DECISION

Societe Anonyme Des Eaux Minerales d'Evian v. Evian Sport

Claim Number: FA0211000133620

PARTIES

Complainant is Societe Anonyme Des Eaux Minerales d'Evian, FRANCE (“Complainant”) represented by Jeffrey H. Kaufman, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C. Respondent is Evian Sport, Madrid, SPAIN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <eviansport.com>, registered with Core Internet Council of Registrars.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 12, 2002; the Forum received a hard copy of the Complaint on November 13, 2002.

On November 15, 2002, Core Internet Council of Registrars confirmed by e-mail to the Forum that the domain name <eviansport.com> is registered with Core Internet Council of Registrars and that Respondent is the current registrant of the name. Core Internet Council of Registrars has verified that Respondent is bound by the Core Internet Council of Registrars registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On November 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 5, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@eviansport.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 23, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Respondent’s <eviansport.com> domain name is confusingly similar to Complainant’s registered EVIAN mark.

Respondent does not have any rights or legitimate interests in the <eviansport.com> domain name.

Respondent registered and used the <eviansport.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Societe Anonyme Des Eaux Minerales d'Evian, holds numerous trademark registrations thoughout the world for the EVIAN mark.  Complainant’s registrations of the EVIAN marks via the Madrid System for the International Registration of Marks includes registrations designating Spain, which is the domicile of Respondent (e.g. Reg. No. 235,956, registered on September 24, 1960).  Complainant has also registered the EVIAN mark in the United States (e.g. U.S. Reg. No. 1,155,024, registered on May 19, 1981) and in numerous other countries worldwide, and has been using the mark in commerce since the 1800’s.  In addition to using its mark in conjunction with its business as the top-selling brand of bottled water worldwide, Complainant also uses its mark to promote sporting events (e.g. the EVIAN Masters, which along with the U.S. Open is the highest paying golf tournament in the world).  Media coverage of Complainant’s sponsored sporting events coupled with extensive promotion and sales of its products has given Complainant’s EVIAN mark distinctiveness and secondary meaning in France, Europe, and in most of the world.

Respondent, Evian Sport, registered the <eviansport.com> domain name on November 14, 2000, and is not licensed or authorized to use Complainant’s EVIAN mark for any purpose.  For over a year after registration, Respondent failed to use the disputed domain name.  By February 16, 2002, the disputed domain name resolved to a website that contained information regarding sponsoring and licensing arrangements, sporting events, and other personalities.  Since April of 2002, the domain name has featured a picture of an athlete wearing a VODAFONE shirt and announcing that the website will “re-launch soon.”

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

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

Identical and/or Confusingly Similar

Complainant has established rights in the EVIAN mark through continuous use in commerce for well over a century as well as through registration of the mark on relevant governmental registers worldwide.

Respondent’s <eviansport.com> domain name is confusingly similar to Complainant’s registered and distinctive EVIAN mark.  The disputed domain name is identical to Complainant’s mark but for the addition of the word “sport.”  The addition of a generic word to a registered mark, especially when that mark is distinctive, creates no significant distinction for purposes of a Policy ¶ 4(a)(i) analysis.  Furthermore, taken in the context of Complainant’s sponsoring of various high-profile sporting events internationally, the addition of the word “sport” actually enhances the confusing similarity between Complainant’s mark compared to most other generic words.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).

Respondent’s addition of the top-level domain “.com”, a feature that is required of all domain name registrants, also fails to prevent the Panel from finding Respondent’s domain name to be confusingly similar to Complainant’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

Accordingly, the Panel finds that the <eviansport.com> domain name is confusingly similar to Complainant’s registered and distinctive EVIAN mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Policy paragraphs 4(c)(i)-(iii) list three circumstances illustrative of situations where a respondent would have rights or legitimate interests in a domain name.  When a respondent has failed to respond to a complaint, a showing by a complainant that none of these three circumstances are present is sufficient for that complainant to meet its burden under the Policy.  At that point, the burden shifts to Respondent to rebut Complainant’s allegations.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

In these circumstances, Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Complainant meets its burden with respect to Policy paragraphs 4(c)(i) and (iii) in its uncontested showing that Respondent is not making either a bona fide offering of goods or services or legitimate noncommercial or fair use of the <eviansport.com> domain name.  Complainant’s uncontested averments allege that Respondent made no legitimate use of its domain name for over a year after its registration, whereupon Respondent began creating the false impression that it was licensed or affiliated with Complainant.  Neither of these “uses” evidence rights or legitimate interests.  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).

Respondent’s contact information states that it is “Evian Sport.”  However, this alone is not sufficient evidence that Respondent has ever been “commonly known by” the name EVIANSPORT or <eviansport.com>.  See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").  Moreover, the EVIAN mark is so distinctive in character so as to bring into question whether any other entity could claim to be “commonly known by” a name which includes it.  As such, the Panel finds that Complainant has met its burden in showing that Respondent does not fall under the ambit of Policy ¶ 4(c)(ii).  See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <eviansport.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

While Policy paragraph 4(b) lists four circumstances evidencing bad faith use and registration of a domain name, that list is not meant to be all-inclusive.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).

The distinctive nature of the EVIAN mark and its incorporation in its entirety within the <eviansport.com> domain name allows for the inference that Respondent had actual knowledge of Complainant’s rights in the EVIAN mark prior to registration.  Such registration is a non-enumerated example of bad faith under Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

Furthermore, given Respondent’s actual knowledge of Complainant’s rights in the EVIAN mark, its appropriation of that mark for use in the disputed domain name evidences opportunistic bad faith on the part of Respondent.  The nominal and inconsequential activity Respondent performed on its website reinforces the fact that no good faith use of such a domain name could be undertaken by Respondent.  In any event, Respondent’s failure to respond permits the inference that it does not have any good faith use for the infringing domain name.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).

Accordingly, the Panel finds that Respondent registered and used the <eviansport.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <eviansport.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: January 6, 2003

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