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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ATOL v. Namegiant - Moyobamba Pshp

Case No. D2006-1203

1. The Parties

The Complainant is ATOL, Antony, France, represented by Inlex Conseil, France.

The Respondent is Namegiant - Moyobamba Pshp, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <atol.info> (“Disputed Domain Name”) is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2006. On September 21, 2006, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the Disputed Domain Name. On September 21, 2006, iHoldings.com Inc. d/b/a DotRegistrar.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 September 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2006.

The Center appointed Jacques de Werra as the Sole Panelist in this matter on October 23, 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

The Complainant is a French limited liability company (sociйtй anonyme coopйrative а capital et personnel variable) which was incorporated in 1989 and is operating more than 1000 optical shops in France and in Switzerland. The Complainant is the owner of various word trademarks incorporating the “atol” word which are registered essentially in France and in Switzerland and which include the following trademarks:

- French trademark ATOL registered on September 19, 1988 (registration No. 1489463) for goods in classes 3, 5, 9, 10 and services in class 42;

- Swiss trademark ATOL registered on April 7, 2001 (registration No. 492’744), for goods in classes 3, 5, 9, 10 and services in classes 41 and 42.

The Complainant is also the owner of a French word and device trademark the word elements of which are “ATOL OPTICIENS” and “www.opticiens-atol.com” (“www.opticians-atol.com” in French), registered on January 13, 2003 (registration No. 03 3204339) for goods in classes 3, 5, 9, 10 and services in classes 41 and 42.

The Complainant further owns various other trademarks which are either word trademarks or word and device trademarks containing the “atol” word.

The Complainant operates a website at the address “opticiens-atol.fr”.

The Respondent describes itself on its website (at “www.namegiant.com”) as “one of the largest domain name brokers in the world”.

The Respondent registered the Disputed Domain Name <atol.info> on January 17, 2004.

By a registered letter dated February 6, 2006, the Complainant’s counsel contacted the Respondent in order to request the transfer of the Disputed Domain Name in view of the alleged priority rights of the Complainant on the Disputed Domain Name resulting from the registration of various ATOL trademarks (including the ones mentioned above). In this letter, the Complainant’s counsel claimed that the Disputed Domain Name contained links pointing to websites of competitors of the Complainant.

Based on documents filed by the Complainant consisting of print outs of the Disputed Domain Name dated February 1, February 21 and August 25, 2006, it results that the Disputed Domain Name was offered for sale and that it contained links (written in French) pointing to websites offering products competing with those of the Complainant (i.e. optical products). It also results from these documents that some links refer to services relating to beach holidays on islands, this being most probably due to the meaning of the word “atol” as spelled in some languages (such as Dutch and Portuguese) designating an island consisting of a circular coral reef surrounding a lagoon, or to the confusion – which may be made by the on-line public – between the term “atol” (present in the Disputed Domain Name) and the dictionary word “atoll” existing in some other languages (such as English and French) for designating such island.

In the absence of any reaction by the Respondent, the letter of the Complainant’s counsel of February 3, 2006 was sent again by email to the Respondent on February 21, 2006.

A representative of the Respondent rejected the claim of the Complainant by an email of February 21, 2006, by claiming that the “links on the atol.info page point to Hotels” and that there are “MANY MANY companies and organisations using these same 4 letters”.

The Complainant’s counsel reacted on February 22, 2006 by stating – among other arguments – that the links on the Disputed Domain Name related to the optical field and were made in the French language.

On the same day, the Respondent’s representative replied in an email that there are “more famous and well known companies using ATOL than your clients”. The Respondent’s representative further expressed that she “could understand your [i.e, the Complainant’s] concern if this was ATOL.FR and If you are concerned with the French market, your primary concern should be .FR – but I cannot understand your logic. .INFO is international, there are hundreds of companies using these initials and ATOL.INFO can be used by anyone because it is an international TLD”.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the Disputed Domain Name is identical to the numerous “ATOL” trademarks that it owns.

It further alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name given that:

- To the Complainant’s knowledge, the Respondent is not known under the “atol” name;

- The Complainant has not licensed or otherwise authorized the Respondent to use the ATOL trademark and there is no relationship between the Complainant and the Respondent;

- The Respondent gave no legal justification for the registration of the Disputed Domain Name and only stated that the Disputed Domain Name can be used by anyone because it is an international TLD;

- The Respondent at different points in time either offered the Disputed Domain Name for sale or provided links pointing to websites of competitors of the Complainant, none of which constitute a bona fide offering of goods or services, bur rather prove that the Respondent knew the existence of the Complainant and of the Complainant’s ATOL trademark;

- The Respondent intentionally attempted to attract for commercial gain Internet users to websites of competitors of the Complainant by creating a likelihood of confusion with the ATOL trademark as to the source, sponsorship, affiliation or endorsement of commercial links displayed on the Disputed Domain Name;

- The Respondent is acting in bad faith given that it is presently trying to sell the Disputed Domain Name to third parties for a price exceeding its out-of-pocket expenses after having been contacted by the Complainant.

- The Complainant also alleges that the Disputed Domain Name was registered and is being used in bad faith given that:

- The fact that i) the word “atol” is a fancy name, ii) the content of the Disputed Domain Name was – at some point – in the French language with commercial links concerning the optical field and iii) the Respondent tried to sell the Disputed Domain Name cannot be considered as a coincidence so that this would obviously lead to the conclusion that the Respondent knew of the Complainant and of the Complainant’s ATOL trademark;

- By registering the Disputed Domain Name the Respondent prevented the Complainant, as the owner of the corresponding trademark, from reflecting the mark in a corresponding domain name, the Respondent being engaged in a pattern of such conduct, this being shown by the fact that the Respondent has registered several domain names corresponding to trademarks owned by third parties and that it was party to three UDRP proceedings in the course of which the transfer of the relevant domain names was ordered.

B. Respondent

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

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of various trademarks in the word “atol” which are registered in France and in Switzerland.

The Panel thus finds that the Complainant has established rights in the trademark ATOL.

The word ATOL is identical to the characteristic element of the Disputed Domain Name, it being noted that the gTLD “.info” must not be taken into account in the assessment of the identity or confusing similarity under paragraph 4(a)(i) of the Policy. See, e.g., Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

The Panel consequently finds that the Disputed Domain Name is identical to the Complainant’s ATOL trademark and that the conditions of paragraph 4(a)(i) of the Policy have been met by the Complainant.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(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.

Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a), it is generally assumed that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

In this case, the Complainant has established that the Disputed Domain Name is not used by the Respondent in connection with a bona fide offering of goods or services. It appears indeed that the Disputed Domain Name is not actively used by the Respondent except for offering it for sale and for making it available in a so-called domain parking program managed by a third party for the purpose of obtaining a remuneration (“revenue-per-click”).

In this context, it should be noted that the registration of a domain name for no reason other than to sell it on or to connect it to a parking page for “revenue-per-click” cannot of itself give rise to a legitimate interest in respect of the domain name at issue. See Prestige Brands Holding Inc., and Prestige Brands International, Inc. v. The domain is not for sale / Motohisa Ohno, WIPO Case No. D2006-0608.

The Respondent has not filed any response in the course of the proceedings so that the Respondent has not brought any evidence for supporting its rights or legitimate interests in the Disputed Domain Name. Most specifically, the Respondent has not established that it would have registered the Disputed Domain Name because it was a dictionary word – which is the case in some European languages (i.e. Dutch and Portuguese) – or an abridged misspelling of a dictionary word in other European languages (“atol” for “atoll” in English and French) which might have contributed to justify a finding of legitimate interests of the Respondent in the Disputed Domain Name. See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.

Consequently, no rights or legitimate interests of the Respondent in the Disputed Domain Name within the meaning of paragraph 4(c) of the Policy have been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

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

(ii) circumstances indicating that the respondent 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;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) circumstances indicating that the respondent intentionally is using the domain name in an 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. Nevertheless, it is paramount that panels decide cases based on the very limited scope of the Policy. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. The Policy provides a remedy only in cases where the complainant proves that the domain name “has been registered and is being used in bad faith”.

It must consequently be decided whether the conditions of Paragraph 4(b) of the Policy are met.

Even though the Complainant established that the Disputed Domain Name was offered for sale by the Respondent at some points in time, the Complainant has not brought any evidence that the Respondent approached the Complainant or one of its competitors about selling the Disputed Domain Name (no such offer was made in the exchange of emails between the parties which took place before the initiation of these proceedings and which were filed in these proceedings). Consequently, no circumstances indicating that the Respondent registered the Disputed Domain Name “primarily” for the purpose of selling it to the Complainant or one of its competitors have been established. See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.

However, based on a cursory visit to the website of the Respondent, it appears that the Respondent’s business is the registering and selling of domain names on a very large scale, whereby some of these domain names may correspond to dictionary words (which is the case of the Disputed Domain Name in some languages). From this perspective, it is useful to refer to a previous decision which held that “where a respondent has registered a domain name consisting of a dictionary term because the respondent has a good faith belief that the domain name’s value derives from its generic qualities, that may constitute a legitimate interest and the offer to sell such a domain name is not necessarily a sign of bad faith. Where, in contrast, a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks”. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (this part of the decision has been referred to by subsequent Panels such as in Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964).

In this case, it cannot be assumed that the Respondent registered the Disputed Domain Name because of its intrinsic value as a dictionary word in some European languages (such as Dutch and Portuguese) or as an abridged misspelled version of a dictionary word (for “atoll”) in other languages (such as English and French) and the Respondent has not claimed that it would be the case in these proceedings (in which the Respondent did not take part).

Consequently, under the above mentioned standard, the massive registration of domain names by the Respondent with no attention to the issue whether the registered domain names would be identical to third party trademarks may support a finding that the Respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their trademarks pursuant to Paragraph 4(b)(ii) of the Policy.

In this context, the Complainant relies on the fact that the Respondent was involved as a respondent in three other UDRP proceedings in which the relevant domain names were transferred (see lastly MC Entreprises v. Mark Segal (<namegiant.com>), WIPO Case No. D2005-1270) for the purpose of establishing such pattern of conduct. However, the Panel considers that these preexisting decisions do not constitute per se sufficient evidence that the Respondent has engaged in a pattern of intentionally registering domain names to deprive trademark owners of their use. See, by analogy, Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (the existence of five other UDRP decisions involving the same respondent in which the domain names were transferred was held not sufficient for showing a pattern of conduct within the meaning of Paragraph 4(b)(ii) of the Policy).

In any case, it remains that the Disputed Domain Name was used at several points in time (as properly shown by the Complainant) for the purpose of attracting traffic to sites offering products which were competing with those of the Complainant in the optical sector for commercial gain (i.e. for “revenue-per-clicks”) which can only be explained by the fact that such intent to attract Internet traffic was capitalizing on the Complainant’s “ATOL” trademark. Such use of the Disputed Domain Name constitutes sufficient evidence of the bad faith of the Respondent under Paragraph 4(b)(iv) of the Policy. See Imperial Chemical Industries PLC v. RareNames, WIPO Case No. D2006-0124.

For this reason, this Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent as required by paragraph 4(b) of the Policy.

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 <atol.info> be transferred to the Complainant.


Jacques de Werra

Sole Panelist

Dated: November 16, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1203.html

 

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