WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mecenat Aktiebolag v. C/O Alpnames Limited / Edouard
Case No. D2018-1366
1. The Parties
The Complainant is Mecenat Aktiebolag of Gothenburg, Sweden, represented by Setterwalls Advokatbyra, Sweden.
The Respondent is C/O Alpnames Limited of Gibraltar, Overseas Territory United Kingdom of Great Britain and Northern Ireland / Edouard of Saint-Denis, Mayotte, France.
2. The Domain Name and Registrar
The disputed domain name <mecenat.vip> is registered with AlpNames Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2018. On June 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 2018, 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 the same date 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 2, 2018.
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 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on July 27, 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 a Swedish limited liability company, based in Gothenburg, Sweden. Its business is providing discounts and associated benefits for students throughout Scandinavia. It does so through a student discount platform, hosted at its website at “www.mecenat.com”, and by use of a student discount card called “Mecenatkortet”, that is the “Mecenat card”. The Complainant states that its Mecenat card has 1.8 million users across Scandinavia and, of those, 930,000 are students in Sweden.
The Complainant owns a number of registered trade marks for MECENAT, including the following:
- European Union Trade Mark No. 005668521 for MECENAT (word mark), registered on May 21, 2008 in classes 9, 35, and 36;
- Swedish Trade Mark No. 350736 for MECENAT (word mark), registered on December 7, 2001, in classes 16, 35, 36, 38, and 41; and
- Swedish Trade Mark No. 390603 for MECENATKORTET (figurative mark), registered on August 17, 2007 in classes 9 and 36.
The disputed domain name was registered on June 5, 2016. As at May 28, 2018, the pay-per-click links were in Swedish and related to goods and services such as Free MP3, Comviq Subscription, and student card.
As at June 15, 2018, it resolved to two different parking pages displaying pay-per-click links to third party websites. The links to one page were in Russian script and related to, amongst other goods and services, the download of free music, create a website, cars, investments, real estate, photographs, and air tickets. The other parking page contained links, in Spanish, to goods and services such as English lessons, fast food, medieval dinners, and special dinners.
On October 10, 2017, the representatives for the Complainant sent a cease and desist letter to the Respondent seeking a transfer of the disputed domain name. The Respondent replied stating, amongst other matters, that he had not finished building the website to which the disputed domain name was intended to resolve. The Complainant’s advisors did not receive any reply to emails sent on October 18, 2017 and October 24, 2017 which asked the Respondent when its website would be ready. Following this contact by the Complainant’s representatives, the Respondent began using a privacy shield service to conceal his identity.
5. Parties’ Contentions
The Complainant says that the disputed domain name contains the Complainant’s MECENAT trade mark in its entirety, without any amendment, or addition. The generic Top-Level Domain (“gTLD”) suffix “.vip” is to be discounted for the purposes of assessing confusing similarity. The disputed domain name is therefore identical or confusingly similar to the Complainant’s MECENAT trade mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not the owner of any registered trade mark for Mecenat, nor any similar mark. Furthermore, the Complainant has not licensed its MECENAT trade mark to the Respondent or otherwise authorised its use. Despite the Respondent replying to the Complainant’s cease and desist letter in October 2017, asserting that it had not finished building the website resolved to by the disputed domain name, there is still no evidence of 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 and services.
The Respondent is not making a legitimate non commercial or fair use of the disputed domain name. The content of the website resolved to by the disputed domain name, has featured pay-per-click links in Swedish, English, and Russian. It is to be assumed that the Respondent has the intent of obtaining commercial gain by misleadingly diverting Internet users or by tarnishing the Complainant or its MECENAT trade mark.
The Complainant says that the disputed domain name was registered and is being used in bad faith. The website resolved to by the disputed domain name, contains links to third party websites offering the same or similar services as the Complainant, such as a link named “Studentkortet”, meaning “student card” in English. From this, it is assumed that the Respondent is aware of the Complainant, its MECENAT trade marks and its business promoting offers to students through its website. The Complainant’s MECENAT trade marks pre-date registration of the disputed domain name, which indicates that the Respondent’s registration of it was not coincidental and was done in bad faith.
The Respondent’s current use of the disputed domain name to resolve to a website featuring third party pay-per-click links is intended both to disrupt the Complainant’s business, and to attempt to attract, by fraudulent means, visitors to the website to which the disputed domain name points by creating a likelihood of confusion with the Complainant’s MECENAT trade mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, for the purposes of commercial gain. In any event the Respondent’s present use of the disputed domain name provides no evidence of registration or use in good faith.
Lastly, the Complainant says it is indicative of bad faith registration that the Respondent only began using a privacy shield service to conceal his identity, after he was contacted by the Complainant in October 2017.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 Complainant has established, through the details provided of its trade mark registrations for MECENAT, that it has rights in this word. When considering identicality and similarity, it is established that the gTLD suffix (“vip” in the case of the disputed domain name) is disregarded as it is a technical requirement of registration. The remaining component of the disputed domain name is identical to the Complainant’s trade mark.
The Panel accordingly finds that the disputed domain name is identical to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that; “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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”.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it had used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(iii) it was making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Considering these circumstances in reverse order, the website to which the disputed domain name resolves contains pay-per-click links and is commercial in character. Accordingly, paragraph 4(c)(iii) is inapplicable. Paragraph 4(c)(ii) is also inapplicable in that there is no evidence that the Respondent is commonly known by the disputed domain name.
Whether websites of the type to which the disputed domain name points might be considered to comprise a bona fide offering of goods and services is addressed at section 2.9 of the WIPO Overview 3.0. This explains: “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.
In its response to the cease and desist letter from the Complainant’s representatives, the Respondent asserted that “Also this word is a very common Word in french for donation To unfavorised people. Its on this word definition I bought this domain for”.
It is correct that “mécénat”, in French, means “patronage” or “sponsorship”. Section 2.9 of the WIPO Overview 3.0 explains that “Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark”. Accordingly, if the Respondent was setting up a bona fide commercial website which related to the subject of patronage or sponsorship, this would be capable of comprising a bona fide offer of goods and services, notwithstanding the Complainant’s trade mark rights; see, for example Philip Morris USA Inc. v. Borut Bezjak, A Domains Limited, WIPO Case No. D2015-1128.
When considering this issue, however, it is necessary to ascertain the true intent of the Respondent. In this respect, the Panel has regard to the following. First, as is discussed in greater detail below, a number of the pay-per-click links on the Respondent’s website have related to the Complainant’s business. Second, none of the known links which have featured on the parking page are related to patronage or sponsorship. Third, the website which, in October 2017, the Respondent claimed he to wish to develop, has never materialised. Fourth, the Respondent has not responded to the Complaint or otherwise attempted to answer the Complainant’s assertions.
Having regard to these considerations, the fact that “mecenat” has a separate meaning in the French language and the Respondent asserted in October 2017, without any supporting evidence, an intention (presently unfulfilled) to set up a website somehow connected with that meaning, is not a sufficient basis to find that he has used or made 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.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Complainant has not provided sufficient information about the exact nature of the goods and services which students are able to procure at a discounted rate through use of its card for the Panel to be able to take an informed view about the number of pay-per-click links which have featured relatively recently on the website to which the disputed domain name resolves and which could reasonably be said to relate to, or compete with, the Complainant’s services. However, the first link on the May 2018 screen print of the Respondent’s website provided by the Complainant is to the Swedish word for “student card”. This plainly relates to the Complainant’s services. Moreover, the Complainant’s cease and desist letter to the Respondent in October 2017 states that other Swedish language links on the website at that time were to “student discount” and “Nelly discount code”, which are also directly referable to the Complainant.
Whether these links were generated by the Respondent or a third party is not of great materiality. Section 3.5 of the WIPO Overview 3.0 explains that; “Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.” See also the decision in SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497: “It is well established that where a domain name is used to generate revenue in respect of ‘click through’ traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396. Revenue will be generated by such visitors clicking on the provided links and it does not matter whether that revenue accrues to the Respondents or the operator of the parking site.”
The fact that the earlier links plainly target the Complainant’s services, irrespective of whether many of the later links do so, points clearly to knowledge, on the part of the Respondent, of the Complainant and its MERCANET-branded services as at the time of registration of the disputed domain name as well as an intention to profit from the confusion caused to Internet users who are aware of the Complainant, by the use of its trade mark in the disputed domain name.
The nature of the links on the website to which the disputed domain name resolves therefore point to bad faith registration and use of the disputed domain name by the Respondent. This is reinforced by the Respondent’s evidently untrue claim that its parking page was temporary, whilst it built a bona fide website, as well as by its subsequent use of a privacy service. As the panel commented in Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598: “it is difficult to see why a PPC advertiser needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting”.
The Panel accordingly finds 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, <mecenat.vip> be transferred to the Complainant.
Date: August 10, 2018