WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bal Du Moulin Rouge v. Munetaka Sugimoto, Yatagarasu Co., ltd

Case No. D2021-0862

1. The Parties

The Complainant is Bal Du Moulin Rouge, France, represented by Casalonga Avocats, France.

The Respondent is Munetaka Sugimoto, Yatagarasu Co., ltd, Japan.

2. The Domain Name and Registrar

The disputed domain name <moulinrouge.nagoya> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2021. On March 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 2021, 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 14, 2021 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 in English on April 15, 2021.

On April 14, 2021, the Center transmitted an email communication to the Parties in Japanese and English regarding the language of the proceeding. On April 15, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 and 4, the Center formally notified the Respondent in Japanese and English of the Complaint, and the proceedings commenced on April 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021.

On April 21, 2021, the Center received the Respondent’s email in English and Japanese, with its English version stating, among others, “we are a website production company, and we only applied for the domain name on behalf of below company, and are not the actual owner”, and provided contact details of such “actual owner”. See paragraph 6.1B below for further details. So far there has been no communication received from that person who was described by the Respondent as the “actual owner” as above. The Respondent did not submit any formal response by the specified deadline.

On May 30, 2021, the Center informed the Parties that it would proceed to panel appointment.

On June 4, 2021, the Center appointed Teruo Kato as the sole panelist in this matter. 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.

4. Factual Background

According to the Complaint, the Complainant, Bal Du Moulin Rouge, is a French public limited company created in 1889 and its Moulin Rouge is a tourist attraction, offering musical dance entertainment for visitors from around the world.

The Complainant owns, among others, International trademark No. 1161068 for MOULIN ROUGE (device), registered on September 17, 2012, International trademark No. 1016676 for MOULIN ROUGE (word), registered on June 12, 2009, and International trademark No. 613199 for MOULIN ROUGE (word), registered on February 2, 1994, all of which include Japan as one of the designated jurisdictions, as more particularly set out in paragraph 6.2A below.

The disputed domain name <moulinrouge.nagoya> was registered on December 22, 2020.

The Respondent is Munetaka Sugimoto acting on behalf of the company Yatagarasu Co., ltd. of Japan, who asserts that the Respondent is holding the disputed domain name for a third party (the “beneficial holder”), as more particularly set out in paragraph 6.1B below.

According to the Complaint, the disputed domain name redirected the Internet users to “a fraudulent website, which reproduces the MOULIN ROUGE trademarks of the Complainant to promote a club in Nagoya”.

At the time of this Decision, the disputed domain name resolves to an inactive page which displays a statement in Japanese to the effect that this domain is operated by Onamae.com rental server.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it is the owner of various trademarks including the terms “Moulin Rouge”.

The Complainant also contends that the disputed domain name identically adopts the MOULIN ROUGE trademark and that the disputed domain name is confusingly similar to the Complainant’s MOULIN ROUGE trademark.

The Complainant further contends that the Respondent is not a licensee, an authorized agent of the Complainant, or in any other way authorized to use the Complainant’s trademark MOULIN ROUGE, and that the Respondent is not commonly known by the disputed domain name as an individual, business, or other organization, and that the Respondent does not make any bona fide use or trade under the disputed domain name.

The Complainant also contends that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not submit a formal Response. The Respondent sent one email to the Center as set out in details in paragraph 6.1B below.

6. Discussion and Findings

6.1 Preliminary Issues

A. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise having regard to the circumstances of the administrative proceeding.

The Complainant submitted its Complaint in English and contended that the language of the Registration Agreement was English. To support this the Complainant submitted a copy of a document entitled “Domain Name Registration Policies (Version 1.3, June 10, 2014)”.

The Panel notes that this document is currently available on the website of the Registrar and that it is written entirely in the English language, with its Article 4.5 (Language) stating that “All communications, notices, designations and specifications made under this Agreement shall be in the English language”.

Subsequent to the submission of the Complaint by the Complainant, however, the Registrar has confirmed to the Center that Japanese is the language of the Registration Agreement for the dispute domain name.

The Complainant then amended its Complaint, in which it requests that the language of the proceeding be English. It contends, among others, that, if Japanese were the language of the proceeding, it would cause an unfair burden to the Complainant and would delay the proceeding.

On April 14, 2021, the Respondent was invited by the Center, in both Japanese and English, to indicate any objection to the proceeding being conducted in English by April 19, 2021. The Respondent did not comment on the language of the proceeding.

On April 20, 2021, in its email in Japanese and English of notification of the Complaint, the Center informed the Respondent that given the provided submissions and circumstances of this case, it has decided to “1) accept the Complaint as filed in English; 2) accept a Response in either English or Japanese; 3) appoint a Panel familiar with both languages mentioned above, if available.” Accordingly, the Panel would have accepted a Response in Japanese, but no formal Response was submitted by the Respondent.

As already stated in paragraph 3 above, the Center received the Respondent’s email on April 21, 2021 in English and Japanese, and the Panel is satisfied that the Respondent has a good command in the English language.

In the circumstances, in accordance with paragraph 11(a) of the Rules, the Panel decides that English be the language of the proceeding.

B. Respondent’s identity

As already stated in the paragraph 3 above, the Respondent sent an email to the Center on April 21, 2021, stating “we are a website production company, and we only applied for the domain name on behalf of below company, and are not the actual owner. We are not the actual owner of the domain, and we have no relationship with any business associated with the domain. The three e-mails [the Center’s notification of the Complaint] we have received so far have already been forwarded to the rights holders. If you wish to contact about file a complaint in the future, please do so directly with the parties involved in the domain in question, not with us”. The Respondent also provided the contact details of such beneficial holder under the heading of ‘“moulinrouge.nagoya” domain owner.

The Panel has examined the implication of the above email from the Respondent as set out below.

The Panel notes that paragraph 1 of the Rules defines Respondent as “the holder of a domain-name registration against which a complaint is initiated” and that the appointed panel retains discretion to determine the respondent against which the case should proceed (see Section 4.4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In exercising their discretions in similar circumstances, previous UDRP panels generally considered, among others, (i) whether the identity of the beneficial holder is disclosed, (ii) whether the beneficial holder submits arguments explaining its position, or (iii) whether the relationship between the registrant of the domain name and the beneficial holder is clear (see Bryan Cave Leighton Paisner LLP v. Job, WIPO Case No. D2020-0592).

In the present case, the Panel notes that the WhoIs Record obtained by the Complainant on March 17, 2021 revealed no identity of the Registrant, and as such the Complainant submitted its initial Complaint to the Center on March 23, 2021, with the Respondent being described as “Not disclosed”.

In response to an enquiry from the Center, the Registrar revealed the identity of the registrant as “Munetaka Sugimoto, Yatagarasu Co., ltd” on March 24, 2021, and the Complainant submitted its amended Complaint against the disclosed registrant on April 15, 2021, which was also copied to the disclosed registrant on the same date. The proceeding formally commenced on April 20, 2021.

Further, the Panel notes that on April 20, 2021 the Center posted a message onto the enquiry section of the website at the disputed domain name, advising, in essence, of the commencement of the proceeding, with the due date for the Response being May 10, 2021, both in English and Japanese.

Although the listed registrant “Munetaka Sugimoto, Yatagarasu Co., ltd” indicated on April 21, 2021 that it had forwarded the Center’s notification of the Complaint emails to the beneficial holder, the Panel notes that such beneficial holder has not come forward during the course of the present proceeding. The Panel also notes that there is nothing found in the contents of the web page at the dispute domain name which would indicate a clue to verify the identity of the beneficial holder as contended by the listed registrant.

Taking the above facts into consideration, in particular, the silence of the beneficial holder, the Panel finds in the present case that there is no evidence made available to the Panel on the existence and nature of any relationship between the listed registrant and the beneficial holder, which would allow the Panel to consider that the beneficial holder should be treated as a further Respondent.

Further, the Panel holds that the statement by the listed registrant to the Center that “If you wish to contact about file a complaint in the future, please do so directly with the parties involved in the domain in question, not with us” does not warrant considering a release of the listed registrant from being the Respondent.

In light of the above, the Panel considers appropriate to find that “Munetaka Sugimoto, Yatagarasu Co., ltd” is the sole Respondent in this proceeding.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Panel must determine whether (a) the Complainant has a trademark or service mark; and (b) whether the disputed domain name is identical or confusingly similar to that trademark or service mark.

The Complainant submitted evidence of various trademark registrations and the Panel is satisfied that the Complainant is the owner of MOULIN ROUGE registered trademarks, including among others:

- International trademark No. 1161068 for MOULIN ROUGE (device), registered on September 17, 2012, designating multiple jurisdictions, including Japan, covering goods and services in classes 3, 4, 9, 11, 14, 16, 18, 20, 21, 24, 25, 26, 28, 29, 30, 32, 33, 41 and 43;

- International trademark No. 1016676 for MOULIN ROUGE (word), registered on June 12, 2009, designating multiple jurisdictions, including Japan, covering goods and services in classes 3, 9, 11, 14, 16, 18, 20, 21, 24, 25, 32, 33, 41 and 43; and

- International trademark No. 613199 for MOULIN ROUGE (word), registered on February 2, 1994, designating multiple jurisdictions, including Japan, covering goods in class 33.

As to the confusing similarity element for the purposes of the Policy, the Panel has proceeded to compare the disputed domain name to the MOULIN ROUGE trademark in which the Complainant has rights.

Section 1.11.1 of the WIPO Overview 3.0 states that “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. Further, section 1.11.2 of the WIPO Overview 3.0 states that “[t]he practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to ‘new gTLDs’)”. The Panel finds no reason why this established practice should not be applied to the present case, and accordingly the TLD “Nagoya” is disregarded.

Apart from the TLD, the disputed domain name consists of the Complainant’s trademark MOULIN ROUGE, spelled as one word without a space in between. Given that no blank space is accommodated in domain name registrations, the Panel concludes that the disputed domain name is identical to the Complainant’s trademark.

Accordingly, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a domain name:

(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) 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.

The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of a domain name rests with the complainant in as far as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0).

In the present case, the Complainant contends, among others, that “the Complainant has no relationship whatsoever with the Respondent. No license, permission nor authorization to use the wording MOULIN ROUGE was ever granted to the Respondent by the Complainant” and that “[t]he Respondent is not commonly known by the disputed domain name and has acquired no trademark or service mark rights related to ‘MOULIN ROUGE’ term” and that the disputed domain name “resolves to a website which promotes a club in Nagoya”, and that “the commercial use of the disputed domain name reproducing the MOULIN ROUGE trademarks cannot be considered fair use of the [disputed] domain name as it misleadingly diverts consumers searching for the Complainant’s products and services”.

The Complainant submitted to the Panel documentary materials to support its contentions as above, and the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

By not submitting a substantive response, the Respondent has failed to rebut such prima facie case and has also failed to invoke any of the defenses as set out in paragraph 4(c) of the Policy.

Further, the Panel notes that, generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. (See section 2.5.1 of the WIPO Overview 3.0.)

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

To fulfill the third requirement, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

In order to assess whether the Respondent registered and is using the disputed domain name in bad faith, paragraph 4(b) of the Policy provides non-exhaustive examples constituting evidence of bad faith, which includes the following:

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 that website or location.

In the present case, the Panel notes and accepts that the MOULIN RUGE trademarks had been registered and had been known internationally, including in Japan in the field of theater and musical entertainments, before the disputed domain name was registered on December 22, 2020.

Therefore, irrespective of whether there is a beneficial holder, the Panel holds that the Complainant, its products, and trademarks were known prior to registering the disputed domain name, and noting the composition of the disputed domain name, it was registered precisely with the Complainant’s trademark in mind.

As to the use in bad faith, the Complainant contends, among others, that “[t]he Respondent took clearly an unfair advantage of the efforts and investments made by the Complainant for many years to promote its musical shows and derived products and to make its theater activities well-known over the world” and that “Internet users may believe that the <moulinrouge.nagoya> is the Complainant’s official website and they would be right to expect finding information related with the Complainant. Instead, the disputed domain name directs the Internet users to a night club in Japan, which is trying to pass itself off as the Moulin Rouge’s official club”, and that “the Respondent or any related company is using the website under the <moulinrouge.nagoya> to intentionally misdirect Internet users searching for information about the Complainant or searching for Complainant’s authorized goods and services by creating a likelihood of confusion with the Complainant’s trademarks”.

The Complainant submitted materials to support such contentions, including screen shots of the website at the disputed domain name captured on March 17, 2021.

The Respondent was given an opportunity to raise its objection to the contentions made by the Complainant but has not done so.

Accordingly, the Panel finds that the registration and use of the disputed domain name falls into paragraph 4(b)(iv) of the Policy.

At the time of this Decision, the disputed domain name resolves to an inactive page, but the Panel is satisfied that this would not prevent a finding of bad faith under the doctrine of passive holding. (See section 3.3 of the WIPO Overview 3.3.)

In the circumstances, irrespective of whether there is a beneficial holder, the Panel concludes that the disputed domain name was registered and is being used in bad faith. Therefore, the third requirement of the Policy has been met.

7. Decision

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 <moulinrouge.nagoya> be transferred to the Complainant.

Teruo Kato
Sole Panelist
Date: June 18, 2021