The Complainant is Société Anonyme des Eaux Minérales d'Evian (SAEME) of Evian-les-Bains, France, represented by Dreyfus & associés, Paris, France.
The Respondent is Nadex Aktiebolag of Järfälla, Sweden.
The disputed domain name <wwwevian.com> is registered with Active 24 ASA.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2010. On March 3, 2010, the Center transmitted by email to Active 24 ASA a request for registrar verification in connection with the disputed domain name. On March 4, 2010, Active 24 ASA. 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”).
On March 19, 2010, the Center issued a Language of Proceeding Notification in Swedish and English, inviting comments from the Parties. On the same day, the Complainant confirmed that it had already submitted in the Complaint a request that English be the language of the proceedings. The Respondent did not respond to the Center's Language of Proceeding notification.
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 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 16, 2010.
The Center appointed Christian Schalk as the sole panelist in this matter on April 27, 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.
The Panel has reviewed the record and confirms the Complaint's compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The Center has accepted the Complaint in English and has invited the Respondent to file its Response either in English or in Swedish. Since the Respondent has not filed a response and since all the communications from the Center have been submitted in English and Swedish, the Panel decides to write the decision in English.
The Complainant is a French producer of mineral water which is well known in many countries of the world. The first authorisation to bottle water from the Evian stream in the French Alps dates back to 1826. More than 8 million bottles were sold already in 1901. Today, more than 1.7 billion bottles are sold every year under the trademark EVIAN in 142 countries on 5 continents. In this context, the Panel is aware of the fact that Complainant's EVIAN water bottles can be found in nearly any European supermarket and other stores offering mineral water. In addition, the Complainant markets also beauty and healthcare products, for instance, skin care products such as sprays, cares and moisturizers under the trademark EVIAN.
The Complainant owns a number of trademarks which contain the term EVIAN, for instance,
- International Trademark No. 235956 EVIAN (word mark), registered on September 24, 1960, covering goods and services in Int. classes 32 and 35;
- International Trademark No. 764063 EVIAN (word mark), registered on April 18, 2001, covering goods and services in Int. class 38;
- International Trademark No. 855738 EVIAN (word mark), registered on June 6, 2005, covering goods and services in Int. classes 41, 43 and 44;
- International Trademark No. 764050 EVIAN (word and device mark), registered on May 18, 2001, covering goods and services in Int. classes 3, 16, 18, 25 and 32;
- International Trademark No. 860678 EVIAN (word and device mark), registered on June 6, 2005, covering goods and services in Int. classes 41, 43 and 45;
- European Community Trademark No.001422716 EVIAN (word mark), registered on September 18, 2006, covering goods and services in Int. classes 3, 18 and 32;
- European Community Trademark No.001390558 EVIAN (word and device mark), registered on June 20, 2002, covering goods and services in Int. classes 3, 5 and 32;
- Swedish Trademark No. 235956 EVIAN (word mark), registered on September 24, 2000, covering goods and services in Int. classes 32 and 33;
The Complainant owns also several domain names which contain the term EVIAN, for instance, <evian.com>, registered on May 14, 1997 and <evian.net>, registered on February 21, 1998.
The Respondent registered the disputed domain name on July 13, 2009. The disputed domain name at some point directed to a parking page.
On November 16, 2009, the Complainant, through its lawyer, sent a cease and desist letter to the Respondent by registered mail and via e-mail. Although several reminders were sent, the Respondent never replied.
The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant argues that the disputed domain name reproduces or at least strongly imitates the Complainant's trademark EVIAN in its entirety. In this context the Complainant argues that several panels have decided already that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the registered trademarks of a complainant. In this context, the Complainant cites AT&T Corp.v. William Gormally, WIPO Case No. D2005-0758 and ACCOR c. Lee Dong Youn, WIPO Case No. D2008-0705.
The Complainant argues further also that the mere addition of the letter combination “www” in the disputed domain name is not sufficient to avoid the risk of confusion with the Complainant's trademark. The Complainant explains that such an adjunction causes confusion between the disputed domain name and the trademarks of the Complainant and that such a prefix has been deemed common among so-called “dot-squatters” who try to take advantage of the fact that Internet users often fail to insert a period between the commonly-used World Wide Web prefix and the remainder of the domain name. The Complainant cites Master Card International Incorporated v. DL Webb, WIPO Case No. D2008-0324 to support its arguments.
The Complainant submits also, that the Respondent has no rights or legitimate interests in respect to the disputed domain name.
The Complainant explains that the Respondent is neither affiliated with the Complainant nor has he been authorized to register and use the Complainant's EVIAN trademark, nor to seek registration of any domain name incorporating said mark.
The Complainant believes further that the Respondent has no prior rights or legitimate interests in the disputed domain name since the registration of the numerous EVIAN trademarks of the Complainant preceded the registration of the disputed domain name and because the Respondent is not known under the disputed domain name.
In this context, the Complainant reports also that it had sent a cease and desist letter to the Respondent before filing the Complaint to which to the Respondent never replied. Therefore, the Complainant believes that if the Respondent had legitimate interests in the disputed domain name, it would vigorously defend its rights by responding immediately to the Complainant's cease and desist letter. To support its arguments, the Complainant cites GEA AG v. Josue da Silva, WIPO Case No. D2003-0727. The Complainant argues further that the Respondent could not reasonably pretend that it was attempting to engage in a legitimate activity when it registered the disputed domain name since it reproduces or at least imitates the Complainant's well known marks. Also the fact that the disputed domain name was directed by the Respondent initially towards a parking page and then directed to the Complainant's official website only after the Complainant had sent the cease and desist letter illustrates the lack of legitimate interest in the view of the Complainant.
The Complainant submits further that the domain name has been registered and is being used in bad faith.
The Complainant believes that the Respondent knew or must have known the Complainant's trademark. It explains that the trademark search at the date of the registration of the disputed domain name would have revealed the Complainant's trademark registrations. The fact that the disputed domain name constitutes a case of typo squatting shows that the Respondent had the Complainant's trademarks in mind. The Complainant believes that the only intention of typo squatting is, to take advantage of common mistakes of Internet users, which often leave out the dot after the letters “www”. The Complainant cites SurePayroll, Inc. v. Web Advertising, Corp., WIPO Case No. D2007-0470 and Swarowski A.G. v. Modern Empire Internet Ltd., WIPO Case No. D2006-0148 to support its arguments.
The Complainant contends further, that the disputed domain name is also used in bad faith. The Respondent never responded to the Complainant's cease and desist letter, where nothing indicated that the Respondent has never received it. Therefore, the Complainant believes that the only reason why the Respondent redirected the disputed domain name to the official website of the Complainant was, that it received the Complainant's cease and desist letter. It is the Complainant's opinion that such behaviour creates confusion among consumers regarding the real registrant of the disputed domain name since Internet users may believe that the Complainant is also the owner of this domain name. Given the fact that the concept of a domain name “being used in bad faith” is not limited to positive action but includes also inaction and given all the circumstances of the present case, the Complainant believes that the Respondent is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
The Panel shall decide a 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 it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the complainant has proven that each of the following three elements is present:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has established trademark rights in the term EVIAN. As it has been decided by previous panels, the mere addition of the generic acronym “www” does not eliminate the confusing similarity between a complainant's marks and a domain name (see e.g. LEGO Juris A/S v. Bladimir Boyiko, WIPO Case No. D2009-0437; The Nasday OMX Group, Inc. v. Eli Shoval, WIPO Case No. D2009-0185; Aktiebolaget TeliaSonera AB v. Blossom Holdings Ltd., WIPO Case No. D2009-0617). Such behaviour has been cited as a common practice of so-called “typo-squatters” who try to take advantage of the fact that Internet users fail to insert a period between the World Wide Web prefix and the remainder of the domain name (see, for instance, MasterCard International Incorporated v. DL Webb, WIPO Case No. D2008-0324; Reuters Limited v Global Net 2000, Inc., WIPO Case No. D2000-0441). Furthermore, the “.com” suffix in the disputed domain names does not affect the determination that the disputed domain name is nearly identical with the term EVIAN in which the Complainant has trademark rights (see also: Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., ( WIPO Case No. D2001-0936), Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 with further references).
For all these reasons the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.
According to the material brought before the Panel, and in the absence of a Response to the Complaint, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, there is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant granted the Respondent a license to use its trademark.
The Respondent has also not rebutted to the Complainant's allegations on the Respondent's lack of rights and legitimate interests and has not provided the Panel with any explanations as to whether this is the case or not or whether there are indeed legitimate reasons for the choice of the domain name. On the contrary, the Respondent had directed the disputed domain name to a parking page and later redirected it to the Complainant's official website only after the Complainant had sent a cease and desist letter to it. Therefore, as it has been stated by panels in previous cases, the Respondent must bear the consequences of this lack of information and in the light of the other information provided by the Complainant which raises serious doubts as to the legitimacy of the Respondent's registration of the disputed domain name, the Panel finds that the requirement of Paragraph 4(a)(ii) is also met (see also GEA AG v. Josue da Silva, supra).
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non-exclusive criteria for the Complainant to show bad faith registration and use of domain names:
(1) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark 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
(2) the respondent has registered the domain name in order to prevent the owner of the trademark 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
(3) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a well-established principle under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that the domain name registrant represents and warrants to the registrar that, to its knowledge the registration of the domain name will not infringe the rights of any third party.
Given the high reputation of the Complainant, its world wide market presence and therewith also in the Sweden where the Respondent lives and especially the fact that its products are available in all major supermarkets and all other kind of stores which sell mineral water, the Panel finds that the Respondent was well aware of the Complainant's trademark when it registered the disputed domain name (see, Liseberg AB v. Administration Local Manage Technical, WIPO Case No. D2003-0864). Therefore, the Panel believes that the Respondent registered the disputed domain name in bad faith.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith.
The Respondent registered the disputed domain name which is nearly identical with domain names of the Complainant, especially, with the Complainant's domain name <evian.com>. Leaving the dot between the letter combination “www” and the domain name is a typical typing error which happens frequently to Internet users when they are typing in a domain name in the Internet browser field. Therefore, the Panel is convinced that the Respondent registered the disputed domain name, to take advantage of such typical typing errors in order to direct innocent Internet users to its parking site offering competing products. Such behaviour frustrates Internet users which are unaware of their typing error and therefore expect to reach the Complainant's official website. The consequence can be that Internet users start then to search for goods and services of the Complainant's competitors.
The fact that the Respondent has not transferred the disputed domain name to the Complainant after receipt of the Complainant's cease and desist letter but holds the disputed domain name passively and only redirected it to the Complainant's official website has no impact on the Panel's finding of bad faith use in this case.
As it has been stated already by the panel in the case Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, passive holding can in certain circumstances constitute bad faith use of a domain name. Similar circumstances are present in this case. That the Complainant's EVIAN mark has a notorious world wide reputation and is widely known in many countries of the world. The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name. Furthermore, several panels have decided in previous cases that typo squatting per se may be sufficient to establish registration and use in bad faith under paragraph 4(a)(iii) of the Policy (SurePayroll, Inc. v. Web Advertising, Corp., and Swarowski A.G. v. Modern Empire Internet Ltd., supra).
Given all facts and circumstances of this case, the Panel finds therefore, that the disputed domain name has been registered and is being used in bad faith.
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 <wwwevian.com> be transferred to the Complainant.
Christian Schalk
Sole Panelist
Dated: May 11, 2010