Complainant is La Fee of Mably, France, represented by Cabinet Germain & Maureau, France.
Respondent is Pavol Icik / Privacy Protect of Bratislava, Slovakia, and Shanghai, China, respectively.
The disputed domain name <lafeemaraboutee.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2013. On March 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2013, 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 Complainant on March 20, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 21, 2013.
On March 20, 2013, the Center transmitted an email to the parties in both Slovak and English language regarding the language of proceedings. On March 21, 2013, Complainant confirmed its request that English be the language of proceeding. Respondent did not comment on the language of proceedings by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on March 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 17, 2013.
The Center appointed Gary J. Nelson as the sole panelist in this matter on May 1, 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.
Complainant is the owner of at least one European Community Trademark Registration for LA FEE MARABOUTEE. Specifically, Complainant owns at least the following trademark registration:
|
Country/Territory |
Reg. no. |
Mark |
Classes |
Date of Registration |
|
European Community |
002690683 |
LA FEE MARABOUTEE |
09, 18, 25 |
September 23, 2003 |
The disputed domain name appears to have been registered on October 18, 2006. The operational website at <lafeemaraboutee.com> resolves to an active website that offers click-through opportunities to numerous websites. Several of these websites feature clothing and clothing related products and offer these products for sale.
The disputed domain name <lafeemaraboutee.com> is identical to Complainant's LA FEE MARABOUTEE trademark.
Complainant was founded in 1996 and is a wholesaler and retailer of women's fashion, offering a wide variety of products through a wholesale network which includes over 850 multi-brand retailers in France and a further 850 internationally, as well as a store network of 90 outlets which includes owned stores, affiliates and franchisees.
Complainant is positioned as a mid-high end brand, appealing to women aged between 30-50 for both formal and casual wear.
Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent's use of the disputed domain name is a bona fide offering of goods or services. Respondent is using the disputed domain name without any authorization or license from Complainant.
Respondent has not registered or used the name La Fee Maraboutee as a trademark or trade name, and has never been commonly known by this same name. Respondent is not affiliated with Complainant and is not a subsidiary, franchisee, agent, distributor or authorized dealer. Respondent has not been authorized to register the disputed domain name.
The disputed domain name is linked to a website providing a portal offering various Internet search services.
Respondent registered and is using the disputed domain name in bad faith.
Previous published UDRP decisions involving Respondent have held that Respondent had registered and used subject domain names in bad faith.
Respondent did not reply to 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 in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that 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 is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The language of the Registration Agreement for the disputed domain name is Slovak. The Complainant has submitted its Complaint in English, requests that the language of the proceeding be English.
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require Complainant in an appropriate case to translate the Complaint into the language of that Registration Agreement, the Panel must consider all “the relevant circumstances”. The factors that the Panel should take into consideration include whether Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties.
In at least one prior issued UDRP decision involving Respondent, the proceedings were conducted in English. See ICICI Prudential Life Insurance Corporation Limited v. Privacy Protect/Pavol Icik, WIPO Case No. D2012-2521. Accordingly, the Panel concludes that Respondent appears to understand and comprehend the language of the Complaint (i.e., English). Furthermore, Respondent has been given an opportunity to object to Complainant's request that the proceedings be conducted in English, and has not raised an objection.
Because Respondent has not replied to the allegations made by Complainant, the Panel holds that Complainant would be unduly and unnecessarily prejudiced if it were forced to translate the Complaint into the Slovak language.
Taking all these circumstances into account, this Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
Complainant has established that it owns prior rights in the LA FEE MARABOUTEE mark and the disputed domain name is confusingly similar to Complainant’s LA FEE MARABOUTEE mark.
Complainant owns at least one LA FEE MARABOUTEE trademark registration for the European Community (i.e., Trademark Registration No. 002690683). The registration date for this LA FEE MARABOUTEE mark pre-dates the date upon which the disputed domain name was registered.
Accordingly, Complainant has established rights in its LA FEE MARABOUTEE mark pursuant to the Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that “the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption”).
The disputed domain name <lafeemaraboutee.com> is identical to Complainant’s LA FEE MARABOUTEE mark for the purposes of this proceeding. The disputed domain name incorporates the entirety of Complainant’s LA FEE MARABOUTEE mark and merely adds a top-level domain suffix “.com”. The addition of a generic top-level domain suffix is insufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity for purposes of the Policy. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).
Complainant has proven the requirement of Policy, paragraph 4(a)(i).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a formal Response, which in the opinion of the Panel can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words “la,” “fee,” “maraboutee,” or any combination of these words. In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant’s rights in its related trademarks precede the respondent’s registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its LA FEE MARABOUTEE mark.
Complainant has provided unrebutted evidence showing that Respondent is operating a website at “www.lafeemaraboutee.com” that features click-through opportunities to websites operated by Complainant’s competitors. Accordingly, the Panel concludes Respondent is using the disputed domain name in association with websites that compete directly with Complainant’s business interests. Furthermore, it is likely Respondent receives click-through fees (or some other form of compensation) each time an Internet user accesses the website at the disputed domain name <lafeemaraboutee.com> and clicks on any of the numerous options available. The use of another’s well-known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no rights or legitimate interests in the disputed domain name. See Delta Air Lines v. Web Marketing 360, WIPO Case No. DCO2012-0038; see also Ebay, Inc. v. EbayMoving / Izik Apo, WIPO Case No. D2006-1307 (respondent’s use of the domain name in connection with click-through advertisements pointing to other websites, including sites that compete with complainant in offering related goods and services is not a bona fide offering of goods or services or a noncommercial or fair use).
Accordingly, the Panel concludes Respondent is not using the disputed domain name in association with a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(i).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii).
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Respondent’s use of a website associated with the disputed domain name <lafeemaraboutee.com> and which provides click-through opportunities are actions taken by Respondent to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s LA FEE MARABOUTEE mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This established activity is a direct violation of paragraph 4(b)(iv) of the Policy, and is evidence of bad faith registration and use. See also MpireCorporation v. Michael Frey, WIPO Case No. D2009-0258 (“while the intention to earn click-through revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through revenue is found to be bad faith use”); Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364 (finding that using the domain name as a parking page with pay-per-click links to third party websites may be evidence of bad faith when the registrant is using the domain name in this manner because of the similarity to the complainant’s trademark in the hope and expectation that the similarity will lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page).
The Panel therefore finds that Complainant has proven the requirement of 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 <lafeemaraboutee.com> be transferred to Complainant.
Gary J. Nelson
Sole Panelist
Date: May 6, 2013