The Complainants are: (i) RHODIA UK LIMITED (formerly known as Rhodia Consumer Specialties Limited), of Herts, United Kingdom of Great Britain and Northern Ireland; and (ii) RHODIA of France, represented by Isabelle Simonnet, Head of Rhodia Trademark Department of France.
The Respondent is Flamesafe, of Victoria, Australia.
2. The Domain Names and Registrar
The disputed domain names <probanclothing.com>, <probanfabric.com>, <probanfabrics.com>, <probanshirts.com>, and <probanworkwear.com> are registered with Godaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on July 11, 2006 with hardcopy following on July 21, 2006. The Complaint was filed pursuant to 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”).
On July 21, 2006 the Center acknowledged receipt of the Complaint and transmitted its verification response by email to Go Daddy Software Inc. On July 17, 2006, the Complaint was found to be deficient under paragraph 1 of the Rules because the Respondent identified in the Complaint differed from the holder of the domain names registration.
On July 20, 2006, an amendment to the Complaint was filed by email with the Center. The hard copy followed on July 21, 2006.
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 July 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 14, 2006.
On August 8, 2006, the Respondent submitted its Response. It began by requesting the Panel to deny the remedies requested by the Complainants. It stated further that, “The respondent Flamesafe Fabric Specialist Pty Ltd. agrees to the transfer to Rhodia of the domain names in this complaint.”
On August 14, 2006, the Center acknowledged receipt of the above-noted correspondence. It then advised that the Parties might wish to consider a suspension of the proceedings in order to explore a settlement between the parties. On August 25, 2006, the Center received by email and fax such a request for suspension of the proceeding.
On August 28, 2006, the Center confirmed the Notification of Suspension, indicating the expiry date would be September 27, 2007.
On September 26, 2006, the Respondent advised the Complainants’ representative that it was “no longer the owners of the said domain names” and advised that “the ball is now in your court to snap them up if you want them”.
On September 27, 2006, the Complainants requested the reinstatement of the proceedings.
On October 25, 2006, the Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter.
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, RHODIA UK LIMITED is the owner of the trademark PROBAN which is a well-known trademark in France and around the world. The trademark is registered in more than 100 countries. RHODIA UK LIMITED owns the domain name <proban.eu>. The Complainant, ROHDIA owns the domain names <proban.biz>, <proban.co.uk>, <proban.info> and <proban.us>.
The trademark PROBAN is well-known for flame retardant products, in particular, clothing made from flame resistant fabric. The disputed domain names all begin with the word “proban”, which is then associated with either “clothing”, “fabrics”, “fabric”, “workwear” or “shirts”.
The Respondent has not been licensed or otherwise permitted by RHODIA UK LIMITED or RHODIA to use the PROBAN trademark or to apply for any domain name including the trademark PROBAN, nor has RHODIA UK LIMITED or RHODIA consented to such use or application of the PROBAN trademark by the Respondent.
In January 2006, the Complainants were informed of the reservation of the disputed domain names <probanclothing.com>, <probanfabric.com>, <probanfabrics.com>, <probanshirts.com>, and <probanworkwear.com>.
By April 3, 2006, it was evident that upon entering the domain names <probanfabric.com>, <probanshirts.com> and <probanworkwear.com>, the user would be redirected to the website of two of the Complainants’ competitors.
5. Parties’ Contentions
A. Complainants
The Complainants assert that:
The disputed domain names <probanclothing.com>, <probanfabric.com>, <probanfabrics.com>, <probanshirts.com>, and <probanworkwear.com> registered by the Respondent are identical and confusingly similar to the trademark held by the Complainants. The Respondent has taken the Complainants’ trademark PROBAN and associated it with either “clothing”, “fabrics”, “fabric”, “workwear” or “shirts”, all of which are descriptive words in the general field of clothing and which do not affect the distinctive power of PROBAN. The PROBAN trademark is reproduced in the disputed domain names and it is placed in the first position. It is well established that the specific top level of the domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. Thus, the reservation of the domain names in dispute itself constitutes infringement of the PROBAN trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has not been licensed or otherwise permitted by RHODIA UK LIMITED or RHODIA in any way to use or to apply for any domain name including PROBAN, nor has RHODIA UK LIMITED or RHODIA acquiesced in any way to such use or application of the PROBAN trademark by the Respondent.
The Respondent registered the disputed domain names and is using them in bad faith. In January 2006, the Complainants’ Watching Service, DOMAINS BY PROXY, INC., informed the Complainants of the reservation of the disputed domain names <probanclothing.com>, <probanfabric.com>, <probanfabrics.com>, <probanshirts.com>, and <probanworkwear.com>. At that time, the disputed domain names were being directed to an index.
By April 3, 2006, the names <probanfabric.com>, <probanshirts.com> and <probanworkwear.com> led visitors to being redirected to the website of two of the Complainants’ competitors. This proves the bad faith in registering them and the Respondent’s lack of real interest in them.
B. Respondent
On September 26, 2006, the Respondent advised that the disputed domain names “have been cancelled by our new consultant” and that the Complainants could “snap them up”. It also indicated that it would “not deal with any more proceedings on this matter” and that any expenses that the Complainants “wished to continue to generate” would be at their cost.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by the Complainants under the Policy, it is necessary that the Complainants prove, as required by paragraph 4(a) of the Policy, that:
(i) the contested domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
In the present case, the Panel is of the view that the record contains sufficient evidence of each of the three requisite elements.
A. Identical or Confusingly Similar
First, the Complainants claim and the Panel has verified to its satisfaction that the Complainants own the trademark PROBAN which is a well-known trademark in France and around the world for flame retardant products. The trademark PROBAN is registered in more than 100 countries.
The Panel has also verified that RHODIA is the owner of the domain names <proban.biz>, <proban.co.uk>, <proban.info> and <proban.us> and that RHODIA UK LIMITED is the owner of the domain name <proban.eu>.
The domain names in dispute <probanclothing.com>, <probanfabric.com>, <probanfabrics.com>, <probanshirts.com>, and <probanworkwear.com> are confusingly similar to the trademark PROBAN. The trademark is reproduced in the disputed domain names and it is placed in the first position.
Thus, the disputed domain names are confusingly similar to the trademark in which the Complainants have rights. Therefore, the Panel finds that The Complainants have fulfilled the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Second, the Complainants must prove that the Respondent has no rights or legitimate interests in respect of the domain names. The Complainants have proven that the Respondent has no rights to the disputed domain names. The Respondent has not been licensed or otherwise permitted by RHODIA UK LIMITED or RHODIA in any way to use or to apply for any domain name including PROBAN, nor has RHODIA UK LIMITED or RHODIA acquiesced in any way to such use or application of the PROBAN trademark by the Respondent.
The Panel agrees with the Complainants that the Respondent has no rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Third, it must be shown that the domain names at issue have been registered and are being used in bad faith.
The Panel is of the view that the disputed domain names have been registered and are being used in bad faith to redirect Internet users to sites maintained by competitors of the Complainants. In such circumstances, the disputed domain names were registered and used in bad faith.
7. Decision
For the reasons stated above, the Panel orders that the domain names <probanclothing.com>, <probanfabric.com>, <probanfabrics.com>, <probanshirts.com>, and <probanworkwear.com> be transferred to the Complainants.
J. Christopher Thomas, Q.C. Sole Panelist
Dated: November 8, 2006
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