WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sporoptic Pouilloux SA v Corey Shapiro, 8008558 - Canada Inc.
Case No. D2014-0476
1. The Parties
The Complainant is Sporoptic Pouilloux SA of Paris, France, represented by SCP August & Debouzy, France.
The Respondent is Corey Shapiro, 8008558 - Canada Inc. of Montreal, Quebec, Canada.
2. The Domain Name and Registrar
The disputed domain name <vintagevuarnet.com> 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 March 26, 2014. On March 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2014, the Registrar transmitted by email to the Center its verification response.
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 28, 2014. In accordance with the Rules, paragraph 5 (a), the due date for response was April 17, 2014. On March 31, 2014, the Center received an email communication from the Respondent’s administrative contact. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2014. On the same day, the Respondent sent a short email communication to the Center.
The Center appointed Archibald Findlay SC as the sole panelist in this matter on April 28, 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 background facts and circumstances are to be found in the Complaint and its annexures and, in the absence of challenge, can be accepted as background. The Complainant designs, manufacturers and markets sunglasses under its brand name of Vuarnet globally. It owns in several countries, word trademarks and figurative trademarks which include the word “vuarnet”.
The Complainant is the holder of several community trademarks amongst which are the following:
- Community trademark No. 648278 VUARNET, registered with OHIM on October 17, 1997, in class 9 for sunglasses and related accessories;
- Community trademark No. 744979 V VUARNET (logo), registered with OHIM on January 30, 1998, in class 9 for sunglasses and related accessories.
The Complainant is the holder of the following national registered trademarks VUARNET in the following countries:
- Canada: No. 497.626, registered on July 22, 1998, in class 9 for sunglasses and related accessories;
- Bahrain: No. 16286, renewed on May 6, 2013, in class 9 for sunglasses and related accessories;
- Israel: No. 83259, renewed on May 5, 2013, in class 9 for sunglasses and related accessories;
- South Africa No. 85/7521, renewed on September 9, 2005, in class 9 for sunglasses and related accessories;
- Kuwait No. 24903, renewed on May 10, 2013, in class 9 for sunglasses and related accessories.
The Complainant is also the holder of the trademark VUARNET EXTREME in Canada which is registered under No. 810061 and was renewed on July 8, 2013.
The Complainant owns the following domain names consisting of the word “vuarnet” alone or incorporated as part thereof:
“Vuarnet” is the name of a French athlete who created his own trademark of sunglasses in the 1960’s which is now owned by the Complainant.
The disputed domain name was registered by the Respondent on February 6, 2012. As of the date of the Complaint the disputed domain name reverted to a website which provided links to third party sites inter alia offering identical wares to those of the Complainant.
5. Parties' Contentions
The Complainant asserts that the Respondent registered the disputed domain name on June 29, 2011, by incorporating the Complainant’s trademark and domain name as part thereof, namely, <vintagevuarnet.com>. It contends that the incorporation in full of its trademark and domain names is of itself sufficient to establish similarity on the part of the disputed domain name sufficient to give rise to confusion and thereby constitute a violation of its rights when compared to its marks and domain names. It points out that the word “vuarnet” could not have been invented by the Respondent.
The Complainant further complains that there is no affiliation of the Respondent with it at all nor has any authority or license been granted to use and register the trademark or domain name or to seek registration of any domain name incorporating that of the Complainant. Accordingly, it contends that the Respondent has no prior rights or legitimate interest in the disputed domain name.
It further contends that the Respondent could not have been unaware of the Complainant as it is a well-known trademark throughout the world and that the adoption of its registered trademark in full constitutes a registration and use in bad faith
The Respondent is in default of filing a Response, however, after receipt of the Complaint and annexures, its administrative contact in an email dated March 31, 2014, advised the Center that the disputed domain name was purchased on behalf of the Respondent for a fan site in the process of being built, that the webpage is parked and has had no clicks. It is also stated therein that it was not the intention of the Respondent that the disputed domain name be parked until the Complaint was filed. It points out that it did not intend to mimic the Complainant’s main webpage or sell any of its products and that the website was simply going to be a fan page providing information about the brand which would have redounded to the benefit of the Complainant without cost. Apart from the email there has been no formal Response to the Complainant’s contentions.
6. Discussion and Findings
A. Substantive Elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) That the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights.
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name.
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a)(iii) above, be evidence of the registration and use of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
B. Effect of Default
Notwithstanding the fact that a respondent may be in default, the complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the complainant to a finding in its favor by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the complaint being denied (M. Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383; San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd, WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (Allianz Compañia de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942).
From this the Panel considers that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Ltd 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; Standard Innovation Corporation, (supra); VR Holding A/S v. Above.com Domain Privacy/Host Master, Transure Enterprise Ltd, WIPO Case No. D2012-0040).
What has been put up in the Respondent’s administrative contact’s email is no more than a comment that the Complainant should be grateful that the Respondent intends to afford it an opportunity of free advertising. Nothing is put up to gainsay what is said in the Complaint and annexures.
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters, (supra); RX America LLC v. Matthew Smith WIPO Case No. D2005-0540; Allianz, (supra); Standard Innovation Corporation, (supra); VKR Holdings A/S, (supra); Groupe Auchan v. Anirban Mitra, WIPO Case No. D2012-0412; Barclays Bank PLC v. Miami Investment Brokers Inc., WIPO Case No. D2012-1213).
C. Identical or Confusingly Similar
The Complainant put up details of its registered trademarks which it owns in many countries, as well as the domain name above to show that it is well known internationally.
The fact that the word mark has been incorporated entirely into the disputed domain name is sufficient to establish that it is identical or confusingly similar to the Complainant’s registered mark (Quixtar Investments Inc v Dennis Hoffmann, WIPO Case No. D2000-0253; Universal City Studios Inc v David Burns & Adam-12 Dot Com, WIPO Case No. D2001-0784; Lilly ICOS LLC v John Hopkin/NeoNet Ltd, WIPO Case No. D2005-0694; SOCIÉTÉ DES PRODUITS NESTLÉ SA v Mustafa Yakin/Moniker Privacy Services, WIPO Case No. D2008-0016; also more recent cases, namely, Swarovski Aktiengesellschaft v Swarovski-earrings-sales.com, WIPO Case No. D2013-1824; Rapid Share AG, Christian Schmidt v Invisible Registration.com, Domain Admin, WIPO Case No. D2010-1059; Swarovski Aktiengesellschaft v Mei Xudrag, WIPO Case No. D2013-0150; Hoffmann-La Roche Inv. v Krontak Ladik, WIPO Case No. D2013-0019).
The Panel has no difficulty in concluding that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain name; or a name corresponding to the disputed domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, the burden of production of evidence on this factor shifts to the Respondent to rebut the showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy. (Document Technologies Inc v International Electronic Communications Inc., WIPO Case No. D2000-0270; University City Studios Inc, (supra)).
The unsubstantiated assertions set out by the Respondent’s administrative contact in its email in no way proffer an entitlement in the view of the Panel which would establish any right or legitimate interest on the part of the Respondent to the disputed domain name, particularly having regard to the provisions of paragraph 4(c)(iii) of the Policy and the use to which the disputed domain name has been put.
Having otherwise defaulted, the Respondent has placed itself in a position that it has not produced any evidence to rebut such prima facie case as may have been established by the Complainant, and the enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not it has been so established.
As it may involve the proof of a negative especially where the Respondent could be better placed to have specific knowledge of its rights or legitimate interests, Complainant’s burden is light but requiring at least prima facie proof, which if the Respondent fails to respond the result will be that Complainant discharges the onus in terms of paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant contends that it is the owner of the trademark VUARNET and associated domain names in question and that the Respondent has not been given any permission to register or use any domain name incorporating the trademark of the Complainant. It follows, therefore, that the Respondent has no right to the use of that mark as part of the Domain Name and that any unauthorized use for commercial purposes would violate the exclusive trademark rights enjoyed by the Complainant. (Guerlain S A v. Peikang, WIPO Case No. D2000-0055; Caesar’s World Inc. & Park Place Entertain Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc. v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer, (supra)).
Apart from there being no authorization on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by license or otherwise, which also militates against the Respondent having rights or legitimate interests in or other entitlement which might fall within that purview (Sybase Inc., (supra); Groupe Anchon v. Gan Yu, WIPO Case No. D2010-0138).
In view of the facts and circumstances put up on this ground and which are unchallenged, alternatively, do not rebut the evidential burden case upon the Respondent, the Panel is satisfied that the Complainant has established the second element of the Policy.
E. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, 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 website 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 website or location or of a product or service on your website or location.”
Bad faith can exist where a domain name contains in its entirety a Complainant’s trademark (Cellular One Group v Paul Brien, WIPO Case No. D2000-0029), the Panel does not see that this principle cannot also apply in circumstances where the domain name in its entirety is a one-word combination of a complainant’s registered trademark (San Lameer case (supra)).
The implication arising from the disputed domain name, in the mind of an Internet user, is therefore clearly that it is either of or in some way associated with the Complainant (which the Complainant has confirmed, is not the case), which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with the Complainant via someone authorized on its behalf in relation to its goods. That would, in this Panel’s view, constitute bad faith. (Media 24 Limited v. Llewellyn Du Randt, WIPO Case No. D2009-0699; San Lameer, supra; Think, Schufwerk GmbH v. Soo Doo, WIPO Case No. D2012-2522).
The selection of a domain name that is the same as, or confusingly similar to, the Complainant’s trademark and the Complainant’s domain names, particularly in view of the explanation provided by the administrative contact, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the disputed domain name in circumstances where it was very well aware of the Complainant’s reputation and intended to benefit therefrom. (Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Barclays Bank PLC (supra)).
The use of the disputed domain name for a website which provided links to third party sites inter alia offering identical wares to those of the Complainant, falls clearly within the example of bad faith set out in paragraph 4(b)(iv) of the Policy. In this regard the Panel notes that even if the parking page containing advertising links at the disputed domain name was created by the Registrar, the Respondent remains responsible for the use to which the dispute domain name is put.
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4 (a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <vintagevuarnet.com> be transferred to the Complainant.
Archibald Findlay SC
Date: May 12, 2014