WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nextinteractivemedia v. PrivacyProtect.org / IWS LTD
Case No. D2013-1181
1. The Parties
Complainant is Nextinteractivemedia of Paris, France, represented by Markplus International, France.
Respondent is PrivacyProtect.org of Queensland, Australia / IWS LTD of Ras al-Khaimah, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <01telecharger.biz> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2013. On July 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2013, the Registrar 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 Complainant on July 3, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 9, 2013.
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 Respondent of the Complaint, and the proceedings commenced on July 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 31, 2013.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on August 12, 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 trademarks upon which the Complaint is based are TÉLÉCHARGER, TELECHARGER.COM, GROUPE 01, 01NET, 01 INFO and other combinations of 01 with a variety of suffixes.
According to the documentary evidence and contentions submitted, Complainant owns a number of registrations for said trademarks, including the French Trademark Registrations No. 99.817.112 for Télécharger, filed on October 4, 1999; No. 05/3.352.217 for TELECHARGER.COM, filed on April 11, 2005; No. 11/3.830.502 for 01NET, filed on May 11, 2011; No. 98.766.111 01 INFO, filed on December 23, 1998; No. 00/3.009.824 for 01 BUSINESS, filed on February 24, 2000; and No. 09/3.683.965 for GROUPE 01, filed on October 15, 2009.
Complainant also owns the following domain names: <telecharger.com>, registered on September 3, 1998; <01telecharger.com>, registered on September 1, 1999; <01telecharger.fr>, registered on December 4,2009; and <01net.com>, registered on February 27, 1999.
The disputed domain name was registered on May 12, 2013.
5. Parties’ Contentions
Complainant argues that the disputed domain name is identical or confusingly similar to Complainant’s registered trademarks because (i) the disputed domain name <01telecharger.biz> reproduces the same essential components of Complainant’s trademarks, namely the word “telecharger” preceded by the numbers “01”; and (ii) the addition of the generic extension “.biz” is not sufficient to distinguish the signs and, therefore, to avoid any likelihood of confusion in the public mind.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent is not known under this name and the combination of the characteristics elements does not follow any logics or any necessity to offer an online downloading service; and (ii) Respondent has obviously chosen the disputed domain name only to maintain a likelihood of confusion with the websites “www.telecharger.com” and “www.01net.com” and, accordingly, to divert Internet users for commercial gains.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because (i) Respondent has knowingly registered the equivalent with the “.biz” extension of a domain name which is already owned by Complainant in the “.com” space <01telecharger.com>, and in the “.fr” space <01telecharger.fr>, both redirecting to a very well-known website; and (ii) Respondent takes advantage of the reputation of Complainant’s websites, by redirecting users to a downloading website and, therefore, diverting some clients of Complainant who are misled by the origin of the website. Complainant relies on NEXTINTERACTIVEMEDIA v. MSI Hassen FAKHFAKH, WIPO Case No. D2013-0209, where the panel ordered the transfer of the domain name <01telecharger.org> to Complainant under similar factual circumstances.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Respondent’s standing
When the Complaint was filed, the registrant of the disputed domain name was recorded as PrivacyProtect.org, which is a Privacy/Proxy service to enable “real” registrants of domain names to conceal their identities. However, in its response, the Registrar advised that the registrant of the disputed domain name is IWS LTD.
Both the Privacy/Proxy service and the actual registrant have been served with copies of the Complaint and neither has responded. The Panel sees no reason to distinguish between the two. The practice of having more than one respondent to a proceeding under the Policy where one is a Privacy/Proxy service and the other is the beneficial party which was later disclosed by the registrar is well-recognized in UDRP cases. See Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei, WIPO Case No. D2005-0642.
B. Effect of the Default
The consensus view is that a respondent’s default does not automatically result in a decision in favor of a complainant and that a complainant must establish each of the three elements required by paragraph 4(a) of the Policy (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”) paragraph 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true by the Panel and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
C. Identical or Confusingly Similar
The disputed domain name <01telecharger.biz> is composed of the numbers “01” plus the word “telecharger”. Both are the basic elements of Complainant’s registered trademarks.
The Panel concurs with the opinion of several prior UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Hitachi, Ltd. v. Arthur Wrangle, WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Dr. Ing. H.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888; adidas-Salomon v. Mti Networks Ltd., WIPO Case No. D2005-0258; and AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.
Further, the addition of the suffix “.biz” is non-distinctive because it is required for the registration of the domain name. See RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; and Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
D. Rights or Legitimate Interests
Paragraphs 4(c)(ii) and (iii) of the Policy provide that a respondent may submit evidence that the respondent or its business have been commonly known by the domain name or that respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to divert the consumers or to tarnish the trademark. Pursuant to paragraph 4(c) of the Policy, any of such circumstances, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii) of the Policy.
The Panel finds Complainant’s contention that the disputed domain name is not the name of Respondent or the name by which Respondent is commonly known as reasonable. The Panel finds that in this case Respondent is not making use of a generic value of the domain name. Instead, all circumstances point strongly to Respondent having chosen the disputed domain name because of its value as a close approximation of Complainant’s trademark. In fact, the Panel sees no plausible explanation for Respondent’s adoption and use of the term “01telecharger” in the disputed domain name other than the fact that such term creates an association with Complainant’s trademarks.
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
E. Registered and Used in Bad Faith
The Panel notes that the panel in NEXTINTERACTIVEMEDIA v. MSI Hassen FAKHFAKH, supra, found that Complainant’s trademarks and websites “www.telecharger.com” and “www.01net.com” have a strong reputation. The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. See Pepsico, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
In view of the particulars of this case, the Panel finds that Respondent was undoubtedly aware of the existence of Complainants’ trademarks when Respondent registered the disputed domain name. In fact, the Panel sees no plausible explanation for Respondent’s adoption and use of the numbers “01” in conjunction with the term “telecharger” in the disputed domain name other than to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s trademarks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
Paragraph 4(b)(iv) of the Policy provides that if, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 web site or location or of a product or service on the web site or location, that circumstance shall be evidence of the registration and use of a domain name in bad faith.
In short, the manner in which Respondent has used and is using the disputed domain name demonstrates that the disputed domain name was and still is being used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <01telecharger.biz> be transferred to Complainant.
Manoel J. Pereira dos Santos
Date: August 26, 2013