The Complainant is 3 Suisses International SA, of France, represented by SELARL Espace Juridique Avocats, France.
The Respondent is Maison Tropical SA, British West Indies, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed Domain Name <lestroisuisses.com> is registered with BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2008. On March 31, 2008, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On March 31, 2008, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2008.
The Center appointed Luca Barbero as the sole panelist in this matter on May 5, 2008. 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 French holding company and the owner of trademarks consisting of the sign 3 SUISSES such as community trademark 3 SUISSES registered under n°00 0372 698 on December 29, 1999 in classes 16, 25, 38 and 39.
The Respondent registered the Domain Name < lestroisuisses.com> on February 21, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant states that the trademark, 3 SUISSES is widely known around the world for various products such as clothes, shoes, domestic appliances, furniture and others.
The Complainant informs the Panel that over 1 million catalogues are distributed per year only in France under the trademark 3 SUISSES.
According to the Complainant, the disputed domain name is confusing similar to the 3 SUISSES trademark underlining that the disputed Domain Name is composed by the French term “trois” corresponding to the number “3”. The Complainant also contends that the omission of the letter “s” and the addition of the generic term “les” does not make the Domain Name dissimilar to 3 SUISSES trademark and that it is a difference of such minor importance that it cannot avoid confusion between 3 SUISSES trademark and the infringing Domain Name.
With reference to rights or legitimate interests in respect of the disputed Domain Name, the Complainant asserts that the Respondent has never registered 3 SUISSES trademark nor any similar trademark and that the Respondent has never used the words “les 3 suisses” or “lestroisuisses” in any way.
The Complainant states that the Respondent has no commercial relationships with the Complainant and that the Complainant has never authorized or licensed the Respondent in any way to use or exploit 3 SUISSES trademark, to appropriate <lestroisuisses.com> Domain Name or otherwise associate itself with 3 Suisses International.
The Complainant contends that the Respondent is using the disputed Domain Name to offer indirectly similar goods or services to the Complainant’s products. The Complainant further contends that the disputed Domain Name is used to divert Internet traffic from the Complainant’s legitimate website, creating confusion between the Domain Name and the trademark.
The Complainant asserts that the Respondent is hosting sponsored links to competitors’ products and services and receives financial revenue upon the number of clicks on these links.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent is only capitalizing on the confusion between the Domain Name and 3 SUISSES trademark.
The Complainant states that the Respondent’s website leads to a portal site offering sponsored links, promoting clothes, catalogue, direct response marketing, clothes and that the links are in French. The Complainant also asserts that the Respondent receives pay for click through payments for hits on the website associated with the Domain Name.
According to the Complainant, such a conduct shows clearly that the Respondent wants to divert Internet users seeking information or goods offered by 3 Suisses International and obtain revenues from this diverted traffic.
The Complainant informs the Panel that the Respondent has registered other domain names identical or similar to trademarks, redirecting to link portals for example the ones which were object of several other UDRP proceedings such as: Credit industriel et commercial SA v. MAISON TROPICAL SA, WIPO Case No. D2007-0955; HYDAC Technology Gmbh v. MAISON TROPICAL SA,
WIPO Case No. D2007-1031; Intesa SANPAOLO SpA v. MAISON TROPICAL SA,WIPO Case No. D2007-1396; Hanover Communications Limited v. MAISON TROPICAL, WIPO Case No. D2007-1456 and Credit Industriel et Commercial SA, credit Industriel de l’Ouest v. MAISON TROPICAL, WIPO Case No. D2007-1817.
The Complainant indicates that the Respondent has been found to be acting in bad faith in all the cases cited above and that such a conduct shows a pattern of bad faith conduct.
In view of all the above, the Complainant concludes that the Domain Name was registered and is being used in bad faith
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of the community trademark registration 3 SUISSES.
The Panel finds that the disputed Domain Name is confusingly similar to the registered trademark 3 SUISSES owned by the Complainant since the Respondent has merely used the number “3” in words i.e “trois” (French translation of the number “three”).
Furthermore the Respondent has eliminated the letter “s” which is certainly not sufficient to exclude the confusingly similarity (Fry’s Electronics, Inc v. Whois ID Theft Protection,
WIPO Case No. D2006-1435).
In ACCOR v. I&M Raamatupidamise O/Accora Consult OÜ,
WIPO Case No. D2006-0650, the Panel stated “The domain name at issue reproduces entirely the mark ACCOR with the mere addition of the single letter “a” which moreover makes no difference with the Complainant’s trademarks and may also be interpreted to be a misspelled suffix of ACCOR. Indeed the single letter “a” is an obvious attempt to “typosquat” the disputed domain name and is insufficient to avoid confusion.”
The same reasoning was adopted in VRL International Ltd. v. Domaincar,WIPO Case No. D2006-0240 where the “deletion of letter ‘s’ in domain name <superclubbreeze.com> was found not to alter the confusing similarity between the domain name and complainant’s marks SUPERCLUBS BREEZES, in Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. DRP Services,
WIPO Case No. D2003-0841 where the “deletion of the letter ‘s’ in domain name <hersheychocolateworld.com> confusingly similar to complainant’s <hersheyschocolateworld.com> domain name” and in Pop Smear, Inc. v. Craig Singer, NAF Case No. FA0006000094945 (deletion of single letter “s” from complainant’s registered mark 1800POSTCARDS.COM creates a confusingly similar domain name).
Moreover the addition of the definite article “les” which is the French translation of the article “the” is not sufficient to exclude the confusion. As stated in The Cyberbingo Corporation v. Global Gaming Entertainment N.V, WIPO Case No. D2006-0973, “The non-trademark element of the disputed domain name is the definite article ‘the’ which has no independent distinctiveness. The definite article serves the grammatical function of identifying or making definite one particular member of a generic class, and so serves to emphasise the noun that follows, which is the Complainant’s CYBERBINGO trademark. The addition of the definite article can also suggest an element of being established and even of exclusiveness (in the sense of ‘the one and only’).”
The Panel finds that the disputed Domain Name <lestroisuisses.com> is confusingly similar to the Complainant’s trademark 3 SUISSES since the deletion of the single letter “s”, the addition of the French term “les” and the writing in words of the number “3” are not sufficient to eliminate confusion.
In view of the above, the Panel finds that the Complainant has proven that the disputed Domain Name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Respondent may establish a right or legitimate interest in the disputed Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, it is sufficient that the Complainant shows prima facie case in order to shift the burden of proof on the Respondent. If a respondent fails to demonstrate rights and legitimate interests in the domain name in accordance with paragraph 4(c) of the Policy or on any other basis, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,
WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection, NAF Case No. 852581).
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed Domain Name.
Indeed there is no relation, disclosed to the Panel or otherwise apparent, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademarks and name under any circumstance and to sell Complainant’s products.
Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the Domain Name in connection with a bona fide offering of goods or services or intends to make a legitimate, non-commercial or fair use of the Domain Name.
The Panel notes that the Domain Name was, at the time of the filing of the Complaint, and still is pointing to a sponsored pay per click website aimed only at directing visitors to third party commercial websites.
The Panel finds that under the circumstances the use of the disputed Domain Name merely to direct visitors to various third party commercial websites does not constitute a legitimate, non-commercial use of the Domain Name under the Policy. See Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044.
See also Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, 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 the domain name 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 holder 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 holder 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 website 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 website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration the Panel notes that in light of the widely known character of the Complainant’s trademarks, the Respondent was likely aware of the Complainant’s trademark.
As in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257, this Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks. As stated inter alia in DHL Operations B.V v. Net Marketing Group,
WIPO Case No. D2005-0868 “It is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
Furthermore, the Panel observes that the disputed Domain Name points to a parking page where the Complainant’s trademark is referenced and where a link to the Complainant’s official website is displayed, additional element further indicating that the Respondent was well-aware of the Complainant’s trademark.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith (See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,
WIPO Case No. D2000-0226).
The Panel finds paragraph 4(b)(ii) applicable in this case since the Respondent has registered the Domain Name in order to prevent the Complainant from using the mark and has clearly engaged in a pattern of such conduct since it has also registered other domain names incorporating registered trademarks that have been subject of many proceedings under the Policy as evidenced in Credit industriel et commercial SA v MAISON TROPICAL SA,WIPO Case No. D2007-0955; HYDAC Technology Gmbh v. MAISON TROPICAL SA,WIPO Case No. D2007-1031; Intesa SANPAOLO SpA v. MAISON TROPICAL SA,WIPO Case No. D2007-1396; Hanover Communications Limited v. MAISON TROPICAL, WIPO Case No. D2007-1456 ; Credit Industriel et Commercial SA, credit Industriel de l’Ouest v. MAISON TROPICAL,WIPO Case No. D2007-1817; Compagnie Gervais Danone, The Dannon Company, Inc. v. Maison Tropicale SA,WIPO Case No. D2007-1944; Starwood Hotels & Resorts Worldwide, Inc., The Sheraton, LLC, Worldwide Franchise Systems, Inc., Westin Hotel Management, L.P. v. Marketing Total S.A., Keyword Marketing, Inc., Domain Drop S.A., Maison Tropicale S.A., Web Advertising, Corp.,
WIPO Case No. D2008-0019; Diamonique Corporation v. Maison Tropicale S.A.,WIPO Case No. D2007-1093 ; Société des Bains de Mer et du Cercle des Étrangers à Monaco v. Maison Tropicale S.A.,
WIPO Case No. D2007-0604.
The Panel concurs with the views expressed in Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044 and Carte Blanche Greetings Limited v. metoyou,
WIPO Case No. D2004-0946, where the panel stated that “it is clear that the Respondent is heavily involved in cybersquatting activities in relation to many domain names relating to well known names and trademarks. Such behavior corresponds to a pattern to register domain names identical to, or confusingly similar with, famous names and trademarks. This constitutes bad faith registration pursuant to Paragraph 4(b)(ii) of the Policy.”
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be also applicable in this case since the Respondent has attempted to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.
The Panel finds that Internet users, in light of the contents of the web page linked to the Domain Name, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Moreover, in all likelihood, the Respondent profits by earning pay per click revenues (See i.a Manheim Auctions Inc. v. Whois ID Theft Protection,WIPO Case No. D2006-1044; Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286).
As stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “The Panel notes that there has been no Response filed in these circumstances, and it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
In view of the above, the Panel finds that the Domain Name was registered and is being used 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, <lestroisuisses.com> be transferred to the Complainant.
Luca Barbero Sole Panelist
Dated: May 19, 2008
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