The Complainant is Thierry Mugler of Paris, France, represented by Tmark Conseils, France.
The Respondent is ICS INC. of Grand Cayman, Cayman Island, Territory of the United Kingdom of Great Britain and Northern Ireland / Contact Privacy Inc. of Toronto, Ontario, Canada.
The disputed domain name <therrymugler.com> is registered with Tucows Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 15, 2014. On April 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 17, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 17, 2014.
The Center verified that the Complaint together with the amended 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 April 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 15, 2014.
The Center appointed Peter Burgstaller as the sole panelist in this matter on May 27, 2014. 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 is a French company and famous especially for its perfumes and clothing. THIERRY MUGLER is not only the registered company name of the Complainant but is also registered as trademark in various countries and regions from 1979 onwards (e.g. Canada, France, United States of America, European Union, (Annex 6 and 7 of Complaint)).
The Respondent registered the disputed domain name on July 4, 2005.
The Complainant is famous for its perfumes and fashion clothing and uses the name THIERRY MUGLER intensively. The name THIERRY MUGLER is registered in favor of the Complainant as trademark in various countries and regions and a well-known sign worldwide.
The disputed domain name is <therrymugler.com>. It contains an obvious misspelling of the Complainant's trademark because it only omits the "i" in the name "Thierry". The disputed domain name is confusingly similar to the trademarks and registered company name of the Complainant.
The Respondent is not affiliated in any manner to the Complainant and has never been authorized to use the registered trademark of the Complainant. The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith since the Respondent offers sponsored links (also to competing companies), covers its identity and misspells the Complainant's famous trademark which per se constitutes bad faith registration and use.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) the disputed 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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under the Policy, a domain name which contains a common or obvious misspelling of a trademark is confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name (see Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775, <wochovia.com> inter alia; Fuji Photo Film USA, Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971, <fuijifilm.com>; Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073, <humanna.com>; Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case Nr. D2006-1043, <edmundss.com>).
In the present case the disputed domain name simply omits the letter "i" from the name "Thierry"; this does not make the domain name at issue distinctive form the Complainant's trademark.
The Panel therefore finds that the Complainant has made out the first of the three elements under paragraph 4(a) of the Policy that it must establish.
Under paragraph 4(a)(ii) of the Policy the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
However, by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you of the dispute, your use 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
If the Respondent demonstrates any of these elements or anything else that shows it has a right or legitimate interest in the disputed domain names, the Complainant will have failed to discharge its onus and the Complaint will fail with respect to the disputed domain name. Indeed, it is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second edition ("WIPO Overview 2.0"), paragraph 2.1, "complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden production shifts to come forward with appropriate allegation or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP".
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the fact that the present case is a typosquatting case) together with the Annexes presented by the Complainant and the Complainant's contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and that the Respondent has not received any license or consent, express or implied, to use the Complainant's trademark THIERRY MUGLER in a domain name or in any other manner, the Panel concludes that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy has been met by the Complainant.
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, shall be evidence of the registration and use of the domain names in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 using 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 the Respondent's website or other online 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 the Respondent's web site or location.
As stated in many decisions adopted under the Policy (e.g. Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001, <musicweb.com>) both conditions, registered and used in bad faith, are cumulative, consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
To this Panel it is incontestable that the Respondent has registered the disputed domain name in bad faith based the fact that typosquatting shows that the Respondent must have been aware of the fame and distinctiveness of the trademark THIERRY MUGLER; the selection of the disputed domain name, which misspells the Complainant's trademark, cannot be a coincidence. When registering the disputed domain name, it is pretty unlikely that the Respondent would have chosen the disputed domain name unless seeking to create an impression of association with the Complainant's fame and reputation – the sign THIERRY MUGLER is not a descriptive or generic term.
The act of "typosquatting" or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration (e.g. Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107, <paragon-gifts.com> (citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011, <minorleaugebaseball.com>); ESPN, Inc. v. XC2, WIPO Case No. D2005-0444, <espnnews.com> (finding that the practice of "typosquatting", of itself, is evidence of the bad faith registration of a domain name). The Panel concurs with this approach.
The Panel further takes the view that the content of a website (whether it is similar or different from the business of a trademark owner) is relevant in the finding of bad faith use. This is especially so when a potential Internet visitor, after typing in a confusingly similar domain name, reaches the Respondent's website offering similar contents and there is an implied act of unfair competition (deception of the consumer). Such an act is an evidence of bad faith. In the present case the Respondent presents on its website sponsored links, some of these links are related to beauty products and even to direct competitors of the Complainant.
The Panel considers accordingly that in attracting Internet consumers by using the THIERRY MUGLER well-known brand within the disputed domain name in order to re-direct such consumers to other websites promoting and selling competitors' products is a further strong indicator of the Respondent's bad faith and clearly infringes the Complainant's rights in the THIERRY MUGLER mark.
In this regard, it has been deemed by numerous UDRP panels that attracting Internet traffic and diverting it to website(s) selling products of complainant's competitors by using a domain name identical or confusingly similar is evidence of bad faith under paragraph 4(b)(iv) of the Policy. See e.g. Edmunds.com v. Ultimate Search, Inc, WIPO Case No. D2001-1319, <edmund.com>, registration and use of a domain name to redirect Internet users to websites of competing organizations constitute bad faith registration and use under the Policy; see also Nikon, Inc and Nikon Corporation v. Technilab, Inc, WIPO Case No. D2000-1774, <nikoncamera.com> et. al.; the use of the <nikoncamera.com> domain name for a site that sold Nikon products and those of its competitors constitute an improper use of complainant's mark to attract Internet users to respondent's site for commercial gain by creating a likehood of confusion as to source, sponsorship, affiliation or endorsement of the site; see also National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128, <national-city-mortgage.com>, in which bad faith was retained for a domain name resolved to a website that included links to mortgage related services which in turns led to a search results page listing "sponsored links" many of which featured complainant's competitors; see also AT&T Corp. v. Azim Hemani, WIPO Case No. D2003-0634, <attphonecard.net>.
In light of all the above findings, the Panel resolves that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its websites by creating a likehood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or of the products or services posted on or linked to the Respondent's websites.
It is the Panel's conviction therefore that the disputed domain name was registered and is being used in bad faith by the Respondent and the conditions set out in paragraph 4(a)(iii) of the Policy has been met by the Complainant.
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 <therrymugler.com> be transferred to the Complainant.
Peter Burgstaller
Sole Panelist
Date: June 10, 2014