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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hachette Filipacchi Presse v. Server Central

Case No. D2005-1273

 

1. The Parties

The Complainant is Hachette Filipacchi Presse, Levallois Perret, France, represented by Markplus International, France.

The Respondent is Server Central, Chicago, Illinois, United States of America.

 

2. The Domain Name and Registrar

The Disputed Domain Name <premierepublishing.com> (the “Disputed Domain Name”) is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2005. On December 10, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Name. On December 10, 2005, eNom 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 December 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 2, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2006.

The Complainant requested a single-member Panel for this Administrative Proceeding and January 16, 2006, the Center appointed Irina V. Savelieva as a Panelist. The Panel finds that it was properly constituted and the Panelist 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

The Complainant, Hachette Filipacchi Presse is a publisher of Premiere magazine first published in 1976 and well-known all over the world. Premiere magazine is a leading international publication in the movie sector (Annex 5 to the Complaint).

The Complainant has registered the trademark PREMIERE in a number of countries including many countries of Europe and the United States of America since 1988.

The Complainant owns the domain names <premiere.com> and <premiere.fr>.

The Disputed Domain Name was registered on July 1, 2002 with eNom.

The Respondent is currently using the Disputed Domain Name for its website “www.premierepublishing.com”. The main function of this website is to link it to other websites offering goods and services.

 

5. Parties’ Contentions

A. Complainant

(a) The Disputed Domain Name is confusingly similar to the trademark of the Complainant:

- The Complainant has registered the trademark PREMIERE in France, the United States of America and other countries worldwide as of 1988 (Annex 4 to the Complaint).

- The name “Premiere” is used as a title of a magazine and for publishing services is known worldwide. The website “www.premier.com” appears at the top of the Google search report (Annex 5 to the Complaint).

- The Disputed Domain Name is confusingly similar to the Complainant’s trademark. The Disputed Domain Name is composed of the trademark PREMIERE and of the word “publishing”. The Complainant’s trademark PREMIERE is clearly the predominant part of the Disputed Domain Name. The Disputed Domain Name presents therefore a high visual, phonetic and conceptual similarity to the Complainant’s trademark PREMIERE.

- The use of a complainant’s trademark in a disputed domain name in addition to a generic term does not eliminate the confusing similarity.

- The Respondent’s domain name contains the exact trademark PREMIERE of the Complainant. The Respondent uses it together with the generic term “publishing” which is a descriptive element for the Complainant’s area of business. The Disputed Domain Name is likely to cause confusion among consumers familiar with the Complainant’s PREMIERE trademark and area of business.

- The word “Premiere” has become a distinctive identifier associated with the Complainant and its good and services. A search on the word “Premiere” through the search engine Google predominantly results in links to the Complainant and its several subsidiaries.

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name:

- There is no indication that the Respondent is known under the Disputed Domain Name.

- The Complainant has not licensed or otherwise permitted the Respondent to use its trademark PREMIERE or to apply for any domain name incorporating this mark.

- The Respondent does not use the Disputed Domain Name for a bona fide offering of goods and services. The Respondent’s use of the Disputed Domain Name consists only of diverting Internet uses to other websites.

- The Respondent operates a business registering and selling domain names, which were not renewed by their previous holders.

- The Complainant submits that there is sufficient prima facie evidence that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.

(c) The Disputed Domain Name was registered and is being used in bad faith:

- The Disputed Domain Name was registered by the Respondent on July 1, 2002 many years after the Complainant and its trademark became well-known worldwide.

- Since its registration the Respondent has never used it as an active website, it is solely used for what is called a “parking” website.

- The Complainant sent a cease and desist letter to the Respondent asking it to proceed with the voluntary withdrawal of the Disputed Domain Name but without success.

- On the Registrar’s website it is possible to negotiate the purchase of the Disputed Domain Name.

- The Respondent registration of the Disputed Domain Name prevents the Complainant from using its registered trademark in a corresponding domain name.

- The Complainant submits that the Respondent has registered and is using the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

However, as noted, the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision based on the Complaint.

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Disputed Domain Name, the Complainant must prove that each of the three following elements are satisfied:

(i) the Disputed 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 respect of the domain name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rule, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

Identical or Confusingly Similar

The Complainant has registered the trademark PREMIERE at the national level:

- in the USA: US trademark No. 1.725.101 PREMIERE filed on January 5, 1990, and renewed in February 2003 in classes 16, 35 and 38; US trademark No. 1.621.130 PREMIERE filed on November 4, 1988, and renewed in February 2001 in classes 16;

- in France: French trademark No. 1.481.861 PREMIERE filed on August 5, 1988, and renewed in 1998, in class 16; French trademark No. 1.218.629 filed on September 3, 1982, renewed in 2002 in classes 9, 35, 41;

- International trademark No. 533.196 PREMIERE registered on December 28, 1988, in classes 9, 16, 41 (Annex 4 to the Complaint).

The Complainant has registered the domain names <premiere.com> and <premiere.fr>.

The Panel finds that the Complainant has proved its rights to registered the trademark “PREMIERE”. The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered trademark PREMIERE. The fact that the Disputed Domain Name includes a second word “publishing”, in the Panel’s view, does not change the overall situation.

The Respondent’s domain name contains the word “premiere”, which exactly represents the Complainant’s trademark PREMIERE. The Respondent uses it together with the generic term “publishing” which is a descriptive element for the Complainant’s area of business. The Disputed Domain Name is likely to cause confusion among consumers familiar with the Complainant’s PREMIERE trademark and area of business.

The use of a complainant’s trademark in a disputed domain name in addition to a generic term does not eliminate the confusing similarity.

The Panel agrees with the Complainant’s arguments that the Disputed Domain Name could be directly associated in the mind of the consumers with the Complainant’s trademarks.

The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802 and many others).

The Disputed Domain Name does not need to be identical to the trademark at issue, the likelihood of confusion is established when a complainant’s mark is contained in a respondent’s domain name (e.g. Cellular One Group v. the Design factory, WIPO Case No. D2000-1670).

The Respondent has not filed any reply to the Complaint or contested the Complainant’s assertions. The Respondent did not present any evidence of having rights in the trademark or trade name “Premiere”.

The Panel finds that Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

The Complainant contends the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainant’s assertions, it is up to the Panel to consider whether the Respondent’s use of the Disputed Domain Name demonstrates rights or legitimate interests in the domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a Respondent’s rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

The Respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i-iii) of the Policy. By not responding to the Complainant’s contentions the Respondent in this proceeding has never attempted to show its rights and legitimate interests.

Firstly, as for the Respondent’s proof under paragraph 4(c)(i) there is no evidence that before any notice of a dispute with the Complainant, the Respondent was using the Disputed Domain Name for a legitimate offer of goods and services. The Respondent does not use the domain name in connection with the bona fide offering of goods and services, according to the standards set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

According to the documents submitted by the Complainant and the subsequent investigation of the Panel the home page of the website under the Disputed Domain Name <premierepublishing.com> displays a list of topics which when clicked on refers to various active websites. The website itself does not offer any goods or services, it provides merely links to other websites.

The Panel finds no evidence that the Respondent was using or is using the Disputed Domain Name for a legitimate offering of goods and services.

Secondly, as for the Respondent’s proof under paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the Disputed Domain Name.

There is no information that the Respondent may be known under the Disputed Domain Name as its business name or its company name. The Complainant contends the Respondent is not commonly known by the Disputed Domain Name.

Thirdly, as for the Respondent’s proof of legitimate non-commercial or fair use under paragraph 4(c)(iii) the Panel believes that there is no evidence of that.

The Respondent registered the Disputed Domain Name on July 1, 2002. The first trademark registration of the Complainant’s trademark PREMIERE dates back to 1988.

The Panel believes that the Respondent knew about the Complainant’s name and registered trademark PREMIERE at the time of the Disputed Domain Name’s registration.

Regarding these facts, it is the Panel’s view that the Respondent probably registered the Disputed Domain Name with the awareness of the Complainant’s products and its quality and reputation.

Thus, the Panel finds that the Respondent’s use of the Disputed Domain Name does not constitute a bona fide offering of services under paragraph 4(c)(i) the Policy, on the contrary, it proves that the Disputed Domain Name has been used in bad faith (see below).

Furthermore, the Panel draws an adverse inference from the Respondent’s failure to respond to the Complaint.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no legitimate rights or interests in the Disputed Domain Name.

Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that the Respondent has registered and used a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the Disputed Domain Name was registered and used primarily for the purpose of confusing the public and diverting public attention from the Complainant’s official website to the Respondent’s website for potential commercial gain.

According to the evidence submitted by the Complainant and an independent search by the Panel of the home page of the website under the Disputed Domain Name <premierepublishing.com>, a list of topics are displayed relating to publishing and entertainment and linked to various other websites and webpages, all of which are types of websites described as “parking” sites.

The Panel finds that the Respondent’s website could have attracted potential attention from the public through the website affiliation with the Complainant’s products and services. At the same time it could create a confusion with the Complainant’s product and trademark as to the source, sponsorship, affiliation or endorsement of the website. The Panel’s independent verification has shown that the Respondent continues to use the Disputed Domain Name in the same manner.

The Panel finds that the Complainant presented circumstantial evidence that the Respondent was and is in violation of provisions of paragraph 4(b)(iv) of the Policy.

The Panel holds that the Respondent “has registered the Disputed Domain Name in bad faith”. The Respondent does not conduct any legitimate business activity using the Disputed Domain Name. The Respondent most likely knew of the Complainant’s product and should be aware of the trademark PREMIERE. These findings, together with the finding that the Respondent has no rights or interests in the domain name, lead the Panel to conclude that the Disputed Domain Name has been registered by the Respondent in bad faith.

The fact that the Respondent’s use of the Disputed Domain Name has created a confusion with the Complainant’s product and trademark under paragraph 4(b)(iv) of the Policy indicates that the Disputed Domain Name has been used and is still used in bad faith.

In addition, the Panel accepts the argument of the Complainant that the Respondent could have registered the Disputed Domain Name with the purpose of selling it later.

The fact that the Respondent failed to respond to the Complaint, in the Panel’s view, adds to the arguments in favor of the Respondent’s bad faith.

The Panel finds the Complainant has shown that the Respondent registered and is using the Disputed Domain Name in bad faith.

 

7. Decision

The Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy. In accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Disputed Domain Name <premierepublishing.com> be transferred to the Complainant.


Irina V. Savelieva
Sole Panelist

Dated: January 30, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-1273.html

 

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