WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tolix Steel Design v. Domain Admin, Whois Privacy Corp.
Case No. D2017-1815
1. The Parties
The Complainant is Tolix Steel Design of Autun, France, represented by SCP Deprez, Guignot et Associés, France.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <tolix.com> is registered with Internet Domain Service BS Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 20, 2017. On September 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on October 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 24, 2017.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on November 1, 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 Tolix Steel Design, a simplified joint stock company with registered offices in Autun, France and acting in the field of designing and manufacturing industrial-style furniture, sold across the world under the trademark TOLIX.
The Complainant owns a trademark registration for the mark TOLIX in France dated from 1987 (registration No. 1411496, in class 20), acquired from previous companies, in addition to the following:
- European Union trademark No. 6097604 for TOLIX, registered on June 12, 2008 in international class 20 and
- International trademark No. 935911 for TOLIX & design, registered on July 13, 2007, also in international class 20.
The Complainant is also the owner of the domain name <tolix.fr>, registered on April 19, 2006.
The disputed domain name was registered on March 18, 2003 and resolves to a generic landing page, containing pay-per-click ("PPC") links to various third-party sites.
5. Parties' Contentions
The Complainant states that it owns trademark registrations for the mark TOLIX in some countries and that the disputed domain name is identical to its trademark, which is well-known in particular due to its emblematic models of industrial furniture, the "A" chair and the "H" stool.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name and that it is not commonly known by the disputed domain name.
In addition, the Complainant alleges that the Respondent's use of the disputed domain name resolved to a page containing links, some of which are to sites promoting counterfeit products from the Complainant's competitors, which demonstrates the Respondent's knowledge of TOLIX's marks.
The Complainant asserts that the disputed domain name was registered with the purpose of disrupting TOLIX's business and with the attempt to attract, for commercial gain, Internet users to the Respondent's website, thus creating a likelihood of confusion with the Complainant's marks.
The Complainant concludes that the Respondent was aware of its French trademark at the time of the registration of the disputed domain name, in 2003.
Finally, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainant is the current owner of the trademark TOLIX in France, which was registered before the creation of the disputed domain name and acquired by the Complainant, while the other trademarks owned by the Complainant in different countries, including the United States, were registered after the creation of the disputed domain name.
For the purpose of the first element under paragraph 4(a) of the Policy, the "UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights". See section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") (noting also that in circumstances where the complainant acquired trademark rights after registration of a domain name, it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP).
The disputed domain name is identical to the Complainant's trademarks.
The Panel finds that paragraph 4(a)(i) of the Policy has been established by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant's trademarks.
B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complainant's contentions.
There is no evidence that the Respondent has any authorization to use the Complainant's trademarks or to register domain names containing the Complainant's trademarks.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute, the Respondent has made 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. Instead, there is evidence that the disputed domain name resolved to a website with PPC links to third parties websites that compete with the Complainant's activities.
Based on the evidence in the Complaint, the Panel finds that the use of the disputed domain name, which reproduces the Complainant's trademarks, does not correspond to a bona fide use of domain names under the Policy.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name is identical to the Complainant's trademarks and the Respondent has no rights or legitimate interests in the disputed domain name.
There is evidence in the Complaint that the Respondent uses the disputed domain name to redirect customers to links of the Complainant's competitors.
In addition to this bad faith use, the Complainant must separately prove that the disputed domain name was also registered in bad faith.
The disputed domain name was registered in 2003. The Complainant's trademark TOLIX dates from 1987.
Taking into account these two simultaneous facts (the priority of the Complainant's trademark and the use of the disputed domain name to redirect customers to links of the Complainant's competitors), the Panel finds that there is evidence in the Complaint that at the time of the registration the Respondent was, or should have been, aware of the Complainant's activities or its trademark.
For the above reasons, the Panel finds that the conditions of paragraph 4(a)(iii) of the Policy have been satisfied, i.e., there is insufficient evidence to find registration 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 <tolix.com> be transferred to the Complainant.
Mario Soerensen Garcia
Date: November 24, 2017