3 Suisses International, 3 Suisses France v. Geiser Enterprises
Case No. D2008-1136
1. The Parties
The Complainants are 3 Suisses International, 3 Suisses France, represented by SELARL Espace Juridique Avocats, France.
The Respondent is Geiser Enterprises, Las Vegas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <3suissefrance.com> (herein the “domain name in dispute”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2008. On July 28, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name in dispute. On July 28, 2008, GoDaddy.com, Inc. 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 August 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on August 25, 2008.
The Center appointed J. Nelson Landry as the sole panelist in this matter on August 28, 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 3 Suisses International is a French holding company which owns five trademarks comprising variations on the term “3 SUISSES”, namely two with 3 SUISSES, applied for in 1996 and registered in 1999, one with TROIS SUISSES registered in 1998 and two other logo trademarks 3 SUISSES A FRENCH FASHION STORY, wherein the term “3SUISSES” is predominant, registered in 2007 (herein the “Trademarks” or “3 SUISSES Trademarks”). These Trademarks have been registered as Community Trademarks or international trademarks in association with several classes of goods and services including clothes, shoes, domestic appliances, furniture, publications telecommunication network, and distribution of products by mail.
The Complainant 3 Suisses International, as a holding, also owns other companies within the group which are using the Trademarks. One such company is the other Complainant 3 Suisses France, a French company which has been registered as company name and in operation since 1955.
The domain name in dispute was registered on February 14, 2008.
The Respondent is hosting sponsored links to competitors’ products and services and appears to receive financial revenue upon the number of clicks per visit on these links.
The Complainant 3 Suisses International has not authorized or licensed the Respondent in any way to use its Trademarks or to register the <3suissefrance.com> domain name in dispute.
The Complainants sent a letter to the Respondent on February 20, 2008 and their counsel another on June 12, 2008 stating their rights in the Trademarks, objecting to the use of the domain name in dispute and requesting the transfer of the domain name in dispute. The Respondent did not reply.
5. Parties’ Contentions
A. Complainant
The Complainant 3 Suisses International represents that the 3 SUISSES Trademarks are widely-known around the world and have become famous. These Trademarks are marketed in association, among others, with goods to consumers such as clothes, shoes, domestic appliances, furniture, traveling arrangements and facilities which products and services are promoted under the Trademarks in more than 1 million catalogues distributed per year in France.
The Complainants contend that the domain name in dispute is confusingly similar with the 3 SUISSES Trademarks by reason of the presence of the term “3 suisse” and alleging that the omission of the letter “s” and the addition of the term “france” are minor differences that cannot eliminate the confusion between the Complainants’ Trademarks and the domain name in dispute. See 3 Suisses International SA v. Maison Tropical SA,
WIPO Case No. D2008-0476 and Fry’s Electronics, Inc v. Whois ID Theft Protection,
WIPO Case No. D2006-1435 cited therein in respect of the omission of the letter “s” and Confederation Nationale du Credit Mutuel v. Design Galaxy,
WIPO Case No. D2006-1419 in respect of the addition of a descriptive term relating to a geographical origin in which case the panel stated that “the addition of the name of a place to a service mark such as France to AOL is a common method for specifying the location of business services. The addition of a place name generally does not alter the underlying mark to which it is added”. In this decision the panel cites another case eBay Inc. v. G L Liadis Computing, Ltd. and John L. Liadis d/b/a/ GL Liadis Computing Ltd.,
WIPO Case No. D2000-1463, wherein the panel was of the same view, and then further stated that “the addition of the word France may even increase confusion, given that France is the Complainant’s main area of activity”.
According to the Complainants, the Respondent Geiser Enterprises has never registered “3 Suisses” or “3 Suisses France” and has never used the words “3 Suisses” or “3 Suisses France” in any way. The Respondent has no commercial relationships with the Complainants and the latter have never authorized or licensed the Respondent in any way to use or exploit the Trademarks or to appropriate <3suissefrance.com> domain name.
The Complainants rely on the above facts as well on the following panel decision where it was already decided that the operation of sponsored links services by the use of domain names identical or similar to a complainant’s trademark does not confer a right or legitimage interest upon a respondent with respect to a domain name. See MBI, Inc, v. Moniker privacy Services/Nevis Domains LLC,
WIPO Case No. D2006-0550 and Bridgestone Corporation v. Horoshiy, Inc.
WIPO Case No. D2004-0795.
In respect of its allegation of registration and use by the Respondent of the domain name in dispute in bad faith, the Complainants submit that the Respondent is only capitalizing on the confusion between the domain name in dispute and the 3 SUISSES Trademarks since the Respondent’s website leads not only to a portal site offering sponsored links, promoting clothes catalogue, direct response marketing, but also contains links to relating pornographic video. Such activities do not constitute a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy as it has been held in Fugro N.V. v. Elmer Jacobs,
WIPO Case No. D2003-0863; Société AIR FRANCE v. Geiser Entreprises,
WIPO Case No. D2008-0024 which quote the panel expressing a similar holding in Yahoo! Inc. v. Denis Jalbert, NAF Case No. FA166020.
The Complainants assert that the Respondent receives pay for click-through payments for hits on the website associated with the domain name in dispute and seeks to divert Internet users seeking information and obtain revenues from this diverted traffic. According to the Complainants there is no reason to conceive that the Respondent did register and use the domain name in dispute without having Complainants’ activities and Trademarks in mind. The Complainants therefore conclude that the domain name in dispute was registered in bad faith and is being used in bad faith.
B. Respondent
The Respondent did not file a Response or otherwise reply to the Complainants’ contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainants prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name in dispute registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the domain name in dispute; and
(iii) The domain name in dispute has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant 3 Suisses International, as a holding company, has registered a family of at least five 3 SUISSES Trademarks which are used extensively by subsidiaries of the holding such as the Complainant 3 Suisses France. These registered trademarks are all comprised of the distinctive term 3 SUISSES and many have been used since at least 1998 in association with several classes of goods and services as identified in the registrations that have been put in evidence. The evidence adduced by the Complainants emphasized the fact that these Trademarks and the wares and services associated therewith are advertised and promoted in more than one million catalogs distributed annually in France (see exhibit 5). In a case before the Tribunal de Grande Instance de Nanterre in France, in Les Trois Suisses France et al v. Sarl Adxinet Communication, the trademarks 3 SUISSES were in issue in respect of six domain names incorporating 3 SUISSES. (Annex 4) The Court upon considering the evidence declared on January 21, 2000, that the trademarks 3 SUISSES had achieve fame both in France as well as elsewhere by reason of their extensive use and promotion and that the registration of the domain names of the defendants was an unjustified exploitation of these famous trademarks.
The Panel finds that the Complainant 3 Suisses International has established that, as owner, it has rights in the Trademarks and the Complainant 3 Suisses France, a member of the group under the holding, has, as user of the said Trademarks, contributed significantly to the development of the distinctive character of these Trademarks, which notoriety has already been established as early as the year 2000.
The Panel concurs with the views expressed in earlier UDRP decisions submitted by the Complainants where the panels held that the omission of the letter “s” and the addition of the term “France” in the domain name in dispute do not exclude the confusing similarity between the Trademarks and the domain name in dispute, the term “france” being a descriptive character as held in Auchan v.Cantucci Commercial Corp WIPO Case No. D2005-1195. The panel in Confederation Nationale du Credit Mutuel v. Design Galaxy,
WIPO Case No. D2006-1419, decided that the insertion of a country name such as France is a common method for specifying the location of business services of the provided service mark.
These UDRP cases and facts do apply to the facts of this case. This Panel adopts them and consequently finds that the domain name in dispute is confusingly similar with the 3 SUISSES Trademarks.
The first criterion has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any Response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations of facts included in the Complaint as true. The Complainants have made a prima facie case that the Respondent lacks right or legitimate interest in the domain name in dispute by stating that the Respondent has never been known by the name “3suissefrance” or the domain name in dispute, and that the Respondent is not making a legitimate non commercial or fair use of the domain name in dispute.
Furthermore, the Panel accepts the evidence that the Complainants have never given a license nor in any way authorized the Respondent to make use of Complainants’ Trademarks nor to register the domain name in dispute but also did not answer their cease and desist letters reiterating such absence of authorization. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainants’ Trademarks.
As held in MBI Inc. v. Moniker privacy Services/Nevis Domains LLC,
WIPO Case No. D2006-0550 and Bridgestone Corporation v. Horoshiy Inc,
WIPO Case No. D2004-0795, this Panel shares the view of these panel findings amongst many others which have clearly established that the hosting of sponsored links to competitors’ products and services for which the Respondent receives financial revenues, again as shown by the evidence which remains unchallenged, in addition to the above are all facts establishing that the Respondent has no rights or legitimate interests in respect of the domain name in dispute and this Panel so finds.
The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the Respondent 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 the Complainant, for valuable consideration in excess of your 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 you have engaged in a pattern 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 your 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 your website or location or of a product or service on your website or location.
The Respondent Geiser Enterprises is located in Las Vegas, United States of America, and yet it has registered the domain name in dispute which comprised the distinctive element “3 Suisses” and added thereto the descriptive geographic term “France”. Is this a coincidence? As represented by the Complainants, the use by the Respondent of links which directly or indirectly refer or divert the website visitors to either websites of competitors with similar goods or services or to pornographic websites is not in this Panel’s view a coincidence. This Panel does not see anything other than a deliberate choice by the Respondent with the full knowledge of the Trademarks and finds support inter alia in 3 Suisses International SA v. Maison Tropical SA,
WIPO Case No. D2008-0476 which cites the panel 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 recognition, would have been known to the Respondent at the time of registration of the domain name”.
Considering the case of Société AIR FRANCE v. Geiser Enterprises, WIPO Case No. D2008-0024, as put in evidence by the Complainants (Annex 14) wherein the same Respondent is involved, this Panel finds that the Respondent likely engaged for the second time, and, as such, in a pattern. In this earlier case, as well in the present case, the same Respondent has appropriated trademarks and registered the same in confusingly similar domain names and used them for diversion activities to concurrent websites and pornographic websites. These two instances support in this Panel’s view a pattern of objectionable behavior.
On the basis on these facts with the support of UDRP cases and panel holdings which this Panel has reviewed and adopted, this Panel is of the view and finds that the Respondent has deliberately chosen with full knowledge the Trademarks of the Complainants to register the domain name in dispute in bad faith without any legitimate interests in doing so. It was a planned act to capitalize of the goodwill associated with the Trademarks to divert Internet visitors to the Respondent’s website with links to competitors and pornographic websites and generate revenue from these diversion activities and such activities under the domain name in dispute are in the view and finding of this Panel use of the said domain name in bad faith.
This Panel finds that the domain name in dispute has been registered in bad faith and used in bad faith.
The third criterion has been met.
7. Decision
The Panel concludes that:
(a) the domain name <3suissefrance.com> is confusingly similar to the Complainant 3 Suisses International’s Trademarks; and
(b) the Respondent has no rights or legitimate interest in the domain name in dispute; and
(c) the domain name in dispute has been registered and is being used in bad faith.
For all the foregoing reasons and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <3suissefrance.com> be transferred to the Complainant 3 Suisses France.
J. Nelson Landry Sole Panelist
Dated: September 11, 2008
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