WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société nouvelle d’études, d’éditions et de publicité SNEEP v. Whoisguard, Inc. / Simon Duponchel
Case No. D2015-0662
1. The Parties
The Complainant is Société nouvelle d’études, d’éditions et de publicité SNEEP of Paris, France, represented by Cabinet Strato-IP, France.
The Respondent is Whoisguard, Inc., Whoisguard Protected of Panama / Simon Duponchel of Seattle, Washington, United States of America (“United States”).
2. The Domain Names and Registrar
The disputed domain names <argus-cote.com>, <argus-mag.com> and <centrale-argus.com> (the “Domain<Names”) are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2015. On April 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 16, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 28, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 30, 2015.
The Center verified that the Complaint together with the amended Complaint (hereafter 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 May 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on June 1, 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
The Complainant is a publisher of a magazine first known as “L’Argus de l’automobile et des locomotions” and presently known as “L’Argus”. “L’Argus” has been continuously published since 1927 (other than a brief interruption in 1939), with 4,456 issues that provide information on second-hand vehicle transactions in France. The Complainant offers a service, known as the “Cote Argus”, that estimates the present market value of a particular make and model of second hand vehicle.
The Complainant is the owner of a number of trade marks consisting of the word “argus”, first registered in 1988, including a mark consisting solely of the word “argus” (the “ARGUS Mark”) registered on January 24, 2014 as a Community Trade Mark in classes 12, 16, 35, 36, 37, 38, 39, 41 and 42. The Complainant has also registered domain names containing the ARGUS Mark including <argusauto.fr> and <argus.fr>. Each of these domain names redirects users to the Complainant’s website at “www.largus.fr”.
The Domain Names <argus-mag.com> and <centrale-argus.com> were registered on February 20, 2015. The Domain Name <argus-cote.com> was registered on March 15, 2015. The Domain Names <argus-mag.com> and <centrale-argus.com> are inactive while the Domain Name <argus-cote.com> resolves to a website (the “Respondent’s Website”), which consists of a series of links to pages or sites that purport to provide automobile resale services, including the “Cote Argus”. Such links may operate on a pay-per-click basis.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s ARGUS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of numerous marks that feature the word “Argus”, including the ARGUS Mark. It owns trade mark registrations for the ARGUS Mark in the European Union.
The Domain Names consist of the ARGUS Mark with the addition of the elements “cote”, “centrale” and “mag”. “Cote” refers to an activity (the “Cote Argus”) for which the Complainant has acquired a reputation, “mag” is a contraction of the term “magazine”, a good published by the Complainant and “centrale” refers to the Comlainant’s French registered trade mark for VALEUR ARGUS CENTRALE.
The Respondent has no rights or legitimate interests in the Domain Names. The Complainant has not authorized the Respondent to use and register any domain name incorporating the ARGUS Mark, nor does the Respondent appear to be commonly known by the Domain Names. The Respondent has made no preparations to use the Domain Names and as such cannot obtain rights or legitimate interests in the Domain Names arising from use.
The Domain Names were registered and are being used in bad faith. The Respondent registered the Domain Names with awareness of the Complainant’s reputation and is passively holding the Domain Names, which amounts to use of the Domain Names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the ARGUS Mark, having registrations for the ARGUS Mark in the European Union.
The Domain Names consist of the ARGUS Mark and the addition of the elements “-cote” “centrale-” and “-mag”. In the present case the addition of these elements to domain names that otherwise incorporate a mark in its entirety does not prevent a finding of confusing similarity. In particular, because the Domain Name <argus-cote.com> may refer to the Cote Argus, a service run by the Complainant, and the Domain Name <argus-mag.com> may refer to the magazine published by the Complainant, a person viewing these Domain Names may be confused into thinking any of the Domain Names refer to a site run by the Complainant.
Accordingly, the Panel finds that each of the Domain Names is confusingly similar to the Complainant’s ARGUS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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.”
The Respondent has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the ARGUS Mark or a mark similar to the ARGUS Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Indeed, the Domain Names <argus-mag.com> and <centrale-argus.com> are inactive.
The Respondent uses the Domain Name <argus-cote.com> for a website that appears to provide links to services similar to those provided by the Complainant being information about second hand automobiles and price estimates. The Respondent’s Website, again without the permission of the Complainant, also makes references to the Complainant’s Cote Argus service. The Respondent may receive income from such behaviour through people who visit the Respondent’s Website after being enticed by the similarity of the Domain Name <argus-cote.com> to the ARGUS Mark. Such use, being commercial and misleading, is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests including providing evidence of the bona fide nature of the Respondent’s Website but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) The Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the ARGUS Mark at the time the Respondent registered the Domain Names. The Respondent, within a short period of time registered three Domain Names, one of which refers to the service the Complainant offers (the Cote Argus), one of which refers to a good the Complainant publishes (L’Argus magazine) and one of which reflects a trade mark owned by the Complainant (VALEUR ARGUS CENTRALE). The Respondent’s Website makes reference to the Complainant’s Cote Argus service and offers similar services as the Complainant. The registration of the Domain Names in awareness of the ARGUS Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name <argus-cote.com> to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the ARGUS Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website consists of a website that offers links to sites purporting to offer automobile valuation services that compete directly with the services offered by the Complainant. The only apparent purpose behind the conduct of the Respondent is to gain financial revenue from people who visit the Respondent’s site out of confusion or because they assume it is a site connected to the Complainant. The Panel finds that such use amounts to use in bad faith.
With respect to the Domain Names <argus-mag.com> and <centrale-argus.com>, those Domain Names are currently inactive and there is no evidence that the Domain Names have been used by the Respondent for any purpose. They are, in essence, being passively held by the Respondent. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 established that, in certain circumstances, the passive holding of a domain name could amount to use of the domain name in bad faith.
A panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. In this case the following circumstances exist:
(a) The Respondent was aware of the Complainant at the time it registered the Domain Names;
(b) The Domain Names reproduce the ARGUS Mark in its entirety;
(c) The Respondent has provided no bona fide reason for the registration of the Domain Names; and
(d) The Respondent has registered a similar domain name (<argus-cote.com>) and is using it in bad faith.
On the basis of the circumstances outlined above, the Panel is prepared to conclude that the Respondent is using the Domain Names <argus-mag.com> and <centrale-argus.com> in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith 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 Names <argus-cote.com>, <argus-mag.com> and <central-argus.com> be transferred to the Complainant.
Date: June 4, 2015