WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Librairie Michèle Noret v. Domains By Proxy, LLC / Zigmond Levin
Case No. D2016-1006
1. The Parties
The Complainant is Librairie Michèle Noret of Paris, France, represented by Deshoulières Avocats, France.
The Respondent is Domains By Proxy, LLC of Scottsdale, United States of America / Zigmond Levin of Tzhfat, Israel.
2. The Domain Name and Registrar
The disputed domain name, <librairiemichelenoret.com> (the “Domain Name”), is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2016. On May 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 27, 2016 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 May 31, 2016.
The Center verified that the Complaint together with the amended Complaint (together, 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 June 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 27, 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.
The invitation from the Center to the Complainant to file an amended Complaint stemmed from the fact that the underlying registrant of the Domain Name had been using a privacy service. In this decision the Panel treats the underlying registrant, Zigmond Levin, as the Respondent.
On June 28, 2016 the Panel issued Procedural Order No. 1 to the parties, seeking further information from the Complainant in relation to the French language annexes to the Complaint and giving the Respondent an opportunity to reply.
The Complainant responded in timely fashion. The Respondent did not submit a reply.
4. Factual Background
The Complainant, a French limited liability company, was registered at the Tribunal de Commerce de Paris on September 9, 2014, however the evidence establishes that the Complainant’s business commenced at least as early as November 2006 under the direction of Michèle Noret, its current director. For the purposes of this decision the Panel treats the Complainant and its director as one.
The Complainant is a bookseller based in Paris specializing in “Russian Futurist and Avant-Garde Children’s books” and “Illustrated 20th Century Books” and from 2006 to at least 2012 operated a website connected to the Domain Name.
The Complainant is the registered proprietor of Community Trade Mark 014839054 registered in 2016 (filed November 27, 2015) MICHÈLE NORET (words) for a variety of goods and services in classes 16, 35 and 41 mainly relating to the publication and sale of books.
The Domain Name was first registered by the Complainant on July 10, 2004 and acquired by the Respondent on a date unknown, but believed to have been in 2014. The Domain Name is connected to a website featuring inter alia an image of the front cover of the Complainant’s November 2006 catalogue and a reference to the Complainant’s website at the Domain Name. It is a defective site in that it is not up-to-date and features a number of error pages.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its registered trade mark and identical to the name under which it has traded since 2006. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. Finally, the Complainant contends that the Domain Name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the word “librairie” (meaning “bookshop” in French, which describes the Complainant’s business), the Complainant’s registered trade mark, MICHÈLE NORET (apart from the accent), and the “.com” generic Top Level Domain (“gTLD”) identifier.
The Panel finds that, absent the “.com” gTLD, which may be ignored for the purpose of assessing identity and confusing similarity, the Domain Name is confusingly similar to the Complainant’s registered trade mark.
That finding is sufficient to enable the Complainant to succeed under this the first element of the Policy.
However, the Complainant’s registered trade mark rights post-date registration of the Domain Name, which could have an impact on the ability of the Complainant to establish the third element of the Policy (registration and use in bad faith).
Accordingly, it is convenient to mention here that the evidence filed by the Complainant and unchallenged by the Respondent satisfies the Panel on the balance of probabilities that the reputation and goodwill generated by the Complainant under and by reference to its name “Librairie Michèle Noret” was sufficient to give rise to rights equivalent to unregistered trade mark rights predating the Respondent’s registration of the Domain Name.1
The Panel finds that the Domain Name is substantially identical to “Librairie Michèle Noret”, the name under which the Complainant has been trading since at least 2006.
The Panel finds that the Domain Name is identical or confusingly similar to trade marks in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant’s trading name is an unusual, probably unique, combination in that it comprises Michèle Noret, the name of its director, and the French word for bookshop. For many years prior to the acquisition of the Domain Name by the Respondent the Domain Name hosted the Complainant’s website.
The Complainant has given no permission to the Respondent to use its trade mark or trading name, is not associated in any way with the Respondent and the Complainant correctly observes that the Respondent’s name is materially different from the Domain Name.
The Complainant has made out a prima facie case against the Respondent, a case calling for an answer from the Respondent.
The Respondent has elected not to provide an answer and the Panel can think of no basis upon which the Respondent might be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
It appears that at some stage between 2012 and 2014 the Complainant allowed its registration of the Domain Name to lapse, leaving it available for re-registration and that the Respondent took advantage of that opportunity.
The Respondent has done nothing with the Domain Name save to connect it (or leave it connected) to an earlier website of the Complainant.
What was the Respondent’s purpose in acquiring the Domain Name? He is an Israeli resident and has no obvious connection with France or bookselling and, as the Panel has found, has no connection with the Complainant.
The Complainant contends that the Respondent acquired the Domain Name for the purpose of selling it to the Complainant at a profit. In the absence of any explanation from the Respondent and on the basis that nobody registers domain names for no purpose, the Panel accepts that, more likely than not, the Complainant’s contention is correct. The fact that the Respondent does not appear to have made any approach to the Complainant does not detract from the Complainant’s contention, as it is common for cybersquatters to sit on domain names waiting for an approach from the trade mark owner.
While the Respondent’s website is currently static, the Domain Name is the name of the Complainant and the website purports to be a website of the Complainant. In its current state the website is reputationly damaging to the Complainant, being out-of-date and in many respects defective. Moreover, there is no knowing how the Respondent might use the Domain Name in the future. In the view of the Panel, while the Domain Name remains in the hands of the Respondent it represents an abusive threat hanging over the head of the Complainant and, as such, amounts to a continuing abusive use. It precisely identifies the Complainant and is out of the Complainant’s control.
The Panel finds that the Domain Name was registered and is being used 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 Domain Name, <librairiemichelenoret.com>, be transferred to the Complainant.
Date: July 11, 2016
1 As to the applicability in proceedings under the Policy of rights equivalent to unregistered trade mark rights, see paragraph 1.7 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)