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Adecco S.A. v. Sandip Kabra [2005] GENDND 1781 (18 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Adecco S.A. v. Sandip Kabra

Case No. D2005-0879

1. The Parties

The Complainant is Adecco S.A., Glattbrugg, Switzerland, represented by Wild Schnyder AG, Switzerland.

The Respondent is Sandip Kabra, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <adecco-capital.com> is registered with YesNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2005. On August 17, 2005, the Center transmitted by email to YesNIC a request for registrar verification in connection with the Domain Name at issue. On August 26, 2005, YesNIC 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 and technical contact.

The Registrar Verification indicated that “The specific language of the registration agreement as used by the registrant for each domain name is Korean” in its registration verification response.

On August 26, 2006, the Center contacted the Complainant by e-mail to inform it that in accordance with paragraph 11 of the Rule for UDRP, “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”. The Center requested the Complainant to provide circumstantial evidence to justify the choice of English as a language of the proceeding.

On August 29, 2005, the Center requested the concerned registrar, YesNIC to confirm the language of the registration agreement because the Complainant attached as Annex B to the Complaint an English version of YesNIC’s Registration Agreement.

The Complainant provided circumstantial evidence to the Center on purpose of the Panel to decide to hold the proceeding in English on August 29, 2005.

On August 30, 2005, the concerned registrar confirmed that the registrant of the disputed Domain Name used the English version of the Registration Agreement.

On August 31, 2005, the Center notified to parties that the language of the administrative proceeding will be English.

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 September 1, 2005.

In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2005.

The Center appointed Isabelle Leroux as the Sole Panelist in this matter on October 11, 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 is a well-known Swiss based corporation engaged in the field of personnel recruitment, staffing and general human resources services internationally. It is one of the biggest employers in the world (70 countries concerned), with over 6,000 offices employing more than 30,000 employees. The Complainant has spent 92,000,000 € on advertising and marketing in 2004.

ADECCO is the major brand of the Complainant group. The Complainant owns many trademark registrations for the word ADECCO e.g. Swiss registration number 431.224 dated May 9, 1996, and US registration number 2.209.526 dated December 8, 1998, in connection with inter alia various human resource services (employment and behavioral testing, testing to determine employment skills, employment agency services relating to temporary and permanent placement of personnel…) in international classes 35, 41 and 42. The Complainant also registered the sign ADECCO in numerous countries, within international trademarks.

The Complainant also registered many domain names such as <adecco.com>, <adecco.ch>, <adecco.co.uk> and <adecco.fr>.

The Respondent registered the Domain Name on April 19, 2005. The Respondent uses the Domain Name at issue to link to a website that allegedly proposes financial and brokerage matters.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has strong and exclusive rights in the trademark ADECCO and that the Domain Name is identical with its trademark ADECCO.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not authorized or consented to the Respondent’s registration or use of the Domain Name.

Given that the Domain Name comprises the Complainant’s trademark, that the website is devoted in large part, to services that connote to a special branch within the Complainant group (dealing with investment, brokerage and other financial services) and that the Complainant has given no permission to the Respondent to use its trademark in this way, the burden is on the Respondent to demonstrate why it has rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(c) of the Policy.

The Respondent has therefore not come forward with anything to demonstrate its rights or legitimate interests in respect of the Domain Name. Accordingly, the Respondent has no rights or legitimate interests in respect of the Domain Name.

Finally, the Complainant contends that the Domain Name has been registered and is being used in bad faith. It refers to that the fact that the Domain Name is connected to a webpage which seems to offer personal consulting services. According to investigation made by the Complainant and by the English police, it seems that the use of the Domain Name is “a typical case of Internet scam” (Exhibits 18 and 19 of the Complaint).

The Complainant requests that the Panel ask the Registrar to transfer the Domain Name <adecco-capital.com> from the Respondent to it.

B. Respondent

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

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the “Policy”) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that the parties and in particular the Respondent in this case be given adequate notice of proceedings that may substantially affect its rights. The Policy and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) establish procedures intended to assure that the Respondent is given a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

Considering that the Respondent has defaulted in submitting a response to the allegations of the Complainant, this Panel as directed by paragraphs 14(a) and (b) and 15 (a) of the Rules shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, and may draw such inferences there from as it may consider appropriate on the basis of the Complainant’s undisputed representations.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) Respondent’s Domain Name has been registered and is being used in bad faith.

Each of the aforesaid three elements shall be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

The Complainant has produced an exemplary copy of its trademark ADECCO, for use in connection with its human resources services. One of its trademarks is registered on the principal register of the US Patent and Trademark Office, dated December 8, 1998, in international classes 35, 41 and 42 (Complaint Annex 11).

The Complainant has also registered the ADECCO marks in many other countries all over the world (Complaint, Annex 11).

The disputed Domain Name contains the Complainant’s trademarks ADECCO, paired with generic term “capital” connotes to a special branch of the ADECCO group, which would deal with investment and brokerage services the Complainant does not offer in fact, even though it is listed on major stock exchanges worldwide and it provides consultancy in areas linked to financial services. The pairing of the Complainant’s famous trademark with generic services term does not create new distinct mark but confusingly similar mark (See Franklin Resources, Inc. and Templeton Global Advisors, Inc. v. Conceptium Group LLC. Venture Development, WIPO Case No. D2004–1005).

The Complainant has met the burden of proving that the Respondent is the registrant of Domain Name that is confusingly similar to trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that the Respondent has engaged in abusive domain name registration.

The Panel thus finds that the disputed Domain Name is at best confusingly similar to the Complainant’s famous trademark.

B. Rights or Legitimate Interests

There is no evidence on the record that would indicate that the Respondent has any rights or legitimate interests in respect of the Domain Name, other than that it has registered this Domain Name and has used it in a manner hereafter determined to be in bad faith. If mere registration of the Domain Name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration.

The mere registration of the domain name does not establish rights or legitimate interests in the meaning of paragraph 4(a)(ii) of the Policy.

The Complainant has stated categorically that the Respondent is an “unauthorized” user of the Complainant’s trademark in the disputed Domain Name. No information is available about the Respondent, the alleged company Adecco Capital Investment Ltd., which seems not to be a registered company in countries including Switzerland mentioned in the webpage of the Respondent, using the disputed Domain Name.

Investigations made by the Complainant reveal that the firm named Adecco Capital Investment Ltd. seems to be a scam, used in order to extract fees from users who are not experienced in financial and brokerage issues (cf. Exhibits 14 to 16 of the Complaint). Furthermore, the address mentioned in the website using the Domain Name, in Switzerland, corresponds to a hotel and the VAT number belongs to a person who runs a petrol station. Lastly, reference in the contentious website to “Swiss Property Relations Ministry” is fake, since such ministry does not exist.

Being in default, the Respondent has not seen fit to inform the Panel of any legitimate rights or interests it may have in the disputed Domain Name.

Thus, the Complainant has established the second element necessary to prevail on its claim that the Respondent has engaged in abusive domain name registration.

Therefore, the Panel finds that the Respondent has no legitimate rights or interests in the disputed Domain Name.

C. Registered and Used in Bad Faith

The third element that shall be proven by the Complainant to establish the Respondent’s abusive domain name registration is that the Respondent has registered and is using the disputed Domain Name in bad faith. The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, para. 4(b)). Most relevant to the current proceedings: the Respondent has registered the Domain Name “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct” (id., para. 4(b)(ii)).

The Respondent has registered the Domain Name <adecco-capital.com>. As a consequence, the Complainant is unable to reflect its trademarks ADECCO in corresponding Domain Name. Absent any contrary indication from the Respondent, the Panel infers that the Respondent intended the logical consequences of its acts. It registered the disputed Domain Name in order to prevent the Complainant from using its trademarks in corresponding Domain Name and to make the consumer believe that “Adecco Capital” is an extension of the core business offered by the Complainant and its entities. And the look of the website using the Domain Name creates a likelihood of confusion with ADECCO brand and image, as to the source, affiliation or endorsement.

The Panel has also reviewed the material sent by the Complainant together with its submissions. It is clear that the Respondent has no connection with the Complainant. Further, although the website to which the Domain Name leads is not really operative, the evidence, which the Complainant has lodged does indicate that the Respondent has been using the Complainant’s name to perpetrate a fraud.

The Panel determines that the Respondent has registered and used the Domain Name <adecco-capital.com> in bad faith within the meaning of paragraph 4(b)(ii) of the Policy. The Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

Since the Respondent has failed to provide a response or to attempt to explain his behavior, the Panel finds that the Respondent has registered and used the disputed Domain Name in bad faith.

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 <adecco-capital.com> be transferred to the Complainant.

Isabelle Leroux
Sole Panelist

Dated: October 18, 2005