The Complainant is ADA of Clichy, France, represented by Me Marie-Hélène Fabiani, L&P Avocats, France.
The Respondent is ADA Santo Domingo, adasantodomingo.com of Santo Domingo, Dominican Republic.
The disputed domain name <adasantodomingo.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
The Complaint, in the French language, was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2017. On November 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2017, 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 and stating that the language of the registration agreement is English.
On November 17, 2017, the Center sent a communication to the Parties, inviting the Complainant either to submit satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in French, or to submit the Complaint translated into English, or to submit a request for French to be the language of the administrative proceedings. The Respondent was also invited to submit comments. On November 21, 2017, the Complainant submitted a request for French to be the language of the proceedings. The Respondent did not reply to this request.
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 and 4, the Center formally notified the Respondent of the Complaint, with a cover note in both English and French, and the proceedings commenced on November 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2017. In its November 28, 2017 communications to the Respondent the Center informed the former that the Complaint was in French and that the Respondent could reply in English or French and/or request an English version of the Complaint, but that the ultimate decision as to the language(s) to be used would be made by the appointed panelist. The Respondent did not submit any response on the language issue or on the merits. Accordingly, the Center notified the Respondent’s default on December 22, 2017.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on January 12, 2018. 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.
A threshold issue here to be determined is the language of the Panel decision. Paragraph 11 of the Rules provides that, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise. In the instant case the language of registration agreement is English. The Complainant, both in the Complaint and in its reply to the Center’s email concerning the language of the proceedings, has submitted, notably, that the disputed domain name resolves to a website in French, that the Respondent markets mainly to French-speaking customers and understand French, and thereupon maintained that French should be the language of the proceeding. The Respondent did not reply to the Complainant’s request for French to be the language of the proceedings.
The Panel considers, in application of paragraph 11 of the Rules, that it is more appropriate that its decision be in English. This said there is here no due process or other concern that would require the Complaint to be translated into English; the Respondent has not asked for it, and appears not to need it, and the undersigned Panelist is fluent in both languages.
The Complainant is an internationally-known French company in the business of renting cars and vans; it holds two Dominican Republic trademarks for ADA first registered on March 30, 2002 and on May 30, 2006 (with logo) respectively. An annex to the Complaint also lists numerous other trademarks of the Complainant. The Complainant actively markets its services on the Internet, notably through its website “www.ada.fr”.
The disputed domain name was registered on April 21, 2015.
On January 16, 2018 the Panel visited the website to which the disputed domain name resolves and found it to be an English-language web hosting proposing a variety of travel and tourist services, including car rental. The Complaint submits, as its Annex 2, a screenshot of the website to which the disputed domain name is said earlier to have resolved, which shows a French-language website largely dedicated to car rental, and comporting the Complainant’s registered logo; that website presented itself as offering rental from ADA (“louez chez ADA”).
The Complainant alleges that the Respondent is in bad faith making use of its trademarks to attract customers who are then offered a car rental service that is identical to the service offered by the Complainant.
In so doing the Respondent is, the Complainant alleges, deliberately creating, and has actually created, confusion and a false association between its trademarks and business and the website at the disputed domain name. The Respondent is alleged to have no rights in the Complainant’s trademarks and its registration and use of the disputed domain name is alleged to be in bad faith.
Thereupon the Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name begins with and contains the entirety of the Complainant’s trademarks; the additional term “Santo Domingo” is a geographical term which does not significantly diminish the reference to the ADA trademark, and corresponds to where the Respondent’s business is apparently based. As such the disputed domain name is confusingly similar to the Complainant’s trademarks, with the consequence that the Complainant has met its burden under paragraph 4(a)(i) of the Policy.
A complainant needs to establish at least a prima facie case showing that the respondent has no rights or legitimate interests in respect of the disputed domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such a prima facie case is made, the burden shifts to the respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. See also, Meizu Technology Co., Ltd v. “osama bin laden”, WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
In the present case the Complainant has asserted that the Respondent has no right to use its trademarks in the disputed domain name or otherwise, that it has no business relationship with the Respondent, and that it has no knowledge or belief of any legitimate interests or rights of the Respondent in the disputed domain name.
Furthermore, nothing in the file for this matter suggests that the Respondent has any rights or legitimate interests in the disputed domain name, or that it is known by such a name. The Respondent has not, moreover, asserted any rights in the disputed domain name nor answered the Complaint or the cease-and-desist letters sent to it by the Complainant.
The Complainant has accordingly met its burden under paragraph 4(a)(ii) of the Policy.
The evidence and allegations in the file sufficiently demonstrate that the disputed domain name was both registered and used in bad faith.
In particular, it is clear that the disputed domain name was registered long after the Complainant registered its trademarks and that the disputed domain name was used to attract Internet users for commercial gain, including in a website advertising a business directly competitive with that of the Complainant and which displayed the Complainant’s trademark and logo. The Respondent thus registered and then used the disputed domain name in order intentionally to attract customers to its website by letting them believe that it was affiliated with the Complainant or its business.
It follows that the elements of paragraph 4(a)(iii) of the Policy are also here proven.
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 <adasantodomingo.com> be transferred to the Complainant.
Nicolas Ulmer
Sole Panelist
Date: January 17, 2018