The Complainant is Sinbar, of Paris, France, represented by Pascale Demoly, France.
The Respondent is Forsyte Corporation, of Nassau, the Bahamas.
2. The Domain Name and Registrar
The disputed domain name <velosolex.com> is registered with Rebel.com Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2008. On November 3, 2008, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the disputed domain name at issue. On November 3, 2008, Rebel.com Corp. 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” or “UDRP”), 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 November 10, 2008.
On November 12, 2008, the Complainant emailed the Center asking whether it was possible to amend the Complaint to point out that the website linked to the disputed domain name had been modified after the Complaint was filed to indicate that the disputed domain name was for sale. By email dated November 13, 2008, the Center informed the Complainant that there was no express provision for unsolicited additional submissions but that, should the Complainant choose to make a formal supplemental filing, it would be in the Panel's sole discretion whether to admit it. On November 13, 2008, the Complainant replied to the Center by email, confirming that it wished to draw the Panel's attention to the fact that the disputed domain name had been put up for sale since the date of filing of the Complaint, as further evidence of the Respondent's alleged registration and use in bad faith.
In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 1, 2008.
The Center appointed Angela Fox as the sole panelist in this matter on December 9, 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 the owner of trademark registrations for VELOSOLEX and SOLEX in various countries in respect of mopeds, motorcycles and bicycles.
Appended to the Complaint were details of the Complainant's International Registration no. 279 816 for VELOSOLEX dating from 1964, French registration no. 01 3 082 811 for VELOSOLEX dating from 2001, International Registration no. 191165 for SOLEX dating from 1956, U.K. registration no. 377415 for SOLEX dating from 1917, German registration no. DD249975 for SOLEX dating from 1920, French registration no. 1578925 for SOLEX dating from 1990, U.S. registration no. 0429565 for SOLEX dating from 1947 and Canadian registration no. TMDA30945 for SOLEX dating from 1922.
The disputed domain name was registered on July 9, 2004. At the time of writing of this decision, it resolved to a website offering links to other websites under headings including “Velosolex 3800,” “Velo Solex 3800,” “Moteur Solex 3800,” “Solex,” “Velo Solex 2200,” “Electric Scooter” and “Motorized Scooter.”
5. Parties' Contentions
A. Complainant
The Complainant alleges that the disputed domain name is identical to its registered VELOSOLEX trademark and confusingly similar to its registered trademark SOLEX. The Complainant avers that the prefix “velo” is the French word for “bicycle,” and argues that the mere addition of this descriptive word to its SOLEX trademark is not sufficient to avoid confusing similarity of the disputed domain name and the Complainant's registered SOLEX mark.
The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that it has found no evidence that the Respondent has used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
Finally, the Complainant alleges that the disputed domain name was registered and is being used in bad faith. The Complainant claims that its registered trademarks SOLEX and VELOSOLEX are well-known throughout the world in relation to motorcycles, referring to its website at “www.velosolex.eu”. The Complainant contends that the Respondent must have been aware of the Complainant's trademarks when the disputed domain name was registered given the fame of the marks. The Complainant further alleges that the Respondent is attempting to attract Internet users to the website linked to the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant's trademarks, in order to derive click-through revenue from links.
The Complainant observes that the Respondent appears to have a history of similar conduct, pointing to several prior cases in which panelists have found against this Respondent and ordered it to transfer domain names to other complainants (McKeith Research Ltd. v. Forsyte Corporation,
WIPO Case No. D2007-1054; VTECH Holding Ltd. v. Forsyte Corporation,
WIPO Case No. D2007-1030; and AirTran Holdings Inc. v. Forsyte Corporation,
WIPO Case No. D2008-1169).
B. Respondent
The Respondent did not reply to the Complainant's contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Preliminary Issue: Complainant's Supplemental Filing
Although Paragraph 12 of the Rules allows a panel in its discretion to request supplemental filings from either party, the Rules do not provide expressly for unsolicited submissions. However, under Paragraph 10(a) the panel enjoys a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the parties are treated fairly and the proceeding is conducted expeditiously. Other panelists have accepted unsolicited supplemental submissions under this rule (see, inter alia,AutoNation Holding Corp. v. Rabea Alawneh,
WIPO Case No. D2002-0058).
A supplemental filing naturally has the potential to delay and complicate proceedings, due to the need to ensure that the parties are treated with equality and that the non-filing party has an opportunity to reply to the full case against it. Consequently, whether it is appropriate to admit an unsolicited supplemental filing will depend inter alia on its relevance to the issues in the case, whether the Panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not.
In this case, the Complainant's supplemental submission relates to an alleged factual development that only occurred after the filing of the Complaint and therefore could not have been included in it. It is potentially relevant to the issue of bad faith. However, for the reasons given in the decision that follows, the content of the supplemental submission is not essential to the Panel's decision on the facts. The Complaint itself provides adequate grounds on which the case can be decided and the Respondent has had an opportunity to reply to that Complaint. Neither party will be prejudiced by a refusal to admit the Complainant's unsolicited supplemental submission, and in the interests of procedural efficiency, the Panel declines to admit it into this proceeding.
B. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations around the world for VELOSOLEX.
The disputed domain name contains the whole of the Complainant's trademark. The non-distinctive domain name suffix “.com” does nothing to distinguish it from the Complainant's mark.
The Panel is satisfied that the disputed domain name is identical to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on the complainant, but panels have long recognised that the information needed to prove such a right or interest is normally in the possession of the respondent. In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of proof passes to the respondent to show that it does indeed have such a right or interest (see, inter alia,Belupo d.d. v. WACHEM d.o.o.,
WIPO Case No. D2004-0110).
In this case, the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. There is nothing on the record to indicate that the Respondent might enjoy such a right or interest, and it has not attempted to refute the Complainant's assertion.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the complainant must prove that a disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include paragraph 4(b)(iv):
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 web site or location or of a product or service on your web site or location.
In this case, the content of the website linked to the disputed domain name shows that the Respondent has been using it to host links to other websites on topics including the VELOSOLEX brand and motorized scooters generally. The Complainant alleges that the Respondent is profiting from click-through revenue and the Respondent has not denied that. The Complainant has further averred that its VELOSOLEX trademark is well-known, and, again, the Respondent has not refuted that.
The VELOSOLEX trademark is inherently distinctive and the Panel finds it implausible that the Respondent would have adopted and used it to host links relating to the VELOSOLEX brand and motorized scooters generally without knowledge of the Complainant's use of VELOSOLEX for those very goods. Consequently, the Panel is satisfied that the Respondent has indeed used the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the linked website and the products advertised and sold through it.
Similar conduct on the part of the same Respondent has supported a finding of bad faith registration and use in other cases, including McKeith Research Ltd. v. Forsyte Corporation,
WIPO Case No. D2007-1054; VTECH Holding Ltd. v. Forsyte Corporation,
WIPO Case No. D2007-1030; and AirTran Holdings Inc. v. Forsyte Corporation,
WIPO Case No. D2008-1169. Similar conduct in cases involving other parties has also justified such a finding, including in Mudd, LLC v. Unasi, Inc.,
WIPO Case No. D2005-0591 and Volvo Trademark Holding AB v. Unasi, Inc.,
WIPO Case No. D2005-0556.
The Panel considers that the Complainant has made out its case for bad faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy.
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 <velosolex.com> be transferred to the Complainant.
Angela Fox Sole Panelist
Dated: December 21, 2008
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