Complainant is Chateaux and Country of Paris, France, represented by Tmark Conseils, France.
Respondent is SA, NETWORKCOUNCIL of the United States of America.
The disputed domain name <chateaux-country.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2011. On February 17, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 17, 2011, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 February 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 15, 2011.
The Center appointed Ross Carson as the sole panelist in this matter on March 22, 2011. 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 registered owner of the trademark CHATEAUX & COUNTRY and design registered as Registration No. 99809464 in relation to goods and services in classes 38, 42, and 43 in the Nice Classification. The application for the trademark was filed in France on August 26, 1999, the application was published on October 1, 1999, and the trademark was registered without modification to Complainant on February 4, 2000.
Complainant is in the business of advertising rentals of bed and breakfast; rooms and reception space for weddings and space for seminars and professional meetings in chateaux’s. In addition Complainant offers visits to and sales of chateaux as shown on the home page associated with Complainant’s domain name <chateauxcountry.com> which was registered on October 21, 1999.
The disputed domain name <chateaux-country.com> was registered on September 7, 2000.
Complainant submits that it publishes a guide on the Internet about hotels, bed and breakfast and castles rental in France via the website “www.chateauxeountry.com”, and is the owner of French Trademark Registration Number 99809464 for the trademark CHATEAUX & COUNTRY and design of a château which has a date of filing of August 26, 1999 and registration of February 4, 2000, renewed on September 4, 2009. The trademark is registered in relation to goods and services in classes 38, 42, and 43 in the Nice Classification.
Complainant states that its domain name <chateauxcountry.com> was registered on October 21, 1999.
Complainant submits that the disputed domain name <chateaux-country.com>, which was registered on September 7, 2000, is nearly identical to Complainant’s trademark CHATEAUX & COUNTRY and design bearing in mind that the sign “&” cannot be selected within the registration of a domain name, the reason why Complainant had registered the domain name <chateauxcountry.com> without an ampersand. In addition, the gTLD suffix “.com” is a technical constraint and it should not be taken into account when comparing the signs.
Complainant submits that according to searches on the Internet and on the trademark registers, it appears that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has searched and found no evidence that Respondent has used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that Respondent has been commonly known by the disputed domain name, or that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Complainant states that the disputed domain name was registered in bad faith by Respondent. The disputed domain name was registered by Respondent after Complainant’s date of application and use of its trademark CHATEAUX & COUNTRY. Complainant asserts that Respondent must have known of Complainant’s trademark CHATEAUX & COUNTRY and its website “www.chateauxcountry.com” at the time of registration of the disputed domain name.
Complainant states that the disputed domain name was and is used in bad faith by Respondent. The website “www.chateaux-country.com” associated with the disputed domain name presents competitive services to those of Complainant, namely tourist information about hotels and castles in France. By using the disputed domain name, it is obvious that Respondent intentionally seeks to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s mark CHATEAUX & COUNTRY as to the sources, sponsorship, and affiliation of Respondent’s website.
Respondent did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the domain name should be cancelled or transferred:
(i) the domain name registered by Respondent 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 respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trade mark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the registered owner of French Trademark Registration No. 99809464 for the trademark CHATEAUX & COUNTRY and design of a château having an application of August 26, 1999 and registration date of February 4, 2000 registered in relation to the goods and services in Classes 38, 42, and 43 of the Nice classification. Complainant’s registered trademark was in use and registered prior to the date of registration of the disputed domain name <chateaux-country.com> on September 7, 2000.
The disputed domain name <chateaux-country.com> incorporates the entirety of the words of Complainant’s trademark CHATEAUX & COUNTRY with a hyphen substituted for the ampersand forming part of Complainant’s trademark. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See, e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (a domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark”; holding <pepsiadventure.net>, <pepsitennis.com>, and other domains confusingly similar to complainant’s PEPSI mark).
The chateaux design found as part of Complainant’s trademark registration compliments the word CHATEAUX forming part of Complainant’s trademark. The presentation of the representation of a chateaux in the disputed domain name is not possible. The absence of the design of a chateaux is irrelevant as the word “chateaux” is the first element of the disputed domain name.
Many UDRP decisions have held that the addition of a hyphen between the elements of a trademark does nothing to change an otherwise identical or confusingly similar domain name. See, e.g. Fort Knox National Company v. Ekaterina Phillipova, WIPO Case No. D2004-0281, (from the point of view of the panel, the fact of including a hyphen between the words true and pay does not make a sufficient difference between the domain name and Complainant’s trademark. On the contrary, considering the requirement that the disputed domain name and the trademark must be confusingly similar, the panel believes that that the expression true-pay is similar to the trademark TRUEPAY and, therefore, may confuse the public about the business origin, the quality of products or services, and about the owner of the domain name).
The inclusion of the top level domain descriptor “.com” in the disputed domain name does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant’s trademark CHATEAUX & COUNTRY and design of a chateaux.
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The first web page associated with the disputed domain name <chateaux-country.com> contains a single advertisement to “www.hotels-paris.com” followed by the statement “Book your hotel in Paris at the Best Rate!”. The WhoIs Record for the domain name <hotels-paris.com> as of December 14, 2010 does not disclose the name of the Registrant but shows Gago as the Registrant Contact, the Administrative Contact and the Technical Contact. As of March 28, 2011 the Administrative and Technical Contact for the disputed domain name also name Gago. As of March 28, 2011 both the domain name <hotels-paris.com> and <chateaux-country.com> show: “Registration Services Provided By: FRANCE HOTELS SAS. The panel finds that the person or entity controlling the website <chateaux-country.com> is using the website to direct Internet user seeking Complainant’s website to Respondent’s website <hotels-paris.com> and included links to websites that offer hotel reservations in France in competition with Complainant’s business offering reservation of rooms in chateaux’s in France. The Panel notes that a domain name <hotelsparis.com> without a hyphen appears to be owned by an independent third party. Respondent’s use of the confusingly similar domain name to divert traffic to another website it owns is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name. See, e.g., American Century Proprietary Holdings, Inc. v. Travis Martin, NAF Claim No. 1262486 (holding no rights or legitimate interests where a domain name resolves to a parked website and respondent presumably generates click-through fees from such use).
The second page of Respondent’s website “www.chateaux-country.com” features the heading “Chateaux Country | Tourist info about famous french castles”. The words Chateaux Country are not separated by a hyphen as they are in the disputed domain name. The bulk of the links on the second page associated with the disputed domain name relate to hotel reservations many being located in Paris. Respondent’s use of the disputed domain name to attract persons familiar with Complainant’s trademark to hotel reservations in France to generate click-through fees is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name.
On the basis of the content of the webpages associated with the disputed domain name, the WhoIs search results for the disputed domain name and a review of the data base maintained in Intellectual Property Office in France for the words “Chateaux Country”, the Panel finds that Respondent appears not to be commonly known by “chateaux country” with or without a hyphen, and to own no relevant trademark applications or registrations for them. See, The Braun Corporation v. Loney, NAF Claim No. 699652 (concluding that respondent had no rights or legitimate interests in the disputed domain names because it was not commonly known by the disputed domain names and complainant had not authorized respondent to register a domain name containing its registered mark). See also, Tercent Inc. v. Lee Yi, NAF Claim No.139720 (finding that the WhoIs information and its failure to imply that respondent is commonly known by the disputed domain name is a factor in determining whether respondent has any rights or legitimate interests in the dispute domain name).
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a disputed domain name. Once this showing is made, the burden shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent did not file a Response nor availed itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name.
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith.
Complainant has established that it is the registered owner of French Trademark Registration No. 99809464 for the trademark CHATEAUX & COUNTRY and design of a château having an application date of August 26, 1999 and registration date of February 4, 2000 registered in relation to the goods and services in Classes 38, 42, and 43 of the Nice classification. Complainant is also the owner of the domain name <chateauxcountry.com> registered on October 21, 1999. Complainant’s registered trademark was in use and registered prior to the date of registration of the disputed domain name <chateaux-country.com> on September 7, 2000. The Panel finds that Respondent’s registration of the disputed domain name incorporating Complainant’s trademark by substituting a hyphen for an ampersand and using the website associated with the disputed domain name to link users to Respondent’s domain name <hotels-paris.com> is evidence of registration in bad faith.
Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to a respondent’s website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.
Respondent’s webpage associated with the disputed domain name include a link to Respondent’s domain name <hotels-paris.com> and links to entities providing services relating to hotel reservations in France. Respondent’s use of the disputed domain name which is confusingly similar to Complainant’s registered trademark CHATEAUX & COUNTRY and design of a château enables Respondent to draw Internet users to the website for profit by misleading Internet users associating the disputed domain name with Complainant. The Panel infers that Respondent is receiving click through profits resulting from use of the links associated with the disputed domain name. Linking to websites of institutions that are active in the same field as Complainant is evidence of bad faith use. See, e.g. Google Inc. v. Forum LLC, NAF Claim No. 1053323 (finding bad faith registration and use where <googlenews.com> resolves to a commercial search engine website generating click-through advertising fees); Brink’s Network, Inc. v. Jenny Ho, brinksplacetv.com, WIPO Case No. D2009-0530 (“Where, as here, the disputed domain name is used to link, inter alia, to websites of the [c]omplainant’s competitors, a holding of bad faith use will typically follow”).
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under paragraph 4(a)(iii) of the Policy.
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 <chateaux-country.com> be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: April 1, 2011