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Ipsos S.A., Inc. v. Domain Admin [2005] GENDND 1790 (13 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ipsos S.A., Inc. v. Domain Admin

Case No. D2005-0867

1. The Parties

The Complainant is Ipsos S.A., Paris, France, represented by Wm. Charles Saunders, Pennsylvania, United States of America.

The Respondent is Domain Admin, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <ipsos.net> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2005. On August 16, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On August 17, 2005, eNom 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 August 25, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2005. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on September 15, 2005.

However, the Respondent did submit a two page statement to the Center on September 15, 2005. Since the Respondent is proceeding pro se and the statement was only one day late, as per paragraphs 10(b) and (c) of the Rules, the Panel has decided to accept the Respondent's statement as the Response.

The Center appointed Dennis A. Foster as the sole panelist in this matter on September 29, 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 Ipsos S.A. has used the service mark IPSOS since its founding in 1975. Complainant provides survey-based research services around the world, including research on marketing, advertising, customer satisfaction and loyalty, public opinion and media.

The Respondent is an entity that creates web sites in order to connect them to other web sites that sell many different products and services, and to derive income from click-through advertising. The Respondent also sells domain names and has offered the disputed domain name, <ipsos.net>, for sale for U.S. $1,000. The Respondent registered the disputed domain name on January 6, 2000.

5. Parties’ Contentions

A. Complainant

- The IPSOS service marks are used by Complainant through its subsidiaries in many countries, including the following: Belgium, Czech Republic, France, Germany, Hungary, Italy, Australia, China, Japan, Singapore and Taiwan, Province of China.

- Through long and substantial use and advertising, the IPSOS service marks have become well and favorably known in North America and elsewhere in the world.

- Complainant owns U.S. Trademark registration no. 1,747, 049 for the IPSOS word mark covering, inter alia, “conducting business and marketing research and surveys” and “opinion polling for business and advertising purposes.” (Printout of this and other registrations at Complaint Annexes D, E, F and G).

- In addition, Complainant and its wholly-owned subsidiaries own and use numerous domain names comprised wholly or in part of the IPSOS word mark. For example, Complainant Ipsos owns and uses the domain names <ipsos.com>, <ipsos.org>, <ipsos.biz> and <ipsos.info>. (Printouts from the relevant web pages attached as Annexes I1-14 to the Complaint).

- In accordance with the Rules, paragraph 3(b)(ix)(1), the disputed domain name is identical and confusingly similar to the IPSOS service marks. The disputed domain name <ipsos.net> is comprised of the entirety of Complainant’s IPSOS service mark. As was held by a previous panel in deciding against a respondent that Complainant submits is the same Respondent in this case, the addition of a generic top level domain suffix is not sufficient to render a domain name dissimilar or to prevent confusion. Bayerische Motoren Werke AG v. Domain Admin, WIPO Case No. D2004-0089 (March 31, 2004).

- In accordance with paragraph 3(b)(ix)(2) of the Rules, Complainant is unaware of any evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services.

- Complainant and Respondent are not, and have never been, affiliated in any way. Complainant has never authorized, licensed, or otherwise granted any right to Respondent to use the IPSOS service marks in any manner or to register the disputed domain name.

- Complainant began using the IPSOS service marks in 1975, and registered the IPSOS word mark in the United States in 1993 (Complaint Annex D). Complainant began registering domain names incorporating the IPSOS service mark at least as early as 1998 (Complaint Annex I1). Respondent registered the <ipsos.net> disputed domain name on January 6, 2000 (Complaint Annex A). Complainant submits that Respondent registered the domain names after it learned of Complainant and its IPSOS service marks and domain names.

- Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. (Printouts of the relevant web pages found at and through the disputed domain name <ipsos.net> are attached as Annex J). Respondent is using the disputed domain name misleadingly for commercial gain to divert consumers to Respondent's web site. Respondent's <ipsos.net> domain name leads to a site with links to other commercial web sites. Complainant submits that Respondent receives compensation from the owners of the linked web sites on a pay-per-click or similar basis.

- In addition, Complainant is unaware of any evidence that Respondent has been commonly known by the disputed domain name. To the contrary, Complainant submits that Respondent in at least three past UDRP decisions has been found to have cybersquatted and registered domain names in which it has no rights or legitimate interests.

- Complainant submits that Respondent in this case is the same respondent as in Bayerische Motoren Werke, supra; Diner's Club International Ltd. v. Domain Admin******It's all in the name******NAF FA 0305000156839 (June 23, 2003); and McLaughlin Gormley King Company v. NA a/k/a Domain Administrator, NAF FA0301000139716 (February 26, 2003).

- In accordance with paragraph 3(b)(ix)(3) of the Rules, the disputed domain name should be considered as having been registered and used in bad faith by the Respondent because Respondent, as discussed above, intentionally attempted to attract for commercial gain Internet users to the Respondent's web site or other on-line location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product or service on the Respondent's web site or location.

- Respondent offers to sell the disputed domain name for “a minimum of $1,000” on the <ipsos.net> website (Complaint Annex J). Such an offering is evidence of bad faith registration and use. Bayerische Motoren Werke, supra.

- Respondent's repeated pattern of bad faith domain name registrations discussed above is itself sufficient to support a finding of bad faith in this case (see DaimlerChrysler Corportion, DaimlerChrysler Services North America LLC v. LaPorte Holdings, WIPO Case No. D2005-0143, April 1, 2005).

B. Respondent

- Respondent registered the disputed domain name <ipsos.net> because it describes a service provided, IP SOS.

- IP SOS is used as a free Internet name server service that provides emergency help to web sites needing IP address and name server configuration assistance.

- Respondent had no knowledge of Complainant or its trademark when it registered the domain name, nor were there any trademarks under the search term IP plus SOS.

- Both IP and SOS are common descriptive terms that are used frequently.

- Respondent did not register the domain name to disrupt the Complaint's business, to prevent it from registering a domain name incorporating its mark, or to confuse consumers.

6. Discussion and Findings

In order to obtain transfer of the disputed domain name, paragraph 4(a)(i-iii) of the Policy require that a complainant show:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

- the respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has produced its United States Principal Register IPSOS service mark registration, no. 1,747,049 dated January 19, 1993, in International Class 16 for business marketing research and surveys (Complaint Annexes D-H).

The Complainant has further shown that it has IPSOS service mark registrations in many other nations of the world (Complaint Annexes E, F and G). Further still, the Complainant has shown that it uses a number of Internet web sites in connection with the domain names <ipsos.com>, <ipsos.org>, <ipsos.biz>, and <ipsos.info> (Complaint Annexes I, 1-14).

The disputed domain name, <ipsos.net>, is identical to the Complainant's IPSOS service mark. It has become widely accepted in Policy proceedings that a general top level domain like “.net” does not affect an analysis for identity or confusing similarity under the Policy.

The Panel thus finds the Complainant has carried its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends it has not authorized the Respondent to use its IPSOS service mark in the disputed domain name, <ipsos.net>.

As provided under paragraph 4(c)(i) of the Policy, the Respondent claims it was making a bona fide offering of services using the disputed domain name before it had any notice of this dispute. The Respondent characterizes its service as “IP address and name service configuration assistance.”

The Complainant, on the other hand, has shown that the Respondent uses the disputed domain name to offer click-through advertising and access to other websites (Complaint Annex J) and to offer the disputed domain name for sell for U.S. $1,000. The Panel can not subscribe to these being good faith offerings of goods and services before the Respondent learned of this dispute. Rather, the Panel finds these were calculated attempts to take advantage of the Complainant's service mark good will.

The Panel finds the Complainant has discharged its burden of proof under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Primarily, the Complainant contends the Respondent registered the disputed domain name to profit from the renown of the IPSOS service mark and to divert traffic for commercial gain. The Respondent channels the Internet navigator to various web sites offering multiple goods and services. The Panel agrees with the Complainant that the Respondent's profit motive is self-evident. This satisfies the bad faith provisions of the Policy at paragraph 4(b)(iv).

The Complainant also has shown that the Respondent has lost several other UDRP proceedings because it was found to be profiting from relatively well-known trademarks (Bayerische Motoren Werke, Diner's Club International Ltd. and McLaughlin Gormley King Company, supra.). The respondent's name in those cases and its business model are replicated in this case. The Panel finds that this contributes to a finding of bad faith. Although this is not one of the specifically stated bad faith grounds under the Policy, paragraph 10(d) and Rules, paragraph 15(a) give the Panel the authority to find additional bad faith grounds if the facts of a case warrant it.

Finally, the Panel finds the Respondent's attempts to sell the disputed domain name for a minimum of U.S.$1,000 also is a violation of the bad faith provisions of the Policy at paragraph 4(b)(i).

The Panel finds the Respondent registered and is using the disputed domain name in bad faith per paragraph 4(a)(iii) of the Policy.

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 <ipsos.net> be transferred to the Complainant.

Dennis A. Foster
Sole Panelist

Date: October 13, 2005