WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société BIC v. Mr. Selim Yildiz
Case No. D2016-0911
1. The Parties
The Complainant is Société BIC of Clichy, France, represented by DBK - Société d'avocats, France.
The Respondent is Mr. Selim Yildiz of Istanbul, Turkey, self-represented.
2. The Domain Names and Registrars
The disputed domain names <bicstore.com> and <bicstore.net> are registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 6, 2016. On May 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, 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 proceedings commenced on May 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2016. The Response was filed with the Center on June 1, 2016.
The Center appointed Luca Barbero as the sole panelist in this matter on June 14, 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 is a French joint stock company which creates, manufactures and sells disposable everyday products such as pens, lighters and shavers.
The Complainant's BIC products are sold in more than 160 countries on every continent and the Complainant is one of the leaders in its market.
The Complainant is the owner of numerous trademark registrations for BIC, including the Turkish trademark registration No. 77658 (figurative mark), filed on June 27, 1993 in classes 8, 16 and 34 and registered on December 31, 1993, the French trademark registration No. 1572171 (word mark), filed on February 19, 1980 in classes 1, 2, 3, 4, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 27, 28, 29, 30, 31, 32, 33 and 34 and registered on January 26, 1990, and the European Union trademark No. 414904 (word mark), filed on December 23, 1996 and registered on October 16, 1998 in classes 8, 16 and 34.
The Complainant is also the owner of numerous domain names, including the domain name <bicworld.com>, registered in 1996 and pointed to the Complainant's institutional web site portal, and <bicsport.com>, registered in 1995 and pointed to the Complainant's water sports web site portal.
5. Parties' Contentions
The Complainant submits that its BIC trademarks have been used worldwide since the 1950's and are considered famous. Specifically, the Complainant alleges that the BIC ball point pens have been well-known for more than 60 years, and that its BIC disposable shavers and lighters have been renowned for 40 years.
The Complainant informs the Panel that it sent a cease and desist letter to the Respondent on March 4, 2016, requesting the transfer of the disputed domain name <bicstore.com> to the Complainant, and that the Respondent failed to comply with the Complainant's request and, in addition, it registered the second disputed domain name <bicstore.net>. The Complainant also states that a second cease and desist letter was sent to the Respondent on April 5, 2016, requesting the transfer of both domain names to the Complainant, but the Respondent failed again to comply with the Complainant's demands.
The Complainant contends that the disputed domain names are confusingly similar to the Complainant's trademark BIC as they incorporate the trademark in its entirety with the addition of the descriptive term "store", which emphasizes the likelihood of confusion with the Complainant's trademark BIC, referring directly to an online store that could be exploited by the Complainant to sell its products on the Internet.
With reference to the Respondent's lack of rights or legitimate interests in the disputed domain names, the Complainant states that it has never authorized the Respondent to register and/or use any domain name incorporating its trademark BIC, and that it has not granted the Respondent any license or authorization to use the Complainant's trademarks.
The Complainant further asserts that the disputed domain names have been pointed to web pages providing links to a number of web sites offering products in competition with those of the Complainant, manufactured and sold under the BIC trademarks. The Complainant asserts that the Respondent's "business" does not consist in the direct sale but it is a "classic" monetization web site generating revenue only via the Internet traffic increased by the use of a famous trademark in the web site address. The Complainant therefore concludes that the Respondent's use does not qualify as a bona fide offer of goods and services.
The Complainant further states that the Respondent seems to have registered the disputed domain names to sell them.
With reference to the Respondent's bad faith, the Complainant states that its BIC trademarks have been used worldwide since the 1950's and are considered famous. Therefore, in accordance with prior UDRP decisions, it shall be deemed that the registration of the disputed domain names by the Respondent has been done per se in bad faith.
In addition, the Complainant states that the disputed domain names have been used to take advantage of the reputation of the BIC trademarks, as the web sites to which the disputed domain names resolved contained links to a number of web sites offering goods in competition to the Complainant's BIC products.
The Complainant further highlights that the disputed domain names have been pointed to a Sedo web page where they have been offered for sale, and that the use of the disputed domain names in connection with a pay-per-click web site cannot be considered a bona fide offering of goods and services, or a legitimate noncomercial fair use.
As an additional circumstancial evidence of bad faith, the Complainant highlights that the disputed domain name <bicstore.net> was registered on March 4, 2016, the same day when the Respondent received the Complainant's first cease and desist letter. Therefore, the Complainant claims that this disputed domain name was registered in bad faith ad that such conduct amounts to a pattern of conduct according to paragraph 4(b)(ii) of the Policy.
The Respondent states that it registered the disputed domain name <bicstore.com> to build an Amazon affiliate site and asserts that it produces small amount of revenue from this site which is however important for him.
The Respondent alleges that the web site at "www.bicstore.com" and its content are not related to the Complainant and its BIC products and denies the existence of any situation which would lead to brand confusion as claimed by the Complainant.
The Respondent asserts that the trademark BIC corresponds to a short name which is suitable to be
used in many text in different languages, and states that a Google search shows millions of sites containing "bic" as prefix, suffix, and infix.
The Respondent also contends to have used "bic" as abbreviation of its web site name "buy it cheap store" and points out that the disputed domain name <bicstore.com> is not being offered for sale.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
As highlighted above, the Complainant has provided evidence of ownership of French and European Union trademark registrations for the word mark BIC and a Turkish trademark registration for a figurative mark BIC.
As stated in paragraph 1.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), ownership of a trademark generally satisfies the threshold requirement of having trademark rights, the location of the trademark, its date of registration, and the goods and/or services for which it is registered being irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In addition, as indicated in paragraph 1.11 of the WIPO Overview 2.0, figurative, stylized or design elements in a trademark are typically disregarded for the purpose of assessing identity or confusing similarity, being generally incapable of representation in a domain name.
The Panel notes that the disputed domain names incorporate the trademark BIC in its entirety with the addition of the term "store" and the generic Top-Level Domains ("gTLDs") ".com" and ".net", which can be disregarded being a generic term and a technical requirement of registration, respectively.
Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademarks in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
With respect to this requirement, the Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain names. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701, and WIPO Overview 2.0, paragraph 2.1.
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.
The Panel notes that there is no relation between the Respondent and the Complainant and that the Respondent has not obtained any authorization to use the Complainant's trademark or the disputed domain names. In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain names.
Furthermore, there is no evidence on record that the Respondent might have used, or made preparation to use, the disputed domain names in connection with a bona fide offering of goods or services prior to receiving notice of the dispute.
Indeed, the Panel's review of the historical screenshots of the web site "www.bicstore.com" made available on the web site "www.archive.org" show that-as stated by the Complainant and denied by the Respondent-before the Respondent received the Complainant's cease and desist letter on March 4, 2016, the disputed domain name <bicstore.com> was pointed by the Respondent to a web site displaying pay-per-click links and the indication that the disputed domain name may be for sale1. According to the same source, it was only after receipt of the Complainant's cease and desist letter, that the Respondent pointed the disputed domain name <bicstore.com> to a web site displaying the writing "buy it cheap" and advertisements of various products sold on the Amazon.com web site, including razors sold by Complainant's competitors. As mentioned above, in addition-according to the evidence on records-on the same day the Respondent received the Complainant's cease and desist letter, proceeded with the registration of the second disputed domain name <bicstore.net>, which has been pointed to the same web site available at the disputed domain name "www.bicstore.com".
The Panel finds that the Respondent's use of the disputed domain names does not amount to a bona fide offering of goods or services, since the circumstances of the case suggest that the Respondent registered and used the disputed domain name to trade upon the fame of the Complainant's trademark. Moreover, the Respondent's use of the disputed domain names is, and has been, clearly commercial in nature, as the Respondent has clearly aimed at gaining revenues from the sponsored advertisements published on its web site "www.bicstore.com".
In view of the above, the Panel finds that the Complainant has proven the Respondent's lack of rights or legitimate interests in respect of the disputed domain names according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Complainant's trademark BIC has been well-known worldwide since several years for i.a. stationery products, disposable razors and razor blades or lighters, including in Turkey, where the Respondent is based.
In view of the above, the Panel finds that the Respondent was or ought to have been aware of the Complainant's trademark at the time of registration of the disputed domain names. Moreover, the registration of the disputed domain name <bicstore.net> was made by the Respondent with actual awareness of the Complainant's trademark, since it was registered on the same day the cease and desist letter was sent by the Complainant's representative to the Respondent.
The Panel also finds that the Respondent's use of the disputed domain names in connection with a web site displaying sponsored advertisements amounts to bad faith under paragraph 4(b)(iv) of the Policy, since the Respondent intentionally attempted to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the web site and the products advertised therein.
Therefore, the Panel finds that the Complainant has proven that the Respondent has registered and is using the disputed domain names 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 names <bicstore.com> and <bicstore.net> be transferred to the Complainant.
Date: June 28, 2016