WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sothys International v. Siamak Khoshkholgh Sima /Domain ID Shield Service CO., Ltd
Case No. D2013-1494
1. The Parties
The Complainant is Sothys International of Brive la Gaillarde, France, represented by Cabinet Promark, France.
The Respondent is Siamak Khoshkholgh Sima of Basrah, Iraq /Domain ID Shield Service CO., Ltd of Hong Kong, China.
2. The Domain Names and Registrar
The disputed domain names <sothys-club.com>, <sothysclub.com>, <sothys-spa.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2013. On August 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 26, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 27, 2013 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 August 29, 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 the Respondent of the Complaint, and the proceedings commenced on September 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2013.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on October 8, 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 company known for more than fifty years for high-range cosmetic and beauty products manufacturing and distribution to professionals in aesthetics, such as beauty institutes, spas, luxury hotels.
The Complainant owns several registrations for the trademark SOTHYS, including French Registration No. 1509980 registered on February 3, 1949 in Class 3 for “all sanitary and beauty products, cosmetics” and International Registration No. 176494 granted on April 20, 1954 for the same goods, among others.
The disputed domain names <sothys-spa.com>, <sothys-club.com> and <sothysclub.com> were registered on May 9, 2011.
5. Parties’ Contentions
The Complainant claims the following:
The Complainant’s trademark SOTHYS is intensively used worldwide in respect of cosmetic products, including spa related services;
The Complainant has also developed its activity on the Internet and is the owner of the domain name <sothys.com> which leads to the website “www.sothys.com” which is used by the Complainant in connection with its activities, and in particular to promote its online Sothys branded cosmetics as well as its spas;
Complainant became aware of the registration of the disputed domain names on May 9, 2011, which were inactive at that time;
The disputed domain names are now active and used to redirect to a porn website which tarnishes the SOTHYS marks and cause harm and detriment to the Complainant’s reputation and trademarks.
The Respondent confirmed its bad faith by proposing the transfer of the disputed domain names to the Complainant (by email dated July 20, 2013) for valuable consideration in excess of the Respondent’s out-of pocket costs directly related to the registration of the disputed domain names.
In essence, the disputed domain names were registered and are being used in bad faith by the Respondent and therefore the Panel is requested to order their transfer to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complainant to succeed in this proceeding, under paragraph 4 (a) of the Policy, it must prove that:
(i) The disputed domain name 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15 (a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, Rules, Supplemental Rules and any principles of law that it deems applicable.
A. Identical or Confusingly Similar
The distinctive element in the disputed domain names <sothys-spa.com>, <sothys-club.com> and <sothysclub.com> is the trademark SOTHYS in which the Complainant has rights. In the Panel’s view, the descriptive terms “spa” and “club” are insufficient to prevent the threshold on Internet user’s likelihood of confusion and confusing similarity as a result. Moreover, given the Complainant’s trademark and activities related to spa services, the word “spa” in the disputed domain name <sothys-spa.com> tends to strengthen the idea that it refers to or is associated with the Complainant. Likewise the word “club” in <sothys-club.com> and <sothysclub.com>, particularly since the Complainant developed its own Sothys Club Beaute program in 1992 to give special recognition to those spas and beauty institutes.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the trademark SOTHYS in which the Complainant has rights.
B. Rights or Legitimate Interests
In accordance with paragraph 4 (a) of the Policy, the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Whilst the Policy states that the complainant must prove each of the elements in paragraph 4, it is often observed that it is difficult for the complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interest in a domain name, the burden of the production of evidence shifts to the respondent. The respondent must then come up with appropriate allegations or evidence demonstrating its rights or legitimate interests in the domain name to refute the prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names so the burden of production has effectively shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such a showing.
For these reasons, and those indicated below, in absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The disputed domain names directly link the visitors to a pornographic website. Clearly this tarnishes the Complainant’s trademarks (America Online, Inc. v Viper, WIPO Case No. D2000-1198) and is far from justifying a bona fide use. Furthermore, the diversion of the disputed domain names to such websites is itself certainly consistent with a finding that the disputed domain names were registered and are being used in bad faith (Six Continent Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022). Therefore the Complainant has succeeded in making out the third element of the Policy.
Accordingly, the Panel finds that the disputed domain names were registered and are being used 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 disputed domain names <sothys-club.com>, <sothysclub.com> and <sothys-spa.com> be transferred to the Complainant.
Miguel B. O'Farrell
Date: October 21, 2013