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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

LPG Systems S.A. v. Distribution4web

Case No. D2008-0897

 

1. The Parties

The Complainant is LPG Systems S.A., Valence Cedex, France, represented by Brouillette & Partners LLP, Canada.

The Respondent is Distribution4web, Montreal, Canada.

 

2. The Domain Name and Registrar

The disputed domain name <endermowear.com> is registered with Melbourne IT Ltd. trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2008. On June 13, 2008, the Center transmitted by email to Melbourne IT Ltd. trading as Internet Names Worldwide a request for registrar verification in connection with the disputed domain name. On June 17, 2008, Melbourne IT Ltd. trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2008. The Respondent did not submit a formal Response. Accordingly, the Center notified the Respondent’s default on July 31, 2008.

The Center appointed a sole panelist in this matter on August 11, 2008. That panelist recused himself from this administrative proceeding due to exceptional circumstances before issuing a decision. Consequently, the Center appointed Richard Hill as sole panelist on August 29, 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 owns various trademarks containing the string ENDERMO and uses them to market heath care products and services.

The disputed domain name was registered by the Respondent in July 2007. At that time, the Respondent was well aware of the Complainant’s marks and products.

The disputed domain name is being used to point to a site offering products and services that compete directly with the Complainant’s products and services.

The Respondent does not have any licenses or other authorization from the Complainant to use the Complainant’s marks.

 

5. Parties’ Contentions

A. Complainant

The Complainant is the registered owner in the United States of America (“United States”) and Canada of the ENDERMO, ENDERMOGYM, ENDERMOLOGIE and ENDERMOTHЙRAPIE trademarks used in relation with health care products and services. These trademarks have been widely used by the Complainant in association with health care products and services, including on the Internet.

The Complainant’s trademarks are well-known in the industry of health care and amongst consumers.

The Complainant manufactures and markets bodysuit products which it sells under the trademark ENDERMOWEAR in Canada, the USA and elsewhere, and the Complainant has filed an application to register that trademark.

There can be no doubt that, under the Policy, the disputed domain name is identical or confusingly similar to the Complainant’s marks.

The Respondent is redirecting the domain name to the Respondent’s website <www.cellulite-treatment-pro.com> on which the Respondent is selling products in direct competition with the Complainant’s products, as well as certain of the Complainant’s products, while not being authorized to do so. Consequently, consumers looking for the Complainant’s products or services are automatically redirected to the Respondent’s websites, creating a likelihood of confusion with the Complainant’s trademarks as to the source or endorsement of the Respondent’s websites.

The Respondent tried to register the trademark ENDERMOWEAR in the USA and in Canada in order to benefit from the Complainant’s reputation and goodwill. Both applications were refused because the examiners were of the opinion that the proposed trademark caused confusion with the registered trademarks of the Complainant.

The Complainant has never authorized the Respondent to use its trademarks in any ways nor to distribute its products.

The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and conducts a business in direct competition with the Complainant. At no time did the Respondent have any rights or legitimate interests in respect of the Complainant’s trademarks or in respect of the disputed domain name.

The Respondent registered the disputed domain name long after the Complainant began to use its trademarks in the USA, Canada, and elsewhere. There is no legitimate way by which, at the time of registration, the Respondent would have been able to use the trademarks and by consequence the disputed domain name.

The fact that the disputed domain name is redirected to the Respondent’s website offering products in direct competition to the Complainant’s products constitutes evidence of bad faith. Not only does the Respondent not have any right in the trademarks, its website is solely used to cause confusion amongst consumers looking for the Complainant’s products and to redirect them, in bad faith, to its own website.

On purpose, the Respondent causes consumers to wrongly associate the Respondent’s website to the Complainant and to wrongly consider that the Respondent has been authorized to distribute the Complainant’s products and to use the Complainant’s trademarks. It also takes advantage of the Complainant’s trademarks’ reputation and goodwill.

The Respondent, at the time of registration of the disputed domain name, knew very well the Complainant, its activities and its trademarks. Indeed, in March 2006, the Respondent tried to become an authorized Canadian distributor for the Complainant’s products but was denied by the Complainant.

Further, the Respondent has purchased adwords with Google in order to appear as a sponsored link when people are looking for the Complainant’s name or branded products.

B. Respondent

Although the Respondent has not submitted a formal Response, it has implicitly replied to the Complainant’s contentions, in the form of a series of email exchanges with the Center.

In essence, the Respondent alleges that it has legitimate rights to the disputed domain name because it was the first to use the disputed domain name in order to sell the products referred to at the web site pointed to by the disputed domain name.

Further, the Respondent alleges that it has a valid Canadian mark, and that, contrary to what the Complainant alleges, the Respondent did not abandon that mark.

The Respondent alleges that the Complainant is “stealing its domain name”.

Further, the Respondent requests that the proceedings take place in the French language, on the grounds that its principal (apparently Mr. Charles Leveilee) does not understand English well enough for this type of proceeding.

 

6. Discussion and Findings

The Panel will first address the matter of the language of the Proceedings.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

In the present case, the language of the Registration Agreement is English, and the Parties have not agreed to use any other language.

The Respondent argues that his mastery of English is insufficient to allow him to participate in the proceedings, and requests that they take place in French.

The Panel cannot accept this submission, because inter alia, the Respondent has chosen to register the disputed domain name through a registrar offering an English-language Registration Agreement, the web site at the disputed domain name is in English, the Respondent has submitted a trademark application in English to the US Patent and Trademark Office, and the Respondent’s website contains an English-language thumbnail biography of “Charles” (presumably the Respondent’s principal).

That is, the evidence available to the Panel indicates that the Respondent is perfectly capable of communicating in English.

In the circumstances, the Panel rules that the present proceedings shall take place in the language of the Registration Agreement, that is, in English.

A. Identical or Confusingly Similar

The contested domain name is obviously confusingly similar to the Complainant’s marks containing the string ENDERMO.

B. Rights or Legitimate Interests

The Respondent does not have any license or other authorization to use the Complainant’s mark. The Respondent is using the disputed domain name to operate a website offering the sale of various products that directly compete with the Complainant’s products.

The Respondent alleges that it has a right to do so because it was the first to use it and to sell products under the name ENDERMOWEAR. The Panel cannot accept this submission, because the evidence shows that the Respondent attempted to register the trademark ENDERMOWEAR in both Canada and the USA, and the application was rejected because it was ruled to be confusingly similar to the Complainant’s trademarks. Following this rejection, the Respondent abandoned its trademark applications. Such behavior shows that the Respondent knew that it did not have valid rights to the disputed domain name.

Contrary to what the Respondent alleges, the incontrovertible evidence available to the Panel (that is, the print-out of the official trademark databases) shows that the Respondent did abandon both the Canadian and US trademark applications for the string ENDERMOWEAR.

The Panel finds that Respondent is redirecting Internet users interested in Complainant’s products and services to its own website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See The Royal Bank of Scotland Group plc, Direct Line Insurance plc, and Privilege Insurance Company Limited v. Demand Domains, c/o C.S.C., NAF Claim No. 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Damien Persohn c/o CPPD SAS / Tкtu v. Joshua Lim c/o Webxel Consulting Pte Ltd, NAF Claim No. 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

It is clear that the Respondent was aware of the Complainant’s marks when it registered and started using the disputed domain name, because inter alia, its website refers to the Complainant’s products and because the Respondent had asked to become a licensed distributor for the Complainant’s products.

The Respondent alleges that it was the first to use the disputed domain name and the first to sell products under that name. But, as noted above, the Respondent was well aware of the fact that the disputed domain name is confusingly similar to the Complainant’s marks, because the Respondent had attempted to register as a trademark the string ENDERMOWEAR.

The Respondent has not presented any other plausible explanation for its use of the Complainant’s mark. In accordance with Rules paragraph 14(b), the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when it registered the disputed domain name.

Indeed the Respondent’s actual use of the disputed domain name (as noted above) is clearly not bona fide, because the Respondent operates a website that sells products that compete with the Complainant’s products. This indicates that the Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See Zee TV USA, Inc. v. Aamir Siddiqi c/o DotCorner.com, NAF Claim No. 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also The Association of Junior Leagues International Inc. v. This Domain Name My Be For Sale c/o Legend .name, NAF Claim No. 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain names to maintain pay-per-click sites displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy paragraph 4(b)(iv)).

Reverse Domain Name Hijacking

The Respondent alleges that the Complainant is attempting to “steal” its domain name. The Panel interprets this allegation as a request that it find reverse domain name hijacking.

But, as noted above, the Panel finds in favor of the Complainant, so the allegation of reverse domain name hijacking must be dismissed.

 

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 <endermowear.com> be transferred to the Complainant.

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Richard Hill
Sole Panelist

Dated: September 12, 2008