WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SARL Transmission v. Private Registration, By Arvixe

Case No. D2013-1852

1. The Parties

The Complainant is SARL Transmission of Paris, France, represented by Picovschi Law Firm, France.

The Respondent is Private Registration, By Arvixe of San Luis Obispo, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <webcamo.info> (the “Disputed Domain Name”) is registered with Name.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2013. On October 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 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 November 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2013. On November 7, 2013, the Center received an email communication from the Respondent where it rebutted the Complainant’s allegations (the text of which is reproduced under Section 5.B. below). No further communications were filed with the Center. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on November 28, 2013.

The Center appointed Jacques de Werra as the sole panelist in this matter on December 5, 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 French company which operates an online meeting platform (featuring webcams) as the owner of the domain name “www.webcamo.com”. It is also the owner of the following word trademarks for WEBCAMO which cover various goods and services in classes 16, 25, 35, 38, 41 and 45 (“the Trademark”):

- European trademark (005490545) registered on October 9, 2008;

- International trademark (847766) registered on December 24, 2004 which covers the US (among other countries).

The Disputed Domain Name was registered on December 5, 2010. It resolves to a website offering adult content and appears to be operated (in spite of the US address indicated in the WHOIS) by a company based in Luxembourg (Duodecad IT Services Luxembourg Sàrl) as resulting from the information available on its homepage.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the Disputed Domain Name is identical to the Trademark, that the Respondent should be considered as having no rights or legitimate interests in respect of the Disputed Domain Name because it has reserved the Disputed Domain Name subsequently to the registration of the Trademark by the Complainant, because it has been using the Disputed Domain Name subsequently to the registration of the Trademark by the Complainant, and because the Respondent has acquired no trademark or service mark rights corresponding to the Disputed Domain Name.

By using the Disputed Domain Name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.

B. Respondent

The Respondent did not reply to the Complainant’s contentions in a formal Response but simply wrote an email sent to the Center on November 7, 2013 with the following content:

“Dear Sir,

I am the legitimate owner of webcamo.info

I am not an attorney, but I can read that the word mark WEBCAMO is not registred for

adult entertainment usage!

Registred Word Mark: WEBCAMO

Paper, cardboard, paper sacks, bags, envelopes and pouches for packaging purposes;

photographs; stickers, restaurant menus; diaries, plastic packaging bags; pens

And my domain provide electronic transmission of adult entertainment in the nature of

streaming video via a global communications network.

The word WEBCAM means "a webcam", and the letter O means "online".., like

"webcam online".

With all due respect, I feel like someone is trying to "legally" steal my domain name.

I hope you gonna take the right decision.

Best Regards,”

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) 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) The respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights in the Trademark.

A comparison between the Disputed Domain Name and the Trademark owned by the Complainant shows that the Disputed Domain Name is identical to the Trademark.

As a result, based on the rights of the Complainant in the Trademark and on the identity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations 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; or

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.

In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which reproduces the Trademark owned by the Complainant in a way which implies its knowledge of the Complainant’s online business activities (also in view of the geographic proximity between the Complainant based in France and the Respondent operating from Luxembourg).

The Complainant has also stated without being contradicted on these issues that the Respondent has no rights or legitimate interests in the Disputed Domain Name because it has reserved the Disputed Domain Name subsequently to the registration of the Trademark by the Complainant, because it has been using the Disputed Domain Name subsequently to the registration of the Trademark by the Complainant, and because the Respondent has acquired no trademark or service mark rights.

The Panel thus accepts the Complainant’s prima facie showing and it was consequently up to the Respondent to come forward with evidence of rights to or legitimate interests in the Disputed Domain Name.

The arguments raised by the Respondent in its email of November 7, 2013 are not sufficient in this respect for the following reasons: first of all, the Respondent cannot derive any argument from the fact that the Trademark is not registered for “adult entertainment usage” (as formulated in the above-mentioned email). This argument does not confer any legitimate rights or interests in the Disputed Domain Name but rather reinforces the perception that the Respondent was fully aware of the Complainant’s online platform and services when it registered and started to use the Disputed Domain Name in connection with adult content. In addition, the argument made by the Respondent that “Webcamo” would be descriptive and would merely constitute a combination between “webcam” and “o”, whereby “o” would refer to “online” is not convincing either because, even if “webcam” is a generic term, it cannot be reasonably considered that “o” would necessarily refer to “online” so that it results that the Disputed Domain Name intentionally and identically replicates the Trademark of the Complainant without plausible justification. See, by analogy, Surecom Corporation NV v. Noone, Marco Meisner, WIPO Case No. D2012-1470.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain Name;

(ii) circumstances indicating that the Respondent registered the Disputed 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 Respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark identifies the Complainant and the Complainant’s online platform so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Trademark owned by the Complainant, it being noted that the Respondent has not claimed in any manner that it did not know about the Complainant’s Trademark and online platform at the time of registration of the Disputed Domain Name. Previous panels have held in this respect that the fact that the respondent has not denied that it was aware of the complainant’s trademark make it possible to infer that the respondent registered the domain name with knowledge of the complainant and its website, so that the registration was in bad faith. See Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490.

In addition, the Respondent’s use of the Disputed Domain Name in connection with adult content which tarnishes the Complainant’s Trademark confirms the Respondent’s bad faith use of the Disputed Domain Name. See CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008.

On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b)(iv) of the Policy, thus the condition of paragraph 4(a) (iii) of the Policy is met.

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 <webcamo.info> be transferred to the Complainant.

Jacques de Werra
Sole Panelist
Date: December 19, 2013