DECISION

The Dream Merchant Company Kft. and Créations Méandres Inc. v. Richard Mandanice d/b/a Domain Strategy Inc.

Claim Number: FA0212000137097

PARTIES

Complainant is The Dream Merchant Company Kft. and Créations Méandres Inc., Budapest, HUNGARY (“Complainant”) represented by David Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P.  Respondent is Richard Mandanice d/b/a Domain Strategy Inc., Bury, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cirquedusoliel.com>, registered with OnlineNIC.

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 December 16, 2002; the Forum received a hard copy of the Complaint on December 17, 2002.

On December 17, 2002, OnlineNIC confirmed by e-mail to the Forum that the domain name <cirquedusoliel.com> is registered with OnlineNIC and that Respondent is the current registrant of the name.  OnlineNIC has verified that Respondent is bound by the OnlineNIC 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 December 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2003 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@cirquedusoliel.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 January 15, 2003, 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’s submission makes the following assertions:

1. Respondent’s <cirquedusoliel.com> domain name is confusingly similar to Complainant’s CIRQUE DU SOLEIL registered mark.

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

3. Respondent registered and uses the <cirquedusoliel.com> domain name in bad faith.

 

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

FINDINGS

Complainant, The Dream Merchant Co., was founded in 1984 in Quebec, Canada by a French Canadian and visionary entertainer who orchestrated the “marriage of cultures and artistic and acrobatic disciplines” that has become the hallmark of Cirque du Soleil’s innovative theatrical entertainment performances.  Complainant’s Cirque du Soleil production has been continuously performed in Canada, Respondent’s place of domicile, under the CIRQUE DU SOLEIL mark since 1984, and is based in Montreal, Canada.

Complainant is the holder of numerous trademarks that incorporate the CIRQUE DU SOLEIL mark, including the following Canadian registrations listed without limitation: Reg. No. TMA418918 issued on October 29, 1993; and Reg. No. TMA 410234 issued March 26, 1993.

Since its 1984 inception, Complainant has produced and presented theatrical entertainment under the trade name and trademark CIRQUE DU SOLEIL in over 130 cities on three continents.  Nearly 33,000,000 spectators have seen Complainant’s live performances, and by 2001, almost 20,000,000 people in the United States alone had been exposed to Complainant’s production.  In 2001, Complainant’s United States’ revenues were more than $178,000,000.

Having been widely promoted among members of the general consuming public, the CIRQUE DU SOLEIL mark and name symbolize significant goodwill and secondary source identification for Complainant.

Respondent registered the <cirquedusoliel.com> domain name on January 13, 2002.  Complainant’s investigation into Respondent’s use of the disputed domain name reveals that <cirquedusoliel.com> resolves to a pornographic website entitled “Tina’s Free Live Cam” located at <internetcam.net>.  Internet users who attempt to exit the aforementioned website are subjected to a barrage of additional browser windows and pop-up advertisements opening sequentially to pornographic and casino websites.  Complainant’s examination of Respondent’s use of the disputed domain name indicates that Respondent has subsequently ceased using the domain name in connection with any purpose.

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 CIRQUE DU SOLEIL mark by registering the mark with various international trademark authorities, and continually using the mark in connection with its offering of live entertainment services and related goods.

Respondent’s <cirquedusoliel.com> domain name is confusingly similar to Complainant’s CIRQUE DU SOLEIL mark.  Respondent’s transposition of two adjacent letters (“e” and “i”) does not distinguish the domain name from Complainant’s mark.  Common typographical errors incorporated into famous marks fail to overcome a Policy ¶ 4(a)(i) analysis.  See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Pier 1 Imp., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to Complainant's PIER 1 mark).

Further, because top-level domains are a required feature for domain name registrants, their presence is inconsequential when determining confusing similarity or identicality under the Policy.  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).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has submitted a prima facie case fulfilling the requisite provisions enunciated under Policy ¶¶ 4(a)(i) – (iii).  Because Respondent has failed to respond, all of Complainant’s inferences will be accepted as true unless clearly contradicted by the evidence.  Further, Respondent has failed to establish any circumstances that would demonstrate its rights or legitimate interests in the domain name.  See 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); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Respondent is currently not using the disputed domain name, nor has it demonstrated its intent to use the subject domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  Additionally, Complainant’s uncontested documentation of Respondent’s use of the <cirquedusoliel.com> domain name reveals that Respondent has previously used the infringing domain name as a gateway to pornographic material and websites. Bona fide use does not exist when the intent of a respondent is the deliberate infringement of a complainant’s rights.  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); 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, its use of the names was not in connection with the offering of goods or services or any other fair use).

No evidence suggests that Respondent is commonly known by the <cirquedusoliel.com> domain name.  Because Respondent’s activities resemble typosquatting, where a respondent seeks to benefit opportunistically by registering a variation of a famous mark, there is a presumption that Respondent does not have rights in the domain name under Policy ¶ 4(c)(ii).  Additionally, Respondent is not licensed or authorized to make use of Complainant’s CIRQUE DU SOLEIL mark, or any variation thereof.  See Valigene Corp. v. MIC, FA 94860 (Nat. Arb. Forum Aug. 1, 2000) (finding no rights or legitimate interest in the non-use of a domain name that was a misspelling of a famous mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

As stated, Respondent initially used the disputed domain name as a link to a commercial website.  Complainant’s unrefuted evidence also indicates that Respondent’s infringing domain name and corresponding website host numerous advertisements from which Respondent presumably receives a commission, or some other form of compensation.  Therefore, Respondent’s past use of the <cirquedusoliel.com> domain name reveals that Respondent is not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain as articulated in Policy ¶ 4(c)(iii).  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent’s bad faith registration and use of the disputed domain name is enunciated by Policy ¶ 4(b)(iv).  Specifically, Respondent initially used <cirquedusoliel.com> for commercial gain, to divert Internet users to pornographic and casino-related websites and advertisements.  Respondent incorporated a common typographical error into Complainant’s mark, thus creating a likelihood of confusion with Complainant and its CIRQUE DU SOLEIL mark as to the source, sponsorship, affiliation and endorsement of Respondent’s website and advertisements.  Respondent’s infringing activity not only monetarily benefits Respondent, but concurrently tarnishes the goodwill established in Complainant’s mark.  Therefore, Respondent’s registration and use of the domain name constitutes bad faith under the Policy.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

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

Dated: January 23, 2003

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