WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bal du Moulin Rouge v. Privacy service provided by Withheld for Privacy ehf / Marisol Cancino
Case No. D2021-2473
1. The Parties
Complainant is Bal du Moulin Rouge, France, represented by Casalonga, France.
Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Marisol Cancino, Australia.
2. The Domain Name and Registrar
The disputed domain name <moulinrouge.store> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2021. On July 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 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 Complainant on August 4, 2021 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 August 9, 2021.
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 August 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2021. On August 5, 2021 and on August 6, 2021, Respondent sent email communications to the Center stating “What is the basis of this dispute? I owe the Business Name ‘Moulin Rouge’ in Australia? Can ypu [sic] please provide information about this complaint?” On the same day, the Center provided Respondent with informational hyperlinks and informed Respondent of the twenty-calendar day deadline to file a formal response. However, Respondent did not submit any formal response. On September 1, 2021, the Center informed the Parties that it will proceed to panel appointment. On September 2, 2021, Respondent again sent an informal email communication to the Center requesting an extension of time to respond to the Complaint, stating “I am very busy and do not understand what is happening. I need more time to respond.” On the same day, the Center acknowledged receipt of the said email and stated that the Center will bring the extension request by Respondent to the attention of the Panel upon appointment.
The Center appointed Phillip V. Marano as the sole panelist in this matter on September 13, 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
Complainant operates a cabaret theater and Parisian tourist attraction that is best known as the spiritual birthplace of the modern form of the cancan dance. Complainant owns valid and subsisting registrations for the MOULIN ROUGE trademark in numerous countries, including in France and an International Registration with multiple country designations including Australia, with the earliest priority dating back to May 3, 1973.
Respondent registered the disputed domain name on July 1, 2021. At the time of this Complaint, the disputed domain name resolves to a parking page provided by the Registrar with pay-per-click hyperlinks advertising “Burlesque Outfits”, “Cabaret Parisian Liste”, “Lady Dress”, “Moulin Rouge” and “Moulin Rouge Tickets”, among others, that resolve to various third party websites, some of them competing with Complainant.
5. Parties’ Contentions
Complainant asserts ownership of the MOULIN ROUGE trademark and has adduced evidence of trademark registrations in numerous countries around the world including in France and Australia, with earliest priority dating back to May 3, 1973. The disputed domain name is confusingly similar to Complainant’s MOULIN ROUGE trademark, according to Complainant, because the disputed domain name reproduces identically Complainant’s well-known MOULIN ROUGE trademark and the “.store” generic Top-Level Domain (gTLD) is not of any distinguishing effect.
Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the lack of any relationship, license, permission, or authorization between Complainant and Respondent; the lack of any evidence that Respondent is known by the name “Moulin Rouge”; and Respondent’s use of the disputed domain name in connection with a pay-per-click parking page which mentions Complainant’s MOULIN ROUGE trademarks in relation to Complainant’s field of activity and even hyperlink to Complainant’s website and Complainant’s competitors websites.
Complainant argues that Respondent has registered and used the disputed domain name in bad faith for numerous reasons, including: the well-known nature and worldwide renown of Complainant’s MOULIN ROUGE trademarks, creating no doubt that Respondent knew or should have known about the existence of Complainant; and Respondent’s use of a pay-per-click parking page with hyperlinks to Complainant’s official website as well as goods and services in competition with Complainant.
Respondent did not submit a formal response to Complainant’s contentions.
As indicated in the section 3 above, several informal email communications were received from Respondent, inquiring the reason of the Complaint and asking whether Respondent owns the business name “Moulin Rouge” in Australia.
After the Center informed the Parties that it will proceed to panel appointment, Respondent sent another informal email on September 2, 2021 stating: “I am very busy and do not understand what is happening. I need more time to respond.”
6. Discussion and Findings
To succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy:
i. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights;
ii. 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.
Although Respondent did not formally reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy.
A. Preliminary Matter – Respondent’s request for extension of time to file Response
The Complaint was notified via email on August 11, 2021, and the shipping records show that Written Notice reached Respondent by courier on August 18, 2021.
Paragraph 10(c) of the Rules provides that the Panel may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by the Rules or by the Panel. This, however, is to be balanced against the opening sentence of that paragraph, namely, “The Panel shall ensure that the administrative proceeding takes place with due expedition”. It should also be noted that in terms of paragraph 10(b) of the Rules, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
In the present matter, the Panel is of the view that Respondent did not provide any substantive or valid evidence or reasons as to the extension request, and had ample time to file a response, thus it is not appropriate to allocate further time for Respondent to file a Response. More specifically, being “very busy”, choosing not to read or use the publicly available informational materials about the Policy provided by the Center (which include a model Response), and choosing not to seek any assistance or additional time until after the Response deadline, do not support an extension request.
In these circumstances, the Panel will proceed to a decision.
B. Identical or Confusingly Similar
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Complainant submitted evidence that the MOULIN ROUGE trademark has been registered in numerous countries with priority dating back to May 3, 1973, nearly forty years before the disputed domain name was registered by Respondent. Thus, the Panel finds that Complainant’s rights in the MOULIN ROUGE trademark have been established pursuant to the first element of the Policy.
The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s MOULIN ROUGE trademark. In this case, the disputed domain name is identical to Complainant’s MOULIN ROUGE trademark because, disregarding the “.store” gTLD, the trademark is contained in its entirety within the disputed domain name. WIPO Overview 3.0, section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). gTLDs, such as “.store” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, section 1.11.
In view of Complainant’s registration of the MOULIN ROUGE trademark in numerous countries, and Respondent’s incorporation of that trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy.
C. Rights or Legitimate Interests
Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, section 2.1.
First, it is evident that Respondent, identified by registration data for the disputed domain name as “Marisol Cancino”, is not commonly known by the disputed domain name or Complainant’s MOULIN ROUGE trademark.
Second, the service of pay-per-click advertisements through the disputed domain name attempts to trade off the goodwill of Complainant and accordingly cannot constitute any bona fide offering of goods or services using the disputed domain name. WIPO Overview 3.0, section 2.9 (Unless “genuinely related to the dictionary meaning” of the disputed domain, “[pay-per-click] links do not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of Complainant’s mark or otherwise mislead Internet users.”) As demonstrated by the evidence adduced by Complainant, Respondent’s pay-per-click hyperlinks send Internet users to both Complainant’s official website and third party websites like <paradislatin.com> that compete with Complainant.
Although Respondent, in the informal email of August 6, 2021, asked whether Respondent owns the business name “Moulin Rouge” in Australia, no actual arguments or evidence to support any such ownership rights have been submitted to the Panel. Even if Respondent owns such business name in Australia, the Panel reiterates that Complainant’s rights to Complainant’s MOULIN ROUGE trademark well predate the July 1, 2021 registration date of the disputed domain name. Furthermore, the Panel notes that the use of the disputed domain name does not support a finding of rights or legitimate interests for Respondent. In view of the above, noting also the composition of the disputed domain name, and its use, the Panel finds that any such business name would not give rise to rights or legitimate interests in the disputed domain name.
Furthermore, the disputed domain name which is identical to Complainant’s trademark carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.
In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, noting the nature of the disputed domain name, and Respondent’s monetization of the disputed domain name through a pay-per-click parking page with hyperlinks to both Complainant and third party goods and services in competition with Complainant, the Panel concludes that Complainant has established the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name:
i. Circumstances indicating that Respondent has registered or Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out of pocket costs directly related to the disputed domain name; or
ii. Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
iii. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the disputed 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.
Third-party generated material, such as parking websites with pay-per-click links, cannot be disclaimed by Respondent to prevent a finding of bad faith. WIPO Overview 3.0, section 3.5 (“A respondent cannot disclaim responsibility for content appearing on the website associated with its domain name” regardless of whether “such links [are] generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that respondent itself may not have directly profited….”). See 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 … 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”) (internal citations omitted).
Here, the disputed domain name misappropriates Complainant’s identical MOULIN ROUGE trademark and resolves to Respondent’s pay-per-click parking website that contains hyperlinks to Complainant’s official website and third-party websites offering goods and services in competition with Complainant. Accordingly, the Panel finds that Respondent’s registration of the disputed domain name intentionally targeted Complainant in bad faith. Furthermore, the Panel finds that Respondent’s use of the disputed domain name is intended to divert Internet traffic away from Complainant’s business in bad faith and instead to Complainant’s competitors or otherwise down a route to that would trigger a commission for Respondent.
In view of Respondent’s intentional targeting of Complainant’s identical MOULIN ROUGE trademark in the disputed domain name, and Respondent’s use of the disputed domain name in connection with pay-per-click hyperlinks to Complainant, Complainant’s competitors, and goods and services related to Complainant, the Panel concludes that Complainant has established the third element 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 <moulinrouge.store> be transferred to Complainant.
Phillip V. Marano
Date: September 29, 2021