DORMEUIL FRERES and DORMEUIL UK v. Keyword Marketing, Inc
Case No. D2007-1424
1. The Parties
Complainants are DORMEUIL FRERES, Palaiseau, France, and DORMEUIL UK, London, United Kingdom of Great Britain and Northern Ireland, represented by Selarl Marchais De Candé, France.
Respondent is Keyword Marketing, Inc, West Indies, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <dormeiul.com> is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2007. On September 28, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On the same day, DomainDoorman, LLC transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on October 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 5, 2007.
The Center appointed Roberto Bianchi as the sole panelist in this matter on November 8, 2007. 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 followings facts and circumstances are uncontested:
Complainant DORMEUIL FRERES owns numerous trademarks registrations for DORMEUIL: International trademark n° 179 681 registered on September 20, 1954 in classes 24 and 25, designating Albania, Armenia, Austria, Azerbaijan, Bosnia-Herzegovina, Benelux, Switzerland, Cuba, Czech Republic, Germany, Algeria, Egypt, Spain, Croatia, Hungary, Italy, Kyrgyzstan, Democratic People’s Republic of Korea, Liechtenstein, Liberia, Morocco, Monaco, Republic of Moldova, The former Yugoslav Republic of Macedonia, Portugal, Romania, Republic of Serbia, Sudan, Slovenia, Slovakia, San Marino, Tajikistan and Vietnam; Community trademark n° 000 109 207 filed on April 1st, 1996 and duly registered in classes 3, 9, 14, 18, 23, 24, 25 and 34; Community trademark n° 002 469 971 filed on April November 20, 2001 and duly registered in classes 24 and 25; U.S. federal trademark filed on May 27, 1963, registered under n° 789 519 in class 25, renewed; Canadian trademark n° TMA474564 registered since April 11, 1997; Mexican trademarks n° 417 433 and 402 723 registered since July 16, 1991 in class 25 and in class 24; Dominican Republic trademarks n° 78890 and n° 78917 registered since June 11, 1987 in classes 24 and 25; Colombian trademarks n° 2295080 and n° 262104 registered since September 22, 2000 in class 25 and in class 24; Costa Rican trademarks n° 95562 and 95607 registered since August 1st, 1996 in class 24 and in class 25; Guatemalan trademarks n° 40376 and 40377 registered since November 18, 2000 in class 24 and in class 25; Salvadorian trademarks n° 4637-95 and n° 6634-95 registered since October 25, 1995, renewed in class 24 and 25; Panamanian trademarks n° 32926 and n° 138672 registered since May 9, 1983, renewed in classes 24 and 25; Venezuelan trademarks n° F-157065 and n° F-037587 registered since October 8, 1959, renewed in classes 24 and 25; French trademark n° 1 321 420 registered since August 29, 1995, renewed in classes 23, 24 and 25.
Respondent registered the disputed domain name on November 13, 2006.
Respondent in the instant proceeding was involved as the respondent party in at least three other domain name disputes: Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,
WIPO Case No. D2006-1137 (cancellation ordered on November 9, 2006); La Societé des Autoroutes Paris Rhin Rhône v. Keyword Marketing Inc.,
WIPO Case No. D2006-1270 (transfer ordered on December 13, 2006); and Edmunds.com, Inc. v. Web Advertising, Corp. / Keyword Marketing, Inc.,
WIPO Case No. D2006-1380 (transfer ordered on December 25, 2006).
5. Parties’ Contentions
A. Complainant
Complainants contend the following:
Respondent’s domain name is virtually identical to Complainants’ famous DORMEUIL trademark – differing only in the switching of the two letters “I” and “U”. Considering that Respondent’s registration of the disputed domain name constitutes typo squatting, the domain at issue is, by definition, confusingly similar to Complainants’ trademarks.
Respondent does not need to use the litigious domain name for its activity, as his name is “Keyword Marketing”, which is completely different from “Dormeuil”. The domain name <dormeiul.com> is used by Respondent only in order to lead consumers to other websites offering to sell online, various products and/or services to consumers. Complainants have never licensed nor otherwise permitted Respondent to use its trademarks DORMEUIL to apply for any domain name incorporating this term in its entirety. There is no relationship between Complainants and Respondent. In sum, Respondent has no right or legitimate interests in respect of the domain name <dormeiul.com>.
Respondent has registered in bad faith the litigious domain name <dormeiul.com> that corresponds to Complainants’ trademarks and domain name. Before registering the disputed domain name, Respondent must have been aware of the existence of the fabrics and clothes sold by Complainants under the trademark DORMEUIL, the trademark DORMEUIL owned by Complainants, the domain names <dormeuil.com> registered by Complainants, and Complainants’ website: “www.dormeuil.com”. Indeed the trademark DORMEUIL, rightly written with all the letters in their exact place, appears on the right side of the pages printed from Respondent’s website.
At least three other UDRP procedures were made against Respondent in 2006. In each of these proceedings the Panel ordered the transfer or the cancellation of the litigious domain names after having underlined the bad faith of Respondent.
Respondent’s website presents men’s clothing articles which can be made to measure by custom tailoring, and clearly offers these products for sale, in direct competition with the Complainants’ products. This website also presents men’s shirts which can be bought in the ready to wear collection or can be realized by custom tailoring, and clearly offers these products for sale, in direct competition with the Complainants’ products.
Respondent’s website: “www.dormeiul.com” hosts sponsored links. When clicking on any of these links one is automatically directed to other websites offering to sell online to the consumers various products in direct competition with Complainants products. This clearly demonstrates that the domain name <dormeiul.com> is used by Respondent to generate money on every click made on the sponsored links. By using the domain name in such a way, Respondent is intentionally attempting to attract for financial gain Internet users to the above mentioned websites or other on-line location by creating a likelihood of confusion with Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the registrant’s websites or location or of a product or service on Respondent’s websites or location. There is also no doubt that the litigious domain name was registered intentionally and is being used for a commercial purpose, without any rights or legitimate interest by Respondent, with the only purpose of disrupting the business of a competitor.
B. Respondent
Respondent did not reply to any of Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
By presenting the trademark certificates detailed in section 4 above, Complainants have satisfactorily evidenced that DORMEUIL FRERES have trademarks rights in the DORMEUIL trademark in many countries. The Panel also accepts that the DORMEUIL mark is famous worldwide in respect of quality fabrics and clothes.
The disputed domain name only differs from the DORMEUIL mark in that the “IU” sequence in the domain name is the permutation of the “UI” group in the mark. This is an obvious mistyping or typo squatting and too minor a difference to distinguish the domain name at issue from Complainants’ mark. See, among many other cases against John Zuccarini, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,
WIPO Case No. D2001-0489 (the domain name was found to be just a misspelling of, and thus, confusingly similar to the DISNEY WORLD mark).
The Panel thus concludes that the domain name in dispute is confusingly similar to Complainants’ mark.
B. Rights or Legitimate Interests
Complainants contend that Respondent is not known by the domain name and that Complainants have never licensed nor otherwise permitted Respondent to use the DORMEUIL trademarks to apply for any domain name incorporating this term, and that Respondent is using the domain name at issue only to lead consumers to other websites offering to sell online various products and/or services to consumers, directly confusing and competing with Complainants’ products and services. Taken together, these contentions – unopposed by Respondent - amount to a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
The consensus view of WIPO panelists is that if a complainant makes out an initial prima facie case that respondent lacks rights or legitimate interests, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” at “http://www.wipo.int/amc/en/domains/search/overview/index.html”. As Respondent is in default, and has not denied any of Complainants’ contentions, the Panel concludes that the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
As seen above, the disputed domain name is an obvious mistyping of the mark DORMEUIL. This suggests that Respondent intentionally incorporated Complainants’ mark at the time of registering the domain name, with the purpose of profiting from the fame of Complainants’ mark, in other words, that Respondent registered the domain name at issue in bad faith. This impression is reinforced by the printout of Respondent’s website as submitted by Complainants, where the trademark DORMEUIL (correctly written) appears on the right side of the page.
Further, as shown in the printouts submitted by Complainants, Respondent’s website contains several sponsored links to websites: (“www.boncostume.com”, “www.listerouge.fr” and “www.samson-paris.com”) where clothing articles and men’s shirts are being offered for sale, competing with Complainants’ Dormeuil goods and services. While there is no evidence that Respondent itself is the entity profiting from the sales of such websites, Respondent does appear to be trying to generate income by being paid with every click made by Internet users – attracted to Respondent’s website after mistyping Complainants’ mark– on the sponsored links.
The Panel is satisfied that by using the domain name at issue as described, Respondent is attempting to attract for commercial gain Internet users to websites via “sponsored links”, by creating a likelihood of confusion with Complainants’ DORMEUIL trademark as to the source, sponsorship, affiliation, or endorsement of the said websites or location or of a product or service on Respondent’s websites or location. The fact that Respondent is using the domain name in issue to divert customers to Complainants’ competitors is further evidence of bad faith. See Banca di Roma S.p.A. v.Unasi Inc. a/k/a Domaincar,
WIPO Case No. D2006-0068, where the respondent registered the domain name at issue to divert Internet users seeking information about the complainant’s products to a portal site offering sponsored links and to share in revenues obtained from the diverted traffic. This is a circumstance of bad faith registration and use pursuant to Policy, paragraph 4(b)(iv).
The Panel therefore finds that the third requirement of the Policy has thus been met.
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<dormeiul.com>be transferred to Complainant DORMEUIL FRERES.
Roberto Bianchi Sole Panelist
Dated: November 22, 2007
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