WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fédération Internationale des Logis v. Adrian Monticone

Case No. D2013-1119

1. The Parties

The Complainant is Fédération Internationale des Logis of Paris, France, represented by Cabinet Germain & Maureau, France.

The Respondent is Adrian Monticone of Cordoba, Argentina.

2. The Domain Name and Registrar

The disputed domain name <logihotels.com> (the “Disputed Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2013. On June 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 21, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on June 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 18, 2013. The Respondent sent an email communication to the Center on July 1, 2013. However, the Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on July 19, 2013.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on July 26, 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 Fédération Internationale des Logis, incorporated in France. It is primarily in the business of establishing and operating over 2,600 hotels throughout Europe since 1949. The Complainant owns two European Community trade mark registrations numbered 6467872 and 6467773 LOGIS since 2007 and has registered the domain name <logishotels.com> in September 2007.

The Respondent is an individual named Adrian Monticone from Cordoba, Argentina. He registered the Disputed Domain Name on 30 June 2012.

At the moment of the filing of the Complaint, the content the Disputed Domain Name showed links relating to third parties.

5. Parties’ Contentions

A. Complainant

The Complainant states the following:

a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s LOGIS trade mark, in which the Complainant has rights:

i. the Complainant owns two European Community trade mark registrations numbered 6467872 and 6467773 for LOGIS since 2007;

ii. the Complainant's domain name <logishotels.com> is confusingly similar to the Disputed Domain Name. The only difference between the Complainant's domain name and the Disputed Domain Name is the absence of an “s” behind “logi”. This is a classic example of typo-squatting to lure Internet users to the website to which the Disputed Domain Name resolves (“Respondent’s Website” or “Website”) and is confusingly similar to the Complainant's “LOGIS” trade mark within the meaning of paragraph 4(a)(i) of the Policy; and

iii. the inclusion of the generic word “hotels” as a suffix in the Disputed Domain Name does nothing to distinguish the Complainant's LOGIS trade mark. This is especially the case since the generic word “hotels” describes the Complainant's business activities.

b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:

i. the Respondent does not own any trade marks for LOGIS or LOGIHOTELS, is not commonly known by the name LOGIS or LOGIHOTELS, and has not done business under that name;

ii. the Complainant has not authorised the Respondent to own or use any domain name incorporating the LOGIS trade mark; and

iii. the Disputed Domain Name is not being used in connection with a bona fide offering of goods or services or for legitimate fair use purposes. The Disputed Domain Name contained hyperlinks advertising third party websites (“Links”), including websites of companies in competition with the Complainant's business.

c) The Disputed Domain Name has been registered and is being used in bad faith:

i. by linking the Disputed Domain Name to Links which relate to hotels, the Respondent has been 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 Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website; and

ii. the Respondent is Argentinian, but the Website is entirely in French. This is further evidence that the Respondent registered the Disputed Domain Name with a slight misspelling primarily for the purpose of attracting or diverting Internet users from the Complainant’s website to the Respondent’s parking page for commercial gain.

B. Respondent

The Respondent did not submit a formal Response. However, the Respondent sent an email communication to the Centre on July 1, 2013, stating it was not the owner of the disputed domain name, asking the Centre not to send any email to him and to solve the dispute directly with the Registrar.

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a formal Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(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 by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in respect of the LOGIS trade mark on the basis of its European Community trade mark registrations since 2007.

It is a well-established rule that a domain name which contains a common or obvious misspelling of a trade mark normally will be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or principal component of the domain name (see Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971). The Panel is of the view that the absence of the “s” after “logi”, does not add any distinctiveness to the Disputed Domain Name.

Further, where the distinctive and prominent element of a domain name is the complainant’s mark and the only addition is a generic term that adds no distinctive element, such an addition does not negate the confusing similarity between the domain name at issue and the mark (See LEGO Juris A/S v. huangderong, WIPO Case No. D2009-1325; National Football League v. Alan D. Bachand, Nathalie M. Bachand d/b/a superbowl-rooms.com, WIPO Case No. D2009-0121; National Football League v. Peter Blucher d/b/a BluTech Tickets, WIPO Case No. D2007-1064).

In this case, the expression “logi”, which is confusingly similar to the Complainant's LOGIS trade mark, is the distinctive and prominent component of the Disputed Domain Name. The addition of the word “hotels” does nothing to distinguish it from the Complainant's LOGIS trade marks. Given that the Complainant is a well-known hotel chain which operates the website “www.logishotel.com”, the addition of the generic and descriptive word “hotels” may further confuse Internet users into thinking that the Disputed Domain Name is connected to the Complainant’s brand.

Lastly, in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level domain extension, in this case “.com” may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).

Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s LOGIS registered trade marks in which it has rights or interests, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Panel accepts that the Respondent is not a licensee nor associated with the Complainant in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s LOGIS trade mark. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of a LOGIS trade mark anywhere in the world or any evidence that it has become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. As the Respondent did not submit a formal Response to the Complainant’s contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

The Respondent “parked” the Disputed Domain Name with advertisements automatically generated by a parking company. If the Links are genuinely based on the generic value of a domain name, that generally would be a fair use because there are no trade mark rights implicated by the landing page (see The Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 285459). However, if the parking pages (or “Pay-Per-Click links”) on the Disputed Domain Name resolve to websites where goods or services competitive with those of the Complainant are shown, the use of a Disputed Domain Name would not confer rights or legitimate interests arising from a bona fide offering of goods or services or from legitimate noncommercial or fair use (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).

At the time this Decision was written, the Respondent had taken down the sponsored Links. Nonetheless, the Complainant had produced snapshots of the Website prior to the Links being taken down.

As demonstrated by the Complainant’s evidence, the Links resolve to websites of the Complainant’s competitors, specifically advertising and promoting other hotel chains and online hotel booking websites. Since these Links are directly in competition with the Complainant, the Panel is of the opinion that the Disputed Domain Name was not being used by the Respondent in connection with a bona fide offering of goods and services (paragraph 4(c)(i) of the Policy).

Given the abovementioned circumstances, the Panel is of the opinion that the Respondent registered the Disputed Domain Name with the Complainant’s trade mark in mind to take advantage of Internet users who mistyped the Complainant’s domain name and are instead diverted to the Respondent’s Website for the Respondent’s commercial gain and profit. Such use is not considered a bona fide offering of goods or services under the Policy.

For these reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The fact that the Respondent has registered the Disputed Domain Name without having any rights or legitimate interests in it is of itself evidence of bad faith on the part of the Respondent.

As addressed in the preceding heading, the Disputed Domain Name was “parked” and used to automatically generate sponsored links. Previous UDRP panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content as is the case with automatically generated hyperlinks. Whether the presence of advertising or links under such arrangement would constitute evidence of bad faith would depend on whether or not the Respondent can show some good faith attempt toward preventing inclusion of links which profit from trading on the Complainant’s trade mark (see Owens Corning v. NA, WIPO Case No. D2007-1143).

In this case, the Panel finds that the sponsored Links create a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Disputed Domain Name, as established by the fact that the Disputed Domain Name is confusingly similar to the Complainant’s LOGIS trade mark and the Complainant’s own domain name. Given that the Website at the Disputed Domain Name includes hyperlinks to websites offering competing products to the Complainant aggravates the likelihood of confusion. While the Respondent is Argentinian, the Disputed Domain Name is in French, which appears to be the preferred language of the majority of the Complainant’s clientele. The Panel is of the view that the language of the Website was deliberately chosen to target users who were looking for the Complainant’s services,. As a result, the Panel accepts that the Respondent is using the Disputed Domain Name in bad faith.

In addition, using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to the Website in an effort to trade on the Complainant’s goodwill is evidence of bad faith registration and use under the Policy (see Adobe Systems Incorporated v Domain OZ, WIPO Case No. D2000-0057). The Panel is of the opinion that this is a clear case of typo-squatting and that the Respondent deliberately registered the Disputed Domain Name with a slight misspelling with intent to attract or divert Internet users from the Complainant’s Website to the Respondent’s parking Web page for commercial gain. This constitutes irrefutable evidence of bad faith.

Lastly, it is also a well-established principle that registration of a domain name that is confusingly similar to a famous trade mark by any entity that does not have a relationship to that mark is itself sufficient evidence of bad faith registration and use (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Given that the Complainant is a well-known hotel chain with over 2,600 establishments, the Respondent is more likely than not to be well aware of the reputation and business activities of the Complainant. There is no plausible explanation as to how the Respondent could have come up with the confusingly similar Disputed Domain Name but to suggest an association with the Complainant’s mark and business.

For these reasons, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <logihotels.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: August 9, 2013