WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Car&Boat Media v. kiem nguyen
Case No. D2021-2212
1. The Parties
The Complainant is Car&Boat Media, France, represented by Inlex IP Expertise, France.
The Respondent is kiem nguyen, France.
2. The Domain Name and Registrar
The disputed domain name <fr-caradisiac.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2021, 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 July 13, 2021 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 amendment to the Complaint on July 13, 2021.
The Center verified that the Complaint together with the amendment to 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 July 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2021.
The Center appointed Alexandre Nappey as the sole panelist in this matter on August 20, 2021. 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 French company, which is active in the edition of information and content related to the automobile sector and in particular via its website “www.caradisiac.com”.
The Complainant is the owner of the following trademarks including the trademarks CARADISIAC or CARADISIAC.COM:
- French trademark CARADISIAC No. 4682789, registered on September 16, 2020, in classes 09, 35, 36, 38, 41 and 42;
- French word mark CARADISIAC No 4167779, registered on March 25, 2015, in classes 9, 12, 16, 35, 36, 37, 38, 39, 39, 41 and 42;
- The French device trademark CARADISIAC.COM No 3847263, registered on July 20, 2011, in classes 35, 36, 38, 41 and 42;
- The European Union device trademark CARADISIAC No 2125748, registered on March 12, 2001, in classes 38, 41 and 42;
- The French device trademark CARADISIAC.COM No 3052023, registered on September 15, 2000, in classes 9,16, 35, 36, 38, 39, 41 and 42;
- The French word mark CARADISIAC No 3046447, registered on August 8, 2000, in classes 9, 16, 35, 36, 38, 39, 39, 41 and 42.
The disputed domain name, <fr-caradisiac.com>, was registered on April 2, 2021.
The Complainant produces screenshots showing that the disputed domain name used to activate an Internet page that states “Index” and shows folders redirecting to error pages.
5. Parties’ Contentions
- Identity or confusing similarity
First, the Complainant indicates that the disputed domain name <fr-caradisiac.com> is confusingly similar with its prior trademarks CARADISIAC and CARADISIAC.COM.
The Complainant adds that the disputed domain name <fr-caradisiac.com> contains the Complainant’s trademark CARADISIAC identically with the only addition of “fr” before being able to refer to the French territory.
- Rights of legitimate interests
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
- The Respondent does not have any license or authorization from the Complainant to use the sign CARADISIAC:
- the Respondent has no trademark rights on the term ”caradisiac”;
- the Respondent has no company registered at the present time with the name “caradisiac” in France,
The Complainant also claims that the Respondent knowingly reserved a disputed domain name, which is confusing with the Complainant’s earlier marks and domain name. Such a situation cannot constitute a legitimate interest.
- Bad faith
The Complainant claims that the disputed domain name has been registered in bad faith in view of its prior trademarks which are well-known by the public and referenced on the Internet.
Moreover, the registration was in bad faith because the radical of the domain name is almost a perfect copy of the Complainant’s domain name with just the addition of “fr” which refers to the territory, the same that the Complainant: France.
It is not credible that the Respondent did not seek to reserve a domain name in “.com” or “.fr” without the “fr” before the reservation.
In light of the foregoing, the Respondent knew the Complainant’s trademark and website, and this is the reason why he registered the disputed domain name in bad faith.
The Complainant also claims that the disputed domain name is used in bad faith.
The Respondent is obviously seeking to strengthen the suggestion of a link with the Complainant website/domain names/rights. The Respondent thus attempted to attract, for commercial gain, Internet users to its website, by copying and creating a likelihood of confusion with the Complainant’s mark, domain name and to either put online a similar website afterwards or to make fraud or to corrupt the image of the Complainant.
As the Complainant is well known, it is obvious that the Respondent is seeking to take advantage of the very good referencing of the Complainant’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(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.
However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having considered the Parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable law, the Panel’s findings on each of the above-mentioned elements are the following.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns numerous trademark rights in the name CARADISIAC and CARADISIAC.COM.
These trademarks are fully reproduced in the disputed domain name <fr-caradisiac.com>.
The addition of the prefix “fr” does not prevent a finding of confusing similarity. Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See also for a recent application: Bouygues v. Name Redacted, WIPO Case No. D2021-1666 (concerning <fr-bouyguescontruction.com>).
Accordingly, the Panel finds that the Complainant has succeeded in showing that the disputed domain name <fr-caradisiac.com> is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant has satisfied its burden of evidence here: the Complainant has argued that it does not know the Respondent, is not linked to the Respondent, and that to its knowledge the Respondent has no rights or legitimate interests in the disputed domain name.
Besides, the disputed domain name is not used in connection with a bona fide offering of goods or services.
Furthermore, the composition of the disputed domain name, consisting of the Complainant’s well-known trademark with an additional term, cannot constitute fair use in these circumstances as it carries a risk of implied affiliation and effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of WIPO Overview 3.0.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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
(iii) 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.”
Based on the evidence provided by the Complainant, and considering that the CARADISIAC is well-known, the Panel finds it more likely than not that the Respondent was aware of the Complainant’s trademark at the time he registered the disputed domain name <fr-caradisiac.com>.
The Panel finds that the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, the notoriety of the CARADISIAC trademark and the Respondent’s use of the disputed domain name cannot therefore constitute use in the bona fide offering of the goods.
Conversely, the Panel finds that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant by using the Complainant’s registered trademark CARADISIAC and CARADISIAC.COM as part of the disputed domain name to attract Internet users to the website to which the disputed domain name resolves by creating a likelihood of confusion with those registered marks as to the source or affiliation of the Website, within the meaning of paragraph 4(b)(iv) of the Policy. Furthermore, the “links” available on the website at the disputed domain name resolve to error pages, which is further evidence of bad faith use.
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) of the Policy.
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 <fr-caradisiac.com> be transferred to the Complainant.
Date: September 3, 2021