WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mistral International BV v. Domains by Proxy, LLC / John Dickson, Windsurfing Toronto
Case No. D2019-1400
1. The Parties
The Complainant is Mistral International BV, Netherlands, represented by Inaday Merken BV, Netherlands.
The Respondent is Domains by Proxy, LLC / John Dickson, Windsurfing Toronto, Canada.
2. The Domain Names and Registrar
The disputed domain names <mistralamerica.com>, <mistralwindsurfing.com>, (together the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2019. On June 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 19, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 20, 2019, 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 June 21, 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 the Respondent of the Complaint, and the proceedings commenced on June 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2019. On July 12, 2019, the Respondent requested an additional time to submit response. Accordingly, on July 15, 2019, the Center granted a four calendar day extension for response under paragraph 5(b) of the Rules, rendering the due date for Response July 19, 2019. On July 19, 2019, the Respondent requested a further additional time for response under paragraph 5(e) of the Rules. However, the latter request was rejected by the Center due to the lack of exceptional circumstances and commencement of panel appointment was notified to the Parties on July 24, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on July 29, 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.
On July 30, 2019 the Panel issues a procedural order directing the Complainant to provide a copy of a distribution agreement referred to in the Complaint (see below) and explain its case in regard to that agreement. The order also provided for the Respondent to submit a filing in response if he wished, but he did not do so.
4. Factual Background
The Complainant is a manufacturer and seller of windsurfers, paddleboards and associated equipment as well as clothing and accessories related to such equipment. It has been in business since 1976. Its primary website is linked to <mistral.com>.
The Complainant is the proprietor of various trademark registrations for the word MISTRAL including Canadian trademark registration no. TMA317853 registered on August 29, 1986. These trademarks are referred to collectively in this decision as the “MISTRAL trademark”.
The Disputed Domain Names were each registered on December 4, 2011.
The Disputed Domain Names each resolve to what appears to be the same website, which is branded as “Maui North” (the “Respondent’s website”) and which offers for sale a range of windsurfers and paddle boards and associated equipment from various different manufacturers. The address given on the website for “Maui North” is an address in Ontario, Canada.
On or about June 18, 2012, the Complainant through a subsidiary called Mistral Red Dot Division BV entered into a distribution agreement (the “Distribution Agreement”) with Maui North Surf Company of Ontario, Canada (“Maui North”) granting Maui North certain distribution rights in Canada relating to the Complainant’s products. The Distribution Agreement was terminated by Mistral Red Dot Division BV by notice dated October 3, 2012, alleging various breaches by Maui North.
Clause 1.2 of the Distribution Agreement provided “The Distributor shall buy and sell the Products in his own name and for his own account. He shall act as an independent trader towards both Mistral Red Dot Division as well as the customers. The Distributor is not authorised to represent Mistral Red Dot Division or to take on any obligation on behalf of Mistral Red Dot Division. The Distributor has to refrain from any action, from which third parties could conclude that the Distributor does have such authority”. There are no other provisions in the Distribution Agreement which grant Maui North any rights to register any domain names including the word “mistral” or to otherwise use the MISTRAL trademark (save as attached to the Complainant’ products).
5. Parties’ Contentions
The Complainant submits that the Disputed Domain Names are each confusingly similar to the MISTRAL trademark, in which it has rights. In one case the descriptive term “windsurfing” is added to the trademark and in the other case the geographic term “america” is added. Neither of these additions distinguish the domain name in question from the Complainant’s trademark.
The Complainant further submits that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Complainant says that the Distribution Agreement does not provide any such basis and has in any event been terminated.
Finally, the Complainant submits that the Disputed Domain Names were registered and have been used in bad faith. The Complainant submits that the Respondent chose the Disputed Domain Names in order to deliberately cause confusion among Internet users as to the source of the goods sold through his website in order to take unfair advantage of the Complainant’s reputation.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Matters: No response
The Panel notes that no substantive communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Further in the present case it is clear from emails received from the Respondent (see above) that the respondent has actual knowledge of the Complaint.
Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
6.2. Preliminary Matters: Respondent identity
The Panel also notes this is a case where one Respondent (“Domains by Proxy, LLC”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be John Dickson, Windsurfing Toronto and references to “the Respondent” are to that person. It would appear that Maui North Surf Company is a company associated with Mr. Dickson – he signed the Distribution Agreement on its behalf and his address is the same as that appearing on the Respondent’s Website for that company. In the circumstances the Panel considers it appropriate to regard the activities of that company as those of the Respondent.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Names are identical with 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 Names;
(iii) the Disputed Domain Names have been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has rights in the MISTRAL trademark. The Panel finds the Disputed Domain Names are each confusingly similar to this trademark.
The Disputed Domain Names each involve the addition of either a geographic (“america”) or descriptive (“windsurfing”) term. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). It is established that, where a mark is the distinctive part of a domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive or geographic term (such as here “windsurfing” or “americas”) to a domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189; and section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Names for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
The Panel finds the MISTRAL trademark is, on the evidence before the Panel, a distinctive term in which the Complainant has a significant and long established reputation in the context of windsurfers and paddleboards and associated products.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
“(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the MISTRAL trademark. The terms of the Distribution Agreement (above) do not provide any such basis and the Distribution Agreement has been terminated. The Complainant has prior rights in the MISTRAL trademark, which precede the Respondent’s acquisition of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names, and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel notes that websites at the Disputed Domain Names reproduce the Complainant’s trademark (and its logo) along with trademarks of competitors of the Complainant.
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Names.
Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
It is well established that the provisions of paragraph 4(a)(iii) of the Policy are conjunctive – the Complainant has to show that the domain name in question has both been registered and is being used in bad faith. In the present case the Panel has no difficulty in concluding each of the Disputed Domain Names is being used in bad faith. They are each being used to redirect traffic to the Respondent’s website and as such this conduct falls within paragraph 4(b)(iv) - the Disputed Domain Names are likely to attract traffic because of confusion with the Complainants’ trademark, and the Respondent hopes to derive commercial gain as a result. The Distribution Agreement does not alter this analysis – first because it does not appear to allow the Respondent to register domain names using the Complainant’s MISTRAL trademark; and second in any event it was terminated in 2012.
A more difficult question is whether the original registration was in bad faith. In terms of chronology, the Disputed Domain Names were registered some six months before the Complainant and Respondent entered into the Distribution Agreement. The Panel has not been provided with any evidence about the background to that agreement and what discussions preceded it. Conceivably the Respondent may have registered the Disputed Domain Names in anticipation of his appointment as a distributor – however the Panel does not know. The Distribution Agreement itself does not appear to allow the Respondent to register domain names using the Complainant’s MISTRAL trademark. There is no evidence before the Panel that the Complainant had any knowledge at the time that the Respondent had effected these registrations. The Complainant says these registrations were effected without its permission. On balance the Panel considers these facts suggest that the Respondent was acting with the Complainant’s trademark in mind and without the Complainant’s knowledge or consent. This is in the Panel’s opinion sufficient to raise an inference of bad faith registration. It may be that such an inference could have been rebutted by the Respondent producing a credible account of the relevant events and his motivations together with supporting evidence. However as indicated above he has not done so, despite clearly being aware of the Complaint. He was also afforded an opportunity under the Panel’s Procedural Order (see above) to comment on the Distribution Agreement but did not do so. Accordingly the Panel finds that the Respondent has failed to rebut the inference of bad faith registration. As a result, the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith.
Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 Names <mistralwindsurfing.com> and <mistralamerica.com> be transferred to the Complainant.
Nick J. Gardner
Date: August 20, 2019