WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Iménager v. Domdoo DomainHolding
Case No. D2014-1017
1. The Parties
The Complainant is Iménager of Wasquehal, France, represented by WITETIC, France.
The Respondent is Domdoo DomainHolding of Abidjan, Ivory Coast.
2. The Domain Name and Registrar
The disputed domain name <iménager.com> is registered with PSI-USA, Inc. dba Domain Robot (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2014. On June 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 June 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2014.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 23, 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
Complainant operates an online, e-commerce store that promotes the goods of other companies, particularly household goods and appliances. Complainant registered the trade name Iménager under the French Trade Register on July 22, 2002 (Reg. No. 442807582). Complainant has three registered trademarks, which it applied for on November 4-5, 2012. Two trademarks, BX Reg. No. 01257515 and FR Reg. No. 123958771, cover the IMÉNAGER mark with an acute accent over the first “e” and three colored pendants over the first “I.” A third trademark covers the name IMENAGER in black, capital letters without the acute accent or pendant shapes. Collectively, the trademarks claim goods and services in classes 7, 9, 11, 16, 20 and 35-43. Complainant registered the domain name <imenager.fr> on September 20, 2004, the domain name <imenager.com> on February 17, 2008, the domain name <imenager.be> on December 6, 2011, and the domain name <imenager.net> on December 6, 2011.
The domain name <iménager.com> was created on February 8, 2009 and was acquired by the Respondent on February 14, 2013. Respondent markets a variety of goods on the website at that domain name, including household goods and appliances. The website features “Iménager.com” at the header. It uses white font and includes the acute accent over the “e,” but none of the pendants used on Complainant’s website and registered trademarks. Respondent does not include any advertisements on its website other than those for the products it itself is marketing.
Respondent is a domain broker and has previously registered a large number of domain names. Some of these domain names are very similar to those of other companies. For example, Respondent registered <5àsec.fr>, where a dry-cleaning company had registered <5asec.fr>. And, as another example, Respondent has registered <8àhuit.fr>, when a supermarket company had registered <8ahuit.fr>.
5. Parties’ Contentions
First, Complainant contends that it has exclusive rights to the IMÉNAGER mark. It notes that it registered the IMÉNAGER mark as a trade name on July 22, 2002 and that it has since marketed and promoted itself under that name. It further notes its three trademarks for which it applied on November 4-5, 2012. Finally, Complainant stresses that its ownership of the IMÉNAGER mark is especially well-known in the niche marketplace of e-commerce vendors of household goods and appliances.
Complainant contends that the disputed domain name, <iménager.com>, is identical to both its registered trademarks and trade name, IMÉNAGER. Complainant further alleges that <iménager.com> is confusingly similar to four domain names that it has registered, including <imenager.fr>, <imenager.com>, <imenager.be>, and <imenager.net>. The only distinction between these domain names and the disputed domain name is the acute accent over the “e,” which Complainant argues could be added erroneously by its customers, especially since it includes that accent in its trade name.
Second, Complainant alleges that the Respondent has no rights or legitimate interests to the disputed domain name, <iménager.com>. To Complainant’s knowledge, the Respondent had no trademarks, trade names or other rights to the name Iménager. Complainant further states that Respondent is not an affiliate and has not been authorized or licensed by Complainant to use its trademarks.
Third, Complainant alleges that the domain name was registered and is being used in bad faith. It asserts, as a preliminary issue, that Respondent was aware of Complainant’s mark and trade name. Complainant argues: (1) that while its trademark applications postdated the creation of the domain name, they preceded Respondent’s acquisition thereof; (2) that Complainant registered Iménager as an official trade name ten years prior Respondent’s acquisition of the disputed domain name; (3) that it had registered four domain names similar to the disputed one before it came under Respondent’s control; and (4) that, considering Complainant’s repute, Respondent must have been aware of Complainant’s trademark rights, especially considering that Respondent’s website operated in the same niche marketplace of e-commerce based retail of household goods and appliances.
On this basis, Complainant alleges that Respondent uses the domain name to attract consumers based on the repute of Complainant’s mark, IMÉNAGER. Complainant finds evidence for this in Respondent’s creation and subsequent use of the domain name to market the same type of goods as the Complainant. Complainant finds additional evidence in Respondent’s use of “iménager.com” as a header to the webpage, emphasizing its prior argument that this domain name is identical to Complainant’s mark. Thus, Respondent’s sole purpose in using the domain is, according to the Complainant, to steer traffic away from Complainant and to Respondent. Or, in the alternative, it is to collect the email addresses of Complainant’s costumers or prevent Complainant from being able to use the domain name.
Complainant also alleges that Respondent is a serial typosquatter that has repeatedly added accent marks to well-known French brands in order to mislead consumers. It observes that Respondent has registered domain names similar to other companies’ well-known marks. It gives, as one example, Respondent’s registration of <5àsec.fr>, which allegedly used only typosquatting variant to distinguish it from <5asec.fr>, a domain name registered by a dry-cleaning service company. It gives, as a second example, Respondent’s registration of <8àhuit.fr>, which allegedly used a typosquatting of <8ahuit.fr>, a domain name registered by a supermarket company.
Complainant also cites to a number of panel decisions that found that Respondent’s representative registered and used domain names in bad faith. These included BCBG MAX AZRIA GROUP v. M. Reinhard Herrmann, WIPO Case No. DFR2008-0040; Societe Anonyme des Galeries Lafayette and Galeries Lafayette Voyages v. Domains By Proxy, Inc./Reinhard Herrmann, WIPO Case No. D2009-0904; and France Printemps v. Reinhard Herrmann, WIPO Case No. D2007-0971. Complainant argues that this demonstrates that Complainant is simply another target of Respondent’s serial typosquatting practices.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this 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”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(a) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(b) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element under paragraph 4(a) requires Complainant to establish that the disputed domain name registered by the Respondent is identical or confusingly similar to a mark in which it has rights: Maree Gaye Miller v. Peter Horner, WIPO Case No. D2008-1492.
Complainant provides sufficient evidence that it is the owner of the IMÉNAGER mark. In addition to Complainant’s trademarks for IMÉNAGER, for which it had applied November 4-5, 2012, Complainant has a trade name of Iménager, registered on July 22, 2002. Complainant has contended, and Respondent has not denied, that it has operated under its trade name, Iménager, since that date. Furthermore, Complainant registered the domain name <imenager.fr> by September 20, 2004, the domain name <imenager.com> by February 17, 2008, the domain name <imenager.be> by December 6, 2011, and the domain name <imenager.net> by December 6, 2011. Finally, Complainant further alleges, and Respondent does not dispute, that many consumers knew of and held the IMÉNAGER mark in high regard, especially in the market niche of e-commerce for household goods and appliances.
From this evidence, the Panel finds that Complainant has demonstrated by a preponderance of the evidence that it had common law rights in the IMÉNAGER mark at the time the disputed domain name was created on February 8, 2009, despite the fact that it had not yet applied to register its trademarks. See Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall, WIPO Case No. D2006-0916. At any rate, Complainant had applied for its trademarks prior to Respondent’s acquisition of the domain name on February 14, 2013 and clearly had established rights at that point and time: John Ode d/b/a/ODE and ODE-Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074.
The disputed domain name consists of only two elements: (1) Complainant’s IMÉNAGER mark; and (2) the suffix “.com.” It is well-established that this latter element – here the top-level domain name “.com” – can be disregarded for the purposes of determining the similarity of Complainant’s mark and the disputed domain name: Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561; Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029.
For this reason, this Panel finds that the Disputed Domain Name is identical to Complainant’s IMÉNAGER mark, in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to present – at a minimum – a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Maree Gaye Miller v. Peter Horner, WIPO Case No. D2008-1492. “Once the Complainant has made a prima facie case, the burden shifts to the Respondent to refute the Complainant's averments and to show that it has rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy.” Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393 (citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1).
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name, and has put forward all the evidence that could reasonably be expected, considering such evidence is peculiarly within the knowledge of the Respondent: Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110. Complainant has asserted that Respondent is not an affiliate and that it has never had authorization or a license to use it trademarks. Furthermore, based on an assessment of the evidence on record, the Panel finds there is no indication that the Respondent has been commonly known by the disputed domain name or that it has used the disputed domain name for a bona fide offering of goods or services: Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. For these reasons, Complainant has established a prima facie case that Respondent must now refute.
As Respondent has not filed a response, the Complainant's assertions remain unchallenged and its prima facie case still stands. Complainant has, thus, satisfied paragraph 4(a)(ii) of the UDRP. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
C. Registered and Used in Bad Faith
“The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered and used in bad faith by the Respondent.” Maree Gaye Miller v. Peter Horner, WIPO Case No. D2008-1492. The Policy states, in paragraph 4(b)(iv), that bad faith exists where the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location.”
As a preliminary matter, Respondent’s acquisition of the subject domain name constitutes registration for the purpose of the Policy: MC Enterprises v. Mark Segal, WIPO Case No. D2005-1270. At that date, Complainant already owned trademarks identical to the disputed domain name, it had already registered a trade name identical to the disputed domain name, and it had operated under that identical trade name in excess of ten years. Complainant has demonstrated that it and Respondent are operating within the same niche market, namely e-commerce of household appliances and goods. Complainant further demonstrated its relatively more developed website, branding and consumer goodwill. For these reasons, it seems that Respondent knew or must have known of Complainant and its IMÉNAGER mark: Myer Stores Limited v. David John Singh, WIPO Case No. D2001-0763 (“A finding of bad faith may be made where the Respondent "knew or should have known" of the registration and/or use of the trademark prior to registering the domain name”); SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
It further seems clear, from the foregoing, that Respondent only acquired the disputed domain name for the purpose of benefitting commercially from the goodwill associated with Complainant’s mark. Respondent marketed similar products as Complainant under an identical domain name, prominently featuring that domain name at the header of the website. Consumers could thus mistake Respondent for Complainant and purchase products from Respondent, erroneously attributing the good repute associated with Complainant’s trade name and trademarks to Respondent: Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069 (“Respondent is not free to do is to tread upon the goodwill built up by Complainant in order to steer traffic to a competing site based on intent to take advantage of Internet user confusion from typographical errors involving Complainant’s trademark. This is bad faith under paragraph 4(b)(iv) of the Policy”).
Furthermore, “[t]he fact that the Respondent has an extensive history of typo squatting only strengthens the inference of bad faith.” ALK-Abelló A/S v. Manila Industries Inc., WIPO Case No. D2006-1033 (citing Group Kaitu, LLC, Darkside productions, Inc. v. Groupe Kaitu LLC aka Manila Industries, Inc., WIPO Case No. D2005-1087; Cap Gemini v. Manila Industries, Inc./”Cap Gemini”, WIPO Case No. D2006-0027; KPMG International v. Manila Industries, Inc., WIPO Case No. D2006-0597; Valpak Direct Marketing Systems, Inc. v. Manila Industries, Inc., WIPO Case No. D2006-0714; Hummert International, Inc. v. Manila Industries, Inc., WIPO Case No. D2006-0777). This conclusion is especially appropriate here where the Respondent has not only engaged extensively in typosquatting in the past, but had done so in the exact same manner by targeting companies that use accent marks in their trade names but not in their domain names.
The information provided by the Complainant, including the Respondent’s history, suggests bad faith in the registration and use of the subject domain name. The Respondent has done nothing to supplant that suggestion.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of 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 <iménager.com> be transferred to the Complainant.
Michael A. Albert
Date: August 4, 2014