Complainant is CARVEN, a French société par actions simplifiée (“Complainant”) located in Paris, France, represented by Cabinet Desbarres & Staeffen.
Respondent is an entity known as Reserved, for Customers [email protected], located in Taipei, Taiwan.
2. The Domain Name and Registrar
The domain name at issue is <carven.com> (the “Domain Name”). The registrar is Moniker Online Services LLC (the “Registrar”) located in Pompano Beach, State of Florida, United States of America.
3. Procedural History
On October 27, 2008, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email.
On October 31, 2008, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee. On October 29, 2008, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name. On November 3, 2008, the Center received hardcopy of the Complaint.
The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On November 5, 2008, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with a copy of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On November 26, 2008, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.
On December 5, 2008, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence to ensure compliance within the Rules, paragraph 7 from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panel.
4. Factual Background
Complainant is a company incorporated under the laws of France and is a well-known company operating notably in the field of fashion and perfumery.
The founder of Complainant, Mrs. Carven, opened her fashion house in 1945. She gained a French and international clientele and dressed several generations of famous women in the fields of entertainment, art, literature, politics and others. In 1946, Complainant launched its first fragrance “M Griffe”, which remains a worldwide best seller. Complainant was also one of the first to create a men's fragrance: “Vétiver” which was launched in 1957 and remains one of the great traditional products in the men's perfumery.
Complainant also was a pioneer in the field of uniforms where it has acquired an indisputable leadership. In 1965, Complainant dressed the Air India hostesses. Many airlines followed as well as private and public companies.
Based on its strong notoriety, Complainant has diversified its activities and now operates an international portfolio of 60 licenses in such fields as golf wear, jewelry, porcelain, leather goods, watches, neckties, shoes and so on. Complainant is now operating though license agreements all over the world, and more particularly in Europe, North Africa and Asia, in countries such as the Republic of Korea, the People's Republic of China, Province of China Taiwan, Japan, Thailand, Dubai, United Arab Emirates, and so on.
Complainant has several official websites using the phrase CARVEN in its domain names. The Complainant is the owner of numerous trademark registrations around the world based on its own name CARVEN (the “CARVEN Mark”).
5. Parties' Contentions
A. Complainant's contentions
(i) Complainant contends that it has registrations of the CARVEN Mark, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the CARVEN Mark.
(ii) Complainant argues that the Domain Name is confusingly similar to the CARVEN Mark, pursuant to paragraph 4(a)(i) of the Policy, because the Domain Name wholly incorporates the trademark CARVEN with the addition of the generic term “.com”.
(iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name. Respondent alleges that the Domain Name is used as a parking website, drafted in French. The headings on the parking page relate to “parfum”, “fashion”, and “women's dresses'” which are the main fields of activity of the Complainant. Furthermore, the registered CARVEN Mark is clearly reproduced on this parking page offering links to websites with competing products to the Complainant in the fields of perfumery or clothing. Complainant alleges that Respondent is using the Domain Name as a portal with links to different products and websites relating to the fields of activity of Complainant with links leading to products of companies of the competitors of Complainant.
Complainant alleges that Respondent began using the CARVEN Mark many years before the Respondent's registration of the Domain Name on November 15, 2002. Respondent has no authorization from Complainant to use the CARVEN Mark in a domain name or for any other purpose.
Complainant alleges that Respondent cannot demonstrate rights or legitimate interest in the Domain Name under paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services. Complainant contends that no use by Respondent of simply attracting and routing traffic to other websites while trading off the CARVEN Mark can ever constitute a bona fide use of the Domain Name.
Complainant alleges that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(ii) because Respondent is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the CARVEN Mark in a domain name or in any other manner.
Complainant alleges that Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to derive commercial gain, misleadingly divert consumers, or tarnish the trademark at issue. Complainant further alleges that the use of the Domain Name is as a parking website with “click through” revenues for Internet users clicking on the sponsored links on the website to which the Domain Name resolves. Complainant argues that this creates a commercial use.
(iv) Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of paragraph 4(a)(iii).
Complainant argues that the Respondent meets the criteria of paragraph 4(b)(iv) which constitutes bad faith by Respondent:
(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [Respondent's] web site 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 [Respondent's] web site or location or of a product
Complainant indicates that the use of the Domain Name as a portal to direct Internet traffic on a pay-per-click basis to the sponsored, commercial sites meets the criteria of Paragraph 4(b)(iv).
B. Respondent's contentions
Respondent has chosen not to respond to the allegations made by Complainant in this proceeding.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
A. Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc.,
WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.
Even though Respondent has failed to file a Response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
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 service mark in which the Complainant has rights; and
(ii) that the Respondent has no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
B. Enforceable Trademark Rights
Complainant contends that it has registrations of the CARVEN Mark, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the CARVEN Mark. Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047.
The Respondent has failed to contest the allegations of Complainant. Therefore, the Panel finds for purposes of this proceeding that the Complainant has enforceable rights in the CARVEN Mark.
C. Identity or Confusing Similarity
Complainant further contends that the Domain Name is identical with or confusingly similar to the CARVEN Mark pursuant to the Policy paragraph 4(a)(i).
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); and Quixar Investments Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical).
The Panel notes that the entirety of the CARVEN Mark is included in the Domain Name. The addition of the gTLD in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant's registered trademark. Specifically, the addition of the phrase “.com” is non-distinctive because it is a gTLD required for registration of a domain name.
Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the trademark. The Panel finds that the Domain Name is confusingly similar to the CARVEN Mark pursuant to the Policy paragraph 4(a)(i).
D. Rights or Legitimate Interest
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii) and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name. Complainant alleges that the Domain Name is used as a parking website, drafted in French. The headings on the parking page relate to “parfum,” “fashion”, and “women's dresses'” which are the main fields of activity of the Complainant. Furthermore, the registered CARVEN Mark is clearly reproduced on this parking page offering links to websites with competing products to the Complainant in the fields of perfumery or clothing. Complainant alleges that Respondent is using the Domain Name as a portal with links to different products and websites relating to the field s of activity of Complainant with links leading to products of companies of the competitors of Complainant.
Complainant alleges that Complainant began using the CARVEN Mark many years before the Respondent's registration of the Domain Name on November 15, 2002. Respondent has no authorization from Complainant to use the CARVEN Mark in a domain name or for any other purpose.
Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing rights or legitimate interests apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
The Complainant has sustained its burden of proving that the Respondent lacks rights to or legitimate interests in the Domain Name. The Respondent has not contested any of the allegations of Complainant. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
E. Bad Faith
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
The Policy paragraph 4(b) sets forth four nonexclusive criteria by which Complainant may show bad faith registration and use of domain names. Complainant alleges bad faith pursuant to the Policy paragraph 4(b)(iv) set forth above.
Complainant indicates that the use of the Domain Name as a portal to direct Internet traffic on a pay-per-click basis to the sponsored, commercial sites meets the criteria of Paragraph 4(b)(iv). Respondent has failed to contest the allegations of Complainant in this proceeding.
Therefore, the Panel finds Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy paragraph 4(b)(iv) and that Respondent registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).
7. Decision
The Panel concludes (a) that the Domain Name <carven.com> is confusingly similar to Complainant's registered CARVEN Mark, (b) that Respondent has no rights or legitimate interests in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <carven.com> be transferred to Complainant.
Richard W. Page Sole Panelist
Dated: December 29, 2008
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