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National Futures Association v. John L. Person [2005] GENDND 626 (15 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société BIC v. LaPorte Holdings, LLC

Case No. D2005-0342

1. The Parties

The Complainant is Société BIC having its business address in Clichy Cedex, France (“the Complainant”).

The Respondent is LaPorte Holdings, LLC with a business address in Los Angeles, California, United States of America (“the Respondent”).

2. The Domain Names and Registrar

The disputed domain names are <bicgraphics.com> and <bicgraphicsusa.com> (“the Domain Names”), both registered with NameKing.com (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2005. On April 5, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain names at issue. On April 26, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided 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 May 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2005.

The Center appointed Zoltán Takács as the Sole Panelist in this matter on June 2, 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.

The language of the proceeding is English, that being the language of the language of the registration agreement.

4. Factual Background

The Complainant in this administrative proceeding is a well-established French company Société BIC engaged in production and selling of among others stationery, lighters and razors under the trademark BIC throughout the world. The Complainant and/or its parent, subsidiary and affiliated companies own numerous trademarks incorporating “BIC”, including but not limited to the United States registration number 71630054 BIC filed by BIC Corporation on May 22, 1952, and Community Trademark Registration No. 414904 BIC filed by Société BIC on December 23, 1996. Both trademarks among others protect various goods of classes 16 and 34 under common classification of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Mark, such as pencils, writing appliances, lighters, and gas lighters.

Originally, the Domain Names have been registered by a Chinese individual Ling Shun Shing, the <bicgpraphics.com> domain name on September 27, 2002, the <bicgraphicsusa.com> domain name on July 7, 2004. The Domain Names were later assigned to the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly to its BIC trademark(s) because they totally incorporate the BIC trademark, and the use of descriptive words in the Domain Names such as “graphics” and “graphicsusa” do not lessen the likelihood of confusion with the BIC trademark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names because it has never been commonly known by the contested domain names, nor it has been in any way authorized to use the Complainant’s BIC trademark(s). There are no elements that would indicate that the Respondent made a legitimate non-commercial or fair use of the Domain Names. On the contrary, the websites under the disputed domain names provided links to other websites offering similar products to those offered by the Complainant.

Further the Complainant states that the Respondent registered and used the disputed domain names in bad faith, using them to provide access to third parties websites engaged in businesses identical to those of the Complainant. Importantly, the Respondent used the disputed domain names as an attempt to benefit from the Complainant’s reputed “BIC” trademark and an attempt to attract Internet users to its websites for commercial gain. The Complainant provided the Panel that the Respondent has engaged in a pattern of such conduct, as it has been found by several UDRP Panels to have registered and used the disputed domain names in bad faith.

The Complainant requests that the domain names <bicgpraphics.com> and <bicgpraphicsusa.com> be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It has been a consensus view in the UDRP panel decisions that if the complainant owns a registered trademark than it satisfies the threshold requirement of having trademark rights, despite the location of the registered trademark and the goods and/or services it is registered for.

It is apparent for this Panel that the Complainant itself and its wholly owned subsidiaries own numerous trademark registrations BIC, worldwide, including the ones registered in the Unites States of America and in the European Union.

However, in order to satisfy the requirements under paragraph 4(a)(i) of the Policy the complainant must prove that the disputed domain names are identical of confusingly similar to the trademark.

The contested domain names <bicgraphics.com> and <bicgraphicsusa.com> wholly incorporate the BIC trademark of the Complainant with addition of generic or descriptive terms “graphics” and “graphicsusa” and the Panel agrees with the Complainant that the “bic” element is the most relevant part in both of the contested domain names, it is instantly recognizable. In this context it is fair to believe that users of any of the disputed domain names would be confused into thinking that they are associated with the Complainant.

The Panel therefore finds that the disputed domain names are confusingly similar to the BIC trademark in which the Complainant holds rights, and that the Complainant has established element (i) of the Policy’s paragraph 4(a).

B. Rights or Legitimate Interests

Under the Policy, “while the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily with the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complaint is deemed to have satisfied paragraph 4(a)(ii) of the Policy“WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, “http://arbiter.wipo.int/domains/search/overview/index.html”, visited by the Panel on June 14, 2005.

In this case the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(a)(ii) of the Policy.

It has not been disputed that the Complainant has ever authorized the Respondent to register and/or use any domain name incorporating its BIC trademark. There is also no evidence that the Respondent has been commonly known by the domain names, or made legitimate noncommercial or fair use of the domain names. On the contrary, the Domain Names pointed out to a general page, which provided links to a number of websites offering competing products in competition to those of the Complainant, manufactured and sold under the BIC trademark. The Respondent’s such use does not qualify as bona fide offering of goods and services. The Respondent utilized the Domain Names in order to attract Internet users to visit websites offering goods in direct competition with those of the Complainant, which deprives the Respondent of the character of being bona fide within the meaning of paragraph 4(c)(i).

By defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c)(ii) of the Policy, and the circumstances brought forward by the Complainant in regard making out this requirement of the Policy satisfy the Panel that the Respondent has no rights or legitimate interests the disputed domain names.

C. Registered and Used in Bad Faith

The Panel finds that the <bicgraphics.com> and <bicgraphicsusa.com> domain names have been registered and used in bad faith for the following reasons.

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’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 Respondent has engaged in a patter 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 Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 website or location or of a product or service on the Respondent’s website or location.

The Respondent has a pattern of registering and using domain names incorporating third parties trademarks with intent to attract for commercial gain Internet users to its website(s) by creating likelihood of confusion with the complainants trademarks, as to source, sponsorship, affiliation or endorsement of its websites, which is sufficient to find bad faith under the Policy and thus the Panel will not address other activities on the part of the Respondent which are also indicative of bad faith registration and use.

The Respondent was found engaged in cyber squatting in a high number of WIPO cases. E.g. See Arai Helmets America, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2004-1027, Matrix Group Limited, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2005-0059, Fuji Photo Film U.S.A. v. LaPorte Holdings, WIPO Case No. D2004-0971, Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. LaPorte Holdings, Inc. WIPO Case No. D2005-0030.

This is clear indicative of the Respondent’s illegal cyber squatting, and it is widely accepted that the Policy, applicable to this case has specifically been designed to resolve abusive registration of trademarks as domain names.

The Respondent has been involved in numerous such attempts and consequently condemned by various “panels, which in this Panel’s view amount to the Respondent being engaged in a pattern of conduct sanctioned by paragraph 4(b)(ii) of the Policy and with that the Panel finds that the Complainant has made out the third element of the Policy (paragraph 4(a)(iii).

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 <bicgraphics.com> and <bicgraphicsusa.com> be transferred to the Complainant.

Zoltán Takács
Sole Panelist

Dated: June 16, 2005