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Societé Air France v. Virtual Dates, Inc [2005] GENDND 365 (24 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wedgwood Ltd. Corp. v. JIT Limited

Case No. D2004-1025

1. The Parties

The Complainant is Wedgwood Ltd. Corp., Washington, D.C., United States of America, represented by Harris, Wiltshire & Grannis, LLP, United States of America.

The Respondent is JIT Limited, Georgetown, Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <wedgewoodchina.com> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2004. On December 6, 2004, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name(s) at issue. On December 13, 2004, Dotster, Inc. 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 December 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2005.

The Center appointed Simon Minahan as the sole panelist in this matter on January 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

Complainant has numerous registered trademarks incorporating the “wedgwood” brand and maintains a website under the domain name <wedgwood.com>.

There was no evidence or contention from the Respondent as to having any interests or rights in the domain name the subject of the Complaint or the terms comprising it.

5. Parties’ Contentions

A. Complainant

The Complainant contends it has a well-known, international trademark interest in the term “wedgwood” dating back to 1760 and relating to a variety of goods including in particular china porcelain and earthenware.

The Complainant contends that the domain name in issue <wedgewoodchina.com> is confusingly similar to its “wedgwood” trademark notwithstanding variation in the spelling by addition of the letter “e” and the word “china”.

It further contends that the Respondent has no rights or interests in the domain name, has no licence from the Complainant nor affiliation with it and is not known by the domain name. It states that all attempts to communicate with the Respondent at the address for communication provided for by the registrar have failed to provoke any response from the Respondent and contends that the whois details are false and a sign of bad faith registration.

Respondent is using the domain name to illegitimately attract and divert customers to websites having no association with or licence from the Complainant contrary to paragraph 4(c) of the Uniform Domain Name Dispute Resolution Policy. Complainant contends it may be inferred that Respondent is profiting from this diversion by dint of “click-through” fees and/or sales revenue.

The Complainant finally contends that the Respondent’s conduct, by making use of confusion arising out of the obvious similarity between Complainant’s marks and the subject domain name, amounts to “plundering” of the Complainant’s well-known trademark in bad faith.

B. Respondent

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

6. Discussion and Findings

The Panel finds that the Complainant has a trademark interest in the “wedgwood” brand and enjoys a longstanding international reputation in the mark. It further finds the mark is well known, although it does not depend upon this finding in reaching its conclusion in this decision.

It further finds that despite attempts to contact the Respondent at its registered address, the Respondent has not responded to or communicated with the Complainant.

A. Identical or Confusingly Similar

It finds that the domain name <wedgewoodchina.com> is confusingly similar to the Complainant’s trademark notwithstanding the difference of spelling in the term “wedgewood” and the inclusion of the term “china”.

Minor alterations of spelling do not operate to sufficiently distinguish a term and take it out of the realms of similarity in trademark jurisprudence nor in the operation of the UDRP see eg: Cancer Treatment Centers of America Inc v. Henry Chan, WIPO Case No. D2003–0611 (September 18, 2003 (“CTCA”)).

Neither does the inclusion of the term “china”, descriptive of a principal product associtated with the Complainant’s brand, serves to distinguish the domain name nor break the association of the term “wedgewood” with the Complainant’s brand; see eg:  America Online Inc v. Yeteck Communication WIPO Case No. D2001-0055 (April 23, 2001).

B. Rights or Legitimate Interests

The Panel finds that the Respondent has no legitimate interests in the Domain Name. It makes this finding in the absence of any submission by the Respondent seeking to establish such an interest, the evidence offered by the Complainant that it has no affiliation with the Respondent and the showing that the Respondent has no licence (and has never sought one) from the Complainant. Further the Panel infers from the spelling alteration of the Complainant’s mark in the subject Domain name and the presence of links to retail websites carrying the Complainant’s products that the Respondent is seeking to make surreptitious and opportunistic use of the Complainant’s mark in a manner inconsistent with any legitimate interest in the terms comprising the domain name.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent’s use of the domain name is one of diversion of users by seeking to create confusion of association with the Complaint by dint of the opportunistic similarity with the Complaint’s trademarks. This use is clearly for commercial gain. See eg Microsoft v. MSNetworks, WIPO case No. D2002-0647; Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Henry Chan, WIPO Case No. D2004-0218, CTCA supra.

As such, in accordance with paragraph 4(c) of the UDRP, it holds that the use of the domain name is in bad faith.

Moreover the panel finds that the domain name was initially registered with the intent and purpose of being so used in circumstances. This finding is made by inference from the fact of the use to which the domain has been put and the finding that the Respondent had no legitimate interests in the domain name.

While the fact that the Respondent has in no way sought to communicate with the Complainant or responded to communications directed in accordance with address provided for by the registrar, does nothing to counter these findings, the Panel does not infer bad faith registration from that circumstance in this case. On this basis the Panel finds, on balance, that the Respondent also registered the 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 <wedgewoodchina.com> be transferred to the Complainant.

Simon Minahan
Sole Panelist

Dated: February 2, 2005