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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Ipsos S.A. v. Chesterton Holdings

Case No. D2006-1024

 

1. The Parties

The Complainant is Ipsos S.A., Paris, France, represented by Wm. Charles Saunders, United States of America.

The Respondent is Chesterton Holdings, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <ipsosearch.com> is registered with NameKing.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2006. On August 12, 2006, the Center transmitted by email to NameKing.com, Inc. a request for registrar verification in connection with the domain name at issue. On August 14, 2006, NameKing.com, Inc. 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 September 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 3, 2006.

The Center appointed David J. A. Cairns as the Sole Panelist in this matter on October 16, 2006. 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

Ipsos, S.A. is a publicly listed company formed under the laws of France, providing survey-based research services around the world. These services include research concerning marketing, advertising, customer satisfaction and loyalty, public opinion and media.

The Complainant owns U.S. trademark registration No. 1,747,049 for the word mark IPSOS in respect of, inter alia, “business management services; conducting business and market research surveys in the field of politics, economics, social affairs, leisure, cultural activities and commercial affairs”. It also owns U.S trademark registration No. 2,627,084 for a design mark consisting of the profile of a human face profile above the word “Ipsos”. The Complainant owns further registrations for these service marks in many countries throughout the world (hereafter the “IPSOS Service Marks”).

The Complainant operates a website at the domain name <ipsosresearch.com> through its wholly-owned subsidiary Ipsos-NPD Canada, Inc. The home page at this website refers to the research and survey services provided by the Complainant.

The Respondent is Chesterton Holdings, with an address in Los Angeles, California, United States of America. The Respondent registered the disputed domain name <ipsosearch.com> on June 10, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has used the IPSOS Service Marks since its founding in 1975 in connection with survey-based research services through its subsidiary companies around the world. It states that its revenues for 2005 exceeded € 717 million, and that the IPSOS Service Marks have become well and favorably known in North America and around the world.

The Complainant contends that the Respondent is an alter ego and/or affiliate of ‘the notorious cybersquatter LaPorte Holdings/Horoshiy, Inc./Henry Chan’. The Complainant relies on evidence annexed to the Complaint to show: (i) that the same domain name server hosts the domain names <chestertonholdings.com>, <laporteholdings.com>, <juccoholdings.com>, <munchaleholdings.com>, <hornbrookholdings.com>, <hornbrookcompany.com> and <fieldlakeandsky.com>; (ii) that the websites hosted by these domain name are practically identical; (iii) that these domain names are owned by the Respondent (<chestertonholdings.com>) and three other organizations called LaPorte Holdings (<laporteholdings.com>), Munchale Holdings (<munchaleholdings.com>) and Jucco Holdings (<hornbrookholdings.com>, <hornbrookcompany.com> and <fieldlakeandsky.com>); (iv) that the owners of these domain names use different post office box numbers, but are all located in the same store in the city of Los Angeles; except for La Porte Holdings which uses a post office box located in a nearby ‘UPS store’; (v) that the all the domain names mentioned were registered through the same registrar.

The Complainant states that the disputed domain name is confusingly similar to the IPSOS Service Marks since it is formed by conflating the Complainant’s IPSOS service mark with the term ‘search’, such that the last ‘s’ in the IPSOS service mark becomes also the first ‘s’ in the word ‘search’. It states that the term ‘search’ is generic or descriptive in respect of a survey based research company such as the Complainant that ‘searches’ for data for its clients. It contends that confusion arising from the disputed domain name is even more likely due to the current use by its Canadian subsidiary of the domain name <ipsosresearch.com> to provide research services.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence of the use, or demonstrable preparation to use, of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services. Further, the Complainant states that the Respondent is not making a legitimate non-commercial of fair use of the domain name because it is using it to divert consumers to the Respondent’s websites for commercial gain. The Complainant submits that the disputed domain name leads to a site with ‘sponsored links’ and ‘pop up ads’ which provide compensation to the Respondent.

The Complainant denies having ever been affiliated to the Respondent or having authorized, licensed or granted any right to the Respondent to use the IPSOS Service Marks or to register the disputed domain name. The Complainant states that it is unaware of any evidence that the Respondent has been commonly known by the domain name.

Finally, the Complainant submits that the disputed domain name should be considered as having been registered and used in bad faith by the Respondent. According to the Complainant, the Respondent intentionally attempted to attract for commercial gain, internet users, 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 of a product or service on the Respondent’s website. Further, the Complainant contends that the repeated pattern of bad faith domain name registrations by the Respondent’s alter egos and affiliates supports a finding of bad faith, especially as LaPorte Holdings has previously been ordered by a WIPO Panel to transfer two domain names to the Complainant involving misspellings of the <ipsosresearch.com> domain name (see Ipsos S.A. v. LaPorte Holdings, WIPO Case No. D2005-0859).

B. Respondent

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

 

6. Discussion and Findings

The Panel is required to 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 appropriate.

The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant owns the IPSOS Service Marks.

The disputed domain name is not identical with the IPSOS word mark, but does incorporate this mark entirely. The fact that a trademark is incorporated in its entirety in a domain name is a solid indication, but does not ipso facto mean, that the domain name is confusingly similar to the trademark. The similarity of the trademark and the domain name depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin” (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870).

In the present case, the disputed domain name is confusingly similar to the IPSOS word mark for the following reasons: (i) the disputed domain name conflates the mark IPSOS and the word ‘search’ so both elements share a single ‘s’ but visually and phonetically the disputed domain name is composed of the Complainant’s word mark and the word ‘search’; (ii) ‘Ipsos’ is an invented word and is inherently distinctive; (iii) ‘search’ is an ordinary descriptive word; (iv) ‘search’ describes a commercial activity of the Complainant and is also visually and phonetically similar to the word ‘research’ which describes the Complainant’s business and forms part of its domain name, thereby confirming the trademark function of the ‘ipsos’ element of the disputed domain name; (v) the IPSOS Service Marks are well known and Internet users will associate the disputed domain name with the Complainant’s service marks.

Accordingly, the Panel finds that the first element required by the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the IPSOS Service Marks or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) there is no evidence of use, or demonstrable preparation to use the domain name in connection with a bona fide offering of goods and services; and there is no evidence of legitimate non-commercial or fair use of the disputed domain name.

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. Paragraph 4(c)(ii) and (iii) of the Policy are not applicable in this case, because the Respondent is not commonly known by the disputed domain name, and there is a use with the intention of commercial gain of the disputed domain name, through sponsored links and advertisements.

Further, paragraph 4(c)(i) does not apply because the Respondent is not using the domain name in connection with “a bona fide offering of goods or services”. It is using a domain name confusingly similar to the Complainant’s Service Marks to attract Internet users, who are then offered a range of links to sites relating to surveys and polling. The Panel accepts the Complainant’s submission that these sites compete with the Complainant’s services. “The use of the Complainant’s trademark to offer for sale or to direct customers to the products of the Complainant’s competitors is objectionable, and therefore not bona fide, as a misleading use of a trademark, as a form of unfair competition, and also for reasons of consumer protection, as it amounts to a form of ‘bait and switch’ selling”: See Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946 (referring to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088).

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

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.

In particular, paragraph 4(b)(iv) states that if the Panel finds that the Respondent has used the domain name to intentionally attempt 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, it should be taken as evidence of the registration and use of the domain name in bad faith.

The Panel finds that the evidence submitted by the Complainant is sufficient to support a finding of bad faith under paragraph 4(b)(iv). The Respondent’s use of the disputed domain name with the intention to attract Internet users for commercial gain can be presumed from sponsored links and pop-up advertisements on its website. The likelihood of confusion is as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the IPSOS Service Marks and the Complainant’s own domain name. The fact that the Respondent’s website at the disputed domain name includes links to sites offering the same type of services as the Complainant aggravates the likelihood of confusion, and is corroborative evidence of bad faith.

Further, the Panel is satisfied that the Respondent and LaPorte Holdings are the same entity, that the Respondent has engaged in a pattern of registering domain names in bad faith, and that the Respondent has been found in another UDRP proceeding to have registered domain names confusingly similar to the IPSOS Service Marks (see Ipsos S.A. v. LaPorte Holdings, WIPO Case No. D2005-0859).

As a result, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.

 

7. Decision

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 name <ipsosearch.com> be transferred to the Complainant.

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David J.A. Cairns
Sole Panelist

Dated: October 30, 2006