WIPO Domain Name Decision: D2005-0432

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Anonyme des Eaux Minérales d’Evian v. Mr. Omar Haddedou

Case No. D2005-0432

1. The Parties

The Complainant is Société Anonyme des Eaux Minérales d’Evian, France, represented by GROUPE DANONE - Intellectual Property Department, France.

The Respondent is Mr. Omar Haddedou, NewMarketingOnline, 345 west vista chino, Palm Springs, California, United States of America.

2. The Domain Name and Registrar

The disputed domain names <badoit.com> is registered with Blueberry Hill Communications, Inc. dba 4domains.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2005. On April 22, 2005, the Center transmitted by email to Blueberry Hill Communications, Inc. dba 4domains.com a request for registrar verification in connection with the domain name at issue. On April 25, 2005, Blueberry Hill Communications, Inc. dba 4domains.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2005.

The Center appointed Peter Burgstaller as the sole panelist in this matter on May 30, 2005. 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 Center sent a transmission of case file to the Panel by e-mail on May 30, 2005; the case file was received in hardcopy on May 31, 2005.

The language of the administrative proceeding is English.

4. Factual Background

The Panel finds that the Complainant has established the following facts:

The Complainant has been exploiting the water source “BADOIT” since 1965, and has sold 340 millions of bottles of BADOIT. “BADOIT” is a well known trademark protected worldwide especially for the goods set out in class 32 of the Nice Classification Agreement.

The Respondent is not affiliated with the Complainant in any way; the Complainant has not granted any license or otherwise permitted the Respondent to use its trademark.

The Respondent is the registrant of the domain name in dispute. The domain name at issue is not linked to an active website; the Respondent offers domain names for sale, inter alia the disputed domain name <badoit.com>.

The Complainant sent a warning letter on March 1, 2005, and a reminder on March 22, 2005, to the Respondent requesting the amicable transfer of the domain name at issue to the Complainant.

With e-mail of April 1, 2005, the Respondent offered the transfer of the domain name at issue to the Complainant for EUR125.000 and, with e-mail of April 19, 2005, for EUR100.000.

5. Parties’ Contentions

A. Complainant

The disputed domain name <badoit.com> is identical, or at least confusingly similar, to the various trademarks owned by the Complainant which all contain the mark “BADOIT.”

The Respondent has no rights or legitimate interests in respect of the domain name at issue. It does not use this sign in business, has no trademark-registration or –application and does not have a first or last name related to “Badoit.”

The domain name in dispute was registered and is being used in bad faith since the Respondent only registered <badoit.com> in order to sell it; the Respondent moreover knows a lot about France and must have been aware of the trademark “BADOIT” when registering the domain name at issue.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To make out a successful Complaint, it is the Complainant’s burden to prove under paragraph 4(a) of the Policy that

(i) the domain name at issue is identical or confusingly similar to a trade mark or a service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The Complainant must prove that each of these three elements is present.

A. Identical or Confusingly Similar

The Complainant has registered the word-trademark “BADOIT” in various countries and owns moreover numerous figurative-trademarks containing the word “BADOIT” as an essential part of the trademark.

The domain name <badoit.com> is identical to the word-trademark “BADOIT” and confusingly similar to the Claimant’s figurative-trademarks set out in Annex 3 of the Complaint.

This Panel follows the principle which applies to UDRP cases, that the addition of a gTLD does not affect the confusing similarity or identity between the domain name and the trademark.

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As mentioned above, no response has been filed and the Respondent has not alleged any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name.

Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain name. If the Complainant has done so, the burden of proof shifts to the Respondent to offer evidence of his rights or legitimate interests in the disputed domain name (see e.g. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270). This “burden shifting” is appropriate given that Paragraph 4(c) of the Policy, which is entitled “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint,” discusses the kind of evidence a Respondent should provide to show that it has rights to or legitimate interests in the domain name.

The statements/contentions of the Complainant along with the rest of the evidence in the record are for this Panel sufficient to make out a prima facie showing of Respondent’s lack of rights or legitimate interests. The Panel, therefore, follows the Complainant’s contentions that the Respondent has not registered any trademark or filed any trademark application regarding “BADOIT” and that it does not use that sign in business. Furthermore, the Respondent has not been known under this sign, nor does he have a first or last name containing the sign “BADOIT” or related to it.

Accordingly, the Panel finds that the Complainant has satisfied its burden of proof with respect to paragraph 4(a)(ii) of the Policy; the Respondent has no rights or legitimate interests in the domain name in dispute.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:

“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Respondent is the registrant of the domain name in dispute. Because of the Complainant’s worldwide trademark registrations and the fame of the trademark “BADOIT”, it is the Panel’s conviction that when registering the domain name at issue, the Respondent knew of the existence of the Complainant’s trademark. This is true especially with regard to the evidence provided inAnnexes 4 and 5 of the Complaint.

It seems to the Panel that the Respondent has registered the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the out-of-pocket costs directly related to the domain name. Annex 4 shows a list of various domain names for sale (including the domain name at issue) established by the Respondent. Annex 5 shows, that the Respondent offered to transfer the domain name for EUR 125.000 and EUR 100.000 respectively, when receiving a warning letter from the Complainant.

The Respondent does not present its own website under the domain name in dispute; the domain name in dispute was and is not actively used for an own website.

This Panel, however, follows in this respect the arguments pointed out in Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003).

The relevant issue is not whether the Respondent was engaged in a “positive action in bad faith” in relation to the domain name at issue, but whether he has “acted in bad faith.” The distinction between these two cases is important, because “being used in bad faith” is not limited to positive action – inaction is within the concept. In certain circumstances, therefore, it is possible that inactivity by the Respondent may amount to the domain name being used in bad faith. This understanding of paragraph 4(a)(iii) of the Policy is also supported by the actual provisions of the Policy – only paragraph 4(b)(iv) involves a positive action – and other Panel decisions (see e.g. Red Bull GmbH v. Manuel Sousa, WIPO Case No. D2001-0584).

The circumstances identified in paragraphs 4(b)(i) to (iii) of the Policy involve also a passive holding/or inaction of the domain name registration, even though these provisions require additional facts. It should be recalled that the circumstances listed under paragraphs 4(b)(i) to (iv) of the Policy are “without limitation” – that is, paragraph 4(b) also expressly recognizes that other circumstances can provide evidence of bad faith.

Given the widespread use and notoriety of the trademark “BADOIT” and taking into account that the Respondent has given no evidence, whatsoever, of any actual or contemplated good faith use by it of the domain name, and that the Complainant sought an amicable transfer of the domain name, but the Respondent offered the transfer for EUR 120.000 / 100.000, it is fairly difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

Taken together these elements are compelling enough for a finding of bad faith use. “BADOIT” is a famous mark and the Respondent must have known of its existence and of the nature of the goods or services associated with it.

The Panel thus finds that the Complainant has proven that the domain name <badoit.com> has been registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy by the Respondent.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <badoit.com> be transferred to the Complainant.

Peter Burgstaller
Sole Panelist

Dated: June 7, 2005