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and Mediation Center
Ipsos S.A. v. LaPorte Holdings
Case No. D2005-0859
1. The Parties
The Complainant is Ipsos S.A., c/o Ipsos America, Inc., represented by Wm. Charles Saunders, Pennsylvania, United States of America.
The Respondent is LaPorte Holdings, Los Angeles, California, United States
2. The Domain Names and Registrar
The disputed domain names <iposresearch.com> and <ipsoresearch.com>
are registered with NameKing.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2005. On August 12, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain names at issue. Also on August 12, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 August 17, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2005.
The Center appointed Dennis A. Foster as the sole
panelist in this matter on September 19, 2005. 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
Complainant Ipsos S.A. has used the IPSOS service marks since its founding in 1975. Complainant provides survey-based research services through its subsidiary companies around the world. These services include research concerning marketing, advertising, customer satisfaction and loyalty, public opinion and media.
The Respondent is an entity that uses the disputed
domain names to link to other domain name websites and to sell pop-up advertising.
The Respondent registered the disputed domain name <ipsoresearch.com>
on December 7, 2003, and <iposresearch.com> on July 7, 2004.
5. Parties’ Contentions
The IPSOS service marks are used by Complainant through its subsidiaries in at least the following countries: Belgium, Czech Republic, France, Germany, Hungary, Italy, Poland, Portugal, Romania, Russia, Spain, Sweden, Ukraine, United Kingdom, Canada, United States of America, Argentina, Brazil, Chile, Colombia, Costa Rica, Dominican Republic, Mexico, Venezuela, Bahrain, Jordan, Kuwait, Lebanon, Saudi Arabia, Syria, United Arab Emirates, Australia, China, Japan, Singapore, and Taiwan, Province of China. Through long and substantial use and advertising, the IPSOS service marks have become well and favorably known in North America and elsewhere in the world.
The Complainant owns U.S. Trademark registration number 1,747,049 dated January 13, 1993, for the IPSOS word mark covering, inter alia, conducting business and marketing research and surveys and opinion polling for business and advertising purposes (Complaint Annex J).
The Complainant operates a website at “www.ipsosresearch.com”.
The disputed domain names are confusingly similar
to the IPSOS service marks as they are misspellings combined with the generic
or descriptive term for the services offered. In determining cases brought under
the Policy against the very same Respondent as in this proceeding, panels have
concluded that “the deletion of a letter from the domain name reproducing
the Complainant’s trademark is not sufficient to serve as a differentiator
between both signs, as it is a mere misspelling of the Complainant’s mark.”
(Societe Francaise du Radiotelephone-SFR v. LaPorte Holdings, WIPO
Case No. D2004-0926 (January 24, 2005) (citing a case against Respondent’s
alter ego, Henry Chan, Southern Communications Services, Inc. d/b/a Southern
LINC v. Henry Chan, WIPO Case No. D2004-0214
(May 10, 2004))).
Moreover, in determining cases brought against Respondent,
panels have concluded that the mere addition of a descriptive term to a misspelled
mark is not sufficient to overcome a likelihood of confusion. (DaimlerChrysler
Corporation, DaimlerChrysler Services North America LLC v. LaPorte Holdings,
WIPO Case No. D2005-0143, (April 1, 2005); BolognaFiere
S.p.A. v. LaPorte Holdings, Inc., WIPO Case No.
D2005-0391 (June 6, 2005)). Indeed, in this case, confusion arising from
Respondent’s <ipsoresearch.com> and <iposresearch.com> domain
names is even more likely because Complainant uses, through its subsidiary,
its domain name <ipsosresearch.com> in providing its research services.
Previous panels have determined that Respondent is the alter ego of Horoshiy, Inc. and Henry Chan.
The Respondent is a prolific cybersquatter.
At least one of the disputed domain names, <ipsoresearch.com>, was previously owned by Horoshiy, and on September 3, 2004 Complainant sent a letter to Horoshiy objecting to its registration of that domain name (Complaint Annex D). At that time, Horoshiy never responded to the letter and Complainant does not know if the address was ever valid and whether it is an address at which Respondent can be contacted. The domain name was later transferred to Respondent.
Complainant is unaware of any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to them in connection with a bona fide offering of goods or services. Complainant and Respondent are not, and have never been, affiliated in any way. Complainant has never authorized, licensed, or otherwise granted any right to Respondent to use the IPSOS service marks in any manner or to register the disputed domain names.
In addition, Complainant is unaware of any evidence that Respondent has been commonly known by either of the disputed domain names. Respondent is not making a legitimate non-commercial or fair use of the domain names.
Prior panels considering Respondent’s similar
activities have concluded that Respondent has no rights or legitimate interests
in the disputed domain names and Complainant submits that Respondent has no
rights or legitimate interests in the domain names disputed in this case. (See,
e.g., Societe BIC v. LaPorte Holdings, LLC, WIPO
Case No. D2005-0342 (June 16, 2005); and Fashion Seal Corporation v.
LaPorte Holdings, LLC, WIPO Case No. D2005-0435
(June 30, 2005)).
Respondent is using the domain names misleadingly for commercial gain to divert consumers to Respondent’s websites. Both Respondent’s <iposresearch.com> and <ipsoresearch.com> domain names lead to sites with links to other websites (Complaint Annexes O and P). Many of the links are “sponsored links”, and Complainant submits that Respondent receives compensation from the sponsored links. In addition, visiting Respondent’s websites generates advertisements including pop-up ads and Complainant submits that Respondent also receives compensation for such advertisements (Complaint Annexes O and P).
Respondent’s repeated pattern of bad faith domain name registrations is itself sufficient to support a finding of bad faith in this case. (DaimlerChrysler Corporation supra).
In addition, Respondent’s bad faith registration
and use is confirmed by its cyberflight. On September 3, 2004, Complainant,
through other counsel, sent a letter to Respondent’s alter ego requesting
that the <ipsoresearch.com> domain name be revoked or transferred to Complainant.
(Complaint Annex D) Thereafter, Horoshiy transferred at least that domain name
to its alter ego, Respondent LaPorte Holdings. Prior panel decisions have found
such transfers in effort to conceal Respondent’s true identity to be evidence
of bad faith registration and use. Societe Francaise supra and The
Knife Company, Inc. d/b/a A.G. Russell Knives, Inc. v. LaPorte Holdings, LLC,
WIPO Case No. D2005-0323, (July 15, 2005).
The two (2) disputed domain names should be transferred to the Complainant.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
In order to obtain transfer of the disputed domain name(s), under paragraphs 4(a)(i-iiii) of the Policy the Complainant must prove:
i. the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
ii. the respondent has no rights or legitimate interests in the disputed domain name; and
iii. the domain was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has attached a copy of its IPSOS service mark, U.S. Principal Registry no. 1747049 dated January 19, 1993, in International Class 16 for use in marketing (Complaint Annex J). The Complainant also has provided evidence of other IPSOS trademark registrations and use in many countries all over the world (Complaint Annexes G,H,I,K). At Annex N, Complainant shows it has used its IPSOS service mark to conduct surveys for the General Motors Corporation, one of the world’s largest motor vehicle manufacturers.
In registering the disputed domain names, the Respondent dropped one letter
from the Complainant’s IPSOS service mark and added the word “research”,
the Complainant’s main business activity. As the Complainant argues, the
Panel agrees that the Complainant’s IPSOS trademark is readily recognizable
after the Respondent’s small change of one letter. Moreover, by adding
the descriptive term for the Complainant’s main business activity—“research”—the
Respondent reinforced the confusing similarity to the Complainant’s IPSOS
service marks. (cf. our same Respondent’s substitution of “cegetl”
for the complainant’s CEGETEL trademark in Societe Francaise du Radiotelephone-SFR
v. La Porte Holdings, WIPO Case No. D2004-0926,
(January 25, 2005), and using “southerlinc” vice SOUTHERN LINC in
Southern Communication Services, Inc. d/b/a Southern LINC v. Henry Chan,
WIPO Case No. D2004-0214 (May 10, 2004).
The Panel finds the Complainant has carried its burden of proof under paragraph 4(a)(i) of the Policy to show the disputed domain names are identical or confusingly similar to the Complainant’s IPSOS service marks.
B. Rights or Legitimate Interests
The Complainant affirms not to have licensed or authorized the Respondent to use its IPSOS service marks. The Panel finds this is a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent, being in default, has not attempted to come forward and establish rights or legitimate interests in the disputed domain names as allowed by paragraphs 4(c)(i-iii) of the Policy.
The Panel observes that the Respondent is making use of the disputed domain names to connect to other websites for profit and to show pop-up advertising. This use is best left for discussion in the Bad Faith section of this decision.
The Panel finds the Complainant has put forth the proof that the Respondent does not have rights or legitimate interests in the disputed domain names per paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s proof that the Respondent’s business practice of using the two disputed domain names to connect to sponsored websites—some in the same business as the Complainant and to show the navigator pop-up advertising along the way is in violation of the bad faith provision of the Policy at paragraph 4(b)(iv). As other panels have found in examining the Respondent’s business practice, using a domain name confusingly similar to the Complainant’s IPSOS service mark to divert consumers and show them advertising as well as send them to sponsored websites implies the Respondent’s strong financial motive. (see both Societe Francaise and Southern Communications supra)
However, the Panel does not believe it is necessary to find bad faith on the grounds the Respondent transferred a domain name after receiving a protest letter dated September 3, 2004, from Complainant’s counsel (Complaint Annex D). This was long before this proceeding. There may well be a cause-effect relationship here but, in any case, the Complainant already has made out a solid bad faith case under paragraph 4(b)(iv) of the Policy.
On the other hand, the Panel does agree with the Complainant that the Respondent or its alter ego has repeatedly been found in other proceedings under the UDRP to have registered domain names in violation of the Policy. The Panel also agrees that this is additional indication of the Respondent’s bad faith here. Other panels confronted with a similar fact pattern have reached a similar finding: even though this is not one of the enumerated bad faith provisions of the Policy, paragraph 15(a) of the Rules gives the Panel the latitude to make this finding (see inter alia Societe Francaise supra).
The Panel finds the Complainant has proved the Respondent
registered and is using the disputed domain names in bad faith per paragraph
4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <iposresearch.com> and <ipsoresearch.com> be transferred to the Complainant.
Dennis A. Foster
Dated: October 3, 2005