WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marc Dorcel Limited Company v. B85182954, Natur Line Sex

Case No. D2013-0475

1. The Parties

The Complainant is Marc Dorcel Limited Company of Paris, France, represented by Bernard Soyer Conseil, France.

The Respondent is B85182954, Natur Line Sex of Madrid, Spain, represented by Adrián González Baena, Spain.

2. The Domain Name and Registrar

The disputed domain name <marcdorcel.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2013. On March 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2013, the Registrar 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 March 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2013. The Response was filed with the Center on April 3, 2013. On April 8, 2013, the Respondent filed a revised Response.

The Center appointed Luca Barbero as the sole panelist in this matter on April 10, 2013. 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 was incorporated on July 25, 1979 and is trading under the trade name Marc Dorcel in the field of videos and gadgets for adults.

The Complainant is the owner of the Community Trademark No. 8969891 for MARC DORCEL, filed on March 22, 2010, in classes 5 (for “Pharmaceutical preparations and substances; contraceptive preparations and substances; spermicidal gels, liquids and creams; Lubricants for personal use; hygienic lubricants and disinfectants; sanitary towels; medicated preparations for the care of intimate parts of the body; sanitary preparations) and 10 (for “Condoms; contraceptive, hygienic or prophylactic devices; massage appliances, apparatus, instruments and appliances; body massagers; massagers for intimate areas; massagers for sexual stimulation; battery-operated massage apparatus, instruments and appliances; battery-operated body massagers; battery-operated massagers for intimate areas; battery-operated massagers for sexual stimulation; vibrators for personal use; penis rings; rings for genital stimulation; dildos, Geisha balls Condoms; contraceptive, hygienic or prophylactic devices; massage appliances, apparatus, instruments and appliances; body massagers; massagers for intimate areas; massagers for sexual stimulation; battery-operated massage apparatus, instruments and appliances; battery-operated body massagers; battery-operated massagers for intimate areas; battery-operated massagers for sexual stimulation; vibrators for personal use; penis rings; rings for genital stimulation; dildos, Geisha balls”).

The Complainant is also the owner of several domain names including MARC DORCEL, such as the domain name <marcdorcel.com> registered on December 2, 1996, <marcdorcel.fr> registered on January 17, 2007, and <marc-dorcel.fr> registered on July 13, 2005. These domain names are used by the Complainant to advertise and sell videos and gadgets for adults under the trademark MARC DORCEL.

The disputed domain name <marcdorcel.net> was registered on February 16, 2011. According to the screenshots submitted by the Complainant, the disputed domain name was redirected in the past to a web site featuring the Respondent’s logo Natur Line Sex, the Respondent’s telephone numbers and a link to the Respondent’s web site “www.naturlinesex.eu”, where MARC DORCEL products and other gadgets for adults are offered for sale. After the Complainant’s warning letter, the disputed domain name has been redirected to a web page indicating that the disputed domain name is on sale, publishing the indication “Gel vaginal afrodisiaco (which means “aphrodisiac vaginal gel”) and the following description: “Gel estimulante para apoyar la sensualidad femenina. Aplicándose en el clítoris, el gel favorece la circulación sanguínea en la región genital. Y gracias a las sustancias activas, puede intensificar el orgasm” (In English,“Gel stimulant to support female sensuality. Applied to the clitoris, the gelpromotes blood circulation in the genital region. And thanks to the active substances, canintensify orgasm”).

5. Parties’ Contentions

A. Complainant

The Complainant contends that its company is quite famous in the field of products for adults, as highlighted by the articles published on Wikipedia web sites “http://en.wikipedia.org/wiki/Marc_Dorcel” and “http://fr.wikipedia.org/wiki/Marc_Dorcel”, displaying also a list of all the awards received by the Complainant for his movies in France and in other countries.

In September 2009, the Complainant and Ifop6 published the results of a survey on attitudes and practices of French people in pornographic films. According to that survey, 89% of French people have seen a porn movie and the reputation of the MARC DORCEL brand is 50% among French people and 68% among men.

The Complainant extended its activity some years ago to the sale of gadgets for adults like sex toys, as it can be seen on its web sites “www.dorcelstore.com” and “www.marcdorcel-sextoys.com”.

The Complainant also points out that, when the trademark MARC DORCEL is searched on Google, more than 9 millions results are displayed; the Complainant concludes, therefore, that the trademark MARC DORCEL is quite famous.

The Complainant contends that the disputed domain name is identical to its trademark MARC DORCEL and that it is also identical or almost identical to the Complainant’s domain names.

As to rights to, or legitimate interest in, the disputed domain name, the Complainant points out that the Respondent is not known under the name Marc Dorcel and that it does not own any trademark rights on MARC DORCEL.

The Complainant underlines that, before being contacted by the Complainant, the Respondent used

the disputed domain name in bad faith and in an unfair way, as the Respondent created confusion with the Complainant, its trademark and domain names. The Complainant concludes that the Respondent has no right or legitimate interest in respect of the disputed domain name.

The Complainant asserts that the disputed domain name was registered in bad faith, since the Respondent operates an online sex shop at its web site “www.naturlinesex.eu”, where it sells gadgets for adults, including products manufactured and sold by the Complainant, which are also shown in the Respondent’s catalogue. The Complainant thus concludes that the Respondent was aware of the fact that MARC DORCEL was a trademark owned by the Complainant, when it registered the disputed domain name.

As to the use of the disputed domain name, the Complainant states that the Respondent has used it to advertise gadgets for adults and to promote its official web site “www.naturlinesex.eu”, by publishing on the web site corresponding to the disputed domain name a link to the Respondent’s web site and a phone number identical to the one displayed on the Respondent’s web site. The Complainant, therefore, highlights that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web sites, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product on the Respondent’s web site or location.

The Complainant also informs the Panel that the Respondent registered another domain name,

<marcdorcel.es>, in relation to which another complaint was filed before WIPO.

The Complainant also points out that, when it discovered that the Respondent registered the disputed domain name, it immediately sent a registered letter requesting its transfer to the Complainant, but the Respondent replied to said communication presenting an initial request of 6000 Euro and a subsequent one of 12000 Euro, threatening that it would have put the domain names on sale on the SEDO web site at 24000 Euro should the Complainant not have accepted the Respondent’s conditions. The Complainant, therefore, also highlights that the Respondent’s registration was also made for the purpose of selling the disputed domain name to the Complainant in return for a relevant sum of money.

The Complainant contends that the Respondent’s bad faith is highlighted by the fact that, after having received a warning letter from the Complainant, it modified the contents of its site suppressing the pictures of the gadgets for adults, the link to its own web site “www.naturlinesex.eu” and also its telephone numbers.

B. Respondent

The Respondent states that it did not acquire the disputed domain name in bad faith in order to create confusion with the Complainant’s domain names.

The Respondent contends that it has a legitimate interest in respect of the disputed domain name, that it registered and uses the disputed domain name in good faith and that the products for adults that it offers for sale are provided by one of the Complainant’s dealers. The Respondent also indicates that it is doing a commercial fair use of the disputed domain name, enclosing a screenshot highlighting the current use of the disputed domain name and stating that it did not intend to cause diversion of consumers or to tarnish the Complainant’s trademark.

The Respondent also points out that it did not register or acquire the disputed domain name for the purpose of selling, renting or otherwise transferring it to the Complainant and states that it did not intend to disrupt the Complainant’s business.

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, these 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 disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed 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 No. 8969891 for MARC DORCEL (word mark), filed on March 22, 2010, in classes 5 and 10.

In comparing the Complainant’s trademark with the disputed domain name with reference to MARC DORCEL, it should be taken into account the well-established principle that the generic Top-Level Domain (gTLD) may be excluded from consideration as being merely functional component of a domain name. See i.e. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, stating: “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; and Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770, where it was found that “the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”. See also, among others, Priority One Financial Services Inc. v. Michael Cronin, WIPO Case No. D2006-1499 and Laramar Group, L.L.C. v. XC2, WIPO Case No. D2006-0617.

Therefore, the Panel finds that the disputed domain name is identical to the trademark owned by the Complainant.

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:

“(i) before any notice to you of the dispute, your use of, or demonstrable 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

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)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see 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; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).

In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee or authorized distributor of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the Domain Name.

As recognized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements, i.e. i) the actual offering of goods and services at issue, ii) the use of the site to sell only the trademarked goods, iii) the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder and iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

Furthermore, some panels have taken the position that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trademark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark.

In the case at hand, the Respondent has rebutted the Complainant’s contentions as to its lack of rights or legitimate interest and has submitted invoices showing that it acquired the MARC DORCEL products that it offers for sale from one of the Complainant’s distributors. The Panel notes that, in view of the circumstances of the case, the mere purchase and resale of the Complainant’s products made by the Respondent is not a sufficient argument that could justify the Respondent’s registration and use of the disputed domain name, identical to the Complainant’s trademark.

According to the screenshots submitted by the Complainant, the disputed domain name was redirected in the past to a web site advertising products for adults - including MARC DORCEL products -, where a logo Natur Line Sex was featured at the top of the home page along with a link to the Respondent’s web site “www.naturlinesex.eu” and the Respondent’s telephone numbers. The above-described use of the disputed domain name, together with the absence of a disclaimer as to the absence of affiliation with the Complainant, shows, in view of this Panel, the Respondent’s intention to divert users to its own web site, where products for adults of various brands are advertised and offered for sale.

Furthermore, the Respondent’s modification of the web site published at the disputed domain name, after receipt of the Complainant’s cease and desist letter, with the removal of its logo, of the links to its own web site and of its telephone numbers and the Respondent’s requests for several thousand Euros for the transfer of the disputed domain name to the Complainant documented by the correspondence attached to the Complaint, suggest to the Panel that the Respondent does not have any legitimate interest in maintaining the disputed domain name.

Thus, in light of the above, 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 disputed 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 web site 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 web site or location or of a product or service on the holder’s web site or location.

As to the bad faith at the time of the registration, the Panel notes that, since, according to the evidence on records and as highlighted on the Respondent’s web site “www.naturlinesex.eu”, the Respondent resells also the Complainant’s MARC DORCEL products, the Respondent was very likely aware of the Complainant’s rights when it registered the disputed domain name, identical to the trademark MARC DORCEL.

In light of the redirection of the disputed domain name, prior to receipt of the Complainant’s cease and desist letter, to a web site featuring the Respondent’s logo and telephone numbers and a link to the Respondent’s web site, where the Complainant’s products and gadgets for adults of Complainant’s competitors are offered for sale, the Panel finds that Internet users may have been misled as to the source, sponsorship, affiliation, or endorsement of the web site published at the disputed domain name and at the Respondent’s web site linked thereto.

At the time of the drafting of the decision, the disputed domain name is redirected to a web site where it is stated that the disputed domain name is offered for sale and text in Spanish language about aphrodisiac vaginal gel is published. The Panel notes that, notwithstanding the above-described modification of the web site published at the disputed domain name, the contents featured therein are still apt to generate confusion among users as to the source or affiliation of the web site.

Therefore, the Panel finds that paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to its web sites for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web sites.

Moreover, as mentioned above, the Respondent presented to the Complainant requests of EUR 6,000 and EUR 12,000 for the transfer of the disputed domain name, which are certainly well over (see, inter alia, Bencom SRL v. NetCorporation, WIPO Case No. DRO2006-0007) the ordinary costs of registration and renewal of a “.net” domain name registered in 2011. In addition, according to the correspondence attached to the Complaint, the Respondent also indicated that, should the Complainant not have accepted its proposal, it would have put the disputed domain name for sale on Sedo web site at the amount of EUR 24,000. Thus, the Panel finds that the disputed domain name was also registered for the purpose of selling it to the Complainant for an amount well in excess of the documented out-of-pockets costs according to paragraph 4(b)(i) of the Policy.

In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <marcdorcel.net> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: April 26, 2013