WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SOCIETE NOUVELLE D'ETUDES, D'EDITIONS ET DE PUBLICITE SNEEP v. PLAN-B co., Ltd, Masanori Toriimoto
Case No. D2016-0196
1. The Parties
The Complainant is SOCIETE NOUVELLE D'ETUDES, D'EDITIONS ET DE PUBLICITE SNEEP of Paris, France, represented by CABINET STRATO-IP, France.
The Respondent is PLAN-B co., Ltd, Masanori Toriimoto of Osaka, Japan.
2. The Domain Name and Registrar
The disputed domain name <argusgratuit.net> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 1, 2016. On February 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2016, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 5, 2016.
On February 5, 2016, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On the same day, the Complainant requested for English to be the language of the proceeding, to which the Respondent has not replied.
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 and 4, the Center formally notified the Respondent of the Complaint, in both English and Japanese, and the proceeding commenced on February 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 4, 2016.
The Center appointed Douglas Clark as the sole panelist in this matter on March 16, 2016. 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 has edited and published since 1927 the magazine "L'Argus de l'automobile et des locomotions", called today "L'Argus" which specializes in the field of second-hand vehicle transactions. The Complainant is also the owner of a number of trademarks for ARGUS or incorporating ARGUS. The most important of these are:
1. ARGUS, Community trademark no. 011713633 filed on April 4, 2013 and registered on January 24, 2014 in classes 12, 16, 35, 36, 37, 38, 39, 41 and 42;
2. COTE ARGUS GRATUITE, French trademark no. 13 4038 626 filed on October 9, 2013 and registered in classes 12, 16, 35, 36, 37, 38, 39, 41 and 42.
The Complainant is also the owner of the following domain names:
1. <argusauto.fr>, registered since June 14, 2004;
2. <argus.fr>, registered since December 12, 2006.
The Respondent is located in Japan. The disputed domain name was registered on November 23, 2015. While the Complainant has alleged that the disputed domain name is passively held, the Panel's investigation reveals that it currently resolves to a website providing guidelines for dental health and providing a link to dental clinics in Tokyo, Osaka and Fukuoka, Japan.,
5. Parties' Contentions
The Complainant contends as follows:
Identical or confusingly similar
The Complainant contends that the disputed domain name <argusgratuit.net> is confusingly similar to the Complainant's registered trademarks that incorporate ARGUS as well as its domain names <argusauto.fr> and <argus.fr>. The distinctive part of the disputed domain name is "argus". The word "gratuit" means "free" in French and is not distinctive. The disputed domain name is therefore confusingly similar to the Complainant's registered trademarks.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for ARGUS. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
Before acquiring the disputed domain name, it is highly likely the Respondent knew of the Complainant's rights in the mark ARGUS and acquired the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name and/or disrupting the Complainant's business. Even though the disputed domain name has not been used, the passive holding of a domain name has been held to be use in bad faith.
The Respondent did not respond to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreement is in Japanese. Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The Complainant requested the language of the proceeding to be English on grounds that English is an international language and the principal foreign language used in Japan; and, that it would be expensive for the Complainant to translate the Complaint into Japanese.
The Respondent did not respond to this request.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel. None of the reasons given by the Complainant are particularly compelling.
Nevertheless, the Respondent did not respond to the Center's preliminary determination. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent's failure to respond to a preliminary determination by the Center as to the language of the proceeding "should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint".
Further, translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center's preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
A. Identical or Confusingly Similar
The disputed domain name <argusgratuit.net> is, other than the generic Top-Level Domain (gTLD) ".net", confusingly similar to the Complainant's trademark ARGUS. The only difference is the addition of the generic term "gratuit" meaning "free" in French.
The Panel notes that the Complainant does not have a registered trademark for ARGUS in Japan. However, the ownership of a trademark is generally considered to be a threshold standing issue. (See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")) In this case, the use of a French word in the disputed domain name also suggests some intention to use the disputed domain name in relation to the offer of services or products in France where the Complainant does have trademark registrations.
The first part of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights and legitimate interests. These are:
"(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 a 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 responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.
None of the circumstances in paragraph 4(c) of the Policy are, therefore, present in this case.
The second part of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith:
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name <argusgratuit.net> was registered and is being used in bad faith.
The words "argus" and "gratuit" have no meaning in Japanese. The certainly do not have any relationship to dental services.
The passive holding of the disputed domain name as alleged by the Complainant does not prevent a finding of bad faith. There appears to be no good reason to register a domain name with the word "argus" combined with a French word meaning "free" other than to in some way trade off the Complainant's goodwill. Having examined all the circumstances of the case, the Panel finds that the Respondent registered and is using the disputed domain in bad faith. (See paragraph 3.2 of the WIPO Overview 2.0).
In any event, the current use where there are links to services indicates a clear intention to monetize the disputed domain name contrary to paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"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."
The third part of paragraph 4(a) of the Policy is therefore satisfied.
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, <argusgratuit.net>, be transferred to the Complainant.
Date: April 1, 2016