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Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo [2004] GENDND 1506 (3 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo

Case No. D2004-0746

1. The Parties

The Complainants are Thomson Broadcast and Media Solution Inc., of Nevada City, California, United States of America (hereafter “Complainant 1”), and Thomson of Boulogne-Billancourt, France (hereafter “Complainant 2”).

The Respondent is Alvaro Collazo, of Colonia, Uruguay.

2. The Domain Name and Registrar

The disputed domain name <thompsongrassvalley.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2004. On September 15, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On September 15, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com proceeded with the verification and transmitted by email to the Center its verification response on September 17, 2004. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 20, 2004. The Center verified that the Complaint together with the 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 September 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2004.

The Center appointed François Dessemontet as the sole panelist in this matter on October 21, 2004. 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

“Thomson” is the business and trade name of Complainant 2 and part of the business and trade name of Complainant 1. The Complainants are the registered owners of many “THOMSON” trademarks throughout the world, and in particular in the United States of America, France and many countries of South America, including Uruguay where the Respondent is apparently established. Further, the trademark “THOMSON” is a well-known trademark in the sense of article 6bis of the Paris Union Convention.

“GRASS VALLEY” is another trademark owned by the Complainants and which is registered in different countries across the world along with the similar “GRASS VALLEY GROUP” trademark. Although not registered in Uruguay where the Respondent is deemed to be established, those trademarks are registered in many nearby countries of South America.

5. Parties’ Contentions

A. Complainants

In their Complaint, the Complainants allege that the disputed domain name, as a combination of the words “thompson” and “grassvalley”, is confusingly similar with their trademarks, the sole difference between the domain name and the “THOMSON” trademark being the addition of the letter “p”.

The Complainants further allege that the Respondent has no rights or legitimate interests in the disputed domain name as he is not known by the name “Thompson” or “Grass Valley”, is not related in any way with the Complainants’ businesses and has no license or authorization to make use or apply for registration of the domain name.

Finally, the Complainants allege that the Respondent has registered the domain name in bad faith and is using it in bad faith, as he could not have registered the disputed domain name without the aim of infringing upon the Complainants trademark rights as he is diverting internet users to a website that links to other commercial sites and profits from the traffic of diverted Internet users.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar Domain Name

The domain name in dispute contains the word “thompson”, which is confusingly similar to the Complainants’ well-known “THOMSON” trademark. Further, the words “grass valley” which are added to this name are identical to the Complainants’ “GRASS VALLEY” trademark. Therefore, the combination of those words in the domain name <thompsongrassvalley.com> results in it being confusingly similar to the Complainants’ trademarks.

Indeed, the only difference between the Complainants “THOMSON” trademark and its reproduction in the domain name <thompsongrassvalley.com> is the addition of the letter “p”. As a rule, almost any simple addition to a well-known trademark is powerless to prevent a connotation with the rightful owner of the trademark (see for example V&S Vin&Sprit AhB v. Giovanni Pastore, WIPO Case No.D2002-0926). This is even more when such an addition is a letter and is not perceptible in the English, the French or the Spanish languages, for example, as the way to pronounce both words in these languages is identical and few English, French or Spanish speakers would notice this difference (see for example LouisVuitton v. Net-Promotion, WIPO Case No. D2000-0430 in which the letter “o” was the only difference between the domain name <luisvuitton.com> and the well-known “LOUIS VUITTON” trademark). Further, the fact that the word “Thomson” is used sometimes as a personal name that can also be spelled with a “p” in the middle adds to the confusing similarity. Furthermore, the mistake seems to be common, even on websites addressing the true products of Thomson and Grass Valley. Finally, this small difference could even be a typographical error, more or less easily made depending on the type of computer keyboards used. In many cases, a domain name reproducing a misspelled trademark was found to be confusingly similar to the trademark in question (see for example, Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 where <microsof.com> was found to be confusingly similar to “Microsoft”; Dunkin’ Donuts Incorporated and Dunkin’ Donuts USA, Inc. v. RandomThinkers and Patrick Huba, WIPO Case No. D2001-0104 where “dunkindoughnuts.com> was confusingly similar to “Dunkin’Dounuts”; Société Air France v. Alvaro Collazo, WIPO Case No. D2003-0417 where <arifrance.com> was confusingly similar to “Air France”).

B. Rights or Legitimate Interests

The Respondent by not responding in the present proceeding has not provided evidence of any circumstance giving rise to a right or legitimate interest in the domain name. On the contrary, a short perusal of the list of domain name disputes in which the Respondent was involved and the domain names which he registered might lead one to believe that the Respondent’s activity consist of registering domain names confusingly similar to famous trademarks to which he has no rights or legitimate interests. Indeed, the Respondent was the respondent in Société Air France v. Alvaro Collazo, WIPO Case No. D2003-0417 <arifrance.com> and WIPO Case No. D2004-0446 <airgrance.com>, both of which involved the transfer of the disputed domain name to the Complainant, namely “Air France”, or in NAF claim FA0302000144628 <hpcanada.com> in which the disputed domain name was transferred to the Complainant “Hewlett-Packard”, as well as in other procedures such as NAF Claim FA0403000248681 for the domain names <bankofamerics.com>, <bankofamericq.com>, <bankofamerixa.com>, <bankofameruca.com> and <vbankofamerica.com> in which the domain names were transferred to the Complainant “Bank of America”. The Respondent therefore has no right or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

In the present case, Respondent defaulted and did not allege any actual or future use of the disputed domain name that could be considered a bona fide use of said domain name.

At the time he registered the domain name, the Respondent could not in good faith ignore the existence of the Complainants’ well-known “THOMSON” trademark. In March 2002, “Thomson” announced the acquisition of the “Grass Valley Group”, and since then more than 2.5 millions hits are recorded monthly on the “www.thomsongrassvalley.com” website which is operated the company.

In addition, the use of a domain name in order to attempt to attract, for commercial gain, Internet users to the corresponding website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark is a sign of bad faith. In the present case there is no doubt that some of the Internet traffic directed to the Complainant is being diverted to the websites where the Respondent parked the dispute domain name and which contains hyperlinks to pages pointing to commercial websites. Therefore, there is a great risk of dilution of the Complainant’s trademark.

Finally, the list of domain names registered by the Respondent and confusingly similar with well-known trademarks is prima facie evidence of a registration in bad faith in the absence of any explanation given by the Respondent on the possible grant of a license by the holders of those trademarks. The Respondent seems to be engaged in the practice of typosquatting, which consists of registering misspelled trademarks as domain names, and then deriving profits from Internet users seeking the rightful owners of those trademarks as revenues can be generated by web links and pop-up advertisements on the websites to which those domain names point or on the websites on which those domain names are parked. Respondent is therefore not marking any legitimate non commercial or fair use of the domain name.

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 <thompsongrassvalley.com> be transferred to the Complainant.

François Dessemontet
Sole Panelist

Dated: November 3, 2004