WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caviar Petrossian v. Bihua Hosting
Case No. DCO2013-0004
1. The Parties
The Complainant is Caviar Petrossian of Paris, France, represented by Herbert Smith Freehills, France.
The Respondent is Bihua Hosting of Shenzhen, Guangdong Province, China.
2. The Domain Name and Registrar
The disputed domain name <petrossian.co> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2013. On March 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 14, 2013.
On April 12, 2013, the Respondent requested to have a two-week extension to deal with the case. On the same day, the Center forwarded the Respondent’s request to the Complainant for comments. The Complainant replied shortly indicating the Respondent did not provide any reason explaining why it would need an extension of the deadline. However, if the extension was justified and the Center finds that it was fair to grant the Respondent an extension of time, the Complainant would not oppose this extension. Considering the Respondent’s request and the Complainant’s objection, the Center granted the Respondent to April 19, 2013 to file a Response. However, the Respondent did not file any Response by the extended due date.
The Center appointed Francine Tan as the sole panelist in this matter on April 26, 2013. 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, Caviar Petrossian, was incorporated on November 3, 1965. The original founders of the business were Melkoum and Mouchegh Petrossian, two Armenian brothers, who started importing caviar in France in the 1920's. In doing so, they founded the company that today is the premier buyer and importer of Russian caviar worldwide. The Complainant asserts that 15% to 20% of the caviar eaten in the world is caviar Petrossian. Armen Petrossian, the son of Mouchegh Petrossian, is still running the family business, as CEO of Caviar Petrossian and CEO of the American subsidiary, Petrossian Inc.
The Complainant is the owner of the trade mark PETROSSIAN across many countries and, possesses a numerous trade mark registrations, some of them dating back to 1976. These registrations include:
- French registration No. 1358658 dated November 6, 1986 in Classes 8, 14, 18, 21, 22, 29, 30, 31, 32, 33, 40, 42, 43, 44 and 45;
- International registration No. 425498 filed on October 22, 1976, designating Armenia, Austria, Switzerland, Czech Republic, Germany, Algeria, Egypt, Spain, Hungary, Italy, Kazakhstan, Liechtenstein, Morocco, Monaco, Portugal, Romania, Serbia, Russian Federation, San Marino, Uzbekistan, China, Tajikistan, Estonia, Georgia, Lithuania, Turkmenistan, Azerbaijan, Belarus, Kyrgyzstan, Latvia, Republic of Moldova, Syria, Arab Republic in Classes 18, 22, 29, 30, 31, 32, 33 and 42;
- United Kingdom of Great Britain and Northern Ireland registration No. 1065452 filed on July 8, 1976 in Class 29;
- Australian registration No. 1277416 filed on December 15, 2008 in Classes 29, 30 and 33;
- New Zealand registration No. 800507 filed on December 15, 2008 in Classes 29, 30 and 33.
The Complainant also has rights in the following trade mark registrations:
- United States of America registration No. 73110573 filed on December 23, 1976 in Class 29;
- United States of America registration No. 1337271 filed on November 26, 1982 in Class 42;
- Canadian trade mark No. 0399981, filed on September 7, 1976;
- Canadian trade mark No. 0656658 filed on May 1, 1990.
The Complainant’s American subsidiary is also the owner of the domain name <petrossian.com>, registered on July 31, 1997.
The Petrossian caviar has being sold for more than 90 years and is sold all over the world.
The Petrossian Group also sells fine foods products, such as smoked salmon, foie gras, candys, chocolate, fish eggs, truffles, oil and vinegar, tea, soups, as well as vodka. It operates several restaurants, boutiques, corner shops and cafés under the name “Petrossian” in a number of cities across the world: Paris, Nice, Lyon, New York, West Hollywood, Las Vegas, Sao Paulo and Dubai. The Petrossian boutiques and restaurants are often mentioned in articles in periodicals.
The Complainant asserts that as a result of its long-lasting and intensive use, the trade mark PETROSSIAN has acquired a great reputation and is widely known throughout the world.
The disputed domain name was registered on December 20, 2012.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is identical or confusingly similar to the PETROSSIAN trade mark in which it has rights. The disputed domain name identically reproduces its well-known trade mark, PETROSSIAN. The mere addition of the country code TLD (“ccTLD”) “.co” does not sufficiently avoid the similarity between the disputed domain name and the PETROSSIAN trade mark. On the contrary, the choice of the ccTLD ".co" could increase the likelihood of confusion. The ccTLD ".co" which is the Colombian extension could be considered as a misspelling of the generic TDL ".com".
The Complainant contends, secondly that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent's name is Bihua Hosting and there is no indication that it is commonly known by a name corresponding to the disputed domain name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to use its distinctive trade mark PETROSSIAN or to register the disputed domain name. Moreover, since the Complainant has protected its well-known trade mark all over the world, there is no evidence that the Respondent has registered nor applied for registration of the trade mark PETROSSIAN.
The disputed domain name points towards a parking webpage with hyperlinks related to caviar:
- Russian Caviar Store at “www.caviarastraknhan.com” which points to the website of a competitor offering caviar for sale; and
- Caviar Classic London at “www.caviarclassic.webeden.co.uk” which also points to the website offering caviar for sale.
Therefore, the Respondent has not made any legitimate offering of goods or services under the disputed domain name. Instead, it diverts Internet users to a page that offers, among other things, the products of other competitors.
The Complainant contends, thirdly, that the disputed domain name has been registered and is being used in bad faith. The ccTLD ".co" can be considered as a misspelling of the gTDL ".com". In previous cases, panels have noted that "the ".co". ccTLD has been found to be particularly attractive for registrants as it closely resembles the popular ".com" gTLD extension" (Flatworld Solutions Private Limited v. Invensis Technologies Private Limited, WIPO Case No. DCO2011-0049). The panel in Société Nationale des Chemins de Fer Français, SNCF v. Mark Tatum, WIPO Case No. DCO2012-0053, also found that "the Respondent is engaged in typosquatting, by attempting to take advantage when an Internet user seeking to access the Complainant's website at "www.sncf.com" inadvertently type de incorrect address “www.sncf.co"
In the present case, the Respondent, has no apparent links with Colombia, should have been aware of the trade mark PETROSSIAN due to its long use and well-known character worldwide, and cannot be ignorant of the website “www.petrossian.com”.
The Respondent has therefore registered the disputed domain name seeking to take advantage of the potential confusion between the gTLD ".com" and the ".co". Moreover, the disputed domain name points towards a parking page, on which there are hyperlinks related to caviar and which point to the website of a competitor and "Caviar Classic London "www.caviarclassic.webeden.co.uk” which also points to the website offering caviar for sale, related to "Armenian Family History". This hyperlink does not appear by chance, but constitutes a reference to the origin of the Petrossian family which founded the company Caviar Petrossian. These hyperlinks are not chosen by chance but are obviously appearing as a reference to the well-known trade mark PETROSSIAN.
Previous panels have found that “the use of GoDaddy's domain name parking service was a bad faith use of the domain name” (Owens Corning v. NA, WIPO Case No. D2007-1143). By such a use of the disputed domain name, the Respondent was intentionally attempting to attract for commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s well-known mark as to the source or affiliation of the Respondent’s website.
Despite the 5 days extension to respond to the Complaint which was granted by the Center, no response was filed by the extended deadline.
6. Discussion and Findings
The Policy requires the Complainant to prove all three elements, namely that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 Respondent has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Complainant’s rights in the PETROSSIAN trade mark has been clearly established in this case, both by virtue of its trademark registrations as well as by virtue of its long term of use and reputation.
The Panel agrees with that the disputed domain name is identical to the Complainant’s PETROSSIAN trade mark. The trade mark has been incorporated in its entirety and it is a well-established principle that the gTLD extension should be disregarded when considering the issue of whether a disputed domain name is identical or confusingly similar to a complainant’s trade mark.
The element of confusion is nevertheless further enhanced in this instance by the gTLD “.co” which is the Colombian extension and could be construed as a misspelling of the highly popi highly pop gTLD generic TDL ".com".
The Panel therefore finds that the Complainant has established that the disputed domain name is identical or confusingly similar to the PETROSSIAN trade mark.
B. Rights or Legitimate Interests
The Complainant is required to satisfy its burden under paragraph 4(a)(ii) of the Policy by establishing a prima facie case which shows the Respondent’s lack of rights or legitimate interests. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.)
The Panel is of the view that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. The Respondent has not filed any Response in this case by which it could have sought to establish its rights or legitimate interests in the disputed domain name. In the absence of any evidence on file by which would suggest that the Respondent has a right or legitimate interest, the Panel therefore finds in favour of the Complainant on this issue under paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of bad faith registration and use can be found to be established in any of the following situations:
(i) circumstances indicating that the respondent registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website 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 the respondent’s website or location or of a product or service on the website or location.
On a review of the evidence submitted in this case and on a preponderance thereof, the Panel finds that the Respondent registered the disputed domain name for the purpose of attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant's PETROSSIAN mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website for commercial gain. The Complainant’s PETROSSIAN mark is without doubt a well-known mark and the PETROSSIAN name is well-recognized in relation to fine foods, namely caviar, in many countries. The Panel therefore considers the Complainant’s assertion that the Respondent must have known of the Complainant and of its mark, and had deliberately chosen the disputed domain name with the Complainant in mind, not to be without basis. The incorporation of a well-known mark in a domain name without the trademark owner’s consent has been established in many earlier UDRP panel decisions to be evidence of bad faith registration.
In the circumstances, the Panel concludes that the disputed domain name was registered and has been used by the Respondent in bad faith. The Panel is of the view that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <petrossian.co> be transferred to the Complainant.
Date: May 4, 2013