WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayard Presse S.A. v. Whoisguard Protected / LAX - T. Clayton
Case No. D2014-0280
1. The Parties
The Complainant is Bayard Presse S.A. of Montrouge, France, represented by Fidal, France.
The Respondents are Whoisguard Protected of Panama; and LAX - T. Clayton of San Francisco, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bayardjeunesse.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2014. On February 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 2014, 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 the Complainant on March 3, 2014 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 March 7, 2014.
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 March 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2014.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on April 3, 2014. 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 press and publishing group founded in the end of the nineteenth century. The Complainant operates in 16 countries and publishes more than 150 magazines worldwide, of which 72 in France.
The Complainant is the owner of several national and European trademarks. The Complainant submitted evidence that it notably holds national and/or Community trademark rights for BAYARD, BAYARD PRESSE, BAYARD GROUP and BAYARD PRESSE JEUNE.
Complainant's historical information and description of its goods and services are offered through numerous websites, notably at "www.bayard-jeunesse.com" and "www.bayardjeunesse.ca".
The magazines, books and characters of “Bayard Jeunesse” are designed for young readers.
Furthermore, through its brands, the Complainant has gained substantial recognition and reputation internationally. This recognition and reputation is well documented by the Complainant, based on facts and figures.
The Respondent registered the disputed domain name <bayardjeunesse.com> on December 2, 2004.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
Firstly, the Complainant submits that the generic top-level suffix ".com" in the disputed domain name only serves to indicate the type and code level of the domain name and cannot be taken into consideration when determining the confusing similarity.
The Complainant is and has been for many years the right holder of the mark BAYARD in numerous countries. The Complainant argues that its BAYARD trademark is distinctive and that the Respondent is reproducing it letter-by-letter, which would be sufficient to establish that the domain name is identical or similar to the Complainant's trademark. Besides, the Respondent added to the Complainant's trademark the generic and distinctive term "jeunesse".
The Complainant contends that the disputed domain name is in particular confusingly similar to the Complainant's trademark BAYARD PRESSE JEUNE, as it is composed of the two words "bayard" and "jeunesse", the latter being the French noun of the French adjective "jeune", meaning respectively “youth” and “young” in English. The Complainant contends that the addition of a generic or non-distinctive word to the Complainant's trademark does not grant self-distinctiveness to the disputed domain name and does not dispel confusing similarity. The Complainant’s trademark predates the Respondent's registration of the disputed domain name.
(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent registered the disputed domain name long after the Complainant established its rights in and to the trademark, registered in many countries in the world.
The Complainant has trademark rights for BAYARD and no express authorization or permission was granted to the Respondent to use the trademark in the dispute domain name or in any other manner.
Also, the Complainant contends that the Respondent deprives the Complainant from a strategic domain name, given that the disputed domain name <bayardjeunesse.com> describes one of the Complainant's main activities.
(c) The disputed domain name was registered and is being used in bad faith.
The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.
Firstly, the Complainant submits that registration in bad faith is established on the basis of the fact that the Complainant's trademark has a strong reputation and is widely-known throughout the world in the field of press and publishing and as a consequence (i) there is a prima facie presumption that the Respondent registered the disputed domain name for bad faith purposes; (ii) the Respondent must have been perfectly aware of the existence of the trademark at the time of registration of the dispute domain name; (iii) at the time of registration it is unlikely that the Respondent filed the application for a so closely similar domain name fortuitously; and (iv) the absence of right or legitimate interest of the disputed domain name does not contemplate good faith use of such domain name.
Besides, the Complainant notices that the Respondent was involved in several previous UDRP disputes on which the transfer of the domain names to the Complainants has been ordered.
Secondly, with regard to the Respondent's use of the disputed domain name, the Complainant argues that Internet users were intentionally misdirected to an error page when searching information about the Complainant or the Complainant's goods and services.
Finally, the Complainant argues that the Respondent could not have ignored the existed of the well-known trademark in the field of press and publishing following receipt of letters sent by the Complainant to resolve the matter amicably.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Notwithstanding a respondent’s default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”), paragraph 2.1 and paragraph 4.6, and the relevant decisions cited therein). Nonetheless, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
This Panel has found no such exceptional circumstances that would justify the Respondent’s failure to submit a Response. The Panel therefore infers that by not replying to the Complainant’s contentions, the Respondent does not deny the facts asserted and contentions made by the Complainant (e.g. Roche Products Limited v. Private Whois Service, WIPO Case No. D2010-1983; 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.Contact, WIPO Case No. D2003-0994).
As a result, asserted facts that are not unreasonable will be taken as true by this Panel.
Furthermore, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this Panel will examine whether each the following three elements are present:
(i) the disputed domain name registered by the Respondent 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.
Consequently, this Panel shall further analyze the eventual concurrence of these three grounds in the present case.
A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it had registered trademarks rights for BAYARD, BAYARD PRESSE, GROUPE BAYARD and BAYARD PRESSE JEUNE well before the disputed domain name was registered. Also, the Complainant has sufficiently demonstrated and evidenced that it has a lengthy use of its trademark for its commercial activities, and in particular the use of the BAYARD PRESSE JEUNE for books and magazines for children.
Furthermore, this Panel finds that the BAYARD trademark shall be considered as a well-known trademark in the field of press and publishing.
Secondly, the disputed domain name fully incorporates the Complainant's distinctive and widely known BAYARD mark in which the Complainant has exclusive rights. This Panel finds on the basis of previous UDRP decisions that it is established that where the disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
Thirdly, the disputed domain name <bayardjeunesse.com> incorporates entirely the Complainant's registered trademark with the addition of only the descriptive French term "jeunesse" as suffix. "Jeunesse" is the French word equivalent to the English word youth, which refers to the quality or condition of being young, immature, or inexperienced. In this Panel's view, the mere addition of a descriptive or generic term does not distinguish the disputed domain name from the mark, nor dispel the risk of confusing similarity, as it was found in previous UDRP decisions (King.com Limited and Midasplayer.com Ltd v. Peng Chan / WhoisGuard Protected, WIPO Case No. D2013-1405; Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin WIPO Case No. D2003-0888; Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037).
Fourthly, this Panel finds, similarly to previous UDRP decisions, that the addition of the generic top-level domain (gTLD) “.com” to the disputed domain name does not constitute an element so as to avoid confusing similarity for trademark purposes (Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
This Panel finds in the present case that the disputed domain name incorporates the Complainant's well-known trademark BAYARD in its entirety and only with the addition of the descriptive term "jeunesse", and ending with the suffix ".com".
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant's BAYARD trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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”.
This Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademarks has been granted to the Respondent. Thus, the Respondent has no own rights in the term “bayard”.
Examination of the website operating under the disputed domain name, as sufficiently evidenced by the Complainant, shows no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services.
Moreover, this Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name.
This Panel further finds that no evidence has been presented that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name. In fact, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name, and finds after reviewing the website as evidenced by the Complainant, and as it appears following this Panel independent researches, that the Respondent had or should have had full knowledge of the trademark and that its only intention is to deprive the Complainants from a strategic domain name. In this respect, this Panel notes that the Complainant has registered and is using and exploiting the Canadian domain name <bayardjeunesse.ca> since 2002, where only the generic top-level domain is different from the disputed domain name.
For all the foregoing reasons, this Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.
First of all, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name. In this respect, this Panel believes, after reviewing the website as evidenced by the Complainant, and in particular of the existence of the Complainant's websites "www.bayard-jeunesse.com" and "www.bayardjeunesse.ca", that the Respondent must have known and been aware of the rights on the prior BAYARD trademark and the associated products at the time of the registration of the disputed domain name. Such conclusion is supported by previous UDRP decisions where such principles have been applied in the case of a well-known trademark (see Volkswagen AG v. Swiss Recruitment, WIPO Case No. D2013-0534; King.com Limited and Midasplayer.com Ltd v. Peng Chan / WhoisGuard Protected, WIPO Case No. D2013-1405).
Furthermore, the disputed domain name is an obvious imitation of domain names at which the Complainant operates websites specialized on goods and services directed toward youth.
Also, this Panel finds, on the basis of the Complainant's evidences that there are several prior UDRP decisions involving the previous Respondent (Richard J.) and showing that the Respondent engages in systematic unauthorized registration of domain names (Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142; Grosbill S.A. v. Richard J., WIPO Case No. D2006-1254; France Telecom v. Richard J., WIPO Case No. D2006-0807; Nexity S.A. v. Richard J., WIPO Case No. D2011-0577).
This Panel further notes that the disputed domain name does not resolve to an active website. Such passive holding can be considered as a use in bad faith within the meaning of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall WIPO Case No. D2000-0574).
Based on this Panel's own research of historical version of the disputed domain name available through the Internet Archive’s “Wayback Machine”, this Panel finds that the disputed domain name has, in the past, been offered for sale by the Respondent. Such attitude constitutes evidence of bad faith within the meaning of paragraph 4(b)(i) of the Policy, on the part of the Respondent. This Panel concludes that the disputed domain name was registered and is being used for the purpose of commercial sale (Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076; Intesa Sampaolo S.p.A. and Cassa di Risparmio di Terni e Narni S.p.A. v. Carit Inc. WIPO Case No. D2010-0338; PHD Group Pty Ltd, Barrett Property Group Pty Ltd., Barrett Property Group Western Region Pty Ltd., BPS Group Pty Ltd., BPG Access Pty Ltd., RSS Property Holdings Pty Ltd. V. Abedellatif Shatila, WIPO Case No. D2010-0812).
In light of the foregoing, this Panel finds that the disputed domain name was registered and used by the Respondent in bad faith under the Policy.
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 <bayardjeunesse.com> be transferred to the Complainant.
Benoit Van Asbroeck
Date: April 16, 2014