WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Petit Bateau v. Erka Promotions Events S.R.L.

Case No. DRO2012-0006

1. The Parties

The Complainant is Petit Bateau of Troyes, France, represented by WITETIC, France.

The Respondent is Erka Promotions Events s.r.l. of Bucharest, Romania.

2. The Domain Name and Registrar

The disputed domain name <petit-bateau.ro> is registered with ROTLD.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2012. On September 7 and 12, 2012, the Center transmitted by email to ROTLD a request for registrar verification in connection with the disputed domain name. On September 12, 2012, ROTLD transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On September 20, 2012 the Center notified the Parties that the Complaint was filed in English but that according to the information received from ROTLD the language of the Registration Agreement is Romanian. Accordingly, the Complainant submitted a request for English to be the language of the proceedings on September 24, 2012. The Respondent submitted a request for Romanian to be the language of the proceedings on September 24, 2012. The Center thus informed the Parties that it would send all case-related communications in both English and Romanian, that it would accept a Response filed in either language, and that the language of the proceeding would be decided by the Panel once appointed.

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 September 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2012. The Respondent did not file a formal Response. On October 16, 2012, the Center received two email communications from Claudiu Cadar of Claus Web srl.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on October 31, 2012. 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 holds multiple trademark registrations for PETIT BATEAU, alone or combined with other elements, throughout the world and has a strong reputation on the name PETIT BATEAU in the field of fashion, clothes, bags and others accessories.

The Complainant is the holder of multiple trademarks registrations, as:

- French registration n° 95 589 088 PETIT BATEAU (+logo) registered on September 21, 1995, duly renewed since, claiming goods in classes 1 to 45 in particular “clothes”;

- French registration n° 1 680 563 PETIT BATEAU (+logo) registered on July 15, 1995, duly renewed since, claiming in classes 3, 25 and 38 in particular “Clothing; shoes and footwear; headgear”;

- Community Trademark registration n° 001923820 PETIT BATEAU filed on October 27, 2000 and registered on January 18, 2002 duly renewed since, claiming goods in classes 3, 25 and 38 in particular “Clothing; shoes and footwear; headgear”;

- International registration n° 268 619 PETIT BATEAU (+logo) renewed lastly on April 25, 2003 and dating back to at least April 25, 1963 claiming goods in class 25, “clothing, footwear, headgear” and a protection in particular in Austria, Belgium, Netherlands, Luxembourg, Switzerland, Germany, Spain, Hungary, Italy, Democratic People’s Republic of Korea, Liechtenstein, Romania, Serbia;

- International registration n° 653 169 PETIT BATEAU (+logo) of March 20, 1996 claiming the priority of French registration n° 95 589 088 claiming goods in class 25, “clothing, footwear, headgear” and a protection in particular in China, Cyprus, and San Marino.

The Complainant is the owner of numerous domain names composed of the term “petit-bateau” (“petitbateau”) alone or combined with another element as: <petitbateau.ro> reserved since at least November 3, 2010, <petit-bateau.eu> reserved since at least July 3, 2006, <petitbateau.eu> reserved since at least July 8, 2006, <petit-bateau.fr> reserved since at least December 9, 1996, <petitbateau.fr> reserved since at least May 25, 2000, <petit-bateau.biz> reserved since at least November 19, 2001, <petitbateau.biz> reserved since at least November 19, 2001, <petit-bateau.net> reserved since at least March 1, 2000, <petitbateau.net> reserved since at least March 1, 2000, <petitbateau.com> reserved since at least September 2, 1999, <petit-bateau.com> reserved since at least January 23, 2000, <petit-bateau.co.uk> reserved since at least June 1, 2000, and <petitbateau.co.uk> reserved since at least December 10, 2001.

This disputed domain name <petit-bateau.ro> was registered on October 1, 2007, by the Respondent, a Romanian company with activity of marketing, design and web agency.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain name reproduces identically the trademark PETIT BATEAU that corresponds to the Complainant’s trademark and other protected intellectual property rights.

- The Respondent has no rights or legitimate interests in respect of the disputed domain name, since it has no prior rights, as trademarks or corporate/trade name, on the Complainant’s trademarks.

- The Respondent has never used actively the disputed domain name and could therefore not evoke any sort of legitimate interest.

- Considering the extremely high repute of the Complainant, the Respondent could, by no mean, have ignored the existence of the Complainant’s prior rights. It would be indicated that the Respondent presents on its corporate website numerous French and foreign trademarks of similar reputation. In this respect the Respondent clearly mentions on its website (“www.erka.ro”) other French trademarks such as NORAUTO, DECATHLON or OKAIDI (one of the major competitor of the Complainant). The knowledge of these French trademarks including that of the Complainant does need to be further demonstrated considering the activity of marketing, design and web agency of the Respondent.

- PETIT BATEAU is not, in anyway, the name or indication of the activity of the Respondent, the latter having on top of it no relation either economical or financial or of any other kind with the Complainant.

- The sole purpose of the Respondent, by registering and using the disputed domain name is to drag traffic away or to collect contacts from email’s addresses made up with the disputed domain name from the Complainant or at least prevent the latter of being the owner of the disputed domain name.

- Though the disputed domain name is not active at this stage, according to the Complainant it does not mean that it is not exploited when using email addresses, FTP access, which also attract emails from the Complainant where a typo is made by the sender while including the dash between the terms “petit” and “bateau”.

- By preventing the Complainant to own and use the disputed domain name, the Respondent tarnishes the reputation of the Complainant’s trademark, when the Internet users reach a non-active page for a domain name strictly identical to the Complainant’s trademark.

B. Respondent

The Respondent failed to provide a Response in the term indicated by the Center.

6. Discussion and Findings

6.1. Language of the proceedings

According to the provisions of paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., in this case Romanian.

The Complainant, upon receiving the Language of Proceeding notification from the Center, submitted a request for this dispute to proceed in English. The Respondent submitted a request for Romanian to be the language of the proceedings.

The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.

In adopting a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see in this sense Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

The Panel considers the following reasoning provided by the Complainant in support to its request for English language as the language of the proceedings:

- The Respondent’s webpage is also available in English;

- The brochures transmitted to the Complainant referring to the Respondent were in English;

- The Respondent is using a Facebook fan page where their presentation of its activity is in English;

- The representative of the Respondent, M. Kibo Nakamura who had responded in Romanian in these proceedings that it does not speak English, clearly mentions in his Linkedin profile that he speaks also English;

- The disputed domain name is composed of French terms and is highly distinctive and could not be aimed specifically to Romanian people;

- The Complainant’s nationality and place of residence is in France;

- The Complainant is not in a position to conduct the proceedings in Romanian without a great deal of additional expense and delay due to the need for translation of the Complaint and the supporting annexes.

Considering also, the fact, that, following the Center communication that that it would accept a Response filed in either Romanian or English, the Respondent failed to provide an answer in the procedural term, the Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English (see WIPO Case No. D2012-0211, Louise Rennison v. Milan Kovac).

6.2. Elements of Policy

A. Identical or Confusingly Similar

The Complainant has demonstrated, in the opinion of the Panel, that it has well-established trademark rights through registration for many years, in the PETIT BATEAU (+logo) semi figurative trademarks, including the International registration n° 268 619 PETIT BATEAU (+logo) renewed lastly on April 25, 2003 and dating back to at least April 25, 1963 claiming goods in class 25, “clothing, footwear, headgear” and a protection in particular in Austria, Belgium, Netherlands, Luxembourg, Switzerland, Germany, Spain, Hungary, Italy, Democratic People’s Republic of Korea, Liechtenstein, Romania, Serbia. The dominant part of the semi figurative trademark is the verbal part PETIT BATEAU.

The disputed domain name <petit-bateau.ro> is confusingly similar to the Complainant’s trademark as it includes in its entirety the Complainant’s dominant part of the semi figurative trademark PETIT BATEAU.

The addition of the dash between the two words and of the country code Top-Level Domain (“ccTLD”) suffix such as “.ro” does not affect in this case the disputed domain name for the purpose of determining whether it is identical or confusingly similar to the trademark (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; Auchan v. Web4comm Srl Romania, WIPO Case No. DRO2005-0001; and OSRAM GmbH, v. web4COMM SRL Romania, WIPO Case No. DRO2005-0004, Clifford Chance LLP v. James Bond (Domain Holder - c326030), WIPO Case No. DRO2011-0011).

For these reasons, the Panel finds the Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

From the evidence submitted by the Complainant, the Respondent appears to have no legitimate connection with the Complainant’s famous trademark, as it was not authorized in any way by the Complainant to use the said trademark and no trademark PETIT BATEAU registration was identified in the Respondent’s name.

According to the evidence presented by the Complainant, the disputed domain name is not resulting to an active website at this stage.

Considering the Complainant assertions and given also the reputation of the PETIT BATEAU trademark and the Respondent’s specific activity of marketing design and web agency, the Panel finds that it is likely that the Respondent’s intent in registering the disputed domain name was to drag traffic away or to collect contacts from email addresses made up with the disputed domain name from the Complainant or at least prevent the latter from being the owner of the disputed domain name.

Such conduct cannot represent in the opinion of the Panel a bona fide offering of goods or services which would entitle the Respondent to claim rights or legitimate interests in the sense of paragraph 4(a)(ii) of the Policy.

No other circumstances in the sense of the paragraph 4(c) of the Policy, entitling the Respondent to claim rights or legitimate interests in the disputed domain name have been identified by this Panel and the Respondent decided not to participate to these proceedings. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests, which the Respondent has not rebutted.

Accordingly, the Panel finds that the Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Considering the contentions of the Complainant, not rebutted by the Respondent, referring to the reputation of the PETIT BATEAU trademark and the specific activity of marketing design and web agency of the Respondent, the Panel agrees that it is likely that the Respondent’s intent in registering the disputed domain name was to drag traffic away or to collect contacts from email addresses made up with the disputed domain name from the Complainant or at least prevent the latter of being the owner of the disputed domain name, which represents a bad faith registration of the disputed domain name in this Panel’s opinion.

The Complainant asserts that, though the disputed domain name is not active at this stage it is exploited when using email addresses, FTP access, which also attract emails from the Complainant where a typo is made by the sender while including the dash between the terms “petit” and “bateau”. Nevertheless, there is no evidence provided by the Complainant in this sense.

However, this Panel finds that the fact that the disputed domain name is not active could be qualified as passive holding, together with the other circumstances of the case as the reputation of the Complainant’s trademark and the failure of the Respondent to provide a Response, in this case, in agreement with the consensus view expressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2, and therefore that the Respondent has used and is using the disputed domain name in bad faith.

Moreover, by preventing the Complainant to own and use the disputed domain name, the Respondent is tarnishing the reputation of the Complainant’s trademark, when the Internet user reach a non-active page for a domain name strictly identical to the Complainant’s trademark, which is also indication of bad faith registration and use.

Accordingly, the Panel finds that the Complainant has established also the third element of the Policy.

7. Decision

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, <petit-bateau.ro> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist
Date: November 14, 2012