registered in France the trademark LES ETAPES ANDRE TRIGANO.
By not submitting a response, the Respondent has failed to overturn such prima facie case. Absent any response or defense by the Respondent, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given to the Respondent to use any of its trademarks incorporating the element “André Trigano” (see Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 on absence of license or permission excludes bona fide or legitimate use).
Further, the Panel notes that the Domain Name is used to direct to a portal website with sponsored links to websites of companies providing hotels, camping and booking of campground accommodation services. It is therefore apparent that the Domain Name is used by the Respondent as a form of third party advertising service (see mainly Owens Corning v. NA, WIPO Case No. D2007-1143 and Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364, on the mechanism of “domain name parking” or “pay-per-click” services).
While it is accepted use for a domain name to be used for advertising purposes, it has been established that “if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name” (Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364; see also Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
In this case, the Domain Name reproduces unauthorized the distinctive element of the Complainant’s trademarks (which is also the personal name of its founder) and directs to both websites of the Complainant’s competitors as well as to official websites of the Complainant itself, without the Complainant’s authorization being previously given. Under these circumstances, the Panel finds that the Respondent registered the Domain Name and the website associated with it to profit from the Complainant’s trademark goodwill and reputation, which is incompatible with making a legitimate, noncommercial or fair use of the Domain Name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.
E. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the Domain Name was registered and is being used in bad faith.
In order to assess whether the Respondent registered and uses the Domain Name in bad faith, paragraph 4(b) of the Policy provides examples constituting, prima facie, evidence of bad faith.
While the examples are indicative (see Nova Banka v. Iris, WIPO Case No. D2003-0366), paragraph 4(b)(iv) of the Policy has direct bearing to the present case:
“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 said website location or of a product or service on that website location.”
The Panel notes that at the time of the Domain Name registration, the Complainant was already established and had been carrying out its business in association with the trademark LES ETAPES ANDRE TRIGANO since 1986, while it had been using the domain name <andre-trigano.com> since 1997. Therefore, it would be improbable for the Respondent not to have been aware of the Complainant’s reputation and business, especially that the Domain Name reproduces the name of the Complainant's founder.
The Respondent’s registration of the Domain Name, wholly incorporating the distinctive element of the Complainant’s trademarks (and at the same time the name of the Complainant’s founder), which is used in the Complainant’s line of business, indicates not only that the Respondent was aware of the Complainant’s business but also that he registered the Domain Name to mislead Internet users into thinking it is some way connected, sponsored, endorsed by or affiliated with the Complainant’s services.
Further, the fact that the Domain Name is used as a form of third party advertising service, displaying sponsored links for third party websites that offer competing services in the field of holiday accommodation, shows that the Respondent is free-riding on the goodwill and reputation associated with the Complainant’s trademarks and business with the apparent intention of obtaining pay-per-click royalties, and at the same time disrupts the Complainant’s business by diverting Internet users to competing websites.
It is established practice that such use be considered to demonstrate bad faith (see, for example, Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Institut Merieux v. Summit Services LLC, WIPO Case No. D2011-0974; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
Additional factors retained by the Panel as indicative of bad faith registration and use of the Domain Name include:
a. The Respondent’s choice to register the Domain Name using a privacy service in combination with what is likely to be the provision of incomplete/inaccurate contact information (see paragraph 3.9 of the WIPO Overview 2.0);
b. the Respondent’s failure to respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210);
c. The existence of twenty previous UDRP decisions involving the Respondent, with highly similar factual background, which recently prompted a previous UDRP panel to determine that the Respondent “engages in systematic cybersquatting activities” (AAPC Properties Pty Limited, Accor Australia & New Zealand Hospitality Pty Limited v. Milan Kovac / Privacy Protect, WIPO Case No. D2012-2222).
Therefore, the Panel finds that the Respondent registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <andretrigano.com> be transferred to the Complainant.
Date: February 4, 2013