WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Electricfil SA v. Hulmiho Ukolen / Domain Admin
Case No. D2016-1822
1. The Parties
The Complainant is Electricfil SA of Lyon, France, represented by IP Twins S.A.S., France.
The Respondent is Hulmiho Ukolen of Helsinki, Finland / Domain Admin, Whois protection, this company does not own this domain name s.r.o. of Prague, Czechia.
2. The Domain Name and Registrar
The disputed domain name <bougicord.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2016. On September 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 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 September 14, 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 September 15, 2016.
On September 14, 2016, the Center sent an email communication to the Parties in both Finnish and English regarding the language of the proceeding. On September 15, 2016, the Complainant filed an amended Complaint which included a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 September 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2016.
The Center appointed Alistair Payne as the sole panelist in this matter on October 24, 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 an automotive supplier that since approximately 1957 has manufactured and distributed the Bougicord ignition cable which is used in the assembly of high voltage ignition sets. The Complainant’s Bougicord products are sold worldwide through a network of retail groups, distributors, relays, car centres and importers. The Complainant owns various trade mark registrations around the world for its BOUGICORD mark, including International trade mark registration 259935 registered on September 15, 1962 and designating numerous jurisdictions, and a French trade mark registration for BOUGICORD, filed on November 17, 1986 under registration number 1380504.
The Respondent registered the disputed domain name on February 6, 2016. It currently points to a pay-per-click (“PPC”) parking page and is listed for sale at USD 4,750 at the website “www.afternic.com”.
5. Parties’ Contentions
The Complainant submits that it owns registered trade mark rights for its BOUGICORD mark as set out above and that the disputed domain name wholly incorporates its mark and is identical except for the “.com” generic Top-Level Domain (“gTLD”) element.
It further submits that it has not authorised the Respondent to use the BOUGICORD mark or to register the disputed domain name and it is not affiliated with the Respondent. The Complainant says that the Respondent is not known as and has never been known by the BOUGICORD mark. Further it invites the Panel to infer from the Respondent’s registration of the disputed domain name through a privacy service, its use of the disputed domain name to resolve to a PPC parking page and the Respondent’s listing of the disputed domain name for sale at an inflated price, that the Respondent’s conduct in registering the disputed domain name was not legitimate.
The Complainant adds that in registering the disputed domain name the Respondent has deprived the Complainant of a strategic domain name that corresponds exactly to one of its main products and at which people would expect to see a website concerning the Complainant’s Bougicord product. Instead of this, says the Complainant, the disputed domain name resolves to a PPC website featuring links to other players in the automotive industry, which amounts to confusing and misleading consumers for commercial gain.
Considering the long established and international degree of renown attached to the Complainant’s BOUGICORD mark, the Complainant submits that the Respondent cannot have been unaware of the Complainant’s product and brand. In any event the Complainant notes that the Complainant had initially registered the disputed domain name on December 3, 1999 and up until December 3, 2015 operated its own website advertising the Bougicord product at the disputed domain name. Unfortunately says the Complainant, it accidentally allowed the disputed domain name to lapse and some two months later it was registered by the Respondent on February 6, 2016. The Complainant submits that in the circumstances it is highly unlikely that this was a coincidence and says that in circumstances that the disputed domain name has subsequently been advertised for sale at the inflated price of USD 4,750, the inference must be that the Respondent registered the disputed domain name in order to make a profit on re-sale and that this amounts to bad faith.
As far as use in bad faith is concerned the Complainant says that the Respondent is using the disputed domain name to misdirect Internet users searching for information about the Complainant, or searching for the Complainant’s authorized good and services, by creating a likelihood of confusion with the Complainant’s trade marks. In addition says the Complainant the Respondent’s listing for sale of the disputed domain name at an inflated price amounts to use in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of Proceeding
The Complainant has requested in its amended Complaint under paragraph 11 of the Rules that the language of the proceeding should be English rather than the language of the Registration Agreement which is Finnish. The Panel notes that the Registrar’s website is accessible in English and the Registrar is based in Helsinki and that English is widely spoken in business in that city. In circumstances that the Respondent has not objected to this request, has not participated in the proceeding in any way, and in the interests of efficiency and the cost effectiveness of these proceedings, the Panel accedes to the Complainant’s request and orders that the proceeding should be in the English language.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns registered trade mark rights for its BOUGICORD mark as set out above and in particular, the International registration 259935 registered in 1962 and French trade mark registration number 1380504 filed in 1986. In addition it appears from the evidence filed by the Complainant that the Complainant has used its mark since around 1962 and has a very substantial business worldwide relating to its Bougicord product.
The disputed domain name wholly contains the Complainant’s mark and includes no distinguishing element before the gTLD “.com”. As a result the Panel finds that disputed domain name is identical to the Complainant’s registered trade mark and the Complaint succeeds under this element of the Policy.
B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent is not generally known by the BOUGICORD mark or name and that it has no affiliation with the Respondent and has not licensed or authorised the Respondent’s use of the disputed domain name. The Complainant underlines the circumstances of the Respondent’s registration following the Complainant’s oversight in failing to renew the disputed domain name. In view of the Complainant’s past use of the disputed domain name for its website and the degree of longstanding renown attaching to the Complainant’s mark and product, the Complainant submits that the Respondent’s registration of the disputed domain name through a privacy service and subsequent advertisement for re-sale at an inflated price, together with the fact that it is using the disputed domain name to resolve to a PPC parking page, could not be considered to be a coincidence, or bona fide.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of filing a response the Respondent has failed to rebut the Complainant’s prima facie case and also for the reasons set out under Part 6.2.C below, the Panel finds that the Complaint also succeeds under this element of the Policy.
C. Registered and Used in Bad Faith
In view of the degree of longstanding and international use of the Complainant’s BOUGICORD mark by the date of registration of the disputed domain name and also the use by the Complainant of a corresponding domain name at <bougicord.fr> to resolve to a website for its product, the Panel infers that the Respondent was more than likely well aware of the Complainant’s product or mark when it registered the disputed domain name only two months after the Complainant allowed it to lapse. The fact that the Respondent chose to use a privacy service to hold the registration and that it subsequently advertised the disputed domain name for sale at a price equivalent to many times the out-of-pocket registration costs only reinforces the overwhelming inference that the Respondent sought to take advantage of and profit from the Complainant’s oversight in allowing the disputed domain name to lapse. Accordingly, the Panel finds on the balance of probabilities that the disputed domain name was registered in bad faith.
The Respondent’s use of the disputed domain name to resolve to a website at which it was advertised at an inflated re-sale price of USD 4,750 and which contains PPC links to other manufacturers and suppliers in the automotive industry points to use in bad faith within the meaning of paragraph 4(b)(i) of the Policy. Under paragraph 4(b)(iv) of the Policy, the use of the disputed domain name to mis-direct Internet users for commercial purposes, by creating a likelihood of confusion with the Complainant’s trade marks amount to further evidence of registration and use in bad faith. Accordingly the Panel also finds that the Respondent has used the disputed domain name in bad faith and the Complaint succeeds under this element of the Policy.
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 <bougicord.com> be transferred to the Complainant.
Date: November 4, 2016