Picanol, Naamloze Vennootschap (N.V.) v. Keyword Marketing, Inc
Case No. D2008-0651
1. The Parties
Complainant is Picanol, Naamloze Vennootschap (N.V.), leper, Belgium, represented by Gevers & Associates, Belgium.
Respondent is Keyword Marketing, Inc, West Indies, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name is <tpicanol.com> registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2008. On April 29, 2008, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On May 5, 2008, DomainDoorman, 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 May 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2008.
The Center appointed Peter G. Nitter as the sole panelist in this matter on June 10, 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
Complainant is a manufacturer specialized on development, production and sales of weaving machines and technology for the textile industry and others. Complainant has developed an international network and is an international player in the textile industry.
Complainant has used the name Picanol since at least as early as 1936 and has registered the trademarks PICNAOL and PICNAOL GROUP in several jurisdictions worldwide, including in the European Union, the United States of America, Canada and China.
The disputed domain name <tpicanol.com> was registered on October 1, 2007.
Complainant has unsuccessfully tried to contact Respondent on February 20 and March 10, 2008 using the e-mail address provided by Respondent when registering the disputed domain name. Complainant has also tried to reach Respondent by telefax on February 20, 2008.
5. Parties’ Contentions
A. Complainant
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s PICANOL trademark.
Complainant further holds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant submits that there is no relationship between Respondent and Complainant, and that Respondent is neither a licensee of Complainant, nor has it otherwise obtained authorization to use Complainant’s trademark.
According to Complainant, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services.
Complainant further argues that Respondent is not making a noncommercial or fair use of the disputed domain, without intent for commercial gain. Complainant argues that Respondent is using the disputed domain name for the purpose of hosting sponsored links making a profit with “pay-per-click” programs, and that Respondent free-rides on the reputation and goodwill of Complainant’s trademark.
Complainant holds that Respondent has registered and is using the disputed domain name in bad faith.
According to Complainant, its trademark has a strong reputation and are widely known. Complainant argues that Respondent has registered the disputed domain name in order to attract Internet users to Respondent’s website to achieve commercial gain by creating a likelihood of confusion with Complainant’s trademark.
Complainant further asserts that Respondent’s frequent practice of registering domain names that are confusingly similar to other parties’ trademarks, as shown from several previous UDRP-decisions, also demonstrates bad faith registration.
According to Complainant’s assertions, Respondent is using the disputed domain name in bad faith by using typosquatting to misdirect Internet traffic.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name at issue is not identical to Complainant’s trademark, and the question is therefore whether there is a confusing similarity between the disputed domain name and Complainant’s trademark.
Previous Panel decisions under the UDRP have concluded that the generic top level domain denominator is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark. Thus, the first issue only concerns the part of the disputed domain name which consists of “tpicanol”.
The only difference between the disputed domain name and Complainant’s PICANOL trademark is the inclusion of the letter “T” in front of Complainant’s trademark. The Panel considers this difference as minor.
The Panel finds that the disputed domain name and the PICANOL trademark both visually and phonetically will appear as similar, and in particular that the domain name at issue is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
The Panel finds it evidenced that Respondent has not been granted any license or right to use Complainant’s trademark in any manner by Complainant, and is not commonly known by Complainant’s mark.
Respondent has not filed any response arguing that it has rights to, or legitimate interests in, the disputed domain name. None of Complainant’s assertions have thus been disputed by Respondent.
In the event that any such rights, connections or affiliations existed, it would generally be relatively easy for a respondent to substantiate this, while it is generally difficult for a complainant to prove the negative that respondent has no such rights. For this reason, previous decisions under the UDRP have, in the event of a respondent’s default, found it sufficient for complainant to make a prima facie showing of its assertion pursuant to paragraph 4(c) of the Policy.
Complainant has provided evidence to the fact that Respondent has directed the domain name at issue to an Internet website offering links to other commercial websites. Further, the term “tpicanol” forming the relevant part of the disputed domain name does not to the Panel’s knowledge hold any meaning on its own.
The Panel finds that the circumstances mentioned above, and evidenced by Complainant are sufficient to establish a prima facie showing that Respondent has no rights or legitimate interests in the domain name at issue.
As Respondent has not rebutted this by demonstrating any of the circumstances that constitute rights to, or legitimate interests in, the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy, the Panel concludes that Respondent does not have any rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
The Panel has considered Complainant’s assertions and evidence with regard to Respondent’s registration and use of the disputed domain name in bad faith.
As evidenced by Complainant, Complainant’s trademark PICNAOL is widely known and is registered in several jurisdictions worldwide.
Considering the distinctiveness and the widespread reputation of Complainant’s trademark the Panel finds it highly unlikely that Respondent, at the time of registration, was not familiar with Complainant’s trademark.
Further, based on the evidence presented to it, the Panel finds that Respondent has engaged in a pattern of registering domain names that infringe trademarks of third parties. Cf. VKR Holding A/S v. Keyword Marketing Inc., WIPO Case No. D2008-0014, Usborne Publishing limited v. Keyword Marketing, WIPO Case No. D2007-1790 and Riva del Garda FiereCongressi S.p.A v. Keyword Marketing Inc., WIPO Case No. D2007-1749. In each of these, as well as in several other cases Respondent has been found to have registered the disputed domain names in bad faith.
According to UDRP practice, such a pattern of registration is evidence of bad faith registration. See e.g. Doctor. Ing.h.c. F. Porsche AG v. Stonybrook Investments Limited,
WIPO Case No. D2001-1095.
The Panel further finds it evidenced that Respondent is using user traffic to the website connected to the disputed domain name to generate income with advertising links.
On this background the Panel finds that Respondent is using the confusing similarity between Complainant’s trademark and the disputed domain name for the purpose of intentionally attempting to attract Internet users to its website for financial gain by creating a likelihood of confusion with Complainant’s trademark.
By not submitting a Response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain name at issue in bad faith.
On this basis the Panel finds that Respondent has registered and is using the disputed domain name 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 <tpicanol.com> be transferred to Complainant.
Peter G. Nitter Sole Panelist
Dated: June 24, 2008
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