The Complainant is Val de France Informatique of Parçay-Meslay, France, represented internally.
The Respondent is Eric Verdot of Montmorency, France.
The disputed domain name <dyaden-sa.com> is registered with Cronon AG (the “Registrar”).
The Complaint was filed in the French language with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2014. On June 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 12, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint in the English language on July 9, 2014, and a further amended Complaint in the English language on July 10, 2014.
The Center verified that the Complaint and the amended Complaints 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 July 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2014.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on August 6, 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 corporation which is the majority shareholder of Dyadem SAS (formerly Dyadem SA), a computer supplies distributor headquartered at the same address as the Complainant in Parçay-Meslay, France. The Complainant is the owner of DYADEM, a French trademark first registered on November 4, 1997 under number 97 703 019 (“the Mark”).
The Complainant's subsidiary Dyadem SAS is the registrant of the domain names <dyadem.fr> and <dyadem-sa.com>, which resolve to its online sales website.
The disputed domain name <dyaden-sa.com> was created on October 9, 2013 and resolves to a website displaying the Mark on pages which are almost identical to those of Dyadem SAS's website.
(i) The Complainant submits that the disputed domain name reproduces the Mark in which the Complainant has rights, and is confusingly similar to the Mark insofar as the disputed domain name, <dyaden-sa.com>, is identical to the Mark save for its last letter, “m”, which in the principal component of the disputed domain name has been replaced by an “n”. The Complainant also asserts that the addition of a hyphen and of the generic letters “sa” does not serve to distinguish the disputed domain name <dyaden-sa.com> from the Mark and only adds to the confusion.
(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 permitted in any way the Respondent to register or use the Mark as a domain name.
(iii) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith and is using the disputed domain name in connection with a website displaying the Mark and the pages of which are copies of those appearing on the website operated by its subsidiary Dyadem SAS.
(iv) The Complainant submits that by registering the disputed domain name, the Respondent sought to misleadingly divert consumers for commercial gain.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is English.
Although the website to which the disputed domain name resolves appears entirely in the French language, the Complainant did not specifically request that the proceeding take place in the French language, but rather submitted an amended Complaint in the English language, thus showing its ability to understand and use that language.
Considering the lack of a request from the Complainant to use the French language, as well as the fact that no detriment or burden shall be created for the Complainant by the use of the English language since its amended Complaint is in that language, the Panel determines that there is no need to decide to use a language other than that of the registration agreement, and that, pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English.
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 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.
This disputed domain name <dyaden-sa.com> is almost identical to the Mark owned by the Complainant, which it replicates almost entirely in its principal component, save for its final letter.
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; Allstate Insurance Company v. Acme mail, WIPO Case No. D2010-2162; Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; Confédération Nationale du Crédit Mutuel v. Web Advertising Corp., WIPO Case No. D2007-0655; and Hunter Douglas Industries, BV, and Hunter Douglas Window Fashions, Inc. v. Erik Little, WIPO Case No. D2005-0460.
Besides, the addition of generic or descriptive terms does not generally serve to distinguish a domain name from a registered trademark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu, WIPO Case No. D2006-0318.
In this case, the Panel finds that the suffix “sa” of the disputed domain name <dyaden-sa.com> is in many French-speaking countries descriptive of a corporation (those two letters being the acronym of “Société Anonyme”), and that the principal component of the disputed domain name remains “dyaden”, a rather obvious misspelling of the Mark.
Consequently, the Panel finds that the similarity between the disputed domain name and the Mark is such as to create 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 with regard to paragraph 4(a)(ii) of the Policy 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 paragraph 4(c) of the Policy shifts the burden of production of evidence 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.
The website associated with the disputed domain name displays the Mark and products similar to those offered for sale by the Complainant's subsidiary, Dyadem SAS, on its website.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
On the contrary, the Complainant has argued that the Respondent: (i) has no rights or legitimate interests in the disputed domain name and (ii) has not been permitted in any way by the Complainant to register or use the Mark as a 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 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 confusingly similar to the Mark.
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a trademark by any entity that has no relationship to that trademark 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; and Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
In this case, the Panel notes that the disputed domain name contains an obvious misspelling of the Complainant's Mark and that the website to which the disputed domain name resolves offers products competing with those sold online by the Complainant’s subsidiary. The Complainant contends that the pages on that website are copies of those appearing on the website operated by its subsidiary.
Thus, it is close to impossible that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
Where the 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 held that bad faith use of a domain name by a 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.
The Complainant has also argued and provided evidence that the disputed domain name is used to divert Internet users for commercial gain.
The Panel notes that the website to which the disputed domain name resolves is likely to have directly or indirectly generated revenue for the Respondent or whoever is responsible for the uploading of the content. The fact that it might not be the Respondent who has derived the gain is irrelevant. See Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
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; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel finds 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 Respondent’s 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 <dyaden-sa.com> be transferred to the Complainant.
Louis-Bernard Buchman
Sole Panelist
Date: August 20, 2014