WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pole 3D v. Trademark Works LLC

Case No. D2010-1756

1. The Parties

The Complainant is Pole 3D of Roubaix, France, represented by BRM AVOCATS, France.

The Respondent is Trademark Works LLC, of Seong nam, Kyung gi, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <pole3d.com> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2010. On October 18, 2010, the Center transmitted by email to Wild West Domains, Inc. request for registrar verification in connection with the disputed domain name. On the same date, Wild West Domains, Inc. 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 October 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for response was November 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2010.

The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on November 30, 2010. 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 Pole 3D is a French school of higher education on computer graphics established in 2003.

The Complainant owns a French trademark registration for POLE III D ECOLE SUPÉRIEURE D’INFOGRAPHIE, Reg. No. 3.753.226, granted on July 12, 2010 and has rights on the name POLE3D since the company was established on June 20, 2003.

The Respondent registered the disputed domain names <pole3d.com> on April 22, 2010.

5. Parties’ Contentions

A. Complainant

The Complaint contends the following:

The Complainant contends that it is a French school of higher education on computer graphics and that it wants to spread its activities internationally, by proposing trainings to foreign students.

Moreover, the Complainant contends that it owns a French trademark registration for POLE III D ECOLE SUPÉRIEURE D’INFOGRAPHIE, Reg. No. 3.753.226, granted on July 12, 2010 and that it has rights on the name POLE3D since the company was established on June 20, 2003.

Furthermore, the Complainant contends that the domain name <pole3d.com> reproduces almost identically the trademark POLE III D ECOLE SUPÉRIEURE D’INFOGRAPHIE on which the Complainant has rights.

On the other hand, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

In addition, the Complainant contends that the website associated to the disputed domain name resolves to a so called “parking” page on which it is indicated that the disputed domain name <pole3d.com> may be for sale and that the Respondent has offered to sale the disputed domain name to the Complainant for no less than USD 15.000.

Moreover, the Complainant contends that the Respondent registered the domain name for the sole purpose of selling it to the Complainant or to a competitor of the Complainant, what would evidence bad faith registration.

In that connection, the Complainant contends that the Respondent has been trying to sell the disputed domain name through “www.acquirethisname.com” and that the Respondent has offered to sale the disputed domain name to the Complainant for no less than USD 15.000.

Finally, the Complainant contends that the Respondent is preventing the Complainant from extending its activities internationally by blocking the “.com”, what would account to blackmail.

In light of the foregoing, the Complainant requests that the dispute domain name <pole3d.com> be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

For the Complainant to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove 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.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant owns a French trademark registration for POLE III D ECOLE SUPÉRIEURE D’INFOGRAPHIE, as noted under Section 4, “Factual Background” above, in which the Panel finds that the term POLE III D is the most distinctive term.

The disputed domain name <pole3d.com> incorporates POLE3D in its entirety. The Panel also finds that the term POLE3D is confusingly similar to the term POLE III D being the only difference among them the fact that number 3 is written in roman numerals, in one of them, and in Arabic numerals, in the other.

In view of the foregoing, the Panel finds that the disputed domain name <pole3d.com> is confusingly similar to a trademark in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.

Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then demonstrate its rights or legitimate interests in the disputed domain name with concrete evidence in order to refute the prima facie case.

The Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests, so the burden of proof has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.

Moreover, and on the basis of the printouts of the website to which the disputed domain name resolves, the Complainant has proved to the Panel’s satisfaction that the websites to which the disputed domain name resolve offers competing services to those offered by the Complainant. In the terms of the Policy, such use in the present circumstances does not appear to be a fair or noncommercial use of the disputed domain name and, therefore, the Panel finds that the Respondent is trying to misleadingly divert consumers to the websites to which the disputed domain name resolve.

Additionally, there is no evidence that the Respondent is commonly known as or identified by “Pole3d”, or that it has any rights in them. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.

For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the disputed domain name has been registered and is being used in bad faith.

The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.

The Complainant has identified itself as a French school of higher education on computer graphics, established in 2003.

Moreover, as previously noted, the Complainant has filed relevant evidence to the Panel’s satisfaction showing that it owns a French trademark registration for POLE III D ECOLE SUPÉRIEURE D’INFOGRAPHIE, Reg. No. 3.753.226, granted on July 12, 2010.

However, the registration of the disputed domain name <pole3d.com>, on April 21, 2010, predates the Complainant’s registration of the trademark POLE III D ECOLE SUPÉRIEURE D’INFOGRAPHIE.

In that connection, the Complainant alleges that it owns unregistered trademark rights on POLE3D. Such rights would arise from the use of POLE3D as a trademark and trade and corporate name of the Complainant.

It has become generally accepted under the Policy that in order to show trademark rights over a name that has not been registered as a trademark, the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction¹.

In line with the above, the Panel finds that the Complainant has presented relevant evidence at the Panel’s satisfaction showing that the Complainant has used, at least since 2003, the name POLE3D as an unregistered trademark identifying the services offered by the Complainant and, therefore, it constitutes an unregistered trademark in which the Complainant has rights in the terms of the Policy.

In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademark of the Complainant before registering the disputed domain name <pole3d.com>, which evidences bad faith registration.

Moreover, on the basis of the printouts of the website to which the disputed domain name resolves, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain name as a pay-per-click website, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement.

For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain names in bad faith and that the Complainant has therefore made out the third element of the case.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <pole3d.com> be transferred to the Complainant.

Miguel B. O'Farrell
Sole Panelist
Date: December 9, 2010

¹ WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 1.7