WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO
Case No. D2017-1367
1. The Parties
The Complainant is Marie Claire Album of Issy-les-Moulineaux, France, internally represented.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama, Panama / Dexter Ouwehand, DO of Amsterdam, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <marieclairebrasil.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 July 18, 2017. On July 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2017, 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 July 21, 2017 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 July 24, 2017.
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 July 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2017. Due to an administrative oversight regarding notification of the Complaint, the due date for submission of a Response was extended to August 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 17, 2017.
The Center appointed Mihaela Maravela as the sole panelist in this matter on August 28, 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
The Complainant is Marie Claire Album, a French corporation.
The Complaint is based on a number of trademark registrations (copies of the registration certificates were enclosed to the Complaint) including:
- Panama trademark registered under no. 136416 01 MARIE CLAIRE as of July 27, 2004, renewed,
- Brazilian trademark registered under no. 819413585 MARIE CLAIRE as of April 6, 1999, renewed,
- International trademark registered under no. 338976 MARIE CLAIRE as of August 25, 1967.
The Complainant sells the magazine Marie Claire in various countries for many years, the French edition being created in 1937 whereas in Brazil the said magazine was first launched in 1991. The Marie Claire magazine is present through various websites, in various languages (e.g. "www.marieclaire.com", "www.marieclaire.fr", "www.marieclaire.co.uk", "www.revistamarieclaire.com.br"). In Brazil, Marie Claire was awarded in 1997 and in 2000 the "Ayrton Senna" award and in 2009 the award of the 2nd best woman magazine.
All the above statements are uncontested by the Respondent, some of them being supported by evidence, hence the Panel will treat them as a fair representation of the Complainant's activity (see for a similar finding Marie Claire Album v. Geoffrey Blakely, WIPO Case No. D2002-1015).
The disputed domain name was registered on December 22, 2016. The disputed domain name used to redirect to the Complainant's website, and is now inactive. The Complainant sent a warning letter to the Respondent on February 9, 2017, without a response being received from the Respondent.
5. Parties' Contentions
The Complainant contends that the Respondent's domain name <marieclairebrasil.com> is likely to confuse the public on the owner of the disputed domain name because the first part "marieclaire" is identical in appearance and sound to the Complainant's trademark MARIE CLAIRE. The Respondent has merely added the word "brasil", which is confusing with the local edition of the Marie Claire magazine in this country.
Moreover, the Complainant contends that the Respondent organized the redirection of the disputed domain name <marieclairebrasil.com> towards the Complainant's website without authorization and therefore the disputed domain name creates confusion with the famous Complainant's Brazilian Magazine "Marie Claire". The Complainant further argues that redirection to the official website of the Complainant's Brazilian Marie Claire magazine shows that the Respondent was aware of the fame and the rights of the Complainant in Brazil. The Complainant further argues that the Respondent did not cease the redirection although requested by the Complainant to do so.
The Complainant also shows that the registration of the disputed domain name infringes the Complainant's trademark rights and is likely to confuse the public.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Noting the fact that the Respondent has not filed a response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable", paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel must find that the Complainant has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Here, the Complainant has demonstrated its ownership of trademark MARIE CLAIRE mentioned above.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademarks of the Complainant.
Numerous UDRP decisions have recognized that incorporating a mark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. (See Aldermore Bank Plc v. Hildegard Gruener, WIPOCase No. D2016-1617).
The disputed domain name also comprises the geographically descriptive term "brasil" As held by previous panels in similar cases, "The mere addition of a geographically descriptive term to a mark does not negate the confusing similarity between the mark and the domain name." See, e.g., Mastercard International Incorporated v. MasterCard Brasil, WIPO Case No. D2009-1691, "mastercard-brasil.com" confusingly similar to MASTERCARD; Brunswick Family Boat Co. Inc. v. Andrea Chorbadjian, WIPO Case No. D2013-1973, "baylinerbrasil.com" confusingly similar to BAYLINER.
It is well accepted by UDRP panels that a generic Top-Level Domain ("gTLD"), such as ".com", is typically ignored when assessing identity or confusing similarity between a trademark and a disputed domain name.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent's rights or legitimate interests in a disputed domain name:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), which states: "[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has established that it is the owner of the trademark MARIE CLAIRE, and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the said trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name "marie claire". See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.
The Panel therefore finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith.
The fact that the disputed domain name is confusingly similar to the Complainant's trademarks and that the said trademarks have been used for a long period of time prior to the registration of the disputed domain name indicate not only that the Respondent was aware of the Complainant's business and trademark at the time of registration, but also that he registered the disputed domain name to mislead Internet users into thinking it is in some way connected, sponsored, endorsed by or affiliated with the Complainant's services.
The Complainant's MARIE CLAIRE trademark, included in the disputed domain name, has been used in commerce for more than 60 years prior to the registration of the disputed domain name, such that it is unlikely that the Respondent was unaware of the Complainant's rights when he registered the disputed domain name. See Comerica Bank v. WhoisGuard Protected, WhoisGuard, Inc. / Ryan Murray, WIPO Case No. D2016-0062.
The Respondent provided no explanations to why he registered the disputed domain name.
The Respondent has failed to make to date any genuine use of the disputed domain name. The absence of any bona fide use of the domain name at the very least results in a failure to rebut the inference noted above. See for a similar finding Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186.
In addition, it appears from the evidence put forward by the Complainant that the website to which the disputed domain name resolved is a website of the Complainant. Redirecting the disputed domain name to the Complainant's website supports a finding that the Respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark (see section 3.1.4 of the WIPO Overview 3.0).
At the date of the decision the redirection seems to have been stopped, although there is no indication in the case file of when this occurred but presumably this happened after the Complainant sent the warning letter to the Respondent. As held by other Panels, the fact that the Respondent stopped redirecting the domain name after receiving a warning letter from the Complainant is evidence of bad faith (see La Francaise des Jeux v. Jimmy Lomeli, WIPO Case No. D2007-1276).
Furthermore the Respondent availed of a privacy shield service to protect his identity. While the use of a privacy shield is not in any way objectionable in itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use. (Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler, WIPO Case No. D2016-1357).
In the Panel's view these circumstances represent evidence of registration and use in bad faith of the disputed domain name.
Consequently, the Panel ascertains that the disputed 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 disputed domain name <marieclairebrasil.com> be transferred to the Complainant.
Date: September 11, 2017