The Complainant is G.F.P. limited company of Chartres, France, represented internally.
The Respondent is Whoisproxy.com Ltd. of Auckland, New Zealand / Director Galib Gahramanov, G Domains of Baku, Azerbaijan.
The disputed domain name <xn--plansant-i1a.com> is registered with Key-Systems GmbH dba domaindiscount24.com (“the Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2012. On July 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2012, 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 July 18, 2012 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 July 19, 2012.
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 July 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2012.
The Center appointed Marilena Comanescu as the sole panelist in this matter on August 15, 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.
The Complainant, which is a French insurance company, is the holder of the French word mark for PLANSANTÉ No. 53376433 registered since August 12, 2005 for services in classes 35, 36, 38 and 42. Also, the Complainant operates its official website at “www.plansante.com”.
The disputed domain name was registered on July 8, 2011.
From the Panel’s searches1, the Respondent Galib Gahramanov had registered several other domain names incorporating third parties trademarks and it was involved in five other UDRP procedures as respondent, all used for sponsored links and decided in the favor of the complainants (see Merck KGaA v. c/o whoisproxy.com Ltd / Galib Gahramanov, G Domains, WIPO Case No. D2011-1271 for the domain name <merckde.com>; M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Galib Gahramanov, WIPO Case No. D2012-1249 for the domain name <initimissimi.com>; International Bancshares Corporation v P-GTG1502 / G Domains / Galib Gahramanov, NAF Claim No. 1407423 for the domain name <ibcbanklogin.com>; Transamerica Corporation v G Domains / Director Galib Gahramanov, NAF Claim No. 1433703 for the domain name <transamericannuities.com>; and Baylor University v G Domains c/o Director Galib Gahramanov, NAF Claim No. 1442941 for the domain name <mybaylorlogin.com>).
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:
(i) The disputed domain name <plansanté.com> is identical to its trademark PLANSANTÉ:
The Complainant owns registration for PLANSANTÉ trademark in France since 2005 and for the corresponding domain name <plansante.com> since 2002.
The disputed domain name is identical to Complainant’s trademark and confusingly similar to its domain name since the only difference between the disputed domain name and Complainant’s domain name is the acute accent on the last letter of the word “plansanté”.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Respondent uses the disputed domain name for a website that displays automatic listings without having a real business activity. In the same time, such website does not refer to any entity or service containing the name “plansanté”.
(iii) The disputed domain name was registered and is being used in bad faith:
Since on the website corresponding to the disputed domain name there is no real activity, the Complainant asserts that the disputed domain name was registered in order to prevent it from reflecting its mark in a corresponding domain name. Further evidence of bad faith is the lack of contact information on the website accessed via the disputed domain name, the failure to respond to Complainant’s letter sent prior to commencing the present proceeding and the use of a proxy registration service.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent does not have rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
The Respondent’s failure to respond does not automatically result in a decision in the favor of the Complainant, the latter must establish each of the three elements provided by paragraph 4(a) of the Policy, above listed.
Consequently, the Panel shall further analyze the eventual concurrence of these circumstances in the present case.
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trademark, and, if so, that the domain name is identical or confusingly similar to its mark.
The Complainant has rights in the PLANSANTÉ trademark holding a national French registration since 2005.
The disputed domain name reproduces the Complainant’s trademark in its entirety, including the specific French language characters such as the acute accent mark over the letter “e”.
Furthermore, the Complainant operates under a very similar domain name, <plansante.com>, the only difference being the accent on the last letter in the disputed domain name.
It is well established in decisions under the UDRP that indicators for generic top-level domains (e.g. “.com”, “.info”, “.net”, “.org”) are irrelevant to the consideration of confusing similarity between a trademark and a domain name.
For all the above, the Panel finds that the disputed domain name <plansanté.com> is identical to the Complainant’s PLANSANTÉ trademark.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is identical to its trademark, pursuant to the Policy, paragraph 4(a)(i).
The Complainant has provided a prima facie case under this element of the Policy showing that it has rights in the PLANSANTÉ trademark and, from its assertions, the Panel concludes that the Complainant had no relationship with the Respondent and has not granted the Respondent any right to register and use its trademark. Therefore, in line with the UDRP precedents, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.
The Respondent failed to submit any response in the present procedure and did not react to the Complainant’s letter, which was sent prior to commencing the present proceeding. The silence of the Respondent may support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name.
In fact, at the time of filing the Complaint, the Respondent was using the disputed domain name containing the Complainant’s trademark protected for insurance services and others included in classes 35, 36, 38, 42 in connection to a “link farm”, a website offering sponsored links for the promotion of various services containing, inter alia, insurance services. The pay-per-click (PPC) website would not normally fall within the bona fide use principles where such websites seek to take unfair advantage of the value of a trademark (See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
The Panel agrees that a registrant may have legitimate reasons to use a privacy service. On the other hand it may do so in an attempt to evade contact in the event of a domain name dispute (see also TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542). In the present case, along with the rest of the evidence before the Panel, such use falls most likely in the second hypothesis.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain name.
When assessing the bad faith in the registration requirement, the following should be considered (1) whether the Respondent knew of the Complainant and its trademark, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (see Avon Products, Inc. v. Mary Ultes, WIPO Case No. D2009-0471).
The Complainant’s PLANSANTÉ trademark is protected since 2005 and the corresponding website is operated since 2002.
The disputed domain name <plansanté.com> was registered in July 2011 and incorporates the Complainant’s trademark, written in the specific French language characters.
Last but not least, given the history of precedents involving the Respondent Galib Gahramanov, the Panel concludes that the Respondent was familiar with the Complainant’s field of activity and its trademark at the time of registering the disputed domain name, and the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark.
Paragraph 4(b)(ii) of the Policy lists the situation when the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct. Paragraph 3.3 of the WIPO Overview 2.0 explains what a pattern of conduct involves multiple UDRP cases with similar fact situations.
Here, the Complainant refers to such paragraph but does not mention nor provide evidence of the Respondent’s corresponding pattern of conduct. However, from the Panel’ searches, it occurs that indeed the Respondent Galib Gahramanov has been involved in another five UDRP cases, as listed above under Section 4. Factual Background. All of these cases were similar situations: domain names incorporating third parties trademarks used in connection to link farms.
Further, the Respondent is using the Complainant’s trademark for a web portal, the classic method to generate financial gain via the pay-per-click or click-through device, whereby the operators of other websites pay a commission to the Respondent for traffic redirected to them.
Paragraph 4(b)(iv) provides that the use of a domain name to intentionally attempt “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 respondent’s] website or location” is evidence of bad faith.
Given the fact that the disputed domain name reproduces exactly the Complainant’s trademark and is almost identical to the Complainant’s official website (“www.plansante.com”), indeed in this Panel’s view, an Internet user accessing the website corresponding to the disputed domain name <plansanté.com> and on which webpage are listed links providing services in connection with the Complainant’s activities may be confused and believe that it is a website held, controlled by the Complainant, or somehow affiliated or related to it. In this way, the Respondent is obtaining commercial gain by diverting Internet users searching for the Complainant and, in the same time, is disrupting the business of the Complainant by diverting its potential consumers to websites of the Complainant’s competitors.
Furthermore, according to the consensus view of the UDRP Panels (see paragraph 3.9 of the WIPO Overview 2.0), although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. The registrant’s use of a privacy service in combination with provision of incomplete contact information to such service may be indicative of bad faith registration and use. In the present case, the hard copy transmittals (Written Notice) could not be delivered to the Respondent as the address was inaccurate and thus, along with the rest of the evidence before the Panel, may be inferred that the Respondent’s intention was to conceal its true identity and therefore represents another evidence of bad faith registration and use of the disputed domain name.
The Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark and therefore reinforces this approach. See also Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., supra.
For all these reasons, the Panel finds that the third element of the Policy is established on the record in these proceedings, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <xn--plansant-i1a.com> be transferred to the Complainant.
Marilena Comanescu
Sole Panelist
Dated: August 21, 2012
1 As to the legitimacy of the Panel doing so, see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").