WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dormeuil Frères v. Zhao Jiafei, NA
Case No. D2014-1508
1. The Parties
The Complainant is Dormeuil Frères of Wissous, France (the "Complainant"), represented by SBKG & Associés - A.A.R.P.I., France.
The Respondent is Zhao Jiafei, NA (the "Respondent") of Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <dormeuil.info> (the "Domain Name") 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 September 3, 2014. On September 3, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 10, 2014.
The Center verified that the Complaint together with the amendment to 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 September 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 7, 2014.
The Center appointed Dana Haviland as the sole panelist in this matter on October 17, 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 , a family business since 1842, markets and sells fabrics and both custom made and ready-to-wear clothing through its Dormeuil stores, worldwide offices, distributors, and various websites which incorporate the word "Dormeuil" in domain names, including "www.dormeuil.com", its official website, registered in 1997.
Since 1954, the Complainant has also registered numerous trademarks worldwide consisting of or containing the word "Dormeuil" (hereafter the "DORMEUIL Mark") in connection with fabrics for clothing and clothing. The Complainant has submitted evidence of several of these trademarks, including:
- International trademark DORMEUIL no. 179681, registered on September 20, 1954;
- Community trademark DORMEUIL no. 109207, registered on December 3, 1998; and
- Chinese trademark DORMEUIL no. 42491, registered on December 1, 2002.
The Domain Name was registered on August 16, 2014.
5. Parties' Contentions
The Complainant asserts that the Domain Name is identical or confusingly similar to trademarks in which it has prior registered rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent's domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name incorporates the Complainant's DORMEUIL Mark in its entirety, adding only the ".info" generic Top-Level Domain ("gTLD") suffix. The Complainant alleges that the term "dormeuil" in itself has no meaning and is therefore highly distinctive. It is well established that the inclusion of the gTLD typically does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the complainant's trademark. See Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Iconcard S.p.A. v. Linecom, WIPO Case No. D2005-1115; L'Oréal v. Tina Smith, WIPO Case No. D2013-0820.
The Panel finds that the Domain Name is identical or confusingly similar to the Complainant's DORMEUIL Mark, in which the Complainant has prior rights, and that the Complainant has thus established the first element of its claim, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; or
(iii) the respondent is 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.
According to the Complaint, the Respondent has adopted the Complainant's DORMEUIL Mark for its own use and incorporated it into its Domain Name without the Complainant's authorization. The Complainant asserts that the Respondent is not commonly known by the name "Dormeuil", has no relationship with the Complainant, and has not been licensed to use the Complainant's trademark in a domain name or otherwise.
There is no evidence that the Respondent, who has failed to respond to the Complaint, used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods and services. In this regard, the Complainant has submitted evidence to show that the Domain Name is being used as a parking page displaying commercial links related to clothing products offered for sale by competitors of the Complainant.
It thus appears that the Respondent has registered and is using the Domain Name incorporating the Complainant's DORMEUIL Mark to attract Internet users for commercial gain from the sponsored links. This commercial use of the Domain Name by the Respondent to offer goods and services competing with those of the Complainant does not demonstrate any right or legitimate interest in the Domain Name. The Respondent's use of the Complainant's Mark for a website displaying click-through links to the Complainant's competitors does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use, within the meaning of paragraphs 4(c)(i) and 4(c)(iii) of the Policy. See Dormeuil Freres v. Private, WIPO Case No. DCO2010-0006; Barclays Bank PLC v. Rico Martinez, WIPO Case No. D2010-1987; Swarovski Aktiengesellschaft v. Transure Enterprise Ltd., WIPO Case No. D2009-1638; Columbia Insurance Company, Benjamin Moore v. Whois Data Shield and St Kitts Registry, WIPO Case No. D2007-0741; Unilever N.V. v. Kentech, Inc., WIPO Case No. D2005-1021.
Under the Policy, "a 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 of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1. The Respondent has not submitted any response or evidence to rebut the allegations of the Complainant.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name, and that the Complainant has satisfied the second element of its claim, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the registrant has registered or 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 the registrant's documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.
The Respondent's use of the Domain Name for a pay-per-click website diverting Internet users to sponsored links for products and services offered by the Complainant's competitors, in order to generate income for the Respondent, constitutes evidence of bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy. See Dormeuil Freres v. Private, supra; L'Oreal v. PPA Media Services, Ryan G. Foo/ Fundacion Private Whois, Domain Administrator, WIPO Case No. D2013-2230; Barclays Bank PLC v. Rico Martinez, supra; Swarovski Aktiengesellschaft v. Transure Enterprise Ltd., supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The Panel finds that the Complainant has established the Respondent's bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy, and that the Complainant has therefore satisfied the third element of its claim under 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 Domain Name <dormeuil.info> be transferred to the Complainant.
Date: October 31, 2014