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France Antilles v. Laporte Holdings, LLC [2005] GENDND 1798 (10 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

France Antilles v. Laporte Holdings, LLC

Case No. D2005-0795

1. The Parties

The Complainant is France Antilles, Paris, France, represented by SELAFA DELSART-TESTON, France.

The Respondent is Laporte Holdings, LLC, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <paruevendu.com> is registered with Nameking.Com Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2005. On July 27, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. NameKing.com transmitted by email to the Center on July 27, 2005, its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 5, 2005. 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 August 9, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2005.

The Center appointed C. K. Kwong as the sole panelist in this matter on September 26, 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, France Antilles is, and was at all material times, the registered owner of various trade marks consisting of or otherwise embodying the word “PARUVENDU” or “ParuVendu” whether on its own or in conjunction with other words and/or devices. The said registrations include, in particular, the following :-

(a) French trade mark Registration No. 99806023 for the mark PARU VENDU and Device in respect of certain goods and services under Classes 9, 16, 35 and 42 the application for which was filed on the March 15, 2004; and

(b) French trade mark registration no. 3279804 for the word “PARUVENDU” in respect of certain goods and services under Classes 9, 16, 35 and 41 the application for which was filed on March 15, 2004.

Comareg, the subsidiary of the Complainant, operates a website with the domain name “www.paruvendu.fr” under the licence of the Complainant dated December 20, 2003. Such website was created on or about April 13, 2004.

From the evidence filed by the Complainant, it appears that it is a leading publisher of newspapers, journals and magazines for free distribution in France. The website at “www.paruevendu.fr” which is for publishing classified advertisements and advertising of various types of goods and services also appears to be one of the leading websites in the business in France. The customer base of the Complainant in France is substantial.

The uncontradicted evidence produced by the Complainant shows that the filing and/or registrations of the marks consisting of or otherwise containing the word “paruvendu” occurred well before the registration of the domain name <paruevendu.com> on January 13, 2005.

It is worthy to note the following words which appear in the domain inquiry form of the Respondent at its website at “www.laporteholdings.com”

“We acquire domain names through an automated process rather than by any process that would intentionally infringe on any person’s rights. If you have any questions about a domain, please submit your query to us below. It is our policy to transfer a domain name to any entity that, in our reasonable opinion, has a legitimate claim. We will promptly transfer a domain name to you if you can show us that you have a legitimate claim.” (See pages 7 and 8 of Annex 7 to the Complaint).

Annexes 9.1 to 9.5 of the Complaint inclusive produced the decisions issued by various WIPO UDRP Panels in relation to the complaints filed by various parties against the Respondent which resulted in the orders for transfer of the domain names <specialitystoreservices.com> in Speciality Store Services, Inc. v. Horoshiy, Inc., WIPO Case No. D2005-0015 (March 8, 2005), <tythetasmaniantiger.com> in Krome Studios Pty, Ltd. V. LaPorte Holdings, Inc., WIPO Case No. D2004-0707 (December 12, 2004), <karlsappliances.com> in Karl’s Sales and Services Company, LLC v. LaPorte Holdings, Inc., WIPO Case No. D2004-0929 (January 28, 2005), <mbccredit.com> in Daimler Chrysler Corporation, Daimler Chrysler Services North America, LLC v. LaPorte Holdings, WIPO Case No. D2005-0143 (April 1, 2005) and <cegetl.net> in Société Française du Radio Téléphone – SFR v. LaPorte Holdings, WIPO Case No. D2004-0926 (January 25, 2005) respectively. All the said disputed domain names were registered with the Registrar. Nameking.Com is the Registrar of the present disputed domain name “www.paruevendu.com”. In all these cases, the Respondent did not file any response to the Complaint.

In addition to the said five decisions, the Respondent was also involved in various other Complaints as disclosed in Annex 10 to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant has made the following contentions:

The Complainant has rights in the trademark PARUVENDU. Furthermore, the domain name ＜paruevendu.com＞ is identical or confusingly similar to the trademark PARUVENDU;

The domain name is virtually identical to the website of the Complainant’s said licensee at “www.paruvendu.fr” with the only difference being the addition of the vowel “e” behind the group of letters “paru” and in front of the group of letters “vendu” and the replacement of the letters “fr” by “com”;

The addition of the letter “e” in the manner aforesaid does not render it different from the Complainant’s trade mark visually and phonetically, so that it would not be noticed by the consumers;

The said addition of the vowel “e” in the manner aforesaid constitutes typosquatting;

According to a search which was carried out by the Complainant against the online data at the United States Patent & Trademark Office (“USPTO”), the Respondent had no trade mark registration covering “PARUEVENDU”, “paruevendu.com” and “PARU VENDU”;

The domain name does not correspond to the business name of the Respondent;

The Respondent is not commonly known as “PARUVENDU”;

The Respondent has engaged in the conduct of reserving domain names without a legitimate interest as shown in the said five cases included in Annex 9 and the other cases referred to in Annex 10;

The Respondent has frequently used domain names embodying trade marks of others to divert Internet users to website which are for advertising and with sponsored links to the Complainant’s competitors;

In the present case, the domain name in question led to French websites which compete with the Complainant;

The Complainant runs a business of publishing newspapers, journals and magazines which are extensively distributed in France free of charge and through Comareg operates an important website at “www.paruvendu.fr” for classified advertisements;

The trade marks of the Complaints are renowned;

The fact that the Respondent’s website is in the French language to attract French Internet users demonstrates that the Respondent is aware of the importance of the Complainant’s PARUVENDU trade mark in France;

The WIPO UDRP decision concerning the domain name “cegetl.net” which is similar to the trade mark “cegetel” of a French company and other WIPO UDRP decisions involving the Respondent, demonstrates that the principle activity of the Respondent is to take advantage of well-known trade mark of others by reserving domain names which are similar to them in order to divert Internet users to its websites;

The above have demonstrated bad faith on the part of the Respondent by registering and using the domain name knowingly without the licence of the Complainant to divert Internet users to its website for profit-making purposes.

B. Respondent

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

6. Discussion and Findings

In rendering its decision, the Panel has reminded itself of its functions to adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.  Paragraph 14(b) of the Rules further provides that “If a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.  Paragraph 5(e) of the Rules further provides that “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.

The Panel has also reminded itself that the failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant who is specifically  required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. The Vanguard Group, Inc. v. Lorna King, WIPO Case No. D2002-106 (April 11, 2002) “vanguard.com”; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 (August 22, 2003) “berlitzsucks.com”.

The said three elements are now considered as follows.

A. Identical or Confusingly Similar

On the evidence available, the Panel has no hesitation to find that the Complainant has rights in the trade mark PARUVENDU by reason of its various trade mark registrations as recited in paragraph 4 above.

Furthermore, the Panel finds that the domain name in dispute is substantially identical or confusingly similar to the Complainant’s said trademark PARUVENDU despite addition of the letter “e” in the middle. Internet users will not pay attention to the acronym “www” which stands for “WorldWideWeb” and the generic top level domain “.com” when comparing the domain name to a trade mark. Similar to the case of Speciality Store Services, Inc. v. Horoshiy, Inc. and LaPorte Holdings, Inc., WIPO Case No. D2005-0015 (March 8, 2005), the addition of the letter “i” to form the word “speciality” was not sufficient to render it different from “specialty” as the two are still visually and phonetically confusingly similar. The addition of the vowel “e” to the word “Paru” to form the word “Parue” does not change the pronounciation of the word. The two words are pronounced the same.

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent has no rights or legitimate interests in the domain name.

The Complainant has to establish a prima facie case showing that the Respondent has no right or legitimate interest in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Limited, WIPO Case No. D2003-0455 (August 26, 2003). Once having done that, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the domain name.

In the present case, the Complainant has asserted that according to its trade mark search against the online data available at the USPTO, the Respondent has not registered the words “PARUEVENDU”, “paruevendu.com” and “PARU VENDU” as of June 7, 2005. The Respondent has domiciled in or at least has an address in Los Angeles, California, the United States of America. The United States is also the place where the Registrar of the disputed domain name is situated. It would be logical for the Respondent to have registered the relevant trade marks in the United States of America had it minded to register such trade marks anywhere in the world.

There is no evidence available to the Panel to suggest that the Respondent is commonly known as “paruevendu”.

Furthermore, the Respondent has not come forward to explain why it included “paruvendu” in the disputed domain name with the letter “e” between the group of letters “paru” and “vendu”.

Despite the use of the domain name by the Respondent to divert Internet users to the website “www.paruevendu.com” where they are onwardly linked to other French websites providing similar functions as the one operated by the Complainant’s said licensee at “www.paruvendu.com”, there is no bona fide offering of goods or services by the Respondent itself.

In the absence of any response from the Respondent, this Panel considers that the Complainant has successfully established a prima facie case under paragraph 4(a)(ii) of the Policy which has not been rebutted by the Respondent.

C. Registered and Used in Bad Faith

It is alleged that the Respondent has registered and used the domain name in bad faith.

In the Panel’s view, paragraph 4(b) of the Policy provides for four situations under which a conclusive presumption of registration and use in bad faith on the part of the Respondent will be invoked but specifically provides that the circumstances under which bad faith can be proved are without limitation.  Put differently, the presumptions under paragraph 4(b) of the Policy are not exhaustive evidence of the way in which registration and use of a domain name in bad faith may be proved.

There is no sufficient evidence to prove that the Respondent has registered the disputed domain name primarily for the purpose of selling to the Complainant or its competitor for valuable consideration in excess of the Respondent’s out of pocket expenses for the purpose of paragraph 4(b)(i) of the Policy.

There is no sufficient evidence to invoke the presumption under paragraph 4(b)(iii) of the Policy that the Respondent has registered the domain name primarily to disrupt the business of the Complainant.

On the other hand, there are statements in the Respondent’s website at “www.laporte.com” as appeared in page 8 of Annex 7 to the Complaint which claim that they acquire domain names through an automated process, suggest that they do not intentionally infringe on any person’s rights and allege a policy to transfer a domain name to any entity that, in their reasonable opinion, has a legitimate claim. However, it is the view of the Panel that these statements are by themselves insufficient to disprove bad faith.

The meaning of the words in the policy statement are not clear. For example, there is no explanation as to what “automated process” was used by the Respondent to acquire the domain names. The blank allegation that domain names acquired through such automated process could result in infringement of other people’s rights but only unintentionally, can only be treated as self-serving.

It is also not explained and therefore unclear as to what procedures or standards are adopted by the Respondent to form a reasonable opinion on whether any person has a legitimate claim to a domain name and to whom they would then transfer the same. Without the transparency showing the standard and procedures for the Respondent to determine whether a claim is legitimate or not, their said statement of policy is rather hollow. Again, in the absence of any explanations and evidence in support of the genuine carrying out of such policy, their statement can only be treated as self-serving for the present purpose.

The evidence produced has amply demonstrated that the Respondent has engaged in a pattern of conduct or system in registering the domain names of others, the subject of Complaints filed under the Policy with the Center, in respect of which decisions were rendered in favour of the complainants therein resulting in orders for transfer of the disputed domain names to the complainants. The registration of these domain names has the effect of preventing the owner of the trade marks or service marks in question from reflecting their marks in the corresponding domain name. Had the Respondent been able to come forward to establish and prove the carrying out of their stated policy to transfer a domain name to any entity that has a legitimate claim to it, the Panel may have difficulty to invoke this presumption under paragraph 4(b)(ii). However, in the present case, since the Respondent has failed to come forward to provide evidence in support of their claim and in light of the overwhelming number of cases decided against the Respondent, this Panel views that the presumption under paragraph 4(b)(ii) is invoked.

Furthermore, while the Respondent has apparently not used the domain name for promoting the goods or services of the Respondent itself, it has used the domain name to divert Internet users to its website at “www.paruevendu.com” as shown in Annex 8 which also contained sponsored links to other website at “www.topannonces.fr” and “www.jannonces.fr” which are French websites involved in similar activities as those of the Complainant. In the absence of any evidence to the contrary, it appears that the Respondent was not using the domain name for a purpose other than commercial gain. The words “paruvendu” and “paruevendu” are close enough to be confusingly similar for Internet users browsing the Internet daily in haste. Such use is likely to create confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location of a product or service on the online locations where the domain name leads to. The Panel accordingly finds that the presumption under paragraph 4(b)(iv) of the Policy has been invoked.

The Panel accordingly finds that the domain name has been registered and is being used in bad faith under paragraph 4(a) 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, <paruevendu.com> be transferred to the Complainant.

C. K. Kwong
Sole Panelist

Date: October 10, 2005