The Complainant is Deville SA of Baugé, France, represented internally.
The Respondent is Baileys Inc. of Laytonville, California, United States of America.
The disputed domain name <pradines.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2013. On January 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 27, 2013, the Center received an email communication from the Respondent where it sought further information regarding the proceedings (the text of which is reproduced under Section 5.B. below). On January 28, 2013, the Center acknowledged receipt of the Respondent’s email communication.
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 January 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2013. On February 5, 2013, the Center received an email communication from the Respondent in reply to the Complainant’s contentions (the text of which is reproduced under Section 5.B. below). On February 8, 2013, the Center acknowledged receipt of the Respondent’s email communication and reminded the parties that the Response due date was February 18, 2013. No further communications were filed with the Center. The Respondent did not submit any formal response. Accordingly, the Center notified the commencement of panel appointment process to the parties on February 19, 2013.
The Center appointed Leon Trakman as the sole panelist in this matter on February 27, 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.
The Complainant is a French Company, established in the 1960s that manufactures a range of gardening and harvesting tools under the trademark PRADINES. These products are sold across Europe and in the United States, through appointed distributors. The Complainant holds a number of design registrations and has three registered trademarks. The Complainant is the owner of the trademark PRADINES (registered on August 30, 1966 with USPTO).
The Respondent operates a website at “www.baileysonline.com”, that offers for sale a variety of landscaping and gardening tools, including both no name brand and brand name products. However, the Respondent does not offer for sale “pradines” products on its website.
The Respondent registered both the domain name <baileysonline.com> and the disputed domain name <pradines.com> in 1999. The Respondent’s disputed domain name redirects Internet users to its online website “www.baileysonline.com”.
The Complainant contends that the disputed domain name <pradines.com> is identical and confusingly similar to the Complainant’s mark; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant requests, in light of these contentions, that the disputed domain name <pradines.com> be transferred to it.
The only correspondences received from the Respondent were two email communications, dated January 27 and February 5, 2013, in which, respectively, the Respondent requested further information concerning the course and implications of this administrative proceeding, and stated that it sold Complainant’s products via the website at the disputed domain name not as an authorized distributor, on the assumption that it would become a dealer. The Center did not receive any further communication. The Panel hence considers that the Respondent did not formally reply to the Complainant’s contentions.
The disputed domain name <pradines.com> is, if not identical to, confusingly similar to the Complainant’s trademark. Firstly, the word “pradines” to central to both the Complainant’s trademark and the Respondent’s disputed domain name. Secondly, “pradines” is a distinctive word. It is not a descriptive word that is in common use. Thirdly, the word “pradines” is used by the Complainant to market its gardening and harvesting equipment internationally, including in the United States. Fourthly, the Respondent is using the name to direct Internet users searching for “pradines” products online to the Respondent’s website, “www.baileysonline.com”.
The content of the website would usually be disregarded in the threshold assessment of the risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to the assessment of an intention to create and capitalize on confusion among Internet users.
The Panel notes that the Respondent does not, in fact, offer “pradines” tools for sale on its website. The Respondent website “www.baileysonline.com” is itself a distinctive word and is quite different from the word “pradines”. As a result, an Internet user might be confused in being directed to the Respondent’s website in searching for “pradines” gardening or harvesting tools. That Internet user would not find “pradines” tools at that website. Nevertheless, that user may still be confused into believing that the gardening tools being offered for sale on the Respondent’s website are “pradines” tools, whether or not the tools have no brand name or have another brand name. Whether or not Internet users purchase gardening and harvesting tools on the Respondent’s website, or abandon their search for such tools, in both cases in the Panel’s view the Complainant is likely to lose potential customers of its products.
The Panel notes that such confusion may be long-standing, given that the Respondent registered the disputed domain name in 1999. It is also arguable that the Complainant was somehow at fault in failing to address that confusion at an earlier date. However, the conceivable fault of the Complainant in not acting sooner does not negate the likely confusion among Internet users in being directed by the disputed domain name to the Respondent’s website.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. Firstly, there is no evidence adduced that the Respondent has any historical, personal, commercial or other association with the name “pradines”, or with “pradines” gardening and harvesting tools in particular. Secondly, it is clear that the Respondent has no contractual or other legal relationship with the Complainant. Thirdly, the Respondent is not a licensed or authorized distributor of the Complainant’s products, whether or licensed or authorized by the Complainant or a distributor of the Complainant. Fourthly, the Respondent does not appear to be selling “pradines” tools, but the Respondent is selling products which are in competition with the Complainant’s products. Such action by the Respondent does not constitute a bona fide offering of goods and services.
In the absence of any evidence of an existing or pre-existing interests or rights in the disputed domain name, such as having the family name “pradines” or a long-standing business using that name, the evidence provided to this Panel all affirm that the Respondent did not have a right to or legitimate interest in the disputed domain name. The Panel so concludes.
There are several arguments in support of holding that the Respondent registering the disputed domain name in bad faith. Firstly, the Respondent registered the disputed domain name some years after the Complainant had commenced using its trademark. Secondly, the Respondent registered the disputed domain name in 1999 that was confusingly similar to the Complainant’s trademark. Thirdly, the website at the disputed domain name offers gardening tools which are similar to Complainant’s products. In the Panel’s view, it is therefore reasonable to assume that the Respondent was aware at the time of registering the disputed domain name that the Complainant had an established business in the same industry and operated under its trademark.
Whether the Respondent is using the disputed domain name in bad faith is more difficult to determine than bad faith registration. The Respondent is using the disputed domain name to redirect Internet users searching for <pradines.com> to the Respondent’s website “www.baileysonline.com”. In that respect, there is evidence in the Panel’s view that the Respondent is using the disputed domain name in bad faith.
Additionally, the Respondent admitted to having sold Complainant’s products via the website at the disputed domain name “not as an authorized distributor, in the assumption it would become a dealer”, in the Panel’s view, this may be an indication of bad faith use under these specific circumstances. The Panel notes, in any case, that the Respondent was not selling only the Complainant’s products. The fact that the Respondent is using the disputed domain name to redirect Internet users to its website constitutes further evidence of bad faith use.
It is arguable that the Complainant was at fault in failing to act more timeously in disputing the Respondent’s registration of the disputed domain name and in not doing so, as being seen to have acquiesced in it. However, there is no statute of limitations within which a complainant must bring an action under the UDRP.
A delay in bringing a complaint under the UDRP does not of itself prevent a complainant from filing under the UDRP where a complainant can establish a case on the merits under the requisite three elements.
As a result, the Panel concludes the Respondent registered and used the disputed domain name 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 <pradines.com> be transferred to the Complainant.
Leon Trakman
Sole Panelist
Date: March 2, 2013