WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Anonyme des Eaux Minérales d’Evian (SAEME) v. Christopher Walters
Case No. D2015-0516
1. The Parties
Complainant is Société Anonyme des Eaux Minérales d’Evian (SAEME), Evian-Les-Bains, France, represented by Dreyfus & associés, France.
Respondent is Christopher Walters of Clay, Michigan, United States of America (the “United States” or “US”).
2. The Domain Name and Registrar
The disputed domain name <evianmaster.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2015. On March 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 April 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 14, 2015.
The Center appointed Roberto Bianchi as the sole panelist in this matter on June 15, 2015. 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 is a subsidiary of Danone, a leading company, inter alia, in the business of bottled water and baby food products.
The Evian Masters is an important ladies professional golf tournament taking place in France. Currently, the tournament has changed its name to Evian Championship.
Complainant owns the following trademarks registrations for EVIAN and EVIAN MASTERS:
- International trademark EVIAN, Registration No. 235956, Registration date September 24, 1960 (renewed), covering beer, ale and porter; mineral and sparkling water as well as other non-alcoholic beverages; syrups and other preparations for making beverages in International class 32, and wines, spirits and liqueurs in International class 33.
- US trademark, Reg. No. 2822102, Registration date March 16, 2004 (renewed), covering goods in International classes 3, 16, 18, 25 and 32.
- US trademark EVIAN, Reg. No. 1155024, Registration date May 19, 1981 (renewed), covering natural mineral waters in International class 32. First use in commerce 1932.
- International trademark EVIAN MASTERS, Registration No. 770860, Registration date October 10, 2001 (renewed), covering goods in International classes 16, 18, 25 and 28.
- International trademark EVIAN MASTERS designating the United States trademark Registration No. 1008242, Registration date May 4, 2009, covering services in International class 41.
Complainant owns the following domain names: <evian.com> registered on May 14, 1997; <evian.us>, registered on April 19, 2002; <evianmasters.com>, registered on April 23, 1999; and <evianmasters.fr>, registered on April 3, 2008.
The disputed domain name was registered on April 2, 2014.
Currently, the website at the disputed domain name is inactive.
5. Parties’ Contentions
The disputed domain name is identical or confusingly similar to trademarks or service marks in which Complainant has rights. Complainant and its trademarks EVIAN and EVIAN MASTERS enjoy a worldwide reputation. The disputed domain name combines the trademark EVIAN with the generic term “master”. This addition is insufficient to avoid any likelihood of confusion. Also, the disputed domain name reproduces the trademark EVIAN MASTERS, merely deleting the letter “s”, a deletion which does not significantly affect the appearance or pronunciation of the disputed domain name. Moreover, the disputed domain name is highly similar to Complainant’s domain names <evianmasters.com> and <evianmasters.fr>. The only difference in the dominant portion of these two domain names and the disputed domain name is the absence of the letter “s” in the disputed domain name, which is a typo-squatting practice.
Respondent has no rights or legitimate interests in respect of the disputed domain name. (See Complainant’s more detailed contentions as to rights and legitimate interests in section 6.B., infra.)
The disputed domain name was registered and is being used in bad faith. It is implausible that Respondent was unaware of Complainant when he registered the disputed domain name. EVIAN and EVIAN MASTERS are well-known trademarks throughout the world, including in the United States – the home country of Respondent. Given this fact, it is impossible that Respondent had not these trademarks in mind while registering the disputed domain name. Bad faith has already been found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith.
A quick trademark search would have revealed the existence of Complainant and its EVIAN and EVIAN MASTERS trademarks. Assuming that Respondent was not aware of the possibility of searching trademarks online before registering a domain name, a simple search via a search engine using the keywords “evian” and “evian masters” would have shown that the first results relate to Complainants’ products or news. Respondent’s failure to do so is a contributory factor to its bad faith. Further, registering a domain name while merely deleting the letter “s” from the term “masters” in the trademark EVIAN MASTERS is a form of typo-squatting, which is in itself evidence of bad faith.
Moreover, it is likely that Respondent registered the disputed domain name to prevent Complainant from reflecting its trademarks in a corresponding domain name. This type of conduct constitutes evidence of Respondent’s bad faith.
The disputed domain name resolved initially to a website in Chinese containing links about massage and health issues. There is no doubt that many Internet users attempting to visit Complainant’s website have ended up on the web pages set up by Respondent. Presently the website at the disputed domain name is inactive. This does not mean that the disputed domain name is being used in good faith. Previous UDRP panels have considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii), and that in such cases the panel must give close attention to all the circumstances of Respondent’s behavior.
Respondent has not replied to Complainant’s cease-and-desist letter, followed by reminders. Previous UDRP panels have inferred bad faith in similar circumstances.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed domain name 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. Identical or Confusingly Similar
By submitting copies of printouts of the trademark registrations Complainant has proved that it owns trademarks rights in the EVIAN and EVIAN MASTERS trademarks. See section 4, supra.
Since the disputed domain name incorporates the EVIAN trademark in its entirety, just adding the generic term “master”, the Panel finds that the disputed domain name is confusingly similar to Complainant’s EVIAN mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9 (“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name.”) Also, the disputed domain name consists of Complainant’s EVIAN MASTERS trademark in its entirety, where the final “s” has been deleted. Such a deletion does not affect the Panel’s impression that the disputed domain name also is almost identical to Complainant’s EVIAN MASTERS trademark. It is also well established that the addition in a domain name of a generic Top-Level Domain (“gTLD”) to a mark typically does nothing to distinguish the domain name from the mark.
The Panel concludes that the first element of the Policy has been met.
B. Rights or Legitimate Interests
Complainant contends that the registration of its EVIAN and EVIAN MASTERS marks preceded the registration of the disputed domain name by several years, and that since the disputed domain name is almost identical to these marks, Respondent cannot reasonably claim he was intending to develop a legitimate activity. Complainant adds that Respondent is neither commonly known by the names “Evian” or “Evian Masters”, nor is in any way affiliated with Complainant, or is authorized by Complainant to use the EVIAN and EVIAN MASTERS trademarks, or to seek registration of any domain name incorporating such marks. Thus, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. Complainant further contends that Respondent, by registering the disputed domain name, which differs from the well-known mark EVIAN MASTERS by only one letter, seeks to take advantage of Internet users. As found by previous panels, typo-squatting does not constitute a legitimate interest in a domain name.
Complainant also says that Respondent never replied to cease-and-desist letters sent by Complainant by registered mail and emails, despite several reminders. Complainant reminds the Panel that UDRP panels have found that when a respondent does not avail himself of his right to respond to the complainant, it can be assumed that the respondent has no rights or legitimate interests in the disputed domain name. Respondent neither tried to defend his rights nor stated any valid arguments to justify the registration of the disputed domain name.
In the Panel’s opinion, these contentions, together with the available evidence, amount to a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. According to Complainant, the website at the disputed domain name contained links in Chinese about massage and health issues. On June 23, 2015, the Panel, while trying to connect its browser to the website at the disputed domain name, found that this site is inactive. This means that Complainant’s marks EVIAN and EVIAN MASTERS have formerly been used by Respondent either to promote his own goods or services not related to Complainant’s, or presently to lead Internet users to a dead end. In either case, this does not suggest that Respondent may have any rights or legitimate interests in the disputed domain name.
It is a consensus view that a complainant is required to make out an initial prima facie case that a respondent lacks rights or legitimate interests, and that once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See WIPO Overview 2.0, paragraph 2.1. The Panel notes that Respondent failed to submit any allegation or evidence in this proceeding, and that it previously failed to reply to Complainant’s cease-and-desist letter or to its reminders.
Accordingly, the Panel finds that Complainant has made out its case that Respondent lacks any rights or interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant has shown that its registrations for the EVIAN and EVIAN MASTERS marks predate by many years the registration of the disputed domain name by Respondent. See section 4 supra.
The Panel shares the view of previous panels that the EVIAN mark is famous or well-known. See Société Anonyme des Eaux Minérales d’Evian (SAEME) v. Vivi Bui and Evian Dayspa, WIPO Case No. D2008-1869 (“EVIAN is a well-known trademark, protected throughout the world and in particular in the United States, the country in which Respondent is established.”); Société Anonyme des Eaux Minérales d’Evian (SAEME) v. Private Whois Escrow Domains Private Limited and Pluto Domain Services Private Limited, WIPO Case No. D2009-0080 (“The Complainant’s EVIAN trademark is world famous, and there can be little reasonable doubt here that the Respondent knew (or should have known) of the mark’s existence when registering the disputed domain name.”); Société Anonyme des Eaux Minérales d’Evian (SAEME) v. Nadex Aktiebolag, WIPO Case No. D2010-0328 (“Given the high reputation of the Complainant, its world-wide market presence […] the Panel finds that the Respondent was well aware of the Complainant’s trademark when it registered the disputed domain name”). For the same reasons, the Panel is of the opinion that at the time of registering the disputed domain name Respondent knew of, and targeted Complainant and its marks EVIAN and EVIAN MASTERS. In the circumstances of this case this means that the registration of the disputed domain name was in bad faith.
Complainant has also shown that the website at the disputed domain name contained links in Chinese unrelated to Complainant, its EVIAN and EVIAN MASTERS marks, or the Evian Masters ladies’ professional golf tournament. The Panel notes that presently the disputed domain name does not resolve to any active website. However this does not mean that the disputed domain name is not being used in bad faith under the Policy. In fact the Panel agrees with Complainant that Respondent’s inaction is a passive use in bad faith of the kind described in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“[T]he concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”) The Panel considers that in the present case registration and use in bad faith can be inferred from the following relevant circumstances:
a) Complainant’s mark EVIAN is famous or well-known. Thus the registration of the disputed domain name suggests opportunistic bad faith. See Veuve Cliquot Ponsardin Maison Fondée en 1972 v. The Polygenix Group Co, WIPO Case No. D2000-0163 (“<veuvecliquot.org> is so obviously connected with such a well-known product [VEUVE CLIQUOT champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith.”)
b) Typo-squatting in the disputed domain name reveals bad faith. See Migros Genossenschafts-Bund v. Marcello Bologna, Interhome AG, WIPO Case No. D2010-1489 (“[T]he disputed domain name is an example of typo-squatting, which in the circumstances of this case also demonstrates bad faith.”
c) There is no evidence of any preparation for any legitimate, noncommercial use of the disputed domain name by Respondent.
d) Respondent failed to reply to Complainant’s cease-and-desist letter or any of its reminders.
e) Respondent is in default in this proceeding, and failed to otherwise state anything in his own favor as to rights and legitimate interests, or as to his lack of bad faith,
f) On May 28, 2015, the courier entrusted with delivering the Written Notice of the Complaint in hardcopy at Respondent’s address reported that the delivery was “refused due to incorrect contact details”. Previous UDRP panels have considered that providing false contact details is evidence of bad faith. See Corbis Corporation v. Corbisphotos.com, WIPO Case No. D2006-1293 (“[T]he Respondent has provided false contact details, another indication of its bad faith in registration and use of the Domain Name.”)
In conclusion, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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, <evianmaster.com>, be transferred to Complainant.
Date: June 29, 2015