WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
COINTREAU v. Chahine Khalil
Case No. D2015-1697
1. The Parties
The Complainant is COINTREAU of Saint Barthélémy d'Anjou, France, represented by Nameshield, France.
The Respondent is Chahine Khalil of Villejuif, France.
2. The Domain Name and Registrar
The disputed domain name <passoa.xyz> 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 September 24, 2015. On September 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 3, 2015.
The Center appointed Alexandre Nappey as the sole panelist in this matter on November 14, 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
COINTREAU (hereafter the Complainant) is a French alcohol manufacturer which produces a passion fruit liquor PASSOA (please see their websites at: "www.cointreau.com" and "www.passoa.com").
The Complainant is the owner of several trademark registrations PASSOA, such as:
The Complainant also operates a website under the domain name <passoa.com>.
The disputed domain name <passoa.xyz> has been registered on August 30, 2015 in the name of Chahine Khalil (hereafter the Respondent). On September 2, 2015 the Complainant sent a cease and desist letter to the Respondent to remind its trademark rights and request the assignment of the domain name.
On September 8, 2015, the Respondent replied to the cease and desist letter where he stated that the disputed domain name had been registered for personal purpose. Nevertheless the Respondent offered to sell the disputed domain name to the Complainant and suggested to start negotiations in order to find a financial agreement.
5. Parties' Contentions
The Complainant contends that the disputed domain name <passoa.xyz> is identical to its trademark PASSOA.
The Complainant contends that the addition of the new generic Top-Level Domain ("gTLD") ".xyz" is not sufficient to escape the finding that the disputed domain name is identical to the Complainant's trademark PASSOA and does not change the overall impression of the designation as being connected to a trademark of the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name <passoa.xyz> and he is not related in any way with the Complainant.
The Complainant does not carry out any activity for, nor has any business with the Respondent.
Neither license nor authorization has been granted by the Complainant to the Respondent to make any use of the trademark PASSOA, or apply for registration of the disputed domain name.
The website in connection with the disputed domain name <passoa.xyz> is inactive since its registration.
In his response to the cease and desist letter sent by the Complainant, the Respondent confirms his knowledge of the Complainant. He also confirms that he has no particular interest in the disputed domain name <passoa.xyz> and has given no explanation in order to justify his registration but briefly evoked a "personal project".
The Complainant at last asserts that the trademark PASSOA is widely-known and recognized all over the world, and has been used for so many years that there is no likely legitimate right or plausible use possible by the Respondent.
The Respondent was necessarily aware of the Complainant at the moment of the registration of <passoa.xyz>.
The incorporation of a famous trademark into a domain name, coupled with an inactive website, may be evidence of bad faith registration and use.
With respect to the use the Complainant claims that passive holding, under appropriate circumstances, falls within the concept of the domain name being used in bad faith, particularly where the domain name in question contains a well-known trademark.
As a matter of fact, the Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate 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.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel "shall draw such inferences therefrom as it considers appropriate."
Having consideration to the parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above mentioned elements are the following.
A. Identical or Confusingly Similar
According to paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has established prior rights in the PASSOA trademark. The Complainant and the Respondent are located in the same country, i.e. France.
The disputed domain name <passoa.xyz> is composed of the PASSOA trademark.
UDRP panels have commonly disregarded the gTLD suffix in evaluating identity or confusing similarity. More recently in cases involving new gTLDs, UDRP panels have maintained this practice, typically only considering the second level domain.
See Volkswagen AG v. Fawzi Sood, WIPO Case No. D2015-1483.
"'Xyz' is a new gTLD of general application and has no particular distinctive meaning of its own. Further generic meaning gTLDs are usually not taken into account for the purposes of determining confusing similarity under the Policy."
In this case, the Panel finds that the new gTLD suffix ".xyz" does not prevent the identity or confusing similarity between the disputed domain name and Complainant's trademarks.
Therefore, the condition of paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. The absence of rights or legitimate interests is typically established if a complainant makes out a prima facie case and the respondent does not file any response.
Here the Respondent does not appear to have any trademark or any other right associated with the name "Passoa". There is no evidence that he is commonly known by this name and he does not have any consent from the Complainant to use this name. He does not appear to have used the disputed domain name for any bona fide offering of services of his own.
The Respondent did not formally respond to the Complaint and therefore does not explain why he has registered the disputed domain name. In his reply to the cease-and-desist letter sent by Complainant prior to the present proceeding the Respondent raised a "personal project"without further explanation nor evidence.
The Panel first observes that in his letter of September 8, 2015, the Respondent does not deny any knowledge of the Complainant and its rights or provide any evidence of intended legitimate use.
In the circumstances of this case, the Panel draws the inference, in accordance with paragraph 14(b) of the Rules, that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that:
"For the purposes of Paragraph 4(a)(iii), 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 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) 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
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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."
In the present case, it is uncontested that the Respondent was aware of the Complainant and its trademark PASSOA when he registered the disputed domain name.
Even if the Complainant does not provide any evidence to support its claim concerning the well-known character of the PASSOA trademark, the Panel notes that the parties are based in the same country, France, and the Panel infers from the case file that the Respondent had knowledge of the Complainant's trademark.
The Panel further notes from the case file that the Respondent replied to the cease-and-desist letter sent by the Complainant's representative with an offer to negotiate the purchase of the disputed domain name.
The Panel finds bad faith on the basis that the Respondent "registered the [disputed] 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... for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the [disputed] domain name." (Policy, paragraph 4(b)(i)).
The Respondent's choice to refrain from filing a Response to this proceeding is cumulative evidence of bad faith.
The Panel finds that the Respondent has registered and used the disputed domain name in bad faith. The requirements of Policy paragraph 4(a)(iii) are thus fulfilled.
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 <passoa.xyz> be transferred to the Complainant.
Date: December 4, 2015