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Groupama SA v. Ginsu (VBI) Holdings Limited [2005] GENDND 402 (9 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Groupama SA v. Ginsu (VBI) Holdings Limited

Case No. D2005-0272

1. The Parties

The Complainant is Groupama SA, Paris, France, represented by Selarl Iteanu, France.

The Respondent is Ginsu (VBI) Holdings Limited, Hong Kong, SAR of China.

2. The Domain Names and Registrars

The disputed domain names <auto-presto.com> and <autopresto.com> are registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2005. On March 17, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On March 17, 2005, Tucows 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 March 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2005. The Respondent did not submit any response, but it sent, through a representative, an e-mail on April 12, 2005, in which it is said that the owner of the disputed domain names accepts to transfer them to the Complainant and asks to suspend the proceeding. On April 14, 2005, the Center informed the Respondent that in order to suspend the proceeding it was necessary to receive a specific request from the Complainant and that meanwhile the Respondent could complete the transfers forms necessary to transfer to the Complainant full ownership of the disputed domain names. On the same day, the Complainant answered that it did not agree to any suspension or withdrawal of the procedure. Accordingly, the Center notified the Respondent’s default on April 15, 2005.

The Center appointed Avv. Nicoletta Colombo as the sole panelist in this matter on April 25, 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 very well-known insurance company located in France which owns the trademark “AUTO PRESTO le service confort de groupama en cas d’accident” registered in France on December 23, 1998, covering services in classes 36, 37 and 39.

The Respondent Ginsu Holdigns Limited has registered the domain names <autopresto.com> and <auto-presto.com> on June 19, 2002.

5. Parties’ Contentions

A. Complainant

Complainant contends the following:

1) That the disputed domain names <autopresto.com> and <auto-presto.com> are confusingly similar to trademark in which Complainant has rights. The distinctive element of the trademark are the words “auto presto”, which are written in bold and big sized letters, the other words are descriptive of the kind of service offered.

2) That the disputed domain names reproduce the well-known trademark “auto presto”.

3) That the Respondent has no rights or legitimate interests in respect of the disputed domain names, that he is not commonly known by the disputed domain names and that he is not making any legitimate or fair use of the disputed domain names.

4) That Complainant has never licensed or otherwise authorized the Respondent to use the domain names in dispute and moreover the Respondent is not affiliated with the Complainant in any way.

5) That the Respondent registered the disputed domain names in bad faith, in particular because it has declared a false Registrant identity and address at the time of registration, and declared false contact information.

6) The bad faith is also demonstrated by the circumstance that the Respondent offered to sell the domain names in dispute to the Complainant by e-mail and also has not given evidence of use or intent to use the domain names in dispute. The only proven “use” has been the above mentioned offer.

7) That the disputed domain names have never been used in relation to active web sites and are therefore being “passively held” by the Respondent.

B. Respondent

The Respondent did not reply to the Complainants’ contentions and therefore he is in default. Even if the e-mail sent by the legal representative of the Respondent can not be considered a real response, through such e-mail the Panel has been informed that the Respondent does not oppose the transfer of the contested domain names to Groupama.

6. Discussion and Findings

According to paragraph 4(a) of the Policy the Complainant must prove that:

1) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and that

2) the Respondent has no rights or legitimate interests in respect of the domain names; and that

3) the domain names have been registered and are being used in bad faith.

The Panel underlines the fact that the Respondent did not oppose to the transfer of the disputed domain names to the Complainant. Several prior decisions in which the Respondent has consented to transfer the contested domain names conclude that the requirements of paragraph 4 of the Policy are fulfilled (see Sanofi-Aventis v. Day Corporation, WIPO Case No. D2004-1075, eMusic.com, Inc. v. Mp3DownLoadCity, WIPO Case No. D2004-0967, Lonely Planet Publications Pty Ltd. v. Hoang Anh Minh and cicvn.com, WIPO Case No. D2003-0355, Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398).

A. Identical or Confusingly Similar

The Complainant has provided the Panel with sufficient evidence that it has rights in “AUTO PRESTO”. As indicated by the Complainant, the Panel finds that the distinctive element of the trademark is the wording “auto presto” and the other words are only a description of the kind of services offered. The disputed domain names include the descriptive part of the Complainant’s trademark. Therefore the Panel finds the disputed domain names to be confusingly similar to the trademark owned by the Complainant.

The Complainant has thus succeeded in establishing the first element required by the Policy.

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark or to apply for or to use the domain names incorporating the distinctive elements of its trademark. Neither is the Respondent known as “auto presto”.

Complainant has put forward a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. Respondent has defaulted and has thus not presented any rights or legitimate interests to the domain names.

The Complainant has demonstrated the second element and the Panel finds that the Respondent has no rights or legitimate interests in the domain names.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of the domain names in bad faith:

i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

ii) 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 holder has engaged in a pattern of such conduct; or

iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.

The Complainant has demonstrated that the disputed domain names were registered by the Respondent only a few weeks after Complainant ran an important promotion campaign in March 2002 (see Annex 14). The Respondent therefore must have had knowledge of the existence of the Complainant and its trademarks.

The Complainant has submitted that on November 10, 2003, the Respondent offered the Complainant to sell the domain names by email (see Annex 15), stating “I am the owner of the domain names www.autopresto.com and www.auto-presto.com and I wish to sell them.” Such an offer to sell the disputed domain names to the Complainant has been listed in paragraph 4(a)(iii) as proof of registration and use of the domain names in bad faith.

Finally, it has been proven that the Respondent gave false identity and contact information at the time of registration of the disputed domain names and that the Respondent has not used or given any indication of its intent to use the domain names in dispute. These behaviors have to be considered as further elements indicating registration and use of the domain names in bad faith.

The Panel concludes that the Complainant has succeeded in providing evidence of the registration and use in bad faith of the domain names by the Respondent.

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 names, <autopresto.com> and <auto-presto.com> be transferred to the Complainant.

Nicoletta Colombo
Sole Panelist

Dated: May 9, 2005