WIPO Domain Name Decision: D2006-0122

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rue du Commerce v. Bilal Arif

Case No. D2006-0122

1. The Parties

The Complainant is Rue du Commerce, Saint-Ouen, France, represented by La SCP Chain Lacger & Associes, France.

The Respondent is Bilal Arif, Karachi, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <ruducommerce.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2006. On January 31, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 1, 2006, 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 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 February 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2006.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on March 16, 2006. 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

The Complainant is La société Rue Du Commerce, a French company which distributes high tech products for home use, such as personal computers, digital cameras, TVs, DVD players and hi-fi systems solely over the Internet. It claims to have a leading position in this specific French market and to count over one million clients.

The Complainant has a number of relevant trademark registrations in particular WWW.RUEDUCOMMERCE.COM, registered in 2005, and RUE DU COMMERCE, registered in 2000. Further, the Complainant has registered several relevant domain names such as, in particular, <rueducommerce.com> in 1998.

The Complainant has provided evidence of all stated trademark and domain name registrations.

According to the results of a Whois database query, the Respondent is Bilal Arif. There is no further information known to the Panel about the Respondent other than his contact address and the content of his website.

5. Parties’ Contentions

A. Complainant

The Complainant objects to the use of the Domain Name by the Respondent and bases its Complaint on the following grounds:

1. The Domain Name contains the same three French words as in the Complainant’s trademark except for the deletion of the letter “e” in “ru(e)” in the Domain Name, and is therefore identical or confusingly similar to the Complainant’s trademark.

2. The Respondent has no rights or legitimate interests in respect of the Domain Name as he is neither a partner of the “Rue Du Commerce” products network nor a partner of the “Rue Du Commerce” website activities.

3. The Domain Name was registered and is being used in bad faith because the Respondent tried to attract Internet users to his website by creating confusion among them, in order to make profit.

B. Respondent

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

6. Discussion and Findings

The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). In this case, the Panel finds that the Center complied with all formalities and that the Complaint and Notification of Respondent Default were properly notified to the Respondent. The Panel finds that the Respondent had proper notice of this administrative proceeding.

Because the Respondent has defaulted in providing a Response to the Complaint, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (Rules, paragraph 15(a)).

Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that the Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the 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.

A. Identical or Confusingly Similar

There are two elements that must be satisfied to establish paragraph 4(a)(i) of the Policy: the Complainant must have rights in the particular mark or marks, and the Domain Name must be identical or confusingly similar to the respective mark(s).

Firstly, the Complainant has proven its rights in the particular relevant trademarks RUE DU COMMERCE and WWW.RUEDUCOMMERCE.COM as noted above.

Secondly, the Domain Name differs merely in the deletion of the letter “e” in the word “ru(e)” from the Complainant’s trademarks. This missing vowel does not significantly affect the appearance or pronunciation of the Domain Name. The introduction of slight deviations into famous marks is commonly referred to as “typosquatting” and creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark (ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073).

In conclusion, the Domain Name is considered by this Panel to be confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, the following circumstances can demonstrate that the Respondent has rights to or legitimate interests in the Domain Name:

(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made 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; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even though he has not acquired any trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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.

The Complainant states that the Respondent is neither a partner of the “Rue Du Commerce” products network, nor a partner of the “Rue Du Commerce” website activities and thus is by no means allowed to use the registered trademarks.

It is a consensus view of WIPO UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “https://www.wipo.int/amc/en/domains/search/overview/ index.html”) that the overall burden of proof under paragraph 4(c) of the Policy rests with a complainant, which is required to establish that the respondent prima facie lacks any rights to, or legitimate interests in, a domain name. If the respondent fails to answer the claim, the complainant is deemed to have satisfied its burden of proof (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

In this case, the Complainant has established a prima facie case that the Respondent does not have any rights to or legitimate interests in the Domain Name and is not affiliated with the Complainant at all. The Respondent has failed to prove his relevant rights or legitimate interests.

Additionally, the Respondent did not use the Domain Name in connection with a bona fide offering of services or goods, as the Respondent ran a virtually competing website with links to websites other than the Complainant’s, which offered services and goods similar to the Complainant’s. Therefore, it is clear to the Panel that the Respondent’s website was run by a competitor, in order to confuse potential customers of the Complainant and attract them to the Respondent’s website. The Respondent’s website, before its content was changed around March 14, 2006 (cp. “http://web.archive.org/web/20050314083958/http://www.ruducommerce.com/”, visited on March 23, 2006), contained links in French to other companies’ websites which are in competition with the Complainant. The fact of confusing, attracting and forwarding customers to competing websites by using a confusingly similar domain name is not considered by this Panel as a bona fide offering of services or goods.

By doing so, the Respondent benefits unfairly and illegitimately from the Complainant’s trademark and reputation and from the fact that it is well known in the francophone community. The Respondent thereby adopts a conduct that does not indicate a legitimate interest in any possible way.

Therefore, this Panel comes to the conclusion that the Respondent does not fulfil any of the three mentioned circumstances and thus has no rights to or legitimate interests in the use of the Domain Name in accordance with paragraph 4(c) of Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the Domain Name has been used and registered in bad faith if:

(i) circumstances indicate that the Respondent has registered and has 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.

As the Domain Name is still active, although its content was changed after the Complaint was filed, this Panel takes into consideration the content as it was at the commencement of this administrative proceedings, as evidenced in the Complaint.

The particular content of the website running under the Domain Name was described above (see 6.B.).

The fourth of the enumerated circumstances states that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with a mark in which the Complainant has rights.

The Complainant claims, and the Panel agrees, that the Respondent registered and is using the Domain Name in bad faith by re-directing Internet users, particularly customers and potential customers of the Complainant, to the website of the Respondent to be finally forwarded to competing websites.

As the Respondent’s website was in French and provided links to competing companies it was clearly designed, in connection with the confusingly similar Domain Name, to mislead the potential customers of the Complainant.

The Complainant also states that the Respondent has registered and is using the Domain Name for illegitimate commercial gain.

It is not so obvious to the Panel that the Respondent benefits commercially from re-directing potential customers of the Complainant to competing companies’ websites.

However, at the bottom of the Respondent’s website it is indicated that it is registered with a company named Sedo. Indeed, the Domain Name appears to be linked to “www.sedoparking.com”. On the corresponding website (<www.sedo.com>, visited on March 23, 2006), one can learn that the company Sedo offers to owners of unused domain names an opportunity to place advertisements on a website created only for the purpose to re-direct Internet users to the linked companies’ websites. The owners of such domain names get paid for every Internet user that is re-directed by the website running under their domain name. Under these circumstances, the Panel assumes that the Respondent is registered with Sedoparking and benefits commercially from the aforementioned procedure. Therefore, the Panel concludes that the Respondent used the Domain Name for commercial gain.

The Panel finds that the Respondent has registered and is using the Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name, <ruducommerce.com>, be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist

Dated: March 30, 2006