WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TREDNET, Direct Distribution International Ltd (“DDI”) v. WhoisGuard Namecheap / BODYPOWER

Case No. D2012-2001

1. The Parties

The Complainants are TREDNET, Nice, France, and Direct Distribution International Ltd (“DDI”) of Salisbury Wiltshire, United Kingdon of Great Britain and Northern Ireland, represented by Cabinet Salans, France.

The Respondent is WhoisGuard Namecheap / BODYPOWER of Los Angeles, California, United States of America, represented by Stephen H. Sturgeon, Esquire, United States of America.

2. The Domain Names and Registrar

The disputed domain names <fit-europe.com> and <les-proteines.com> are registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2012. On October 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 15, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 24, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. On the same day, the Center informed the Complainants that, while the Complaint had been submitted in French, the language of the registration agreement was English. As a result, the Center invited the Complainants to provide either satisfactory evidence of an agreement between the parties to the effect that the proceedings should be in French, or submit the Complaint translated in English, or submit a request for French to be the language of the administrative proceedings including arguments and supporting materials to that effect. The Complainants filed an amended Complaint on October 28, 2012 and further requested French to be the language of the administrative proceedings for the reasons pointed out in their Complaint. On November 20, 2012, the Respondent requested the proceedings to continue in English in accordance with the registration agreement.

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 November 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2012. The Response was filed with the Center on December 13, 2012.

The Center appointed Philippe Gilliéron as the sole panelist in this matter on January 21, 2013. 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

DDI carries out its activities related to nutrition supplements under the domain names <fiteurope.com>, registered on April 7, 2004, and <lesproteines.com>, registered on March 19, 2002. It also owns the domain name <lesproteines.fr>, which redirects users towards <lesproteines.com>, since May 18, 2004.

DDI subcontracts its management and order services to TREDNET.

TREDNET holds the French verbal trademark No. 06 3 450 200 FITEUROPE that was registered under classes 5, 9, 16, 29, 30 and 32 of the Nice Classification, with a priority date as of September 13, 2006. It also owns an identical Community Trademark under No. 0005746342 that was registered under classes 5, 9, 16 and 32 of the Nice Classification, with a priority date as of March 9, 2007.

DDI holds the French verbal trademark LESPROTEINES.COM that was registered under classes 5, 9, 16, 29, 30 and 32 of the Nice Classification, with a priority date as of September 13, 2006.

The Respondent registered the disputed domain names <les-proteines.com> on July 18, 2006 and <fit-europe.com> on May 28, 2011, respectively. In spite of the fact that the disputed domain name <les-proteines.com> was registered in 2006, it appears to have displayed an active website only as of May 2010. On September 26, 2012, the French version of the terms and conditions displayed on the websites at the disputed domain names were expressly referring to DDI.

5. Parties’ Contentions

A. Complainant

The Complainants first assert that the disputed domain names are close to identical to Complainant’s trademarks, as they depart from them by the mere addition of a hyphen.

The Complainants then argue that the Respondent has no rights or legitimate interests in the disputed domain names. The disputed domain names have been registered after the Complainants’ trademarks and/or domain names <lesproteines.com> and <fiteurope.com>. The websites at the disputed domain names are directly competing with the ones operated by DDI. The website at the disputed domain name <les-proteines.com> was only launched in May 2010. The Respondent has never been authorized or licensed to use the Complainants’ trademarks and domain names.

The Complainants finally consider that these registrations amount to typosquatting cases, where the Respondent aims to mislead users in making them believe that it would operate as DDI. Bad faith is further submitted to be evidenced by the general terms and conditions displayed on the websites at the disputed domain names which expressly and confusingly refer to DDI. As there is no affiliation between the parties, the Complainants conclude that the disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondent first argues with regard to the disputed domain name <les-proteines.com> that it was registered on July 18, 2006, i.e. prior to the trademark LESPROTEINES.COM that was only registered on September 13, 2006. The Respondent further considers that the terms “les” and “proteines” being common generic terms cannot be monopolized by anyone.

The Respondent further states that it was already using the disputed domain names for the sale of proteins and the marketing of fitness products in Europe prior to having received any notice of the dispute, in accordance with Policy, paragraph 4(c).

The Respondent considers that the Complainants did not provide any evidence that the disputed domain names would have been registered and used in bad faith.

Finally, the Respondent requests the Panel to deny the remedies requested by the Complainants and to make a finding of reverse domain name hijacking.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this 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”.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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.

A. Procedural issues

a) Complainants

The Complaint has been filed by two distinct entities. While TREDNET is the trademark holder of the trademark FITEUROPE, DDI holds the trademark registration for LESPROTEINES.COM and is said to operate the domain names <lesproteines.com> and <fiteurope.com>.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16 (and quoted decisions): “In order for the filing of a single complaint brought by multiple complainants or against multiple respondents […], such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met”. These criteria require the complainant to demonstrate that: “(i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation”.

In the present case, the Complainants have alleged that they have a common grievance against the Respondent, resulting from the registration of the disputed domain names. The Panel notes that both Complainants hold relevant trademark rights and Complainants have submitted that they have common interest and are doing business together. The Panel further notes that these two companies have the same managing director.

In the circumstances, the Panel agrees to consider both Complainants as co-complainants in these proceedings.

b) Language of the proceedings

Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, the language of the administrative proceeding shall be the language of the registration agreement.

In the present case, the Complainants do not contest the fact that the language of the registration agreement in English. They however consider that as the websites at the disputed domain names are displayed in French, the Respondent may be considered familiar with the French language. Accordingly, the Complainants request the proceedings to be held in French.

On November 20, 2012, the Respondent, being located in the United States of America, requested that proceedings be held in English, in accordance with paragraph 11 of the Rules.

The Panel notes that the Respondent has submitted a full Response in English in reply to the French Complaint. The Panel further notes that the websites at the disputed domain names have been displayed in French. In the circumstances, the Panel will allow the Complaint filed in French and the Response filed in English and, absent any agreement between the parties, renders the decision in English in accordance with paragraph 11 of the Rules.

B. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainants have to prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights.

The Complainant TREDNET proves to be the holder of a verbal trademark consisting of the word FITEUROPE. DDI has demonstrated to be the holder of a verbal trademark registration for LESPROTEINES.COM. The Complainants have submitted that they have a common grievance against the Respondent. The Panel further notes that DDI is the holder of the domain names <lesproteines.com> and <fiteurope.com> for common business purposes for TREDNET and DDI, and that these companies have the same managing director. In the absence of a rebuttal from the Respondent, the Panel is prepared to consider that both Complainants have rights to a trademark in accordance with paragraph 4(a)(i) of the Policy for the purposes of the present proceeding.

UDRP panels agree that incorporating a trademark into a domain name may be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purposes of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).

The fact that the trademark LESPROTEINES.COM was registered after the disputed domain name <les-proteines.com> is irrelevant under the first element of the Policy. According to the WIPO Overview 2.0, paragraph 1.4, “Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired right”.

The mere addition of a hyphen being insufficient to exclude the likelihood of confusion resulting from the entire capture of the Complainants’ trademarks in the disputed domain names, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.

C. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainants have to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names.

As stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview 2.0).

Here, TREDNET and DDI have demonstrated to be the holders of the FITEUROPE and LESPROTEINES.COM trademarks, respectively. The Complainants have no business or relationship with the Respondent. On the record, the Panel finds that the Complainants have made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain names.

Consequently, it is for the Respondent to demonstrate rights or legitimate interests in the disputed domain names. In the present case, the Respondent argues, based upon the Policy, paragraph 4(c) that it was already using the disputed domain names with a bona fide offering of goods prior to having had its attention drawn upon the dispute by the Complainants, and that the disputed domain names were “utilized for in connection with the relied-upon meaning of the dictionary term, i.e., the domain name was utilized to market proteins and fitness products in Europe”.

The Panel finds these arguments unpersuasive on the record. While the Panel notes that the disputed domain name <les-proteines.com> was registered prior to DDI’s corresponding trademark, the disputed domain name seems to have displayed content relatively late, sometime in May 2010. The Panel further notes that the Complainant has asserted to have registered and been doing business with its <lesproteines.com> domain name since 2002. Furthermore, the Respondent has not come forward with any convincing explanation as to why, in spite of being located in the United States, it decided to register the domain name <fit-europe.com>, or the <les-proteines.com> domain name consisting of French terms directing to a French website, and referring to the Complainant DDI under its Terms and Conditions. Such express reference to the Complainant DDI on both of the Respondent’s websites has not been addressed by the Respondent in its Response. This, in the Panel’s opinion, is a clear indication that the use of the disputed domain names can not be considered to be bona fide offering of goods.

Consequently, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.

D. Registered and Used in Bad Faith

For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

Typically, bad faith requires the respondent to be aware of the complainant’s trademarks at the time of registration of the disputed domain name. In the present case the Panel considers that the Respondent was fully aware of the Complainants’ trademarks. (See paragraph 3.1 of WIPO Overview 2.0: “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?”, and the decisions cited therein.) The Respondent did not present any convincing explanation as to why it decided to register the disputed domain name <les-proteines.com> and to refer to DDI at the corresponding website. The disputed domain name <fit-europe.com> was registered some five years after TREDNET registered its trademark FITEUROPE and some seven years after the Complainant had registered its domain name <fiteurope.com>. The Panel notes that the Respondent has referred to DDI also at the corresponding website at the disputed domain name <fit-europe.com>.

Considering the overall circumstances, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Panel finds that the disputed domain names have been registered and are being used to attract Internet users to the Respondent’s websites for commercial gain, by creating a likelihood of confusion and leading, with express reference to DDI, Internet users to believe that the Respondent’s websites are operated by or are affiliated with the Complainants.

While the use of a privacy shield cannot be considered in itself as use in bad faith, once connected with additional elements, it clearly points towards a registration and use in bad faith (see Jay Leno v. St Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571). The Panel finds that to be the case here.

Consequently, the Panel is of the opinion that the disputed domain names <fit-europe.com> and <les-proteines.com> have been registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

The Complainants prevailing in this case, the request made by the Respondent for the Panel to make a finding of reverse domain name hijacking is denied.

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 names <fit-europe.com> be transferred to TREDNET, and <les-proteines.com> be transferred to DDI.

Philippe Gilliéron
Sole Panelist
Date: February 5, 2013