The Complainant is Car&Boat Media, France, represented by Inlex IP Expertise, France.
The Respondent is Jane Dew, United Kingdom.
The disputed domain name <caradisiac-publicite.com> is registered with DropCatch.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2020. On March 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2020.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on May 8, 2020. 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, Car&Boat Media, is a French simplified Joint Stock company, which produces classified ads and editorials in the automotive field.
The Complainant has obtained registrations for the CARADISIAC trademark since 2000, mainly in France, namely:
- French Trademark No. 4167779, registered on March 25, 2015;
- French Trademark No. 3847263, registered on July 20, 2011;
- French Trademark No. 3052023, registered on September 15, 2000;
- French Trademark No. 3046447, registered on August 11, 2000;
- European Union Trademark No. 2125748, registered on March 12, 2001.
Furthermore, the Complainant is the owner of the domain names <caradisiac.com> and <cardisiac.fr>.
According to the Complainant and the publicly available WhoIs information, confirmed by the Registrar, the disputed domain name <caradisiac-publicite.com> was registered on September 26, 2019. At the time the Complaint was submitted, the disputed domain name resolved to a parking page and to a website, which offered the disputed domain name for sale.
On November 27, 2019, the Complainant made a Bailiff’s report.
On December 31, 2020, the Complainant’s authorized representatives sent an e-mail to the e-mail address of the Respondent informing the Respondent about the Complainant’s trademarks and proposed to resolve the dispute amicably. A reminder was sent on January 6, 2020. The Respondent failed to reply.
The Complainant submits that the disputed domain name is confusingly similar to its asserted trademarks CARADISIAC and domain names. The Complainant contends that the disputed domain name contains the Complainant’s trademarks in their entirety and that the addition of the term “publicite” (“advertising”, in English) is only descriptive. Furthermore, the Complainant asserts that the addition of the term “publicite” is not essential and that it is thus inevitable that the average Internet user confuses the disputed domain name with those of the Complainant – even more so as it is common that one trademark owner may own several related domain names containing its trademark.
The Complainant asserts that the Respondent has no rights in respect of the disputed domain name: Neither has the Complainant granted a license or authorization to use the sign CARADISIAC nor is another CARADISIAC trademark or another company with this title registered. Additionally, the Complainant submits that the Respondent has no legitimate interests in respect of the disputed domain name. The Complainant contends that by using an almost identical sign and by addressing the same French audience, the Respondent aimed to benefit from an impression of affiliation of the Respondent and the Complainant. Furthermore, the Complainant submits that the Respondent must have known that CARADISIAC was used in France for identical activities when the disputed domain name was registered as it was registered 19 years after the registration of the Complainant’s trademark. In addition, the Complainant asserts that a Google search mainly yields results, which point to the Complainant while the name of the Respondent is not generally known. Lastly, the Complainant submits that the Respondent is not engaged in any real activity under the disputed domain name, which as well indicates the absence of a legitimate interest in respect of the disputed domain name.
Finally, the Complainant submits that the disputed domain name was also registered and is being used in bad faith. The Complainant contends that the Respondent must have known that the CARADISIAC trademark was already used in France due to its long-standing history (19 years) and its top-listed Google search results. According to the Complainant, by adding “publicite” to the disputed domain name the Respondent herself implies that she has been aware of the Complainant’s trademarks and deliberately created a link to the Complainant. With regard to the use in bad faith, the Complainant contends that while the disputed domain name was resolving in a parking page and to a website offering the disputed domain name for sale, the disputed domain name was used in a fraudulent way. The fact that the website of the Respondent did not provide sufficient contact information underlines this, according to the Complainant. Furthermore, the Complainant points to the “good referencing” of the Complainant’s website and submits, that, therefore, it is likely that the Respondent sought to take advantage of the latter, which also indicates use in bad faith.
The Complainant therefore requests transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
In order to prevail with its Complaint, the Complainant must prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the disputed domain name;
(iii) the disputed domain name was registered and is being used in bad faith.
The Respondent’s default in the case at hand does not automatically result in a decision in favor of the Complainant. However, paragraph 5(f) of the Rules provides that if a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the complaint. Further, the Panel may draw such inferences as are appropriate from a respondent’s failure to submit a response.
The Complainant has established that it has rights in the CARADISIAC trademark, by virtue of its registration and use, details of which are provided above in the factual background.
In a case, where the domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to the mark, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (hereinafter “WIPO Overview 3.0”), section 1.7. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element, see WIPO Overview 3.0, section 1.8.
In the present case, the disputed domain name contains the Complainant’s trademark in its entirety, followed by a hyphen and the French term “publicite” (“advertising”, in English). Since the Complainant’s trademark is recognizable within the disputed domain name, the term “publicite” (“advertising” in English language) does not prevent a finding of confusing similarity. The addition of the hyphen does not affect this conclusion.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which respondents may establish rights or legitimate interests in a disputed domain name, namely:
(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
It is well established that after a complainant makes a prima facie case, the burden of production of evidence shifts to the respondent to come forward with relevant evidence, see WIPO Overview 3.0, section 2.1. In the present case, any right or legitimate interest of the Respondent is not evident. Taking into account, that the Respondent failed to provide any evidence, the Complainant only has to establish a prima facie case that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.
According to the Complainant’s submissions, the Respondent does not own a CARDISIAC trademark and has not been authorized to utilize the Complainant’s CARADISIAC trademark. Therefore, the Respondent has no right to use the Complainant’s trademark as part of a domain name for purposes of the Policy (Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Caesars World, Inc. and Park Place Entertainment Corporation v. Japan Nippon, WIPO Case No. D2003-0615; AT&T Corp. v. Roman Abreu d/b/a Smartalk Wireless, WIPO Case No. D2002-0605; America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase, Inc. v. Analytical Systems, WIPO Case No. D2004-0360; San Lameer (Pty) Ltd. and Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd., supra).
The main factors for the assessment of the legitimate interest in a fair use are: the nature of the domain name, the circumstances beyond the domain name and the commercial activity conducted by the Respondent (see WIPO Overview 3.0, section 2.5). As stated above, the disputed domain name is confusingly similar to the Complainant’s trademark and links directly to the Complainant’s business activities. From the evidence at hand it does not emerge that this confusion is prevented through the content of the website. Further, the fact that the Respondent did not provide sufficient contact information and did not reply to the e-mail of the Complainant’s authorized representatives indicates a lack of legitimate interest in a bona fide use of the disputed domain name. Considering the evidence provided by the Complainant, it is likely that the Respondent knew about the Complainant’s trademarks when registering the domain name and thus deliberately provoked the impression of affiliation. At the time the Complaint was submitted, the Respondent’s commercial activity under the disputed domain name was the attempt to sell the disputed domain name itself. This does not establish a bona fide use. Demonstrable preparations for any legitimate use are not apparent. Hence, a legitimate interest of a bona fide offering of goods must be denied and 4(c)(i) of the Policy is not relevant.
For the foregoing reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and thus that the Complainant has established the second element under the Policy set forth by paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. According to paragraph 4(b)(iv) of the Policy, bad faith can be found in the registration and use of the domain name, with an intentional attempt to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
With regard to the evidence submitted by the Complainant, the Panel finds that the Respondent must have had the Complainant in mind when registering the disputed domain name. Considering the Google search results in favour of the Complainant and the large audience the Complainant’s website reaches, it is highly likely that the Respondent aimed to create a likelihood of confusion and to take advantage of the goodwill associated with the Complainant. The fact that the Respondent, an allegedly English domain name registrant, chose to add a French term to the Complainant’s trademark, which is directly related to the field the Complainant is active in, supports this assessment. Thus, the Respondent registered the disputed domain name in bad faith.
It follows, that also the use of the disputed domain name must have been in bad faith for the foregoing reasons. Further, the fact that the Respondent attempted to sell the disputed domain name, did not provide sufficient contact information and did not reply to the e-mail of the Complainant’s authorized representatives proposing to resolve the dispute amicably indicates the bad faith of the Respondent.
As the Respondent failed to provide evidence to the contrary, the Panel holds that the disputed domain name was registered and is being used in bad faith and that the Complainant has established the third element under the Policy set forth by paragraph 4(a)(iii).
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, <caradisiac-publicite.com> be transferred to the Complainant.
Andrea Jaeger-Lenz
Sole Panelist
Date: May 22, 2020