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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Grosbill S.A. v. Richard J.

Case No. D2006-1254

 

1. The Parties

The Complainant is Grosbill S.A., of Paris, France, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is Richard J., of California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <grosbile.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2006. On September 29, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October 3, 2006, 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 October 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2006.

The Center appointed Debrett G. Lyons as the Sole Panelist in this matter on November 8, 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 company. It is the owner of the following trademark registrations:

- French trademark registration No 99807022 for GROSBILL filed on August 6, 1999, and covering goods and services in classes 9, 37 and 38;

- French trademark registration No 053353528 for GROSBILL.COM filed on April 7, 2005, and covering goods and services in classes 9, 37 and 38;

- International trademark registration No 875846 for GROSBILL.COM filed on October 7, 2005, covering goods and services in classes 9, 37 and 38 and designating the Benelux, Spain and Switzerland; and

- French trademark registration No 063403347 for GROSBILL.COM filed on January 13, 2006, and covering goods and services in classes 9, 16, 35, 37, 38, 39, 41 and 42.

The Complainant also owns domain names reflecting its trademark, including:

- <grosbill.eu> registered on June 17, 2006;

- <grosbill.ch> registered on January 19, 2006;

- <grosbill.pl> registered on June 26, 2006.

The disputed domain name was registered on November 23, 2005. At some point afterwards the Complainant noticed that the web address “www.grosbile.com” redirected Internet users to “www.ndparking.com” which in turn included links to competitors’ products.

The Complainant sent a cease and desist letter to the Respondent on December 8, 2005 asking him to transfer the domain name voluntarily. That letter was not answered.

Reminder letters dated December 20, 2005, January 12, 2006, January 18, 2006, and March 20, 2006, were sent but without eliciting a reply.

The Complainant now petitions the Administrative Panel for transfer of the domain name, on the following grounds.

 

5. Parties’ Contentions

A. Complainant

The Complainant was founded in 1998 and is in the business of computers and digital technologies. It claims that it represents over 1300 clients each day, and had a stated turnover of 75 million euros in 2004 and a weekly newsletter is sent to around 160,000 members.

It is a subsidiary of AUCHAN, another French company, founded in 1961. It is said that in 1981, AUCHAN began worldwide expansion and diversified its activities to real estate, banking, communications, mobile telephones and computers. Nowadays, it employs more than 172,000 persons in 11 countries.

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademarks differing only in the substitution of the last “l” by an “e”. It says the gTLD, “.com”, can be ignored for comparison purposes and so the domain name <grosbile.com> is confusingly similar to the trademarks registered by the Complainant, and as such, further contends that Paragraph 4(a)(i) of the Policy is fulfilled.

The Complainant goes on to argue that the Respondent has no rights or legitimate interests in respect of the domain name under Paragraph 4(a)(ii) of the Policy. Registration of the trademarks by the Complainant predates the registration of the domain name <grosbile.com>. The Respondent is not affiliated with the Complainant in any way, and the Complainant has not authorized the Respondent to use its trademarks, or to register any domain name incorporating its marks.

It is also said by the Complainant that the Respondent has never been known in any business matters by the trademark GROSBILL, or any similar term, and it is not making any legitimate non-commercial or fair use of the domain name since the domain name redirects to a website promoting a link to competitors’ goods or services. Such a use of this domain name can not be considered as a bona fide offering of goods or services.

The Complainant finally submits that the disputed domain name was registered and is being used in bad faith for the following reasons:

The Respondent is an American citizen. The Complainant concedes that it could be argued that he did not have knowledge of the French trademark GROSBILL. However, according to the Complainant, the following facts demonstrate that the Respondent did know the mark GROSBILL and did register it in bad faith.

The Complainant submits that Respondent knew the trademark GROSBILL because the only variation between the Complainant’s trademark and the domain name <grosbile.com> is the replacement of the “l” with an “e” indicating that Respondent had the Complainant in mind.

The domain name is linked to a portal-style webpage advertising goods which compete with the Complainant’s goods.

The Complainant also submits that the Respondent, Richard J. aka Richard Jones, is a known serial cybersquatter and typosquatter, having been found in violation of the Policy by previous panels. Specifically, the Respondent has already been condemned by the panel in a case involving another French trademark TELEMATIN owned by the widely known television channel, France2. The Respondent registered the domain name <telematinfrance2.com> and was found to have violated the Policy (see Sociйtй Nationale de Tйlйvision France 2 v. Richard J. aka Richard Jones, WIPO Case No. D2005-0864). It is therefore argued that the Respondent has previously targeted other widely known French trademarks.

The Complainant notes that the registration record for the disputed domain name states that the surname and postal address of the Respondent are unknown. The only information available is a phone, a fax number and an email address. It is well stated that deliberate steps to conceal true identity constitute bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, finding bad faith where the respondent has taken deliberate steps to ensure that its true identity cannot be determined).

The Complainant further submits that the Respondent is using the domain name to divert Internet users looking for the Complainant’s products and services to his website, “where, upon information and belief, he charges third parties a fee to advertise on his site”. The Complainant submits that this is not bona fide and further evidences the Respondent’s bad faith attempt to trade on the Complainant’s marks. (See, Marriott Int’l, Inc. v. Seocho, FA 0303000149187 (Nat’l. Arb. Forum April 28, 2003), finding “Respondent[‘s] attempt to derive commercial benefit from [a] typographical error” to be evidence of bad faith use; see also Expedia, Inc. v. Alvaro Collazo, WIPO Case No. D2003-0716, holding that the respondent’s use of a “typo” in the domain name to attract the complainant’s consumers to his website for commercial gain was bad faith use).

Moroever, the Complainant submits that it has been established that bad faith may be present where a domain name “is so obviously connected with such a well-known product that it is very use by someone with no connection with the product suggests opportunistic bad faith” (See Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303).

Finally, the Complainant submits that it is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name. (See Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069). The fact that the Respondent has a history of cybersquatting only strengthens the inference of bad faith. (See MouseSavers, Inc. v. Mr. Henry Tsung d/b/a www.wwwmousesavers.com, WIPO Case No. D2004-1034 finding bad faith where the respondent was a “serial” typosquatter).

B. Respondent

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

 

6. Discussion and Findings

It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact the Respondent failed to submit a reply.

According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(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 respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

Having considered the Complainant’s case and the available evidence, the Panel finds the following:

A. Identical or Confusingly Similar

The Complainant is the owner of trademark registrations for the word mark GROSBILL and a GROSBILL.COM logo and so has rights in those marks.

The elements “grosbile” and “grosbill” are non-identical. The question therefore is whether the disputed domain name is confusingly similar to one or more of the Complainant’s marks.

The Panel confirms that numerous earlier decisions under the Policy have held that for comparison purposes under Paragraph 4(a)(i), the gTLD in the domain name can be ignored. Is, therefore, “grosbile” confusingly similar to “grosbill”? The Panel is not assisted by evidence as to a meaning or surnominal significance for either word and so must apply an English language standard of comparison, treating both words an invented. It must also apply an Anglophonic standard of comparison for their aural similarity. Pronunciation of the words differs but not to such an extent as to dispel confusion. Coupled with the fact that they are visually similar words and differ only by one letter (that letter also being the last) and guided by the principle that a distinctive, invented, word is more likely to suffer from confusion with a wider range of similar invented words, the Panel concludes that they are confusingly similar.

Should the Panel be thought to have erred in that assessment, it finds that the Complainant’s logo-style mark has such minimal stylization that the registration is essentially of GROSBILL.COM. With that conclusion, a second comparison is permitted between the entire domain name <grosbile.com> and the mark GROSBILL.COM and the Panel makes the additional finding that there is also confusing similarity in this instance.

The Panel holds that the Complainant has satisfied the first limb of the Policy.

B. Rights or Legitimate Interests

In light of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the marks or to apply for or use any domain name incorporating the marks, the circumstances here are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the disputed domain name and to shift the evidentiary burden to the Respondent to show that it does have rights or legitimate interests in that name: See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases referred to there.

The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to rights to or legitimate interests in the domain name and so the Panel has no basis on which to find that the Respondent has rights or legitimate interests in the domain name.

The only evidence of any kind as to the Respondent’s activities or intentions is the fact that at one point the disputed domain name redirected Internet users to websites promoting competitive goods or services.

The Panel nonetheless finds that the burden of proof which fell to the Respondent was not discharged and so holds that the Complainant has also satisfied the second limb of the Policy.

C. Registered and Used in Bad Faith

The registration of the Complainant’s marks predates the registration date of the disputed domain name. If the Respondent did not have actual knowledge of these registered rights, there is good evidence that he had knowledge of the Complainant. Were the Complainant simply relying upon its claim to repute in its mark, it could be said that it might have adduced better evidence of renown, however, the Panel is satisfied on the evidence that the Respondent has previously abused French trademark owners and knew the Complainant’s mark.

It has already been held, absent evidence to the contrary, that “grosbile” is a fictitious word and given the finding that the Respondent had no rights or legitimate interests in that word, the Panel must conclude that it was chosen to take advantage of the Complainant’s marks, with which it is confusingly similar.

The Panel finds that the disputed domain name was registered in bad faith.

The final issue is whether there was bad faith use of the domain name. Paragraph 4(b) of the Policy identifies four circumstances which are evidence of the registration and use of a domain name in bad faith. The precise wording of the Policy is:

“Evidence of Registration and Use in Bad Faith.

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your webiste 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 your webiste or location or of a product or service on your webiste or location.”

The Panel need only examine sub-paragraph (iv). The evidence showed that <grosbile.com> redirected Internet users to <ndparking.com>. That site carried further links to “Portable PCs” and “Portable Telephones”, amongst other things. Even if it was not the intention of the Respondent to promote goods which directly compete with those of the Complainant, it is nevertheless clear that the disputed domain name was chosen to attract web traffic for the purposes of commercial gain by creating a likelihood of confusion with the Complainant’s mark. The Panel notes that in PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment. com alkla Henry Chan WIPO Case No. D2005-0087 it was said that “parking domain names with [name removed] has become an increasingly “popular” and “crude” practice among cybersquatters and that using the domain names to divert web traffic to search engines and linking portals is done for a financial benefit”.

The Panel holds that the only conclusion to be reached is that the domain name was both registered and used by the Respondent 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, <grosbile.com> be transferred to the Complainant.

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Debrett G. Lyons
Sole Panelist

Dated: November 22, 2006