WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dodo v. Nanjing Mono Internet Tech Ltd, Minfu Wang
Case No. D2014-0319
1. The Parties
The Complainant is Dodo of Saint-Avold, France, represented by Cabinet Nuss, France.
The Respondent is Nanjing Mono Internet Tech Ltd, Minfu Wang of China.
2. The Domain Name and Registrar
The disputed domain name <dodosoie.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2014. On March 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 3, 2014, 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 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 J. Nelson Landry as the sole panelist in this matter on April 8, 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 following facts are a summary of very elaborate and detailed evidence included in 27 Annexes.
The Complainant, a French company established since 1937, specializes in the manufacturing and sale of pillows and quilts under the trademark DODO.
The Complainant is the owner of several trademark registrations, all in association for goods in classes 20, 22 and 24, including first, DODO, national in France since 1962 and international for Germany, Austria, Benelux, Italy and Switzerland since 1963, second DODO (figurative), national in France since 1988 and international for Belarus, Spain, Kazakhstan, Switzerland and Ukraine since 1988, third DODO SIGNE VOS NUITS, word and figurative, since 1990 and fourth DODO, international trademark in association with additional classes 25 and 28 in 2006 for Algeria, China and Morocco (herein the “Trademark DODO”).
Several opposition proceedings took place from 2007 to 2012 wherein the Complainant was opposing third parties attempting to register “dodo” in association with goods in classes 20, 22, 24 and 25 and the distinctiveness of the Complainant’s Trademark DODO was acknowledged in these decisions.
While the Complainant manufactures its DODO products in France, it has also engaged in various licence agreements for these products, in particular with the French company Descamps and in business partnership with the world hotel operator Accor. The Complainant presently employs in France 550 persons within four manufacturing sites and with a daily manufacturing capacity of 25,000 pillows and 20,000 quilts.
The Complainant owns the registered domain name <dodo.fr> since March 28, 2006 and offers for sale its quilts, pillows as well as bed linen, mattresses and bath linen under the Trademark DODO through its website “www.dodo.fr”.
Pursuant to several television reportages on its Trademark DODO on TF1 and France 2 networks, first public TV channel and in several newspapers, a great number of advertising and sponsoring campaigns on TV in 2011‑2012 and several newspapers articles dedicated to the Complainant’s Trademark DODO, the Complainant represents that its DODO Trademark is the most well known, recognized and appreciated trademark for quilts in France and its reputation has been confirmed by a market survey performed in 2011 by the Institute OTO Research where 72 % of customers in France indicated that for them, the Trademark DODO is the first and only well known trademark while, in respect of an overall reputation, the Trademark DODO ranks first with a score of 97%, ABEIL coming second with 18 % and DROUAULT coming third, the latter belonging to the Complainant’s group of companies. (Annexes 22 to 24 and 26 to 28)
The Respondent registered the disputed domain name on January 21, 2011 and operates the website “www.dodosoie.com”, the whole in French language and wherein the commercial payments are stipulated in Euro currency and therein it offers for sale quilts, pillows and bed linen with emphasis on the terms “dodo” and “soie” (for silk). A visit of the Respondent’s website reveals that on several occasions the Respondent outlines the silk characteristic of its goods as a shop dedicated to such silk goods. The illustrations on the website have many references to “dodo soie”, either both on same line or one above the other in a logo, as being also its exclusive fabric for men pyjamas, boxer brief and bath robe. (Annexes 14 and 15)
5. Parties’ Contentions
The Complainant, relying on its numerous trademark registrations in several countries in the world, including China where the Respondent resides, submits that it has rights in the Trademark DODO in association with quilts and pillows and that the disputed domain name is confusingly similar to its trademark notwithstanding the addition of the French word “soie” for silk, which is a descriptive term for a fabric and the generic Top-Level Domain (“gTLD”) suffix “.com” which additions, according to previous UDRP decisions, are not sufficient to avoid a finding of confusing similarity. See Rohde & Schwartz GmbH & Co. KG v. Pertshire Marketing Ltd, WIPO Case No. D2006-0762; Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110 and BHP Billiton Innovation Pty Ltd., BMA alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338.
The Complainant states that the Respondent does not hold any trademark application or registration for the term “Dodosoie” and that the Respondent is not authorized by the Complainant to use the Complainant’s Trademark DODO in the disputed domain name and therefore represents that the Respondent has no legitimate reason to use the term “dodo” or the Trademark DODO and has no rights or legitimate interests in respect of the disputed domain name.
The Complainant represents that the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s Trademark DODO as the source, sponsorship, affiliation or endorsement of the Respondent’s website or location and furthermore by such likelihood of confusion attempted to divert to its website Internet users and such bad faith is demonstrated by the predominant use of the French language in the disputed domain name thereby targeting consumers in France that are necessarily aware of the well known Trademark DODO of the Complainant resulting from its extensive use and promotion since, at least, the last 20 years. The Complainant therefore submits that the registration of the disputed domain name was done in bad faith as well as its use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
By its extensive evidence about its registration of the Trademark DODO, as a term and also a figurative representation, in France as well as in numerous countries in Europe and elsewhere, including China where the Respondent is located, the Panel finds that the Complainant has rights in the registered Trademark DODO and that notwithstanding the addition of the descriptive term “soie” (silk) and the gTLD suffix “.com” as established in many previous UDRP decisions, including those cited by the Complainant, these additions do not in any way diminish the confusing similarity and the Panel finds that the disputed domain name is confusingly similar with the Trademark DODO of the Complainant.
The first criterion has been met.
B. Rights or Legitimate Interests
Considering the Complainant’s evidence, first in respect of the Respondent not having any registration for “dodosoie” nor authorization to use the Complainant’s Trademark DODO, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by registering the disputed domain name and second, by lack of response, the Respondent has not answered the cease and desist letter sent by e-mail from the Complainant prior to the Complaint and not rebutted the Complainant’s prima facie evidence.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The second criterion has been met.
C. Registered and Used in Bad Faith
The Complainant, again, has submitted elaborate evidence, first in respect of its Trademark DODO, its extensive use and promotion since 1963 and its leading popularity in France and elsewhere by reason of its promotion on TV, newspapers and its very high distinctiveness and second, the predominant use of the French language on the Respondent’s website, the similarity in the products offered for sale by the Respondent in association with numerous uses of the terms “dodo” and “soie” and third, this Panel is convinced that the Respondent must have been aware of the existence and reputation of the Complainant’s Trademark DODO in association with products quilts, pillows and bedding articles when the Respondent registered the disputed domain name and the Panel therefore finds that such registration was made in bad faith. This awareness and bad faith of the Respondent is further corroborated by the use by the Respondent of the city Metz and postal code 5700 in respect of an address in China given upon registering the disputed domain name, Metz being the city near Saint Avold, where the Complainant is located.
A review and comparison of the website of the Complainant at “www.dodo.fr” and that of the Respondent at “www.dodosoie.com” reveals striking similarity, first in the use of the terms “dodo” and “soie”, similar products, the use of the French language by the Respondent, who is apparently based in China, and to the Panel, this clearly represents a deliberate attempt to benefit from the highly distinctive Trademark DODO of the Complainant in France and thereby the deliberate creation by the Respondent of a likelihood of confusion with the Complainant’s Trademark DODO to divert Internet users attracted to its website by its well known Trademark DODO.
The Panel, therefore, finds that the disputed domain name is clearly used in bad faith and the third criterion has been 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 <dodosoie.com> be transferred to the Complainant.
J. Nelson Landry
Date: April 18, 2014