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Waterman, S.A.S. v. Brian Art [2005] GENDND 1084 (13 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Waterman, S.A.S. v. Brian Art

1. The Parties

The Complainant is Waterman, S.A.S., Paris, France, represented by Schiff Hardin LLP, Chicago, Illinois , United States of America.

The Respondent is Brian Art, Canley Heights, Australia.

2. The Domain Name and Registrar

The disputed domain name <waterman-paris.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2005. On April 4, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On April 4, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 April 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2005.

The Center appointed Christiane Féral-Schuhl as the Sole Panelist in this matter on May 17, 2005. 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 asserted and provided evidence in support of the following facts, which the Panel finds are well founded:

The Complainant is a world famous manufacturer of writing instruments and related products based in Paris, France, and owns several hundred trademarks and marks consisting or including the word “WATERMAN”. As an example, the Complainant is the registered owner of the following trademarks:

- WATERMAN mark, U.S. Trademark Reg. No. 1,091,396;

- WATERMAN’S mark, U.S. Trademark Reg. No. 59,703.

The Complainant also operates a website at the domain name <waterman.com> since 1995 and “WATERMAN” is also its trade name.

The disputed domain name <waterman-paris.com> was registered by the Respondent with Tucows, Inc. on March 7, 2005.

The Panel notes that the registration dates of the vast majority of trademark registrations containing the word “WATERMAN” listed in the Complainant’s attachment to the Complaint (although it is noted that Complainant did not produce all the related registration certificates), predate the date of registration of the disputed domain name by the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the disputed domain name is confusingly similar to the trademark “WATERMAN” owned by the Complainant. The Complainant also indicates that packaging for the Complainant’s products often feature the mark “WATERMAN-Paris” and that UDRP decisions support the principle that a domain name that simply adds a geographic indicator to the Complainant’s trademark may be confusingly similar to the trademark.

In addition, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent’s use of the disputed domain name has no legitimate purpose. The Complainant notes that the Respondent’s actual name is not available through the Registrar and that the contact’s name bears no similarity or connection to the disputed domain name.

The Complainant also claims that the disputed domain name was registered and is being used in bad faith. The Complainant explains that the Respondent registered the disputed domain name as a “phishing” scheme to induce and divert the Complaint’s legitimate customers to the Respondent’s website in order to steal their money. The Complainant indicates that the Respondent’s website identically reproduces almost every page from the Complainant’s official website, except for fake contact information and a page devoted to promoting the fraudulent financial scheme. The Complainant adds that in light of the widespread recognition of the Complainant’s marks throughout the world, the Respondent knew or should have known of the existence of the Complainant’s marks when it registered the disputed domain name, and therefore registered the disputed domain name in bad faith. Furthermore, the Complainant indicates that in light of the Respondent’s intentional copying of the Complainant’s website, the Respondent knew about the Complainant’s business, its products and its website.

B. Respondent

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

6. Discussion and Findings

The Panel’s findings under each heading with reference to the parties’ contentions, the Policy, Rules, Supplemental Rules are the following:

A. Identical or Confusingly Similar

The Complainant has proven that it is the owner of the trademark “WATERMAN”.

Such trademark is included in the disputed domain name. In addition, it is well established that a domain name consisting of a well known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the characters “-paris” does not prevent the disputed domain name from being confusingly similar to the Complainant’s trademark, in particular as the Complainant also adds this term on the packaging of its products.

The Panel therefore finds that the domain name <waterman-paris.com> is confusingly similar to the Complainant’s trademark and, as a consequence, the action brought by Complainant meets the requirement of Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to the Policy, Paragraph 4(b)(ii), the Complainant must demonstrate that the Respondent has no rights to, or legitimate interests in the disputed domain name.

The Panel notes that, as asserted by the Complainant in its Complaint: (i) the Respondent copied content of the Complainant’s website <waterman.com>; (ii) the Respondent registered the disputed domain name as a “phishing scheme”.

The Panel also notes that the Respondent did not submit any Response and evidence proving its rights or legitimate interests in the disputed domain name, while it had been given the opportunity to do so pursuant to Paragraph 4(c) of the Policy.

Further, and as stated in several decisions (Bayshore Bank & Trust (Barbados) Corporation v. Motschh Ivan, WIPO Case No. D2005-0011, Halifax plc v. Sontaja Sunduci, WIPO Case No. D2004-0237), the Respondent’s “use of the domain name appears to be calculated to attract mistaken users (…). The Respondent appears to be engaged in “phishing” for mistaken customers of the Complainant (…). Not only is this activity criminal, it is clear evidence that the Respondent has no legitimate interest in the domain name”.

As a result, the Panel finds that the requirements of Paragraph 4(a)(ii) of the Policy are fulfilled.

C. Registered and Used in Bad Faith

The Complainant is a well-known manufacturer of writing instruments and related products operating in France and abroad, including Australia, which is the country of the Respondent. As stated above, the Complainant’s WATERMAN trademark is registered in several countries throughout the world, including Australia since 1974.

In addition, in light of the Respondent’s intentional copying of the Complainant’s website, the Respondent knew about the Complainant’s business, its products and its website.

As a consequence, the Panel finds that the registration by the Respondent of <waterman-paris.com> was made in bad faith.

With regard to the use in bad faith of the disputed domain name, the Complainant’s evidence shows that by typing “waterman-paris.com”, users were directed to a site that mirrors the Complainant’s website, except for fake contact information and a page devoted to promoting an illegal scheme. The Respondent poses as the Complainant and sends out spam e-mail to users, promising jobs that do not exist and promoting a fraudulent financial scheme. The purpose of the site is solely to confuse and mislead the Complainant’s customers. Such use by the Respondent of the Complainant’s trademark as a domain name creates a likelihood of confusion with the Complainant’s trademark, thus attracting Internet users who were looking for the Complainant’s products. As stated in the decision Halifax plc v. Sontaja Sunducl, WIPO Case No. D2004-0237, “the apparent potential for “phising” and obtaining information by deception, is not just evidence of bad faith but possibly suggestive of criminal activity”.

Therefore, the Panel finds that the domain name <waterman-paris.com> was registered and is used by the Respondent in bad faith and considers the requirements of Paragraph 4(a)(iii) of the Policy to be fulfilled.

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 <waterman-paris.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist

Dated: June 13, 2005