WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société d’Exploitation et de Gestion de Spectacles de Music Halls Internationaux v. Customer ID: 83520258894731, Whois Privacy Services Pty Ltd / Lisa Katz, Domain Protection LLC
Case No. D2016-1111
1. The Parties
The Complainant is Société d’Exploitation et de Gestion de Spectacles de Music Halls Internationaux of Paris, France, represented by Areopage, France.
The Respondent is Customer ID: 83520258894731, Whois Privacy Services Pty Ltd of Fortitude Valley, Australia / Lisa Katz, Domain Protection LLC of Dallas, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <lidocabaret.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2016. On June 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2016, 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 6, 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 June 10, 2016.
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, and the proceedings commenced on June 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2016.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on July 6, 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 exploits a cabaret called “LIDO” and “LE LIDO” (the “LIDO” in English) which is one of the most famous cabarets in the world.
Founded in 1946, the “LIDO” is a luxurious establishment located on the avenue of the Champs-Elysées in Paris, France. The “LIDO” has created the dinner and show concept and is offering fine dinners with Champagne during its shows.
The Complainant is the owner of several trademark registrations for LIDO, first registered on June 19, 1972 and LE LIDO, first registered on April 29, 1961. The trademarks have further been registered in numerous countries all over the world, before the Respondent’s registration of the disputed domain name, which was registered on January 30, 2005. The disputed domain name has been used to resolve to a pay-per-click (“PPC”) parking page with sponsored links referring to the Complainant and the Complainant’s competitors.
5. Parties’ Contentions
The Complainant argues that the disputed domain name is confusingly similar to its LIDO trademark because the disputed domain name contains the LIDO trademark in its entirety.
In fact, the added generic and descriptive word “cabaret” only enhances the confusing similarity since it is directly related to the services offered by the Complainant.
The Complainant has established rights in the LIDO trademark based on its longstanding use and fame. The establishment of confusion is particularly true where, as here, the trademark is famous and that famous mark has been combined with a terms that is indicative of the trademark owner’s goods and services.
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademark or to register any domain name including its trademark.
The Respondent has engaged in bad faith registration and use, using the disputed domain name to direct Internet users to numerous websites and advertisements of other cabarets in Paris and of the Complainant’s direct competitors like The Moulin Rouge, The Crazy Horse, Paradis Latin, ArtiShow etc.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove 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 was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
In the present case, the disputed domain name incorporates the word “lido”, which is identical to the Complainant’s registered trademark LIDO.
It is established that the addition of a generic term (such as here the word “cabaret”) may not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
It is clear that the disputed domain name incorporates the LIDO trademark in its entirety to which the generic term “cabaret” has been added and the word “cabaret” is only used to describe a special form of entertainment, particularly popular in France, that the “Lido” is well-known for.
The generic term may even add to the confusing similarity, in particular when it refers to the services offered by the Complainant (see F. Porsche AG v. Glenn Stefan Karlsson-Springare, WIPO Case No. D2011-1727; Audi AG and Volkswagen AG v. Glenn Karlsson-Springare, WIPO Case No. D2011-2121).
The Panel therefore concludes that the disputed domain name <lidocabaret.com> is confusingly similar to the Complainant’s trademark LIDO.
The Panel finds that the first element of the Policy has, therefore, been met.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. See paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademark or to seek registration of any domain name incorporating the LIDO trademark.
The Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain name. The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permit, or other right to which the Respondent could enjoy such use of any domain name incorporating the Complainant’s LIDO trademark.
In its Complaint, the Complainant has provided evidence that the website associated with the disputed domain name is used to gain unfair benefit of the LIDO trademark.
The Complainant has shown that the disputed domain name resolves to a registrar parking page containing sponsored links for a variety of goods and services, including links in connection with competing cabarets in Paris (see Fontem Holdings 4, B.V. v. J- B-, Limestar Inc., WIPO Case No. D2016-0344).
The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name, nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has established a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name.
On the record, the Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent most likely knew of the Complainant and its trademark rights given the well-known character of the LIDO trademark and the fact that the disputed domain name consists of the Complainant’s trademark and the dictionary word “cabaret” which describes the services offered under said trademark.
The Respondent used the disputed domain name for a parked page linking to competitive products or services without establishing rights or legitimate interests.
The website connected to the disputed domain name is a PPC parking page which indicates the lack of legitimate interests of the Respondent in the disputed domain name. The PPC-parking page shows hyperlinks directing to, amongst others, websites on which goods are offered that compete directly with the goods offers by the Complainant (see, for example, Railteam B.V. v. Internet Media Group, Domain Admin, WIPO Case No. DCO2015-0004).
The Panel finds that the Respondent, by registering and using the disputed domain name in said way, has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s LIDO trademark as to the source, sponsorship, affiliation, or endorsement of the website and of the products/services on the website (Policy, paragraph 4(b)(iv)).
Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that the disputed domain name was registered and has been used in bad faith by the Respondent.
On this basis the Panel finds that the Complainant has satisfied the third and last point of the Policy, paragraph 4(a)(iii).
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, <lidocabaret.com>, be transferred to the Complainant.
Date: July 20, 2016