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Arai Helmet Americas, Inc. v. LaPorte Holdings, Inc. [2005] GENDND 314 (15 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Multaler & CIE, SA v. Yonka Skincare Clinic

Case No. D2004-1007

1. The Parties

The Complainant is Multaler & CIE, SA, Colombes, France, represented by La SCP Chain Lacger & Associes, France.

The Respondent is Yonka Skincare Clinic, Melbourne, Victoria, Australia.

2. The Domain Name and Registrar

The disputed domain name <yonka-institute.com> has been registered with Melbourne IT, Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2004. On December 1, 2004, the Center transmitted by email to Melbourne IT, Ltd. a request for registrar verification in connection with the domain name at issue. On December 2, 2004, Melbourne IT, Ltd. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 21, 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 January 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2005.

The Center appointed Alfred Meijboom as the sole panelist in this matter on February 14, 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 has the following trademarks:

- the Australian word mark YON-KA (no. 231648), registered since 1969 in class 3 for perfumery and beauty products, soaps, make-up, essential oils, cosmetics, lotions and creams;

- the French trademark YON-KA (no. 1550783), registered in classes 3 and 5;

- the US trademark YON-KÂ (no. 1553406), registered since 1989 in class 3 for perfumery products, toilet products, face and body tonic waters and make-up.

Furthermore the Complainant holds the domain name <yonka.com>.

The Respondent holds the domain name <yonka-institute.com> (hereinafter “the Domain Name”), which was registered on December 22, 2003. The Domain Name was used in connection with the offering of YONKA products of Complainant. At the moment the Domain Name is not being used and leads to an error page.

The Respondent is not affiliated with the Complainant, nor has the Complainant authorized the Respondent to register and use the Domain Name.

5. Parties’ Contentions

A. Complainant

According to paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant is required to prove that the following three elements are met:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark to which the Complainant has rights; and

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

(iii) the Domain Name was registered and is being used in bad faith.

(i) The Domain Name is identical or confusingly similar to a trademark or service mark to which the Complainant has rights.

The Complainant contends that the Domain Name contains the term YONKA, which is identical to the Complainant’s trademarks and therefore confusingly similar.

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

The Complainant contends that the Respondent is not a partner of the network regarding the YONKA products nor a partner of the network regarding the beauty-care offered by YONKA. Thus, the Respondent is not allowed to use the registered trademark. The Respondent used the Domain Name for the offering of products and services, without legal authorization, in order to create confusion to attract new clients.

Since the choice of YONKA products as well as the beauty-care offered by YONKA requires specific training, YONKA’s corporate image could be tarnished by the acts of the Respondent.

(iii) The Domain Name was registered and is being used in bad faith.

The Complainant contends that by using the Domain Name, the Respondent deliberately tried to attract Internet users to the website under the Domain Name to gain profit. The Respondent did so by creating a likelihood of confusion with the Complainant’s trademark, concerning the origin, the creator, the relationship or the approval of the website, and by marketing the Complainant’s products without its authorization.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has several international trademark registrations for YON-KA registered for goods and services related to, inter alia, perfumery and beauty-care, one of which has been registered in Australia. The Panelist finds that the Complainant has rights in the YON-KA trademarks.

For the purpose of assessing whether the Domain Name is identical or confusingly similar to the YON-KA trademarks in which the Complainant has rights, the “.com” suffix is disregarded, it being a necessary component of a domain name. The relevant part of the Domain Name is yonka-institute. The term “yonka” only differs by one dash from the Complainant’s YON-KA trademarks, and sounds and looks almost identical to the Complainant’s YON-KA trademarks. Therefore the Panelist considers yonka and YON-KA to be very similar. “Institute” is a generic word. It is non-distinctive and can be considered to be easily linked to perfumery and beauty-care products and services, for which the Complainant registered and uses its YON-KA trademarks. Therefore the Panelist is of the opinion that the addition of “institute” does not reduce the likelihood of confusion. As a result the Domain Name, while not identical to the Complainant’s YON-KA trademarks, is confusingly similar.

B. Rights or Legitimate Interests

The Complainant has stated that it is not affiliated with the Respondent in any way and that it has not authorized the Respondent to register the Domain Name. At present the Respondent is not using the Domain Name, but the Respondent has used the Domain Name for the offering of YONKA products and/or services. There is no evidence of circumstances as described in paragraph 4(c) of the Policy or any other circumstances which could indicate that the Respondent has any rights or legitimate interests to the Domain Name.

Consequently, the Panelist finds that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Domain Name is composed of the distinctive term “yonka”, which is very similar to the YON-KA trademarks of the Complainant, and the non-distinctive, descriptive term “institute”. As a rule it is sufficient to establish confusing similarity for purposes of the Policy, if a domain name wholly incorporates a complainant’s trademark and only adds a generic word. The fact that the term “institute” can easily be linked to the Complainant’s principal services marketed under the YON-KA trademarks may even enhance confusion (e.g. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625). Furthermore, considering the fact that the Respondent has used the Domain Name for the offering of YONKA products and/or services it is clear and undisputed that the Domain Name has been registered with the YON-KA trademarks in mind. Taking these circumstances into account, against the background that the Respondent has no rights or legitimate interests in the YON-KA trademarks and has used the website for its own commercial interest, the Panelist concludes that the Domain Name was registered in bad faith.

The Complainant must also prove that the Respondent is using the Domain Name in bad faith. In this respect the Complainant has asserted that the indication for use in bad faith as described in article 4(b)(iv) of the Policy occurs, stating that the Respondent has deliberately tried to attract internet users to the website under the Domain Name to gain profit by creating a likelihood of confusion with the Complainant’s trademark, concerning the origin, the creator, the relationship or the approval of the website, and by marketing the Complainant’s products without its authorization.

Considering that the Respondent has used the website to present itself as a or the “YON-KA institute”, it is obvious that the Respondent has created a likelihood of confusion with the YON-KA trademarks with the intention to suggest (some kind of) affiliation to the Complainant. Further, by using the confusing Domain Name the Respondent has tried to redirect Internet users to its website, generating traffic for its own commercial purposes. Therefore the Panelist finds that the Respondent has used the Domain Name in bad faith.

However, the Complainant needs to prove that the Respondent is using the Domain Name in bad faith and at the moment the Domain Name is inactive and entering the Domain Name results into an error page. Nevertheless, in previous decisions Panelists have found that under certain circumstances non use of a disputed domain name may constitute use in bad faith under the Policy (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ). In this case the Domain Name has been used in bad faith before it became inactive. Furthermore, the Respondent has not replied to the Complainant’s contentions. This leads to the conclusion that, apparently, the Respondent is not willing to account for the registration and use of the Domain Name. Taken these circumstances into consideration, there is a serious risk that the Respondent plans to use the Domain Name in bad faith again in the future. Therefore the Panelist finds that the Domain Name is being used 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 <yonka-institute.com> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist

Date: February 28, 2005