The Complainant is Pernod Ricard of Paris, France, represented by Alain Bensoussan SELAS, France.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama, Panama / Kouakou Kouadio of Agneby, Côte d'Ivoire.
The disputed domain name <pernad.com> is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2014. On September 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 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 September 16, 2014 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 amended Complaint on September 26, 2014.
On September 16, 2014 the Center sent an email communication to the parties regarding the existence of other legal proceedings raised by the Complainant in the Complaint, stating: “While there is no other pending proceedings initiated by the Complainant requesting the transfer or cancellation of the domain name <pernad.com> and containing arguments on trademark infringement, pending criminal proceedings against unknown persons have been initiated before Créteil French courts by PERNOD SA, affiliate of the Complainant as explained in paragraph 12 A), due to use of the website “www.pernad.com” and the grounds of the claim are (i) counterfeiting of the website “www.pernod.com”, (ii) misused identity, (iii) collection of personal data and (iv) violation of an automated entry processing system.”
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2014.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on October 27, 2014. 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.
The Complainant has submitted evidence that it is the owner of a number of trademark registrations in numerous countries for PERNOD, including the following:
International trademark PERNOD with registration No. 309674, registered on March 3, 1966;
International trademark PERNOD with registration No. 823612, registered on March 22, 2004;
French trademark PERNOD with registration No. 1391235, registered on January 27, 1987;
Community trademark PERNOD with registration No. 004660846, registered on
September 29, 2005;
Community trademark PERNOD with registration No. 003489549, registered on October 30, 2003;
US trademark PERNOD with registration No. 3001155, registered on September 27, 2005;
US trademark PERNOD with registration No. 0544243, registered on July 16, 1948;
US trademark PERNOD with registration No. 2966890, registered on July 12, 2005;
French trademark PERNOD ENTREPRISE with registration No. 023160588, registered on September 23, 2002;
Panama trademark PERNOD with registration No. 134528, registered on October 21, 2004; and
Panama trademark PERNOD with registration No.134527, registered on October 21, 2004.
The disputed domain name <pernad.com> was registered on July 20, 2014.
The Complainant was founded in 1975 when Richard, SA and Pernod, SA merged. Today the Complainant operates through 80 affiliates with nearly 19,000 employees. The PERNOD trademark enjoys solid reputation around the world for its aniseed liquor. The “Pernod” spirit is produced by Pernod, SA, a company wholly owned by the Complainant and exclusive licensee of the trademark PERNOD.
The disputed domain name <pernad.com> is confusingly similar to the trademark PERNOD. The words “pernod” and “pernad” are very close, both phonetically and visually. The words do not have a meaning.
The Respondent has to be considered as having no rights or legitimate interests in respect of the disputed domain name. There is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Respondent has not been commonly known by the disputed domain name. The Complainant’s searches in the TMview database indicate that the Respondent does not own any PERNOD or PERNAD trademark. The Respondent is making an illegitimate commercial use of the disputed domain name with intent for commercial gain, to mislead and divert consumers and tarnish the Complainant’s trademark. The Complainant believes that the Respondent is a former sales representative for the Complainant on the Ivory Coast.
The disputed domain name has to be considered as having been registered and used in bad faith by the Respondent. The Respondent is using the disputed domain name for a “mirror website” of the Complainant’s official website “www.pernod.com”. The Respondent has created a copy of the Complainant’s website. The only difference between the websites is that the trademark PERNOD has been replaced with “pernad”. Thus, the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant.
By using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website 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 of a product or service on the Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
According to the submitted evidence, the Complainant is the owner of the registered trademark PERNOD. The disputed domain name <pernad.com> differs from the Complainant’s mark PERNOD by only one letter. Merely creating a visually equivalent domain name by substituting the letter “o” with the letter “a” is not sufficient to differentiate the trademark from the disputed domain name in this case. This is a typical case of “typosquatting” whereby a domain name holder seeks to attract to its website users who might make a mistake in typing out the wording of a trademark in the search process.
Having the above in mind, the Panel concludes that the disputed domain name <pernad.com> is confusingly similar to the Complainant’s trademark PERNOD and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or
(iii) that it makes a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registration for PERNOD predates the Respondent’s registration of the disputed domain name <pernad.com>. The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the trademark in the disputed domain name.
Although given the opportunity, the Respondent has not submitted any evidence in this case to demonstrate that the Respondent made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Furthermore, the Respondent has not submitted any evidence to demonstrate that the Respondent owns trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.
The evidence in the case demonstrates that the Respondent used the disputed domain name to redirect Internet users to a mirror website which is a copy of the Complainant’s website. The Respondent has copied and reproduced the Complainant’s graphics and texts. The only difference between the two websites is that the trademark PERNOD has been replaced with “pernad” on the Respondent's website. Thus, there is no evidence demonstrating that the Respondent is making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
By not submitting a response, the Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The Complainant’s trademark registration for PERNOD predates the Respondent’s registration of the disputed domain name <pernad.com>.
The Complainant has submitted evidence indicating that the disputed domain name, which is confusingly similar to the Complainant’s registered trademark, is directed to a website which is a copy of the Complainant’s official website, save for the spelling of the trademark. The Respondent has replaced the trademark PERNOD with “pernad”.
Thus, the evidence in the case before the Panel indicates that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.
There is no evidence in the case record that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraphs 4(b)(i) and 4(b)(iv) of the Policy and that the disputed domain name <pernad.com> has been registered and is being used in bad faith.
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 <pernad.com> be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: November 12, 2014