ADMINISTRATIVE PANEL DECISION
Milan Presse v. See Privacyguardian.Org / Home, Maxim Antonov
Case No. D2019-0640
1. The Parties
Complainant is Milan Presse of Toulouse, France, represented by Cabinet Fidal, France.
Respondent is See Privacyguardian.Org of Phoenix, Arizona, United States of America / Home, Maxim Antonov of Kiev, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <milan-multimedia.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2019. On March 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 22, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 25, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 26, 2019.
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 Respondent of the Complaint, and the proceedings commenced on April 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2019. Respondent sent an informal email communication to the Center on April 5, 2019. Respondent did not submit a formal response. Accordingly, the Center notified the Parties the commencement of panel appointment process on April 24, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 30, 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
Complainant is a French publishing firm created in 1980. Complainant is a major publisher of children’s books and magazines, and its MILAN mark and logo appears in the top left corner of its magazine covers. Complainant sells its children’s magazines at two websites, “www.milan-presse.com” and “www.milan-jeunesse.com” (“jeunesse” is French for “youth”). Complainant holds several registered trademarks for MILAN PRESSE, including French trademark registration No. 3457451 dated October 18, 2006.
Complainant occasionally hosts gatherings between its children publication illustrators (“illustrateurs” in French) and the public.
Complainant also publishes children’s magazines in the CD-ROM format, and it does so under the unregistered mark MILAN MULTIMEDIA. In 2007, Complainant registered the Domain Name. According to the Complaint, and without explanation, the Domain Name was not renewed in 2015.
The Domain Name was (re-)registered by Respondent on October 14, 2018. The Domain Name resolves to a site featuring pornography. The text “milan-multimedia.com” appears in the upper left corner of the site. Little is known of Respondent or his activities, other than the fact that the Domain Name registered in his name resolves to a pornographic website. In addition, it is established in the record that Respondent’s website appears on a Google search for “illustrateurs MILAN”.
5. Parties’ Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.
Respondent has not replied to Complainant’s contentions. The only communication received from Respondent was the following: “Good day! We do not know who uploaded this content, the content was deleted!”
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark MILAN PRESSE through registration and use demonstrated in the record. The Panel concludes further that the Domain Name is confusingly similar to that mark. The dominant portion of the mark is the proper noun “Milan”, and the conceptual differences between “presse” (French for “press” or print media) and “multimedia” are slight.
In the alternative, the Panel is prepared to conclude here that Complainant has unregistered rights in the mark MILAN MULTIMEDIA through use of that mark to sell its CD-ROM publications, either directly to consumers or through well-known French retailers such as FNAC. The Domain name is of course identical (save the inconsequential hyphen) to this unregistered mark.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to explain his bona fides in connection with the Domain Name. Respondent’s website features pornography. The posting of pornographic content at a website through use of a domain name confusingly similar to another’s trademark is not a legitimate use of the Domain Name.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. The Panel finds it likely that Respondent had Complainant’s mark in mind when registering the Domain Name. As noted above, Respondent’s pornographic site appears on a Google result for the search “illustrateurs MILAN”, which indicates that Respondent’s website contains enough source code targeting Complainant Milan Presse to confirm Respondent’s awareness of Complainant and its MILAN PRESSE mark.
The Domain Name is also being used in bad faith. The deliberate appropriation of another party’s trademark to lure consumers – particularly consumers searching for children’s books and magazines – to a pornography site constitutes bad faith use of the Domain Name. See VIVENDI v. Guseva Svetlana, WIPO Case No. D2018-2631 (“Numerous panels deciding cases under the Policy have held that pornographic content on a respondent’s website is in itself sufficient to support a finding of bad faith, irrespective of the respondent’s motivation…”).
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <milan-multimedia.com> be transferred to Complainant.
Robert A. Badgley
Date: May 6, 2019