WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Somfy SAS v. Zhao Jiafei
Case No. D2013-1741
1. The Parties
Complainant is Somfy SAS of Cluses, France, represented internally.
Respondent is Zhao Jiafei of Guangzhou, China.
2. The Domain Name and Registrar
The disputed domain name <somfy.info> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2013. On October 9, 2013, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On October 10, 2013, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on October 17, 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 October 18, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2013.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 20, 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
Complainant manufactures and sells motors, controls, and automatic systems for use in homes and other buildings. Complainant holds trademark registrations in dozens of countries for the mark SOMFY.
Respondent registered the Domain Name on March 6, 2013. The Domain Name resolves to a website with fairly limited content. The home page states that “somfy.info is FOR SALE” and invites visitors to fill out an online form to inquire about purchasing the Domain Name. The following communications took place between the parties:
- Complainant contacted Respondent on August 5, 2013, to demand that Respondent cease all use of the trademark SOMFY and transfer the Domain Name to Complainant;
- That same day, Respondent sent Complainant the following e-mail: “We understand what you said, so this domain name could be sold to your company at a low price. Only 1890 EUR”;
- Complainant responded on September 18, 2013, that it did not intend to buy the Domain Name and therefore reiterated its prior request;
- That same day, Respondent answered that he would be ready to reduce the price to only EUR 1390;
- On October 1, 2013, Respondent sent to Complainant a chaser e-mail asking whether Complainant would accept the new price.
In another recent case decided under the Policy, NVIDIA Corporation v. Zhao Jiafei, WIPO Case No. D2013-1014, the panel found Respondent in bad faith and also found that Respondent owned a portfolio of domain names which reflect well-known third-party marks. The panel in that case also concluded that “Respondent is clearly a sophisticated Internet user who has created various aliases in order to circumvent legal liability, or is potentially involved in a large network of cybersquatters.”
5. Parties’ Contentions
Complainant’s principal allegations are set forth above in the factual background section, and Complainant’s arguments are reflected below in context in the discussion of the three elements required for a transfer of the Domain Name under the Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
It is beyond dispute that Complainant holds rights in the trademark SOMFY, a fanciful mark that Complainant has registered in dozens of jurisdictions throughout the world. The Domain Name, apart from the gTLD “.info,” is identical to Complainant’s SOMFY mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Respondent has not participated in this proceeding and hence has not attempted to demonstrate any right or legitimate interest in respect of the Domain Name. The Panel has no difficulty accepting as true Complainant’s plausible and uncontested allegations that Respondent is not commonly known by the Domain Name, and has never been authorized by Complainant to use Complainant’s mark in any manner.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
It is undisputed that Respondent, who has no rights or legitimate interests in the Domain Name, has registered a Domain Name, which is identical to Complainant’s well-known mark. It is further beyond dispute that Respondent not only offered the Domain Name for sale to the public, but also made a direct offer to sell the Domain Name to Complainant for EUR 1,890, and then later reduced the offer to EUR 1,390.
Respondent never stated or shown, in this proceeding or in its correspondence with Complainant, that its out-of-pocket expenses directly related to the Domain Name were anywhere near the bloated amounts for which Respondent sought to sell the Domain Name to Complainant. The Panel may draw the obvious conclusion that Respondent is clearly seeking to turn a hefty profit from the sale of the Domain Name to the owner of the SOMFY mark throughout much of the world. This is a textbook example of bad faith under Policy paragraph 4(b)(i).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
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 <somfy.info> be transferred to Complainant.
Robert A. Badgley
Date: November 28, 2013