WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Commune de Versailles Collectivité Territoriale v. Kimberly Kubalek, Kubalek, LLC
Case No. D2017-0985
1. The Parties
Complainant is Commune de Versailles Collectivité Territoriale of Versailles, France, represented by Nameshield, France.
Respondent is Kimberly Kubalek, Kubalek, LLC of Laredo, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <visitversailles.com> 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 17, 2017. On May 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 16, 2017.
Respondent sent several email communications to the Center between June 16, 2017 and June 21, 2017, which provided some information about its business model. Respondent indicated that she wished to file a formal response, but never did so.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 3, 2017. 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
Complainant is the governing body for the city of Versailles in France. It owns three trademark registrations in France for the word VERSAILLES in association with a wide range of products and services. Complainant also holds pending applications in a small number of other countries through the filing of an international application in 2015. One of the designated countries for the international application is the United States of America, where the trademark has encountered challenges to registrability in the United States Patent and Trademark Office ("USPTO"). The only registered trademark for VERSAILLES that predates the registration of the disputed domain name is a French filing (No. 3424555) dated April 21, 2006. This French registration covers some enumerated products in Classes 3, 8 and 25, namely cleaning and cosmetic products, cutlery and apparel, and does not include any services. Complainant's subsequent filings include a broader range of wares and services.
Respondent's business is based in Laredo, Texas, United States of America. She currently operates a tourism website at "www.visitsanmiguel.com". The disputed domain name was registered on September 20, 2006, and it reverts to a parking site. The registration of the disputed domain name predates all of Complainant's trademark registrations except the first filed French trademark.
5. Parties' Contentions
Complainant has filed a brief Complaint, which outlines Complainant's trademarks and states that Complainant "offers tourists the various activities around the city of Versailles", but does not provide much tangible evidence of actual use. There is virtually no evidence showing use of the VERSAILLES trademark in connection with the many wares and services enumerated in the registrations. Although Complainant relies on what it describes as "numerous trademark registrations", there are only four references in the evidence:
French Trademark Registration No. 3424555 dated April 21, 2006 for VERSAILLES
French Trademark Registration No. 3874500 dated November 9, 2011 for VERSAILLES
French Trademark Registration No. 4217082 dated October 12, 2015 for VERSAILLES
International Trademark Registration No. 1302813 dated December 21, 2015 for VERSAILLES
The International filing designated Australia, European Union, Japan, Norway, Switzerland and the United States of America. Partial and total refusals of protection have been rendered in Australia, European Union, Japan, Norway and the United States of America, as of 2016. Based on the evidence filed by Complainant, the VERSAILLES mark appears to be registered in France, but remains pending in the other international jurisdictions.
Complainant submits that the disputed domain name is confusingly similar to its VERSAILLES trademarks because it contains the entire registered mark. With respect to rights and legitimate interests, Complainant states that Respondent is not related in any way to Complainant, and has never been licensed to use the trademark in question. Complainant admits that VERSAILLES "refers to a geographical term", but submits that Respondent is not making use of the name for legitimate descriptive purposes, since Respondent's associated website notes only that it is "currently being developed" and asks "interested in placing advertising?".
With respect to bad faith, Complainant contends that Respondent was aware of its trademarks "at the moment of registration" of the disputed domain name. Respondent is alleged to be taking advantage of Complainant's notoriety, attracting users to her website for commercial gain.
Respondent did not file a formal Response to Complainant's contentions, but she did provide some information about her business by way of emails to Complainant and the Center. The Panel notes that Respondent does operate an active tourism website at "www.visitsanmiguel.com", which provides travel information to visitors of San Miguel in Mexico. Respondent refers to this as "our proof of concept site".
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Once a Complainant has established registered trademark rights, the threshold to satisfy the first element of paragraph 4(a) of the Policy is relatively straightforward. Complainant has proven that it owns a trademark registration (French Trademark No. 3424555) for VERSAILLES (which predates the registration of the disputed domain name). The disputed domain name does contain the registered mark in its entirety, and the Panel concludes that Complainant has satisfied the requirement under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In light of the findings on bad faith, it is not necessary for the Panel to consider the issue of rights or legitimate interests.
C. Registered and Used in Bad Faith
Complainant has submitted a brief four-paragraph submission on bad faith, which argues that Respondent has attempted to take advantage of the notoriety of Complainant by offering advertising space to third parties, attracting users to the associated website for commercial gain.
Respondent is located in Laredo, Texas, United States of America. Complainant's own evidence indicates that it does not own registered rights to the VERSAILLES trademark in the United States of America. In fact, it appears that serious challenges have been raised in the USPTO and elsewhere to the registrability of the trademark on which the Complaint is founded. There is no evidence in this proceeding to suggest that Respondent was aware that Complainant owned, purported to own or ever asserted trademark rights in the name "Versailles" prior to the commencement of this Complaint. Certainly, it is safe to assume however that Respondent was aware of Versailles as a place; yet Complainant has failed to establish knowledge on the part of Respondent of Complainant's trademark rights in the term "Versailles".
In its submissions, Complainant tellingly admits that the word "Versailles" is a "geographical term" which may be used by third parties for legitimate descriptive purposes.
The disputed domain name itself uses a first element "visit" as a prefix for "Versailles" which is entirely consistent with a descriptive use of a geographic name for a place, rather than the abusive use of a trademark. The Panel further notes that, in terms of demonstrable preparations, Respondent does operate an active tourism website at "www.visitsanmiguel.com", which provides travel information to visitors of San Miguel in Mexico and that at the bottom of such website Respondent includes the message "Visit our other sites", and links to websites referring to other geographical locations, such as "www.visitcuernavaca.com" and "visit-tahoe.com". While this is somewhat lacking, it does fit within a pattern suggested at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.10.1 ("Panels also tend to look at factors such as the status and fame of the relevant mark and whether the respondent has registered and legitimately used other domain names containing dictionary words or phrases in connection with the respective dictionary meaning").
Given Complainant's admission, and the architecture of the disputed domain name itself, it was necessary for Complainant to establish, through actual evidence (not simply argument), sufficient facts showing intentional behaviour on the part of Respondent that amounts to bad faith within the Policy. Complainant has failed to do so in this case and, therefore, the Panel finds, based on the available evidence and on the balance of probabilities, that it is more likely that Respondent registered the disputed domain name with its descriptive meaning in mind rather than to target Complainant's trademark.
Accordingly, the Panel finds that Complainant has not satisfied the third and final required element under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Date: July 24, 2017