WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edenred v. See PrivacyGuardian.org, Domain Administrator / Mark Jones
Case No. D2018-2607
1. The Parties
The Complainant is Edenred of Malakoff, France, represented by Dreyfus associés, France.
The Respondent is See PrivacyGuardian.org, Domain Administrator of Phoenix, Arizona, United States of America / Mark Jones of Auckland, New Zealand.
2. The Domain Name and Registrar
The disputed domain name <ticketsrestaurant.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 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 November 21, 2018, 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 November 26, 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 November 28, 2018. On November 30, 2018, however, the Complainant requested a suspension of the proceedings. On January 29, 2019, the Center received notification from the Complainant that it wished to reinstitute the proceedings. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2018. The Center received various email communications from the second-named Respondent1 in the period between November 21, 2018, and February 19, 2019. Following receipt of the Respondent’s communication on February 19, 2019, the Center informed the Parties of the Commencement of Panel Appointment Process.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 28, 2019. 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 provides what it calls transactional solutions. One of its solutions is a meal voucher or card system known as “Ticket Restaurant”.
The first “Ticket Restaurant” meal vouchers were introduced to the market in France in 1962. It became an officially recognised employee benefit by governmental decree in 1967. Beginning in 1976, the concept was exported to other countries. According to the Complaint, the “Ticket Restaurant” system is now used in 30 countries around the world by millions of employees, including in the United Kingdom.
In the United Kingdom, the Complainant’s “Ticket Restaurant” service is made available through its website at <edenred.co.uk>. The domain name <ticketrestaurant.co.uk> redirects to that website. The “Ticket Restaurant” card can be used at thousands of restaurants and food outlets in the United Kingdom. It may also be used to buy groceries in supermarket chains such as Tesco, Sainsbury, Waitrose, and ASDA, amongst others.
The Complainant is the owner of numerous registered trademarks for a stylised form of TICKET RESTAURANT with a device element of disc or ball. The registrations include:
(a) French Registered Trademark No. 033234240, which was registered on July 2, 2003, in respect of goods and services in International Classes 9, 16, 35, 36, 39, 41, 42, 43, and 44;
(b) International Registration No 822486, which was registered on December 30, 2003, in respect of goods and services in International Classes 9, 16, 35, 36, 39, 41, 42, 43, and 44, and designating Algeria, Australia, Austria, China, Croatia, the Czech Republic, Egypt, Germany, Hungary, Ireland, Kazakhstan, Serbia, Spain, Switzerland, and the United Kingdom;
(c) French Registered Trademark No. 4046919, which was registered on November 14, 2013, in respect of goods and services in International Classes 9, 16, and 36; and
(d) United Kingdom Registered Trademark No. UK00003112648, which was filed on June 10, 2015, and entered on the register on September 18, 2015, in respect of goods and services in International Classes 9, 35, 36, and 42.
The Complainant held the disputed domain name until August 2017. The circumstances in which it ceased to be registered in the Complainant’s name are not clear.
From around September 2017, the disputed domain name was held by JGUK Ltd. The WhoIs details included a notice advertising that the disputed domain name was for sale at a price of USD 5,177. The disputed domain name resolved to a parking page at which pay-per-click (“PPC”) advertisements for services competitive with the Complainant were displayed.
After correspondence between the Complainant’s representatives and JGUK Ltd (in which offers to sell the disputed domain name ranging from USD 2,500 to USD 250,000 were elicited), the disputed domain name was transferred into the name of the First-named Respondent on August 26, 2018. The disputed domain name continued to resolve to a parking page with PPC links.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the registered trademarks referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), sections 1.7 and 1.11. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The textual elements of the Complainant’s trademarks, TICKET RESTAURANT are a prominent and substantial feature of the trademarks. The design elements cannot be represented in a domain name and do not dominate the textual elements. Accordingly, the design elements may be disregarded for the purposes of this comparison. See e.g., WIPO Overview 3.0, section 1.10.
Disregarding the “.com” gTLD, the disputed domain name differs from TICKET RESTAURANT by the addition of the letter “s” between “ticket” and “restaurant”. The Respondent contends that the addition of the letter “s” means that there is no similarity between the Complainant’s trademark and the disputed domain name. Inconsistently with this argument, however, the Respondent argues the Complainant may be infringing the Respondent’s rights “as they appear to be naming their business very similar to ours”.
In any event, the substitution of the plural “tickets” for the singular “ticket” is the kind of mistake which could commonly be made. It is well-established that such differences constitute confusing similarity for the purposes of the Policy. See e.g., WIPO Overview 3.0, section 1.9.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain name is plainly not derived from either Respondent’s name. According to the Complaint, a trade mark search does not disclose the ownership of any relevant trademarks by either Respondent. The Complainant’s trademarks were registered several years before the Respondents apparently became the registrants of the disputed domain name.
These circumstances give rise to a clear prima facie case that the Respondents do not have rights or legitimate interests in the disputed domain name.
The Respondent asserts that the disputed domain name is his “IP” and invokes the decision in The Procter & Gamble Company v. Marchex Sales, Inc, WIPO Case No. D2012-2179 in support of his claim to rights or legitimate interests.
The Panel infers that the Respondent’s claim to “IP” in the disputed domain name rests on his assertions that there is no similarity between the disputed domain name and the Complainant’s trademark and his registration of the disputed domain name before the Complainant’s trademarks.
For the reasons explained in section 5(a) above, the Panel has rejected the argument that there is no similarity between the disputed domain name and the Complainant’s trademark.
The Respondent’s claim that he registered the disputed domain name before the Complainant’s trademark is also factually wrong. Apart from his assertion, the Respondent has not submitted any material in support of the claim. It is not clear whether there is any relationship or association between the Respondent and JGUK Ltd. Even if there were, however, JGUK Ltd did not become the registrant until at the earliest August or September 2017. That is well after the Complainant began using its trademark and several years after its trademark was registered.
The decision in The Procter & Gamble Company v. Marchex Sales, Inc, above, does not assist the Respondent. In that decision, a majority of the Panel found the respondent did not have rights or legitimate interests in the relevant domain name. Moreover, the Panel found that the respondent began using the disputed domain name some four or five years before the complainant first began using or registered its trademark.
Further, the words “ticket” and “restaurant” are ordinary English words. In the combination used by the Complainant, however, they are not directly descriptive of anything. The disputed domain name is not being used solely in connection with the dictionary or ordinary meaning of that expression, but appears to trade off the trademark significance of the Complainant’s trademark. See WIPO Overview 3.0, section 2.9.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As it is not clear whether the Respondent had any association with JGUK Ltd, the Panel disregards the offers to sell the disputed domain name arising from the Complainant’s correspondence with the latter.
Even after the Respondent became the registrant of the disputed domain name, however, the disputed domain name continued to resolve to a website with PPC links to services competitive with the Complainant’s “Ticket Restaurant” business or in the restaurant field. In the course of the Respondent’s communications with the Center referred to above, the Respondent also offered to sell the disputed domain name to the Complainant for USD 950.
The use of the disputed domain name to resolve to a website with competitive PPC links is use in bad faith under the Policy. Similarly and without evidence to the contrary from the Respondent, the offer to sell the disputed domain name for USD 950 likely exceeds the out-of-pocket costs for registering the disputed domain name. The close proximity of the bad faith use of the disputed domain name to resolve to the PPC site to the date the Respondent registered the disputed domain name lead to an inference that the disputed domain name was registered for that purpose. Accordingly, the Panel finds that the disputed domain name was registered and 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, <ticketsrestaurant.com> be transferred to the Complainant.
Warwick A Rothnie
Date: March 15, 2019
1 As the first-named Respondent is a privacy service and has played no active part in the proceedings, the Panel will refer or ease of reference to the second-named Respondent as the Respondent unless it becomes necessary to distinguish between the two parties.