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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

JP Labalette SA v. Laksh Internet Solutions Private Limited/Private Whois Escrow Domains Private Limited

Case No. D2008-0817

 

1. The Parties

The Complainant is JP Labalette SA, of Paris, France represented by Courtois Lebel, France.

The Respondent is Laksh Internet Solutions Private Limited/ Private Whois Escrow Domains Private Limited, of Mumbai, India.

 

2. The Domain Name and Registrar

The disputed domain name <sosmalus.com> is registered with Lead Networks Domains Pvt. Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2008. On May 27, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On June 11, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 11, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 16, 2008 and filed a further amendment to the Complaint on June 24, 2008. The Center verified that the Complaint together with the second amendment to 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 July 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2008.

The Center appointed John Swinson as the sole panelist in this matter on August 7, 2008. 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 company incorporated in France. The Complainant provides insurance services (including motor insurance).

The disputed domain name was registered by the Respondent on October 14, 2007.

The website operating from the disputed domain name contains links to third party websites, grouped under a range of categories. The Panel viewed the website on numerous occasions and noted that the categories changed from time to time. On at least half of the occasions, the majority of the categories involved the word “malus” (French for loaded premium) or “assurance” (French for insurance). On the remaining occasions, the categories were largely unrelated to insurance services - for example, some other categories displayed on the website were “Accidents”, “Placement”, “Protection”, “Trees” and “Acer”. When one of these categories were chosen, the Panel was taken to a list of websites which did not always relate to the broader category heading. For example, a lot of the links related to the Beijing Olympics.

The website also contains sponsored advertising links and pop up ads and is partially in French and partially in English. On the home page, under the heading “About Us”, the website states:

“We empower individuals, organizations and businesses with our unique services. Diversification being our core strategy; we specialize in Assurance Auto, Assurance Auto Malus, Assurance Malus and an array of other services. Our mission is to provide quality resources”.

However as noted above, the written content of the website (including the “About Us” section), appears to change frequently.

There is limited information available regarding the Respondent.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant owns several registered trade marks in France, including registration no. 1624384 for SOS MALUS (word mark) registered from March 29, 1989; registration no. 99775035 SOS MALUS (device) registered from February 9, 1999; registration no. 053385115 for SOS MALUS ASSISTANCE (word) registered from October 5, 2005 and registration no. 053385114 SOS MALUS (device) registered from October 5, 2005. These trade marks are used by the Complainant in relation to insurance services.

The Complainant also owns or has rights in several domain names containing the term “sosmalus”. Websites operating from these domain names promote and sell the Complainant’s (or its authorised partners’) insurance services.

The Complainant has previously owned the disputed domain name, from June 2005 to June 2007. The Complainant instructed its registrar to renew the disputed domain name, however the registrar failed to do so. Once it lapsed, the Respondent was able to register it.

The disputed domain name is identical to the Complainant’s trade marks, and the disputed domain name does not include any other feature. As it contains the Complainant’s trade mark in its entirety, there is sufficient similarity for the purposes of the Policy. Registration by the Respondent is infringement of the Complainant’s trade mark rights.

The Respondent has not been authorised by the Complainant to use its trade mark, or to incorporate the mark in the disputed domain name. To the best of the Complainant’s knowledge, the Respondent has not registered the disputed domain name as a trade mark in any jurisdiction, and is not commonly known by that name.

The Complainant’s trade mark is highly distinctive, and both the SOS MALUS trade mark and the Complainant are well known to the public. The Respondent registered the disputed domain name more than 15 years after the Complainant first acquired rights in SOS MALUS, and 4 years after the Complainant registered the domain name <sos-malus.com>.

The Respondent is using the disputed domain name to attract for the purpose of commercial gain, Internet users to its website. The website contains sponsored links which lead to third party sites related to insurance. The display of those links is a result of an agreement between the Respondent and Google (through the Google Adsense program.) This generates a profit for the Respondent, according to the number of clicks.

Using a domain name which is confusingly similar to a complainant’s trade mark, and which leads to websites of the complainant’s competitors, constitutes bad faith. Visitors to the website will incorrectly believe there is an affiliation between the links present on that website, and the Complainant and its business.

B. Respondent

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

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy provides that the complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

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

Paragraph 4(a) of the Policy states that the burden of proof lies with the complainant to establish that all these three elements are satisfied.

As noted above, the Respondent did not file a response. A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, facts asserted by the complainant that are not unreasonable can be regarded by the panel as true Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. This is supported by paragraph 14(b) of the Rules, which states that the panel may draw negative inferences from the respondent’s default (in failing to provide a response), provided the complainant has supported its assertions with actual evidence (paragraph 3 of the Rules).

A. Identical or Confusingly Similar

The Complainant has provided evidence of its registration of various SOS MALUS trade marks in France, covering services related to insurance. The earliest of these trade mark registrations (registration no. 1624384), dates back to March 29, 1989.

Registration of a trade mark can be considered prima facie evidence of validity, and can in turn create a rebuttable presumption that the mark is inherently distinctive (EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). The Respondent has not attempted to rebut this presumption.

The disputed domain name is identical to the Complainant’s SOS MALUS trade mark, and does not contain any other significant features. It is well recognised that the gTLD suffix is not relevant in a comparison of the disputed domain name and trade mark.

Accordingly, the Panel finds that the first element has been met.

B. Rights or Legitimate Interests

Paragraph 4(i) to (iii) of the Policy lists three ways in which a respondent can demonstrate rights or legitimate interests in a disputed domain name.

The Panel agrees with the Complainant’s statements that:

(a) there is no evidence that the Respondent has ever been commonly known by the disputed domain name or applied for any trade mark in respect of SOS MALUS;

(b) the Complainant has not licensed or otherwise authorised the Respondent to use its SOS MALUS trade mark, or to apply for a domain name which incorporates its trade mark;

(c) the website operating from the disputed domain name does not constitute legitimate non-commercial or fair use, and the Respondent is not using the website for a bona fide offering of goods or services. As noted above in section 4, the content of the website changes from time to time; sometimes the overall categories are clearly related to insurance and other times they are not; and the websites listed under the broader categories do not always match the subject matter.

While parts of the website are in French (and cannot be translated by the Panel), it is clear that a significant number of links relate to motor vehicle insurance (Auto or Voiture Assurance). These links then lead to other websites, some of which offer insurance services and clearly compete with the Complainant’s goods and services. Other links are completely irrelevant to the Complainant’s goods and services (for example, links relating to the Beijing Olympics). Regardless, the Respondent is clearly making a commercial use of the website by use of sponsored links and advertising, and is receiving a commercial profit from the presence of these links (on a pay per click basis). Such use does not constitute a bona fide offering of goods or services, or a legitimate fair use.

The Complainant has presented a prima facie case indicating that the Respondent does not have any rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263).

The Panel notes that the Respondent has failed to submit a Response in this proceeding. As such, the Respondent has failed to rebut the Complainant’s prima facie case.

The second element has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith. The Complainant’s Complaint appears to rely primarily on subparagraph (iv), that is, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, 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 its website.

As mentioned above, the website operating from the disputed domain name contains links to other third party websites and also sponsored advertisements. Some parts of the website appear in the English language, while other parts are displayed in French. While not all links on the website are relevant to insurance services, and while the links or categories change from time to time, at most times the website displays links to insurance services.

The Panel is of the view that is very likely that the Respondent knew of the Complainant’s trade mark and brand. It is also possible that the Respondent was also aware that the Complainant previously owned the registration for the disputed domain name and had permitted it to lapse. The Respondent registered the domain name which was clearly going to be confused with the Complainant’s trade mark (as it is identical) and has attempted to make commercial gain from the website by providing sponsored links and advertisements to competing goods and services. Some of these goods and services clearly compete with the Complainant’s goods and services which is further evidence of bad faith. The Panel infers that the underlying purpose behind the Respondent’s actions was to capture Internet traffic which was looking for the Complainant’s website or insurance services. SOS MALUS includes a French word, and is not something that a party based in India is likely to think of independently.

The Complainant has shown that the Respondent is using the disputed domain names to divert Internet users to a parking webpage linked to commercial websites of competitors of the Complainant in order to generate revenues on a “pay per click” basis which constitutes bad faith (see Credit Industriel et Commercial S.A. v. Richard J., WIPO Case No. D2005-0569).

Accordingly, the third element has been met.

Although not raised in the Complaint, the Panel also notes that the Respondent has been a respondent to various previous UDRP decisions. For example, Screwfix Direct Limited v LAKSH INTERNET SOLUTIONS PRIVATE LIMITED./Private Whois Escrow Domains Pvt. Ltd. WIPO Case No. D2008-0784, (scewifx.com); Dr. Ing. h.c. F. Porsche AG v. Laksh Internet Solutions Private Limited / Privacy Protection WIPO Case No. D2008-0691 (prosche.com); CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited / SA c/o FP, WIPO Case No. D2008-0687 (theedmontonjournal.com). This may be relevant to paragraph 4(b)(ii) of the Policy, being that the Respondent has engaged in a pattern of conduct which prevents trade mark owners from reflecting their mark in a corresponding domain name, but due to the findings above, the Panel does not need to consider this ground any further.

 

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, <sosmalus.com> be transferred to the Complainant.

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John Swinson
Sole Panelist

Date: August 24, 2008