WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Car&Boat Media v. Identity Protection Service, Identity Protect Limited / Domain Management, Criteria Internet Services Limited
Case No. D2017-1571
1. The Parties
The Complainant is Car&Boat Media of Paris, France, represented by Inlex IP Expertise, France.
The Respondent is Identity Protection Service, Identity Protect Limited of Godalming, Surrey, United Kingdom of Great Britain and Northern Ireland (“UK”) / Domain Management, Criteria Internet Services Limited of Yeovil, Somerset, UK.
2. The Domain Name and Registrar
The disputed domain name <lacentralesexe.com> is registered with 123-Reg Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2017. On August 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 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 August 18, 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 August 22, 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 August 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on September 25, 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 operates a French language website, known as La Centrale, providing a platform on which individuals wishing to buy or sell used vehicles can place online advertisements. The Complainant’s website is known as the first used vehicle website in France (“1er site de véhicules d'occasion”). The Complainant also provides other automobile related services on the La Centrale website. The Complainant has submitted a study that concluded the La Centrale website is well-known in France.
The Complainant is the owner of trademark registrations for LA CENTRALE and other LA CENTRALE-formative marks in France and the European Union, together with International trademark registrations designated in Benelux, Switzerland, Monaco, and Morocco. The Complainant has used the LA CENTRALE marks in commerce since as early as 1970, starting with the general publication of classified ads in a newspaper, which included ads related to cars and also matrimonial ads.
The Respondent registered the disputed domain name <lacentralesexe.com> on February 24, 2017, according to the concerned Registrar’s WhoIs records. The disputed domain name initially was registered in the name of Identity Protection Service, a privacy service. The identity of the Respondent was disclosed by the Registrar in response to the Center’s request for registrar verification in connection with the disputed domain name.
The Complainant has submitted screenshots and other forensic evidence concerning the use of the disputed domain name. The disputed domain name initially resolved to a French language parking page with advertising links, including links to some of the Complainant’s competitors. The Complainant’s representative on June 2, 2017 sent a cease and desist notice by email to Identity Protect Service, to which the Complainant received no reply. Subsequently, however, the disputed domain name has been used with a French language sex dating website called “La Centrale Sexe,” and promoted on the website as “Le 1er Site Français de Rencontres Sexe”, which in English is “The 1st French site of Sex Dating.”
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s LA CENTRALE mark, which the Complainant submits is a well-known mark. The Complainant asserts that its LA CENTRALE mark is reproduced in the disputed domain name, and that the descriptive term “sex” (“sexe” in French) does not serve to dispel confusing similarity. According to the Complainant, because the term “sex” is added to the Complainant’s trademark, Internet users are likely to assume that the disputed domain name is associated with the Complainant. Further, the Complainant submits that the Top-Level Domain (TLD) “.com” should be disregarded when assessing identity or confusing similarity.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent has not been granted permission or otherwise authorized to use the Complainant’s LA CENTRALE mark, and has not been commonly known by the disputed domain name. The Complainant submits that the Respondent was aware of the Complainant and the Complainant’s LA CENTRALE mark when registering the disputed domain name, and that the Respondent’s intention was to create a likelihood of confusion with the Complainant in order to divert Internet users to the “La Central Sexe” website for commercial gain, and to tarnish the Complainant’s LA CENTRALE mark by associating the Complainant’s mark with a sex dating website.1 Accordingly, the Complainant asserts that the Respondent has not used nor made demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name.
In view of the foregoing, the Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant reiterates that the Respondent clearly was aware of the Complainant’s distinctive and well-known LA CENTRALE mark when registering the disputed domain name. The Complainant notes that the Respondent first used the dispute domain name with a parking page with advertising links to the Complainant’s competitors, and subsequent to the Complainant’s cease and desist letter redirected the disputed domain name to resolve to a sex dating site, attempting to mimic the look and feel of the Complaint’s website. The Complainant submits that the Respondent intentionally for commercial gain has sought to create a likelihood of confusion with the Complainant’s LA CENTRALE mark and the Respondent’s website. The Complainant further maintains that the Respondent’s use of a privacy service is evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a 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.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <lacentralesexe.com> is confusingly similar to the LA CENTRALE mark, in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
In this case, the LA CENTRALE mark is clearly recognizable in the disputed domain name.3 The TLD “.com” does not serve to dispel the confusing similarity of the disputed domain name with the Complainant’s mark. Top-Level Domains generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s LA CENTRALE mark. Regardless, the Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s mark. The Respondent has used the disputed domain name with a parking page containing advertising links to the Complainant’s competitors. At some point after receiving a cease and desist letter to which the Respondent did not reply, the Respondent redirected the disputed domain name to a sex dating website.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(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 he 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 Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Panel considers that the Respondent in all likelihood was aware of the Complainant and the Complainant’s LA CENTRALE mark when registering the disputed domain name. The Respondent’s use of the disputed domain name most likely was calculated to create initial Internet user confusion. As noted above, The Respondent first used the disputed domain name with a pay-per-click parking page, and subsequently redirected the disputed domain name to a sex dating website. The Respondent’s website features a colorable imitation of the Complainant’s LA CENTRALE logo, and other similarities to the Complainant’s website.
Having regard to all of the relevant circumstances in this case, and absent any explanation from the Respondent, the Panel finds that the Respondent’s use of the disputed domain name does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s LA CENTRALE mark, has not been commonly known by the disputed domain name, and has not otherwise demonstrated rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent registered the disputed 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent was aware of the Complainant’s LA CENTRALE mark when registering the disputed domain name. The Respondent has used the disputed domain name to misleadingly divert Internet users to a pay-per-click parking page with links to the Complainant’s competitors, and has redirected the disputed domain name to a sex dating website, attempting to mimic the look and feel of the Complainant’s website. The Respondent by its actions has demonstrated that its primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights for commercial gain. The Panel further considers the Respondent’s use of a privacy service evocative of a bad faith attempt to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
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 <lacentralesexe.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: October 9, 2017
1 The Complainant observes that when it first started out publishing classified advertising in its newspaper this included “matrimonial dating”, but did not include advertisements for sex dating with obscene pictures.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
3 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.