WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MBN GmbH v. Nicolas Feutrier

Case No. D2013-1628

1. The Parties

The Complainant is MBN GmbH of Friedberg, Germany, represented by Bettinger Schneider Schramm Patent- und Rechtsanwälte, Germany.

The Respondent is Nicolas Feutrier of Toulon, France.

2. The Domain Name and Registrar

The disputed domain name <proled-france.com> is registered with Realtime Register B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2013. On September 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 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 for the disputed domain name.

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 September 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2013. The Respondent sent two short emails to the Center, the first on October 1, 2013, and the second on October 18, 2013. However, the Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on October 18, 2013.

The Center appointed Fabrizio La Spada as the sole panelist in this matter on November 15, 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 is a company incorporated in Germany. It develops, manufactures and sells lighting technology and products using LED technology. The Complainant has a branch in Austria. Its products are distributed in numerous countries, including France.

The Complainant has participated in several trade shows in Europe, including the Inlight Expo held in Lyon, France in June 2010.

The Complainant is the holder of the following trademarks:

- International registration for the PROLED mark, no. 921936, registered on March 21, 2007 in international classes 9 and 11 and designating the European Union.

- German registration for the PROLED mark, no. 30658621.5/11, registered on November 27, 2006 in international classes 9 and 11.

The Complainant operates online mainly through its homepage at “www.proled.com”. It is also the registrant of several other domain names containing its PROLED mark, including <proled.org>, <proled.net>, <proled.biz>, <proled.info>, as well as <proled.fr> and <pro-led.fr>.

The disputed domain name was created on July 18, 2013, and was being used to host a website selling lighting and electronics goods similar to (and competing with) those of the Complainant. The Respondent’s website used the name “Proled-France” as its title. The Respondent identified itself as “Proled-France” on its website. The Respondent’s website contained no disclaimers indicating to potential customers that it is not affiliated with the Complainant. Based on information contained on the website to which the disputed domain name resolves, this website seems to be operated by a company called Zendecoshop, in France.

On October 1, 2013, the Respondent sent an email to the Center, stating inter alia that it was ready to close its website, provided the Complainant would purchase the disputed domain name for an amount of EUR 5,000.

On October 18, 2013, the Respondent informed the Center that it had closed its <proled-france.com> website.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s PROLED tramdemark. In this respect, the Complainant points out that the disputed domain name wholly incorporates the PROLED trademark and that the addition of the geographic designation “France” does not eliminate the confusing similarity between this trademark and the disputed domain name.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to register or use any domain name incorporating the PROLED trademark. In addition, the Respondent is not commonly known by the term “Proled-France”. Moreover, as the disputed domain name is used in connection with a website selling lighting and other related goods that compete with those of the Complainant, the Respondent is not making a non-commercial or fair use of the disputed domain name. According to the Complainant, the use of the Complainant’s trademark to drive traffic to the Respondent’s website, in order to pass off competitive products as the authorized goods of the trademark holder, is not a bona fide offering of goods or services. The Complainant also submits that the Respondent cannot be considered as a reseller, as it does not sell the Complainant’s products but, on the contrary, sells competitive goods.

Finally, the Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. According to the Complainant, it is inconceivable that the Respondent was unaware of the Complainant at the time it registered the disputed domain name, as the Complainant’s products are distributed and sold in France, where the Respondent is located, and both parties appear to be engaged in the same industry. The Complainant submits that the Respondent is attempting to capitalize on the goodwill associated with the Complainant’s mark, that its use of the disputed domain name will likely result in significant disruption to the Complainant’s business and damage to the integrity of its trademark, and that Internet users may mistakenly believe that the disputed domain name is held by the Complainant.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions.

However, it sent an email to the Center on October 1, 2013, in which it stated that at the time it registered the disputed domain name, it was not aware of the Complainant’s trademark. It further stated that it was ready to shut its website down, provided the Complainant purchased the disputed domain name for an amount of USD 5,000, to compensate the Respondent for its investments.

In another email, sent to the Center on October 18, 2013, the Respondent stated that it had closed its website.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and

(iii) The domain name has been registered and is being used in bad faith (see below, section C).

A. Identical or Confusingly Similar

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As regards the first issue, the Complainant has provided documentary evidence that it is the owner of several trademarks for PROLED.

Concerning the second issue, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark. First, the disputed domain name incorporates the Complainant’s trademark in its entirety. According to previous UDRP decisions, “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (see, e.g.,AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Quixtar Investments, Inc. v. Dennis Hoffmann, WIPO Case No. D2000-0253). In the Panel’s view, the addition of the word “france” to the Complainant’s trademark in the disputed domain name is not sufficient to avoid a finding of confusing similarity. It is widely admitted that the addition of a generic or descriptive term to a mark, as the Panel finds is the case in this matter, will not alter the fact that the domain name at issue is confusingly similar to the mark in question (see e.g.,Terex Corporation v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0733; Billabong International Limited, GSM (Operations) Pty Ltd, GSM (Trademarks) Pty Ltd, GSM (Europe) Pty Ltd, GSM (NZ Operations) Ltd v. Mookie Lei, WIPO Case No. D2008-0101).

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate non-commercial 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.”

In the present case, the Respondent has not filed a formal response to the Complaint. However, it wrote an email to the Center on October 1, 2013, in which it stated that at the time it registered the disputed domain name, it was not aware of the Complainant’s trademark.

Based on the evidence on record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, for the following reasons.

First, there is no indication that the Respondent has used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. In particular, the Panel finds that the Respondent is not a bona fide reseller of the Complainant's products, as – among other elements – it does not resell the Complainant's products, but sells goods that compete with them. The use that the Respondent makes of the disputed domain name (i.e., directing Internet users to a website where the Respondent is selling goods that compete with the Complainant's products) cannot be considered to be a bona fide offering of goods or services (see, e.g.,J. R. Four Ltd. Dba Technical Glass Products v. Michael Monaghan, WIPO Case No. D2001-2224; Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088).

Second, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorized the Respondent to use the PROLED trademark or register any domain name incorporating such trademark.

Third, the Respondent does not appear to be commonly known as “proled” or “proled-france” or by a similar name, and there is no indication on record that could justify rights and/or legitimate interest in the disputed domain name.

Fourth, the Respondent does not appear to make any legitimate use of the disputed domain name for non-commercial activities. On the contrary, the website to which the disputed domain name resolves is a commercial website, used to sell products.

Fifth, the term “proled” is not a dictionary name or a generic term.

Finally, there are no other elements on record, nor explanations by the Respondent, indicating that the Respondent would have rights or legitimate interests in respect of the domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which, without limitation, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(iv) provides as an instance of registration and use in bad faith, circumstances indicating that :

“(iv) by using the domain name, you [Respondent] have 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 Panel is satisfied that these circumstances are fulfilled in this case.

The Respondent stated that, at the time it registered the disputed domain name, it was not aware of the Complainant’s trademark. However, based on the evidentiary record, the Panel finds that the Respondent must have known the existence of the Complainant’s trademark at the time it registered the disputed domain name. The Complainant’s <proled.com> domain name was registered in 2001 and the PROLED mark has been registered since 2006. The Complainant holds several additional domain names consisting of the “proled” term with different extensions, including <proled.fr> and <pro-led.fr>. The Complainant sells products and participates to trade shows in France, where the Respondent is located. The Respondent appears to be engaged in the same industry as the Complainant, namely the sale of lighting products and related goods. In the Panel’s view, it is inconceivable that the Respondent was not aware of the Complainant’s mark at the time it registered the disputed domain name.

The Respondent has used the disputed domain name to direct Internet users to a website selling goods that compete with the Complainant’s products. It is well established that using a domain name which incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among Internet users as to the source of products or to confusingly suggest sponsorship by the trademark owner (see, e.g.,Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249).

Therefore, the Panel finds that the domain name was registered and is being used in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

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 <proled-france.com> be transferred to the Complainant.

Fabrizio La Spada
Sole Panelist
Date: December 3, 2013