WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DIETE SPORT France v. Romain Le Hecho
Case No. D2018-0363
1. The Parties
The Complainant is DIETE SPORT France, of Plescop, France, represented by Cabinet ABC, France.
The Respondent is Romain Le Hecho, of Lorient, France.
2. The Domain Name and Registrar
The disputed domain name <overstims-nutrition.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint in French was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2018. On February 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 2018, 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 and informing that the language of the Registration Agreement was in English. In response to a request for amendment by the Center, and an email regarding the Language of Proceedings, the Complainant filed a translated and amended Complaint on March 2, 2018.
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 March 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2018.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on April 12, 2018. 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 one of France’s leaders in sports nutrition, offering a range of high quality nutritional products designed for the specific needs of athletes according to the sport they practice, its duration and intensity.
The Complainant is the registered owner of several trademark registrations containing the term “overstim”, including French Trademark Registrations for OVERSTIM.S (word), No. 053343287 registered on February 24, 2005 and No. 103731636 registered on April 20, 2010; European Union Trademark Registrations for OVERSTIM.S (word), No. 004305884 registered on March 16, 2006 and No. 009457219 registered on May 20, 2011 (together referred to as: the “Marks”).
The Complainant carries on its business by online sales of its branded products, including in France, where the Respondent appears to be located.
The Complainant is the owner of a domain name <overstims.com> (registered in April 1998), which resolves to its official website.
The disputed domain name was registered on September 27, 2017 and resolves to a website “www.overstims-nutrition.com”, which mirrors in English the official website of the Complainant.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name reproduces the Marks, in which the Complainant has rights, and is confusingly similar to the Marks insofar as the disputed domain name contains the distinctive element “overstim”, in its entirety. The Complainant also asserts that the addition of the descriptive term “nutrition” does not serve to distinguish the disputed domain name from the Marks.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never licensed the Respondent to use the Marks in any manner, or consented to such use. The Complainant also asserts that the Respondent never had any business connection or affiliation with the Complainant.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that it is not by coincidence that the Respondent chose to register the disputed domain name.
(iv) The Complainant submits that by misleadingly diverting consumers, for his own commercial gain, the Respondent is using the disputed domain name in bad faith.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural Aspects
As aforementioned, no Response was received from the Respondent.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.2. Requirements of Paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the Marks with the disputed domain name, it is evident that the latter consists solely of the Marks, followed by a hyphen and the descriptive term “nutrition”, and by the Top-Level Domain (“gTLD”) “.com”.
The addition of descriptive terms does not typically serve to distinguish a domain name from a registered mark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
A descriptive term such as "nutrition" is strongly related to the Complainant's activity, and the Panel is of the view that this term is likely to reinforce the confusing similarity with the Marks and corroborate the impression that the disputed domain name belongs to, or is affiliated with the Complainant.
It is also well established that any gTLD, including, as is the case here, the gTLD “.com”, does not generally affect the assessment of a domain name for the purpose of determining identity or confusing similarity.
The Panel finds that the disputed domain name is confusingly similar to the Marks, which it incorporates entirely.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or makes a legitimate noncommercial or fair use of the disputed domain name.
The website associated with the disputed domain name promotes and offers for sale OVERSTIM.S branded products.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent (i) has no business connection or affiliation with the Complainant and (ii) received no license or consent from the Complainant to register or use the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Marks.
It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In this case, given the copycat website of the Respondent, the Panel finds that it is close to impossible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Marks. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
The Respondent also registered another domain name confusingly similar to a famous trademark in the field of nutrition (see Nutrition et Sante v. Le Hecho Romain, NA, WIPO Case No. D2018-0162), which confirms the implausibility of a registration of the disputed domain name without knowledge of the Complainant. The Panel notes that the disputed domain name comprises the Marks with the term “nutrition” and notes further that the prior case involving the Respondent also involved a domain name of a nature similar to the one of this proceeding, where the Respondent registered a domain name comprising a trademark of a third party with the term “nutrition”. The Respondent’s targeting of companies within the same field of business by registering domain names with the same nature is also strongly indicative of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Sections 3.2.1 and 4.1.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Moreover, the Panel cannot find any any actual or contemplated good faith use of the disputed domain name, as its use invariably results in misleading diversion and taking unfair advantage of the Complainant's rights. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In this case, the disputed domain name resolves to the website “www.overstims-nutrition.com” which offers for sale OVERSTIM.S branded products. This indicates that the Respondent is targeting the Complainant and is using for commercial gain the disputed domain name in bad faith.
Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitutes bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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, <overstims-nutrition.com>, be transferred to the Complainant.
Date: April 26, 2018