The Complainant is Fondation Bettencourt Schueller of Neuilly-sur-Seine, France, represented by Partenaires PI, France.
The Respondent is Donation Fondationbs Bettencourt of Neuilly-sur-Seine, France.
The disputed domain name <fondation-bettencourtschuelle.net> is registered with Internet.bs Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2012. On June 14, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On June 15, 2012, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2012.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on July 19, 2012. 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 Panel determines that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English, i.e. the language of the Registration Agreement with the concerned Registrar, Internet.bs Corp., a copy of which has been provided by the Complainant.
The Complainant was created in France by Mrs. Liliane Bettencourt, née Schueller, who is the largest shareholder in L’Oréal, a publicly-quoted, major cosmetics and fragrances company. It has the tax status in France of “Fondation reconnue d’utilité publique”, i.e. a not-for-profit organization recognized as performing a general interest service. As such, it may receive donations which are partially tax-deductible for the donors.
The Complainant owns several Community and United States trademark registrations for the trademark FONDATION BETTENCOURT SCHUELLER, the earliest of which was filed on September 16, 2010 with the Office for Harmonization in the Internal Market, and registered by OHIM on March 6, 2011.
In addition, the Complainant has registered and is using the mark FONDATION BETTENCOURT SCHUELLER as a domain name and is thus the proprietor of various domain names incorporating the mark FONDATION BETTENCOURT SCHUELLER with gTLDs and ccTLDs such as “.org”, “.info”, “.eu”, “.fr”, “.com” and “.net”.
The Complainant is famous for its activities in the fields of financial sponsorship, organization and distribution of prizes and scientific consultancy services.
The disputed domain name was created on March 6, 2012.
(i) The Complainant submits that the disputed domain name reproduces the mark FONDATION BETTENCOURT SCHUELLER in which the Complainant has rights, and is confusingly similar to that mark insofar as the disputed domain name contains that mark in its entirety, save an intentional misspelling, i.e. the final letter “r” is missing.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that the Respondent has no connection to the owner of the mark FONDATION BETTENCOURT SCHUELLER and has received no authorization from the Complainant to reproduce and/or exploit it.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. It alleges that by registering the disputed domain name the Respondent has sowed confusion to Internet users because of the Complainant’s notoriety, especially since its founder Mrs. Liliane Bettencourt née Schueller attracted media attention and made global press headlines. An Internet user interested in the Complainant and its activities is likely to assume that the Complainant is associated with the website identified by the disputed domain name. Moreover, by intentionally attempting to attract Internet users to the Respondent’s website and by creating a deliberate confusion and/or deception with the Complainant’s mark as to the source, sponsorship, affiliation and endorsement of the Respondent’s website, the Respondent is disrupting the legitimate use of the mark FONDATION BETTENCOURT SCHUELLER and is misleadingly diverting Internet users. Finally, the Respondent acted in bath faith by violating the provisions of paragraph 2(a) of the Policy and using a fake address to register the disputed domain name, and its current passive holding amounts to bad faith use.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
The Respondent is formally in default pursuant to paragraphs 5(e) and 14(a) of the Rules and paragraph 8(c) of the Supplemental Rules, because no Response was received from the Respondent within the time limit set by the Policy and the Rules.
Under the Rules, paragraphs 5(e) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name or other remedy have been met.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
The disputed domain name, <fondation-bettencourtschuelle.net>, is almost identical to the mark owned by the Complainant, which it replicates almost entirely. Indeed, the three words of the Complainant’s mark FONDATION BETTENCOURT SCHUELLER are replicated, with only the final letter “r” of the last word “schueller” missing in the second component of the disputed domain name.
The consensus view of UDRP panels is that a domain name which contains an obvious misspelling of a mark will normally be found to be confusingly similar to such mark, where the misspelled mark remains the dominant or principal component of the domain name. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.
The Panel finds that the similarity in this case between the disputed domain name and the Complainant’s mark is such as to create a likelihood of confusion for Internet users.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent did not submit a formal Response, thus offering no reason for selecting the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name or a corresponding name or uses a corresponding name in a business. The website associated with the disputed domain name is not active and no information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent has (i) no rights or legitimate interests in the disputed domain name and (ii) no connection to or authorization from the Complainant.
In the circumstances, the Panel is satisfied that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy.
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name similar to the Complainant’s mark.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
At the time the disputed domain name was registered, the Complainant had widespread advertisement of its mark in the press. The Panel considers that the notoriety of the mark in France, where the Respondent is located, makes it highly unlikely that the Respondent would have chosen to register the disputed domain name randomly, not knowing of the Complainant’s rights in the mark prior to acquiring the disputed domain name. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, L.L.C. v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
Furthermore, the uncontradicted assertion that the Respondent knowingly provided inaccurate information to the Registrar when registering the disputed domain name, in violation of its representations pursuant to paragraph 2(a) of the Policy, is also evidence of bad faith. See Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024.
It is also well established since Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that the mere passive holding of a domain name may in appropriate circumstances constitute bad faith use, and such opportunistic bad faith is precisely being suggested in this case.
Moreover, the Panel notes that many UDRP panels have held that bad faith use of a domain name by the respondent may also result from the fact its good faith use is in no way plausible (See Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Finally, some UDRP panels have held that in certain circumstances, persons who are registering domain names have an affirmative duty to abstain registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc v. B.B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in these circumstances that the Respondent’s registration, use and present holding of the disputed domain name are in bad faith and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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 <fondation-bettencourtschuelle.net> be transferred to the Complainant.
Louis-Bernard Buchman
Sole Panelist
Dated: August 9, 2012