The Complainant is Sarl Impulseo of Béziers, France, represented by Cabinet Brev&Sud, France.
The Respondent is IDNenterprises of Merriwa, Western Australia Australia, self-represented.
The disputed domain name <physiothérapie.com> (<xn--physiothrapie-ihb.com>) is registered with Dynadot, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 11, 2017. On August 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2017, 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 August 21, 2017, the Center notified the Parties in both English and French that the language of the Registration Agreement for the disputed domain name was English. On the same day, the Respondent sent an email to the Center requested for English to be the language of the proceeding. On July 23, 2017, the Complainant confirmed its request, included in the Complaint, for French to be the language of the proceeding and indicated it has nothing further to add to it.
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 and 4, the Center formally notified in French and English, the Respondent of the Complaint, and the proceedings commenced on August 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2017. The Response was filed with the Center on September 8, 2017.
The Center appointed Thomas Legler as the sole panelist in this matter on October 9, 2017. 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 filed the Complaint in French notwithstanding the fact that the registration agreement is in English. It mainly argues that the Respondent uses French on the parking page linked to the disputed domain name. The Respondent first insisted on a translation of the Complaint into English but finally filed its Response in English without waiting for such translation.
Pursuant to the Rules, Paragraph 11, in the absence of an agreement between 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 Administrative Panel (once appointed) to determine otherwise.
Both parties have been able to express their position in their mother tongue. The Panel being bi-lingual, the present decision could be drafted in French or English. The fact that the parking page is in French is not evidence that the Respondent is fluent in French as such pages are commonly translated automatically. Also, the fact that the Respondent finally proceeded without waiting for a translation of the Complaint is no proof that its French language skills are sufficient, as it may have obtained a translation on its own.
On the balance and taking into account that English is the language of the Registration Agreement related to the disputed domain name (apparently read and understood by the Complainant), the Panel decides that English be the procedural language.
The Complainant is a French company who is the holder of the French registration No. 3773649 for the trademark PHYSIOTHERAPIE.COM registered on February 25, 2011 and related to classes 10, 35 and 38. The trademark in question is a figurative mark containing word elements:
The Complainant also holds the domain name <physiotherapie.com>, registered on November 22, 2003 pointing to a website where it offers products related to physiotherapy and kinesiotherapy.
The disputed domain name <physiothérapie.com> has been registered by IDNenterprises on December 1, 2011. The disputed domain name points to a parking page with various commercial links to third parties' offers for physical therapy equipment, physiotherapy and various kinds of medical tapes.
The Complainant contends that the disputed domain name is confusingly similar to its figurative mark containing word elements. The disputed domain name <physiothérapie.com> has been registered after the registration of both Complainant's trademark and its domain name. It is an identical reproduction, without adjunction or modification, of the Complainant's trademark. The intellectual and phonetical elements of the two signs are identical. The fact that the Respondent is using the letter "é" instead of "e" is not significant as a panel held in Crédit Agricole S.A. contre Samir Laroussi, s l, ID:ovh4d05999cmkxv, WIPO Case No. D2011-0423 related to <credit-agricole.org>.
The activities on the two websites are identical. Both parties are active in the promotion and sale of products related to physiotherapy and kinesiotherapy. The proximity of both sign and products may lead to confusion.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no trademark related to its domain name. In addition, it has no legitimate interests since its activity is not directly related to physiotherapy and kinesiotherapy but rather to the commercialization of internationalized domain names. In addition, the disputed domain name held by the Respondent is a parking page constituted of various links that cannot be considered as a legitimate offering of goods and services.
The disputed domain name was registered and has been used in bad faith. The Respondent deliberately chose the disputed domain name of the Complainant with an accent. It could not have ignored the existence of the Complainant's domain name and chose its domain name with the intention to exploit the Complainant's reputation for its own interests. The Respondent has acquired the domain name in the perspective of selling it to the Complainant at a profit. Furthermore, it generates a revenue each time someone visits its website and clicks on one of the links. The Respondent uses the same assimilation technique in other cases for commercial gain.
The Respondent contends that none of the linguistic aspects of the mark, whether visual, phonetic or conceptual is distinctive. The word "physiothérapie" is a descriptive, generic, dictionary word. The addition of generic Top-Level Domain ("gTLD") ".com" does not defeat the non-distinctiveness objection. Moreover, the addition of ".com" does not create a secondary meaning worth a protection of the domain name. Furthermore, the Complainant's domain name has not reached a level of recognition or brand awareness in France or anywhere else sufficient to justify that an exclusive right over <physiotherapie.com> should be recognized.
It is the Respondent's legitimate interests to use the disputed domain name <physiothérapie.com> for the purpose of a commercial activity relating to physiotherapeutic goods and services, through pay-per-click advertisements related to physiotherapeutic goods and services. The domain name is an accurate description of the online activities carried out. The Respondent contests that any trademark is required to pursuit any of those commercial activities. Moreover, its business name refers exactly to the activities deployed, namely the promotion of goods and services through websites using generic names related to the goods and services offered. Finally, the use of pay-per-click links constitutes a legitimate bona fide use, even in the same sector described by that domain name.
The disputed domain name <physiothérapie.com> has been registered and used in accordance with the Respondent's legitimate business activities of holding a medium sized portfolio of IDN domains, constituted of both fully developed websites and pay-per-click advertising services to generate a revenue. By only detaining generic names and only promote products in relation with the disputed domain name, the risk of infringing on exclusive rights of others is limited. In addition, it is contested that the Complainant had a well-known site or that the Respondent should have had knowledge of its existence. Moreover, the Respondent denies having leveraged off the Complainant's website or reputation. It has not replicated in any way the Complainant's website or mimicked the offered products. Furthermore, the accusation that the Respondent wishes to sale the disputed domain name at a profit is baseless. Finally, the other domain names held by the Respondent are all generic terms, unable to be registered. No evidence of leverage off other websites were given by the Complainant.
The Complainant registered the combined trademark PHYSIOTHERAPIE.COM in France (see reproduction above). The Complainant is not holder of a word trademark PHYSIOTHERAPIE.COM.
For the purpose of the comparison between the trademark and the disputed domain name, the design element of the trademark may, in principle, be neglected, as it is the word in a combined mark which conveys the principal meaning (Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279). This is all the more the case as the figurative element cannot be reproduced in the domain name. The word element must however be the fundamental and easily identifiable and readable part of the combined mark.
In the case at hand, the word PHYSIOTHERAPIE is easily recognizable and the dominant part in the combined mark whereas the figurative element (including the stylized "O" in the middle resembling to the Red Cross sign, as well as the use of a specific police and the blue color) appears to be secondary. In fact, the figurative element is reduced to the use of more or less fanciful characters.
For the sake of order, the Panel adds that the generic Top-Level domain ".com" (contained in the Complainant's combined mark) is not considered in evaluating identity or confusing similarity (Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc., WIPO Case No. D2009-1243).
Only on that basis, it would appear that the trademark and the disputed domain name (which only differs from the trademark by using the French letter "é") are at least similar.
In this case, the Panel finds that the Complainant has rights in its device mark which incorporates the expression PHYSIOTHERAPIE.COM, and that the disputed domain name is confusingly similar to that device mark for purposes of the Policy.
The Paragraph 4(c) of the Policy sets out a number of circumstances which may be effective for a respondent to demonstrate it has rights to, or legitimate interests, in a disputed domain name. The list is not exhaustive. Those circumstances are (i) before any notice to the respondent of the dispute, use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights, or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A registrant may legitimately register a domain name comprised of a dictionary word in circumstances where the registrant is not targeting or seeking to take unfair advantage of a complainant's trademark. The legitimate use of a domain name may include the generation of revenue through pay-per-click website corresponding with the descriptive nature of the domain name (see section 2.10.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, which indicates that "[i]n order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights") (see also Unilabs SA v. Gregg Ostrick, GNO, Inc., WIPO Case No. D2017-0738; Marco Rafael Sanfilippo v. Estudio Indigo, WIPO D2012-1064). That is exactly Respondent's case as its venture is concentrating on generic domain names involving business activities promoting goods and services relevant to those names.
It is only where the trademark of the complainant is well known or has goodwill attached and that the respondent tries to target or to take unfair advantage by assimilation, that the use of a descriptive domain name is not legitimate.
In casu, there is no evidence that the Complainant has such a reputation that the term "physiotherapy.com" could only mean the products and services of the Complainant.
The Complainant has not been able to show that its trademark consisting of a generic term (followed by the also generic ".com") has any well-known character.
Hence, there is no basis to contend that the Respondent ought to have known of the Complainant's trademark and that it tries to target or to take unfair advantage by assimilation.
In conclusion, the disputed domain name being descriptive in nature, the Complainant failed to show that the Respondent registered the disputed domain name with the Complainant's trademark in mind, with the intention of targeting or taking unfair advantage of the Complainant's trademark rights.
Accordingly, the Complainant has not established that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
For the sake of completeness, the Panel also briefly addresses the third element.
Paragraph 4(b) of the Policy puts forward some circumstances where bad faith can be found. It is the case if (i) the domain name has been primarily registered for the purpose of selling or renting it to the complainant, (ii) if there is a pattern of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, (iii) if the domain name has been registered to disrupt the business of a competitor, or (iv) the domain name has been registered in order to create confusion with the complainant's trademark or domain name.
In the case at hand, the Complainant argues that the Respondent purposefully registered a domain name in connection with the Complainant's one, in order to use the reputation of the Complainant and create any confusion. In addition, the Complainant affirms that the disputed domain name has been registered in order to be sold to the Complainant.
The Panel has not found any basis for these affirmations.
For the reasons set out above, the Complainant's trademark is a simple generic term and is not well-known. Consequently, the Respondent would not have necessarily known about it.
Furthermore, the Complainant has failed to show that the Respondent wanted to use the reputation of the Complainant or create confusion by registering the disputed domain name. The products or the links automatically generated and listed on Respondent's website are generic and not branded products. There is no evidence that the Respondent would have targeted or leveraged off the Complainant's products. The similarity of offers stems from the obvious situation that both enterprises are using generic domain names (<physiotherapie.com> and <physiothérapie.com>) that are descriptions of the products being offered.
Finally, the Panel has found no evidence in the case file that the registration has only been made with the purpose of selling the disputed domain name to the Complainant.
Consequently, the Complainant has also failed to show any bad faith on the side of the Respondent.
For the foregoing reasons, the Complaint is denied.
Thomas M. Legler
Sole Panelist
Date: October 24, 2017