WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bayard Presse S.A v. Private Registration, WhoisGuardService.com
Case No. D2014-1708
1. The Parties
The Complainant is Bayard Presse S.A of Montrouge, France, represented by Fidal of France.
The Respondent is Private Registration, WhoisGuardService.com of Nanjing, Jiangsu Province, China.
2. The Domain Name and Registrar
The disputed domain name <bayard-jeuness.com> (the "Disputed Domain Name") is registered with Nanjing Imperiosus Technology Co. Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 1, 2014. On October 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 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.
On October 3, 2014, the Center sent an email communication to the parties in Chinese and English regarding the language of the proceeding. On October 6, 2014, the Complainant requested that English be the language of the proceeding. On the same day, the Complainant also submitted an amended Complaint. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in Chinese and English, and the proceeding commenced on October 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 31, 2014.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on November 7, 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 an international press and publishing group that publishes more than 150 magazines worldwide under various publishing brands. The Complainant has registered nearly 500 trademarks throughout the world, including BAYARD, BAYARD PRESSE, BAYARD PRESSE JEUNE, and GROUPE BAYARD (hereinafter, the "BAYARD marks".) The Complainant provided evidence of these and other marks in Annex E to the Complaint. The evidence shows that the Complainant's registrations of the BAYARD marks begin at least as early as 1990. The Complainant also operates several websites utilizing the BAYARD marks, such as <bayard-jeunesse.com>, <bayardjeunesse.ca>, <bayardpresse.com>, and <groupebayard.com>. The Complainant offered evidence of its ownership of these domain names in Annex C to the Complaint.
The Respondent is Private Registration, WhoisGuardService.com of Nanjing, Jiangsu Province, China. The Disputed Domain Name <bayard-jeunesse.com> was registered on October 20, 2007.
5. Parties' Contentions
The Disputed Domain Name is identical or confusingly similar to the Complainant's BAYARD marks. The Respondent has no rights to or legitimate interests in the Disputed Domain Name. The Respondent registered and is using the Disputed Domain Name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques., WIPO Case No. D2000-0004. Insofar as the Respondent has not responded, it is appropriate to accept the facts asserted by the Complainant and to draw adverse inferences of fact against the Respondent. Nonetheless, paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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.
A. Preliminary Matters
i. Language of the Proceeding
B. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the Disputed Domain Name must be identical or confusingly similar to the Complainant's trademark.
The Panel finds that the Complainant clearly has rights in the BAYARD marks and the BAYARD marks are distinctive and well-known by the public as indicating the Complainant's publishing group. As stated above, the Complainant is the registered owner of numerous BAYARD marks in a number of jurisdictions. The record shows the Complainant owned rights in the BAYARD marks before the Disputed Domain Name registration. The Complainant is a leading publisher in France, particularly in the youth, religious, senior, and nature markets. The Complainant asserts that it offers 4,800 titles in its French and Canadian publishing catalog. The Complainant further asserts that the magazines, books, and characters in its Bayard Jeunesse line are designed for toddler to young adult readers. The Complainant also asserts that its Bayard Jeunesse line is present in Canada, Asia, and Africa with 45 different titles, 25 magazines and six million readers.
The Complainant asserts that the Disputed Domain Name is confusingly similar to its BAYARD trademarks. The Panel agrees. The Disputed Domain Name incorporates the BAYARD marks in its entirety. It is well established that a domain name is confusingly similar to a mark "when the domain name includes the trademark, or a confusingly similar approximation". Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 ("in most cases where a domain name incorporates the entirety of a trade mark, then the domain name will for the purposes of the Policy be confusingly similar to that mark."); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
The main difference between the Complainant's BAYARD marks and the Disputed Domain Name is the addition of the term "jeuness". To that end, the term "jeuness" is identical to the term "jeunesse" but for the omission of the letter "e". The term "juenesse" is a version of the term "jeune", a common French word which means "young." Further, the term "jeune" appears in the Complainant's BAYARD PRESSE JEUNE mark. The Complainant submits that "jeunesse" is a common name in French, which describes one of the main activities of the Complainant - the publication of children's books and magazines. The Panel finds that the use of the term "jeuness" in the Disputed Domain Name does not serve to distinguish the Disputed Domain Name from the Complainant's BAYARD marks. It is well established that the addition of a generic term does not avoid confusion. Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446 ("[g]enerally, a user of a mark 'may not avoid likely confusion by appropriating another's entire mark and adding descriptive or nondistinctive matter to it.'") (citing J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998)). Further, although the risk of consumer confusion exists any time a mark is combined with a generic or descriptive term in a domain name, that risk is particularly great where the term describes a central aspect of the Complainant's business, as in this case. Such a combination "in all likelihood heightens the confusion." The American Automobile Association, Inc. v. PSI, WIPO Case No. D2008-1931; see also The American Automobile Association Inc. v. AAA-Vacationsunlimeted, WIPO Case No. D2009-0373. As such, the addition of a generic term which describes a central aspect of the Complainant's business is likely to confuse consumers. Previous UDRP panels have made similar findings. See Bayard Presse S.A. v. Whoisguard Protected / LAX - T. Clayton, WIPO Case No. D2014-0280. Thus, it is likely that consumers would be confused by the use of the BAYARD marks in the Disputed Domain Name.
In light of the foregoing, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
C. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the term "Bayard-Jeuness". A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Croatia Airlines d. d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d. d. v. WACHEM do.o., WIPO Case No. D2004-0110. The Panel finds that the Complainant has successfully presented a prima facie case which the Respondent has not rebutted. The Respondent filed no response. Without a response, there is nothing in the case file that indicates that the Respondent has a right or legitimate interest in the Disputed Domain Name. Further, as discussed below, the Panel also finds that the Respondent is not engaged in a bona fide offering of goods or services. There is also no evidence in the record that the Respondent's use of the Disputed Domain Name is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the Disputed Domain Name.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
- 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
- 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
- you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
- 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.
As discussed above, it is clear that the Complainant's BAYARD marks are distinctive and famous. The record shows that the Complainant owns trademark rights in the BAYARD marks that predate creation of the Disputed Domain Name. The Disputed Domain Name contains the Complainant's marks in its entirety. Further, the Disputed Domain Name is an obvious imitation of the Complainant's website "www.bayard-jeunesse.com". Given that the Complainant's BAYARD mark is distinctive and famous, the Panel finds that Respondent was likely aware of or should have known of the Complainant's rights in the BAYARD marks when registering the Disputed Domain Name.
Where a respondent chooses to incorporate a well-known mark into a domain name without authorization, "the combination of an identical trademark in a domain name and the ensuing likelihood of initial interest confusion alone ought to be sufficient to demonstrate that the Respondent has no legitimate interest in this case." General Electric Company, General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645. Further, where the mark is well-known and famous, a trader would not legitimately choose it, "unless seeking to create an impression of an association" with the mark's owner. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-00003. The Respondent has not offered any argument to show this inclusion is not non-distinctive or generic, and, in the absence of a credible explanation, the most likely explanation is that it was chosen with the Complainant's mark in mind. Associazione Radio Maria v. Mary Martinez / Domains by Proxy, Inc., WIPO Case No. D2010-2181.
The Complainant submits that the Respondent is using the Disputed Domain Name to intentionally misdirect Internet users searching for information about the Complainant or searching for the Complainant's authorized goods and services by creating a likelihood of confusions with the Complainant's BAYARD marks. The Panel agrees. Although 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. See Telstra Corporation Limited v. Nuclear Marshmallows, supra; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574).
In light of the foregoing, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith. Thus, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <bayard-jeuness.com> be transferred to the Complainant.
Kimberley Chen Nobles
Date: November 20, 2014