The Complainant is Groupe Auchan, of Croix, France, represented by Dreyfus & associés, France.
The Respondent is Roberto La Palombara, of Avignon, France.
The disputed domain name <qilive.net> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2014. On April 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2014, 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.
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 May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on June 5, 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 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, which the Registrar confirmed to be English.
The Complainant is the 11th largest food retailer in the world, and was created in 1961 in France, where it is the second largest food retailer.. It currently has more than 302,500 employees, in 12 countries.
The Complainant is the owner of numerous QILIVE trademark registrations across the world, starting with the French trademark QILIVE, registered under number 3989842 on March 13, 2013 (“the Mark”).
The Complainant also operates domain names reflecting the Mark, e.g. <qilive.com> registered on October 9, 2013, and <qilive.fr> registered on October 22, 2013. Since October 2013, technological household equipment products bearing the Mark started being offered on sale in all 12 countries in which the Complainant operates.
The disputed domain name was created on August 27, 2013.
(i) The Complainant submits that the disputed domain name is confusingly similar to the Mark.
(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 it never licensed or in any way permitted the Respondent to register the Mark as a domain name. The Complainant also asserts that the Respondent is not commonly known by the disputed domain name, and is not making (or contemplating to make) a legitimate noncommercial or fair use of the disputed domain name.
(iii) The Complainant submits that by registering the disputed domain name, the Respondent acted in bad faith because it knew about the Complainants’ rights in and to the Mark, and is also using it in bad faith, insofar as the disputed domain name after being active for a while is now passively held and offered for sale.
(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 paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a 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 names 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 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 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.
In comparing the Mark with the disputed domain name <qilive.net>, it is evident that the latter consists solely of the Mark.
It is also well-established that the specific top level of a domain name such as “.net”, may be disregarded for the purpose of determining whether it is identical or confusingly similar to a complainant’s trademark.
The Panel finds that the disputed domain name <qilive.net> is confusingly similar to the Mark, which it incorporates in its entirety.
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 a respondent.
Thus, the consensus view of UDRP panels is that the burden of production of evidence is shifted to the respondent to come forward with evidence of a right or legitimate interest in a 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 offered 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.
To counter any notion that the Respondent has such rights or legitimate interests, the Complainant has argued that the Respondent: (i) has no rights or legitimate interests in the disputed domain name; (ii) has no authorization or license from the Complainant; and (iii) is not commonly known by the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
As noted above, the Respondent failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainants’ arguments that the Respondent acted with opportunistic bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name confusingly similar to the Mark.
Taking into account the evidence submitted by the Complainant, the Panel considers that the Respondent had obviously the Mark in mind when he registered the disputed domain name.
Where a respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may also suggest bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In addition, the Panel notes that many UDRP panels have found bad faith use of a domain name by a respondent when 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.
Moreover, some UDRP panels have found 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 prior trademarks 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; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
Finally, some panels have applied the passive holding concept to mere “parking” by a third-party. It is well established that the mere passive holding of a domain name may in appropriate circumstances be evidence not only of bad faith registration, but also of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004; Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260.
The Panel finds that the Respondent is not making a bona fide use of the disputed domain name and that the evidence submitted supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel concludes in these circumstances that the Respondents' registration and use of the disputed domain name constitute 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 <qilive.net> be transferred to the Complainant.
Louis-Bernard Buchman
Sole Panelist
Date: June 19, 2014