WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HAVAS v. Privacy Administrator, Anonymize, Inc. / Paisit Kapilakan
Case No. D2015-0920
1. The Parties
The Complainant is HAVAS of Puteaux, France, represented by Inlex IP Expertise, France.
The Respondent is Privacy Administrator, Anonymize, Inc. of Bellevue, Washington / Paisit Kapilakan of Bophut, Suratthani, Thailand.
2. The Domain Name and Registrar
The disputed domain name <havasdesignplus.com> is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2015. On June 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 9, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 10, 2015.
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, and the proceedings commenced on June 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2015.
The Registrar filed an email communication with the Center on June 16, 2015, indicating that Respondent had agreed to transfer the disputed domain name. On the same day, the Center acknowledged receipt of this email communication and invited the Complainant to comment if it wished to suspend the proceedings to explore a possible settlement with the Respondent. On June 23, 2015, the Complainant indicated to the Center that it did not want to suspend the proceedings.
On July 8, 2015, not having received any formal Response from the Respondent, the Center informed the parties that it would proceed with commencement of the panel appointment.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on July 31, 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 one of the largest advertising groups in France, with international operations.
The Complainant owns numerous applications and registrations for HAVAS and HAVAS DESIGN + trademarks in France and abroad (filled, respectively, since 1966 and 2009).
The Complainant also owns multiple domain names comprising the HAVAS trademark and variations of the HAVAS DESIGN + trademark, including <havasdesign.com>, <havas-designplus.com > and <havas-designplus.net>, since 2010.
The Respondent registered the disputed domain name <havasdesignplus.com> on September 4, 2014.
The Panel accessed the disputed domain name on August 10, 2015, when it was linked to a pay-per-click page with several links for advertising and design services.
5. Parties’ Contentions
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant is the owner of several previously registered domain names and prior trademarks comprising the expressions “Havas” or “Havas Design +”. The Complainant’s company name also includes the trademark HAVAS. The Respondent has simply reproduced the Complainant’s trademark HAVAS DESIGN +. The symbol “+” is pronounced “plus” and, as a symbol, can not be registered as a domain name. The registration of the disputed domain name creates a likelihood of confusion with the Complainant’s domain names and official website.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s trademarks. The trademark HAVAS enjoys a strong notoriety towards the general public. The contents linked to the disputed domain name may create a likelihood of confusion with the Complainant’s domain names and official website.
- The disputed domain name was registered and is being used in bad faith. The Respondent could not ignore the existence of the Complainant’s trademark HAVAS when he registered the disputed domain name. The Respondent’s concealment of his identity is also indicative of bad faith. There is no real or substantial offer of goods and/or services on the website associated with the disputed domain name. The disputed domain name could deceive Internet user into believing that the site to which it resolves is the Complainant’s official website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(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
The Panel has no doubt that “Havas” and “Havas Design +” are terms directly connected with the Complainant’s activities in the advertising business worldwide.
Appendix 5 to the Complaint shows trademark registrations for HAVAS and HAVAS DESIGN PLUS obtained by the Complainant as early as 1966 and 2009, respectively.
The trademark HAVAS is reproduced in its entirety in the disputed domain name. The disputed domain name differs from the Complainant’s HAVAS trademark by the addition of the terms “design” and “plus”, as well as the inclusion of the generic Top-Level Domain (“gTLD”) denominator “.com”.
The trademark HAVAS DESIGN + is essentially encompassed within the disputed domain name. The disputed domain name differs from the Complainant’s HAVAS DESIGN PLUS trademark basically by the adoption of the term “plus” in substitution of the symbol “+”, as well as by the inclusion of the gTLD denominator “.com”. The term “plus” describes the pronunciation of the symbol “+”.
It is well established that the addition of a gTLD extension such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in September, 2014) the trademarks HAVAS and HAVAS DESIGN + were already directly connected to the Complainant’s activities in the advertising business. The Respondent has not presented any justification for using the expression “havasdesignplus” in the disputed domain name.
The Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “havasdesignplus” could be a mere coincidence.
The disputed domain name is being used as a pay-per-click landing page, displaying sponsored links for third party websites. In doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) potentially obtains revenue from this practice; and
(iii) deprives the Complainant from selling its services to prospective clients who are clearly looking for the Complainant.
In situations like this, former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The passive and non-collaborative posture of the Respondent, not at least providing justifications for the use of a third party trademark, certainly cannot be used in benefit of the Respondent in this Panel’s opinion. Such circumstances, including the lack of any plausible interpretation for the adoption of the expression “havasdesignplus” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 disputed domain name <havasdesignplus.com> be transferred to the Complainant.
Date: August 14, 2015