WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Milipol v. Herbert Szekely
Case No. D2013-1752
1. The Parties
The Complainant is Milipol of Paris, France, represented by Cabinet Beau de Lomenie, France.
The Respondent is Herbert Szekely of Irvine, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <milipolusa.org> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 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 October 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2013. The Response was filed with the Center on November 8, 2013.
The Center appointed Peter Burgstaller as the sole panelist in this matter on November 18, 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 the owner of the trademark MP MILIPOL registered in various countries (from 1995 onwards) including the United States for the international classes 35, 41 and 42 (Reg. No 3,972,596, registered June 7, 2011, Annex 8, 9, 10 to the Complaint). The Complainant uses its trademarks in connection with organizing trade shows and exhibitions on the subject of police equipment, civil and military security, and related services.
The Respondent registered the disputed domain name on August 27, 2013. The disputed domain name resolves to a parked website which contains sponsored links to websites that are in direct competition with the Complainant’s business.
5. Parties’ Contentions
The Complainant is a French Economic Interest Group (GIE), which is internationally renowned for organizing trade shows and exhibitions related to police equipment, civil and military security, and related services. Milipol has been using its trademark MP MILIPOL and trade name MILIPOL in this connection since at least as early as 1995.
The Complainant organizes the events “MILIPOL Paris” (“http://www.milipol.com/”) and “MILIPOL Qatar” (“http://www.milipolqatar.com/”), which are worldwide well-known exhibitions for internal state security. The “MILIPOL Paris” show in 2011 attracted 27,243 visitors (with 66% from outside France) and 887 exhibitors from 47 countries. The 9th “MILIPOL Qatar” show in 2012 attracted 5,820 trade visitors and 244 exhibitors from 66 countries. The statistics from “MILIPOL Paris” 2011 and “MILIPOL Qatar” 2012 are shown in Annexes 4 to 7 to the Complaint).
The Complainant owns multiple trademark registrations for MP MILIPOL throughout the world, including the United States trademark No. 3,972,596 registered on June 7, 2011 (Annex 8 to the Complaint). Further, the Complainant’s first trademark registration MP MILIPOL dates back from February 13, 1995 and covers several countries (Annexes 9 and 10 to the Complaint).
Apart from the trademark registrations for MP MILIPOL throughout the world, the Complainant holds several “milipol” domain names, e.g. <milipol.com>, <milipol.usa>, <milipolusa.com>, <milipol.org>, <milipol.net>, <milipol.li> and <milipol.ch>.
The disputed domain name is at least confusingly similar to the Complainant’s trademarks and the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent registered and is using the disputed domain name in connection with a website displaying pay-per-click advertisements, offering links to other websites that are in direct competition with the Complainant’s activity (Annexes 12 to 15 to Complaint). Although the disputed domain name is parked, the Respondent alone is responsible for the content posted on its website, regardless of the entity that places the links or derives income from them. It is clear that the only reason to register and use the domain name is to generate revenue from people entering the Respondent’s website and being misled by it as being associated with or sponsored by the Complainant or, put otherwise, to disrupt the Complainant’s business.
The Respondent’s registration and use of the disputed domain name is therefore in bad faith.
The Respondent indicated, without acknowledging any of the statements, allegations and reasoning submitted by Complainant, that it did not wish to submit any substantial Response to the Complaint.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant 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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the trademark MP MILIPOL and the disputed domain name <milipolusa.org> is confusingly similar to the Complainant’s trademark.
The addition of the geographic qualifier “usa” and the deletion of the term “MP” does not make the disputed domain name distinctive from the Complainant’s trademark since the Respondent includes in the disputed domain name the prominent part of the Complainant’s trademark, that is “milipol”. In fact, it is the Panel’s conviction that in using a suffix like “usa” together with the Complainant’s trademark rather strengthens the impression that the disputed domain name is in some way connected to the Complainant or at least “free rides” on the Complainant’s trademarks (see, e.g., Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511, <telstra-free-online.com> et al; Swarovski Aktiengesellschaft v. www.swarovski-outlet.org, WIPO Case No. D2013-0335, <swarovski-outlet.org>; Milipol v. Milipol USA Inc, NAF Claim No. 1417792, <milipolusa.com>).
Moreover, it has also long been held that suffixes such as a generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has made out the first of the three elements under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
However, by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you 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 (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 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.”
If the Respondent proves any of these elements or anything else that shows it has a right or legitimate interest in the disputed domain names, the Complainant will have failed to discharge its onus and the Complaint will fail with respect to the disputed domain name.
However, in the present case, the Respondent failed to submit any substantial response to the Complainant’s allegations.
It is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second edition (“WIPO Overview 2.0”), paragraph 2.1, “complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden production shifts to come forward with appropriate allegation or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
Considering all of the evidence in the Complaint together with the Annexes presented by the Complainant and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the condition set out in paragraph 4(a)(ii) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s web site or location.
As stated in many UDRP decisions (especially, Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001, <musicweb.com>) both conditions, registered and used in bad faith, are cumulative, consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
The disputed domain name was registered and is being used by Respondent to display links to websites with goods and services competing with the Complainant’s business. UDRP panels have found that the use of a domain name to display hyperlinks to competing goods and services is evidence of bad faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy (see, e.g., Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, <villeroy-boch.mobi>; Rolex Watch U.S.A., Inc. v. Vadim Kritvitsky, WIPO Case No. D2008-0396; Tesco Personal Finance Ltd. v. Domain Management Services c/o Corporate Management, NAF Claim No. 877982; American Airlines, Inc. v. Texas International Property Associates, NAF Claim No. 914854; Milipol v. Milipol USA Inc, supra).
The Panel also finds that the Respondent has registered and is using the disputed domain name in order to benefit from the confusion generated concerning the source or sponsorship of the disputed domain name. The disputed domain name <milipolusa.org> is confusingly similar to the Complainant’s trademark MP MILIPOL. Additionally, the links on the disputed domain name’s website resolves to websites with services that are similar to services which Complainant provides. Internet users could assume that the Complainant, rather than the Respondent, is the genuine source or sponsor of the disputed domain name and the website to which it resolves. Therefore, the Respondent profits from maintaining the disputed domain name <milipolusa.org> allowing the web page to be parked and from Internet users clicking through the links. As such, the Panel finds that the Respondent’s bad faith is evident from the intent to profit from the registration and use of the disputed domain name <milipolusa.org> (see, AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091; Zee TV USA, Inc. v. Siddiq, NAF Claim No. 721969).
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith by the Respondent and the conditions set out in paragraph 4(a)(iii) of the Policy has been met by the Complainant.
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 <milipolusa.org> be transferred to the Complainant.
Date: December 2, 2013