WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Placoplatre v. Matriplaco Unipessoal Ltda.
Case No. D2014-1861
1. The Parties
Complainant is Placoplatre of Suresnes, France, represented by Cabinet Santarelli, France.
Respondent is Matriplaco Unipessoal Ltda. of Soutelo, Portugal.
2. The Domain Name and Registrar
The disputed domain name <placo-design.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2014. On October 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 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 Respondent of the Complaint, and the proceedings commenced on October 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2014.
The Respondent did not file a formal Response but sent several email communications to the Center on November 20, 2014 and November 21, 2014.
On November 21, 2014, the Center notified the Parties of the commencement of the Panel Appointment process, in accordance to paragraph 6 of the Rules.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on December 9, 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 trademarks upon which the Complaint is based are PLACO and PLACOPLATRE. Complainant owns a number of registrations for Complainant’s trademarks in different countries, including International Trademark registration No. 540 427, protected notably in Portugal; and French Trademark Registration Nos. 1 475 333 and 98 752 484, all of which are for the PLACO trademark; as well as International Trademark Registrations Nos. 430 495 and 458 327 and French Trademark Registration 1 367 501, all of which are for the PLACOPLATRE trademark. These trademark registrations were made originally well in advance of the date of registration of the disputed domain name, at least, as early as 1977.
According to the documentary evidence and contentions submitted, Complainant is a member of the Saint-Gobain group and is a leading company in France for plaster-based products and expanded polystyrene insulation, conducting its activities in the housing construction sector. Complainant sustains that it is a pioneer in relation to plasterboard, cultivating innovation and performance by designing practical insulation solutions adaptable to different types of application in the housing construction sector.
According to the documentary evidence and contentions submitted, Complainant has registered a number of domain names containing the name “placo”, such as <placo.fr>, <placo.org>, placo.info> and <placo.pt>.
The disputed domain name was registered on December 17, 2013 and was subsequently transferred to Respondent. Complainant sent a cease and desist letter to the original registrant of the disputed domain name, but Complainant alleges that no response was received.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark PLACO because (i) the disputed domain name consists of the association of the words “placo” and “design” and the suffix “.com”, therefore, reproducing in its entirety the PLACO trademark; (ii) the addition of the word “design” is insufficient to avoid confusion with the Complainant’s trademark, as the word “placo” is dominant and has no meaning in the Portuguese language; (iii) the term “design” is a generic word which could be perceived by Internet users as descriptive of a website where they could find information for interior fittings/interior design solutions related to Complainant’s trademark PLACO; and (iv) the suffix “.com” does not prevent confusion since it is necessary for the registration of the disputed domain name.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Complainant has not licensed, authorized or otherwise permitted Respondent to use the PLACO trademark; and (ii) Respondent has neither rights on, nor interests to, the disputed domain name.
Finally, Complainant contends that Respondent registered and uses the disputed domain name in bad faith because (i) at the time of the registration of the disputed domain name, Respondent knew of the existence of the PLACO trademark, as same is well known in France as well as in other countries such as Portugal, Spain and Brazil; (ii) the disputed domain name resolves to a website in which the name “Placo Designs” is reproduced and in which Internet users can request information for a project which it is assumed to be a project for interior design/building insulation; (iii) Internet users may, therefore, be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website; and (iv) Respondent is using the disputed domain name to attract Internet users to its website.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that respondent’s default does not automatically result in a decision in favor of complainant and that complainant must establish each of the three elements required by paragraph 4(a) of the UDRP. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.2. However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. In fact, Respondent sent several email communications to the Center, but failed to submit a formal Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. See, e.gs, Reuters Limited 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.Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in Paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
B. Identical or Confusingly Similar
The disputed domain name <placo-design.com> incorporates Complainant’s PLACO trademark in its entirety. Previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S. r. l., WIPO Case No. D2001-1206; Utensilerie Associate S. p. A. v. C & M, WIPO Case No. D2003-0159; Lilly Icos LLC. v. John Hopking/ Neo net Ltd. , WIPO Case No. D2005-0694; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.
As decided in other UDRP cases, “the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone”. LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., supra. See also Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. In the instant case, the combination of the mark PLACO with the term “design” does not affect the overall impression of the dominant part of the disputed domain name. In fact, several previous UDRP decisions have held that the addition of a common or descriptive word does not distinguish a domain name from Complainant’s trademark or preclude a finding of confusing similarity. See, e.g., Hoffmann–La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
Also, the association of the mark PLACO with the term “design” may even reinforce the likelihood of confusion as Complainant’s PLACO trademark has been connected with insulation and interior design solutions.
Finally, the addition of generic top-level domain suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s PLACO trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The consensus view in the URDP decisions has been that a complainant is required to make out an initial prima facie case, respondent carrying the burden of rebutting this to demonstrate rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. WIPO Overview 2.0, paragraph 2.1.
In the instant case, Complainant has done enough to establish a prima facie case. In fact, the Panel finds as reasonable Complainant’s contentions that Respondent has never been licensed, authorized or otherwise permitted to use the disputed domain name or any other domain name using Complainant’s trademark.
On December 19, 2014 the Panel attempted to access the website to which the disputed domain name would resolve, but was unable to reach any website (see below however). Therefore, the Panel concludes that Respondent is not making a legitimate noncommercial or fair use of the domain name or any bona fide offering of goods or services. In addition, the Panel has not found any indication that Respondent has been commonly known by the domain name.
In light of the foregoing, the Panel finds that the requirement of Paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name may be an indication of bad faith in itself, even without considering other elements. See Pepsico, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
In view of the particulars of the instant case, the Panel finds that Respondent was undoubtedly aware of the existence of Complainant’s PLACO trademark when Respondent registered the disputed domain name. In fact, the Panel sees no plausible explanation for Respondent’s adoption of the word “placo” in conjunction with the term “design” in the disputed domain name other than to create a false association with Complainant’s PLACO trademark. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847.
According to the evidence submitted with the complaint, the disputed domain name was apparently used to resolve to a website in which the name “placodesign” was reproduced and in which Internet users could request information or quotation for a project. Paragraph 4(c)(iv) of the Policy provides that if, by using the domain name respondent has 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 your web site or location or of a product or service on your web site or location, that circumstance shall be evidence of the use of a domain name in bad faith.
In short, the manner in which Respondent has registered and is using the disputed domain name demonstrates that the disputed domain name was registered and is being used in bad faith. The fact that the website to which the disputed domain name resolved is apparently no longer actively used does not affect a finding of bad faith use. The consensus view is that the apparent lack of so-called active use does not as such prevent a finding of bad faith if other circumstances are indicative of bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. (WIPO Overview 2.0, paragraph 3.2). Two of those elements are present in this case.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is 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 <placo-design.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Date: December 19, 2014