WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vara S.A.S. v. Whois Agent, Whois Privacy Protection Service, Inc. / William F Walborn
Case No. D2016-1850
1. The Parties
The Complainant is Vara S.A.S. of Combs La Ville, France, represented by Nameshield, France.
The Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America ("US") / William F Walborn of Shamokin Dam, Pennsylvania, US.
2. The Domain Name and Registrar
The disputed domain name <theircelin.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 13, 2016. On September 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 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 19, 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 20.
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 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 12, 2016.
The Center appointed Debrett G. Lyons 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 facts relevant to the decision in this case are that:
(1) the Complainant has sold condiments and spices since 1809 by reference to the family name, Thiercelin and the trade mark which appears below ("the Trade Mark"):
(2) the Trade Mark is the subject of French national trade mark registration number 4250864, registered on February 19, 2016, in the name of the Complainant;
(3) the disputed domain name was registered on July 27, 2016;
(4) the disputed domain name does not resolve to a website but has been used to send email messages and letters to the Complainant's trading partners which pose as having originated from the Complainant; and
(5) there has been no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the Trade Mark or to register any domain name incorporating the Trade Mark.
5. Parties' Contentions
The Complainant asserts rights in the Trade Mark and alleges that the disputed domain name is confusingly similar to the Trade Mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant accordingly petitions the Panel to order transfer of the disputed domain name.
The Respondent did not submit a Response to those contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a Response. Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.1 The Complainant provides evidence of its French national registration of the Trade Mark and the Panel so accepts that the Complainant has trade mark rights.
The Trade Mark is a composite logo. It prominently features the family name, "Thiercelin", subordinate to which are the numerals 1809 (most likely perceived as a year of establishment) and the stylized but unremarkable image of a rural village. The Panel finds the element THIERCELIN to be the distinctive and memorable aspect of the Trade Mark and, for the purposes of comparison with the disputed domain name, treats the Trade Mark as equivalent to the word mark, THIERCELIN 1809. Further, the generic Top-Level Domain ("gTLD"), ".com", can (generally and in this case) be disregarded 2 and so the comparison is between the Trade Mark THIERCELIN 1809 and a trivial misspelling thereof whereby the disputed domain name reverses the letters "i" and "e" thus, "theircelin", and omits the element "1809".
The Panel finds that the disputed domain name is confusingly similar to the Complainant's Trade Mark. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.3
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
"(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."
There is no evidence that the Respondent has trade mark rights in the disputed domain name. The publicly available WhoIs database identifying the Respondent as the registrant does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no relationship between the Parties, and the Complainant has not authorized the Respondent to use its Trade Mark. Further, the evidence is that the disputed domain name has only been used to generate fraudulent email messages which pose as having originated from the Complainant. Messages using the disputed domain name have been sent to one of the Complainant's trading partners with the intention of causing that third party to unwittingly make due payments to a Hong Kong bank in place of the regular banking practice with the Complainant. It follows that there is no use in connection with a bona fide offering of goods or services, or legitimate noncommercial use of the disputed domain name.4
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 Panel finds that the disputed domain name was registered and is being used in bad faith. Registration in bad faith is supported by the evidence that the Respondent expressly targeted the Complainant's business, its Trade Mark and its customers. 5 The bad faith use is evident from the fraudulent use to which the disputed domain name was put.
Accordingly, the Complainant has satisfied the third and final limb of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules and with the Complainant's request, the Panel orders that the disputed domain name <theircelin.com> be transferred to the Complainant.
Debrett G. Lyons
Date: November 5, 2016
1 See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
5 Panel notes that the fraudulent email messages and attachment letters were dated around the date of registration of the disputed domain name, in some cases days earlier.