WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Milipol v. Kert Meidra

Case No. D2015-0884

1. The Parties

The Complainant is Milipol of Paris, France, represented by Cabinet Beau de Loménie, France.

The Respondent is Kert Meidra of Tallinn, Harjumaa, Estonia.

2. The Domain Name and Registrar

The disputed domain name <milipol.pro> 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 May 25, 2015. On May 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2015, 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 May 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2015. In reply to the Center’s Notification of Respondent’s Default, the Respondent sent an email on June 19, 2015, to the Center claiming that he had been contacted by a local Estonian trademark firm representing the Complainant who gave him a deadline for a response and to whom the Respondent sent his response well within the deadline. On June 23, 2015, the Center replied that it will bring this communication to the Panel’s attention and that it will be at the discretion of the Panel to consider the Respondent’s communication, in accordance with UDRP Rules, paragraph 10(d).

The Center appointed Alfred Meijboom as the sole panelist in this matter on June 30, 2015. 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.

On July 14, 2015, the Panel issued Administrative Panel Procedural Order No. 1, requesting the Respondent to provide evidence establishing that (i) the local Estonian trademark firm claimed to represent Complainant in this matter, (ii) the local Estonian trademark firm’s communication with Respondent should reasonably be interpreted as inviting the Respondent to file its Response to such firm instead of the Center, and (iii) the Respondent actually submitted the Response to such firm on June 18, 2015. The Respondent was further requested to submit an English translation if communication would not be in English. According to the Administrative Panel Procedural Order No. 1, the Respondent had until July 17, 2015, to supply the requested material and the Complainant was invited to reply to the Respondent’s possible timely communication within three business days.

On June 16, 2015, the Respondent sent an email to the Center containing communication with the Estonian trademark firm. Translation of the email of June 8, 2015, from the trademark firm tot the Respondent was provided. With respect to the Respondent’s reply in Estonian to this trademark firm of July 16, 2015, the Respondent did not provide a translation, but rather remarked that he stated “that we will stop using the named domains and also change the legal name of our company”.

According to the Administrative Panel Procedural Order No. 1, the Complainant could have replied to the Respondent’s communication ultimately on July 21, 2015, but failed to do so.

4. Factual Background

The Complainant owns and uses different trademark worldwide, including:

- the stylized French trademark with registration number 95558016 of February 13, 1995 for services in classes 35 (organization of trade fairs and exhibitions), 41 (organization of trade fairs and exhibitions) and 42 (consultancy services);

- the stylized International trademark with registration number 641805 of August 10, 1995 for services in classes 35 (organization of trade fairs and exhibitions), 41 (organization of trade fairs and exhibitions) and 42 (consultancy services), which covers several jurisdictions;

- Community trademark MILIPOL with registration number 9994377 of May 25, 2011, for services in classes 35 (organization of business meetings), 41 (providing of training), 45 (security services).

The Respondent registered the disputed domain name on February 18, 2015.

5. Parties’ Contentions

A. Complainant

The Complainant is a French Economic Interest Group (GIE), which is internationally renowned for organizing trade shows and exhibitions related to police equipment, civil and military security, and related services. The Complainant has been using its MP MILIPOL trademarks in this connection since 1995.

The disputed domain name is confusingly similar to the Complainant’s registered trademarks MILIPOL and MP MILIPOL. The “MP” part of the MP MILIPOL trademark should be disregarded because it is descriptive for military police.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Complainant’s exclusive rights in its registered trademark predates the registration of the disputed domain name, and the Complainant has not licensed or otherwise permitted the Respondent to use its trademarks or to apply for any domain name incorporating the trademarks. In addition, the Respondent has not been commonly known by the disputed domain name and has not made any legitimate use of the disputed domain name in connection with any bona fide offering of goods and services, nor could he have done so in view of the Complainant’s rights. Furthermore, in accordance with the registrar’s terms and conditions, the Respondent must insure that the registration of the disputed domain name will not infringe upon or otherwise violate the rights of any third party. He also agreed and acknowledged that it is his responsibility to determine whether disputed domain name registration or use infringes or violates someone else’s rights. By registering the disputed domain name, the Respondent did not comply with his contractual duties.

The Complainant further claims that the Respondent registered and used the disputed domain name in bad faith. It is improbable that the Respondent was unaware of the Complainant’s trademark rights when he registered the disputed domain name, since the trademark MILIPOL has been in use since 1995. Those circumstances seem to indicate that the disputed domain name was registered or acquired primarily for the purpose of disrupting the business of the Complainant and preventing the Complainant from reflecting its trademark in a corresponding gTLD domain name. The Respondent does not associate the disputed domain name with a good faith offering of goods and services since the website under the disputed domain name deals with the distribution of military and tactical equipment, which are strictly connected to the trade shows and exhibitions related to police equipment, civil and military security, and related services, provided by the Complainant under the MILIPOL trademarks. In light of the content of the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, but submitted a filing pursuant to Administrative Panel Procedural Order No. 1, which, according to the Respondent, stated that he shall stop using the disputed domain name and change the legal name of his company.

6. Discussion and Findings

Supplemental filing

As set forth in paragraph 3 above, the Respondent sent the Center an email on June 19, 2015, claiming that he had already send his Response to the Complainant’s local Estonia trademark firm. Pursuant to Administrative Panel Procedural Order No. 1, the Respondent was granted the right to prove his claim and, if and to the extent that the conditions of Administrative Panel Procedural Order No. 1 were met, file the original response to the Complainant’s local trademark firm as the Response in these proceedings.

The Respondent was required to provide evidence establishing that (i) the local Estonian trademark firm claimed to represent Complainant in this matter, (ii) the local Estonian trademark firm’s communication with Respondent should reasonably be interpreted as inviting the Respondent to file its Response to such firm instead of the Center, and (iii) the Respondent actually submitted the Response to such firm on June 18, 2015. The Respondent was further requested to submit an English translation if communication would not be in English. The Respondent filed an English translation of the trademark firm’s email of June 8, 2015, which reads “On behalf and in the name of our customer, the French company MILIPOL, we are sending you this email regarding the breach of intellectual property.

We expect your reply no later than 22nd of June 2015”. This email confirms that the sender claimed to represent the Complainant, but it cannot be reasonably understood as inviting the Respondent to file its Response to such firm instead of the Center. Furthermore, the Respondent failed to translate his reply in English, the language of the proceedings, claiming that he lacked the time to provide such translation. As the Respondent’s reply counted only 92 words, the Panel considers the three business days for translation a reasonable period of time. The Respondent’s reply shall therefore not be regarded.

In his email of July 16, 2015, to the Center, the Respondent did, however, advise that he shall stop using the disputed domain name. It is at the discretion of the Panel whether it will consider such advice as a supplemental filing in accordance with paragraph 10(d) of the Rules. As this supplemental filing does not prejudice the Complainant as it actually shows that the Respondent agrees to cease the use of the disputed domain name, the Panel accepts this supplemental filing.

Assessment of the case

Consequently, apart from the Respondent’s advice that he shall cease using the disputed domain name¹, the Respondent did not reply to the Complainant’s contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), the consensus view of UDRP panelists is that the respondent’s default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from a respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.

Under the Policy, the Complainant must prove that:

A. that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

C. the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well established that the TLD may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (see e.g.,Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), and, in the present case at least, this is not different for the gTLD “.pro”.

The Panel finds that the disputed domain name is identical to the Complainant’s registered trademark MILIPOL (cf. paragraph 4 above). Consequently, the first element of paragraph 4(a) of the Policy is met.

B. Rights or Legitimate Interests

The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (see e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Complainant has shown that it has not authorized the Respondent to use the Complainant’s MILIPOL trademarks, and that the Respondent is not commonly known by the disputed domain name, which the Respondent has not challenged. Further, the Panel agrees with the Complainant that the Respondent’s use on the websites at the disputed domain name of information regarding distribution of military and tactical equipment which compete with the Complainant’s services, is clearly not a legitimate noncommercial or fair use of the disputed domain name in the present circumstances.

The Panel is therefore satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name and the second element of paragraph 4(a) of the Policy is also met.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks the Complainant is relying on as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other online location or of a product or service offered on the Respondent’s website or location.

In the Panel’s view, it is obvious that the Respondent, at the time registered the disputed domain name, must have been familiar with the Complainant and the MILIPOL trademarks, as the Complainant had been using its MP MILIPOL and MILIPOL trademarks worldwide since 1995, which is 20 years prior to the Respondent’s registration of the disputed domain name, and given the contents of the website to which the disputed domain name resolved, which is similar to the specialized services which the Complainant offers. As the Respondent used the disputed domain name to offer services which directly competed with those of the Complainant, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website.

Consequently, the third and last element of paragraph 4(a) of the Policy is also 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 <milipol.pro> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist
Date: July 22, 2015

¹ As agreement to ceasing use of the disputed domain name is not the Respondent’s unilateral and unambiguous consent on the record to the remedy sought by the Complainant, the Panel shall decide this case on its merits, in line with paragraph 4.13 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).