WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cousteau Society, Inc. v. Perfect Privacy, LLC / David Weiller

Case No. D2017-0685

1. The Parties

The Complainant is Cousteau Society, Inc. of Chesapeake, Virginia, United States of America (“United States”), represented by Andrews Kurth Kenyon LLP, United States.

The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States / David Weiller of Saint−Remy-les-Chevreuse, France.¹

2. The Domain Name and Registrar

The disputed domain name <cousteau.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2017. On April 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2017. An unsolicited supplemental filing was submitted by the Complainant on April 24, 2017 and provided by the Center to the Respondent on May 25, 2017.

The Center appointed Steven A. Maier as the sole panelist in this matter on May 4, 2017. 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.

The Panel has determined to admit the Complainant’s supplemental filing, which serves primarily to address a change in the use of the disputed domain name subsequent to the commencement of these proceedings.

4. Factual Background

The Complainant is a New York corporation. It operates as a not-for-profit organization which provides oceanic and environmental conservation goods and services.

The Complainant is the owner of trademark registrations including United States trademark number 1630009 for THE COUSTEAU SOCIETY, registered on January 1, 1991, in Classes 16, 25 and 42. It is also the owner of United States trademark registrations for the marks CALYPSO THE COUSTEAU SOCIETY, COUSTEAU KIDS and COUSTEAU DIVERS.

The disputed domain name was registered on April 12, 1995.

According to evidence submitted by the Complainant, on March 14, 2017, the disputed domain name resolved to a website at “www.cousteau.com”, which appeared to provide links to names including “Jacques Cousteau” and “Jacques-Yves Cousteau”.

5. Parties’ Contentions

A. Complainant

The Complainant states that it was founded in 1973 by Jacques-Yves Cousteau. It refers to the trademarks referred to above “the COUSTEAU marks” and states that it uses and protects the COUSTEAU marks extensively throughout the world. It refers to websites at “www.coustaeu.org” and “www.cousteaudivers.org”. It states that it expends substantial resources around the world to advertise, promote and market its goods and services under the COUSTEAU marks and that, as a result, consumers around the world associate the COUSTEAU marks with the Complainant.

The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It states that the primary and distinctive part of each of the COUSTEAU marks is the name “Cousteau” and that the disputed domain name incorporates this name in its entirety.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that it has no affiliation with the Respondent and has never consented to its use of the COUSTEAU marks. It denies that the Respondent has any proprietary or contractual rights in respect of the disputed domain name, or that it had ever been known by a name corresponding to the disputed domain name prior to the registration of the disputed domain name. The Complainant further denies that the Respondent is making legitimate noncommercial or fair use of the disputed domain name or that it is using it in connection with any bona fide offering of goods or services.

The Complainant submits that the Respondent cannot have rights or legitimate interests in respect of the disputed domain name having registered it with knowledge of the Complainant’s COUSTEAU marks. The Complainant alleges that the Respondent had such knowledge on the basis of “constructive notice” of the Complainant’s trademarks, or alternatively the Complainant’s widespread use and the fame of those marks.

The Complainant further submits that the Respondent is using the disputed domain name to take unfair advantage of the goodwill associated with the Complainant’s marks for commercial gain. The Complainant submits that the Respondent has used the disputed domain name for the purpose of sponsored links offering third-party services and states that Internet users will arrive at links including the names “Jacques Cousteau” and “Jacques-Yves Cousteau” when accessing the disputed domain name via smartphone. In its supplemental filing, the Complainant states that, when accessing the disputed domain name via desktop computer, the disputed domain name did not originally resolve to any website but, after the Complainant commenced these proceedings, it resolved to a website offering dating and matchmaking services including pornographic and racial references. The Complainant submits printouts of the web pages referred to.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant contends that the disputed domain name consists entirely of the Complainant’s unique and distinctive trademark COUSTEAU and that the Respondent must have registered it in the knowledge of the Complainant’s mark. The Complainant submits that, based on the uses of the disputed domain name described above, the Respondent has used the disputed domain name to “free ride” for commercial purposes on the fame and goodwill which attaches to the Complainant’s trademark. The Complainant also argues that the Respondent has tarnished the Complainant’s trademark COUSTEAU by using it to resolve to a website that links to unsavoury and salacious material.

The Complainant also submits evidence that its representatives wrote to the Respondent on February 6, 2017, requesting the transfer of the disputed domain name. The Complainant submits that the Respondent failed to reply to this letter, but on the same day transferred the registration of the disputed domain name to a privacy protection service.

The Complainant requests a transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Although the Respondent has failed to respond in this case, it remains for the Complainant to establish that each of the above elements is present.

A. Identical or Confusingly Similar

The Complainant has established that it has registered trademark rights in each of the COUSTEAU marks. The Panel also finds that, owing to the Complainant’s use of the COUSTEAU marks over an extended period, the marks have become associated with the Complainant in the field of oceanic and environmental conservation. The Panel agrees with the Complainant’s submission that the term COUSTEAU constitutes the distinctive part of each of the COUSTEAU trademarks and that the disputed domain name is effectively identical to the distinctive component of the Complainant’s marks. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions referred to above give rise to a prima facie case for the Respondent to answer that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this administrative proceeding and has not provided any explanation for the registration or use of the disputed domain name, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. Furthermore, the Complainant has submitted evidence, which the Respondent has not contradicted, that the Respondent has used the disputed domain name for the purposes of a website which offers links including references to the names “Jacques Cousteau” and “Jacques-Yves Cousteau”, which are associated with the Complainant. Such misleading use would not give rise to any rights or legitimate interests in the disputed domain name and, having no other evidence of any such rights or legitimate interests on the Respondent’s part, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

On the basis of evidence provided, the Respondent appears to have used the disputed domain name to resolve to a webpage which includes sponsored links and also refers to the Complainant’s names “Jacques Cousteau” and “Jacques-Yves Cousteau”. Since the Respondent has provided no explanation for its choice of the disputed domain name and has not contested the Complainant’s submissions, the Panel infers that the Respondent registered the disputed domain name in the knowledge of the Complainant’s COUSTEAU marks and with the intention of taking unfair commercial advantage of the Complainant’s goodwill in those marks.

The Panel also accepts the Complainant’s submission that the Respondent has used the disputed domain name to resolve to a web page containing sponsored links of an adult nature, which is liable to tarnish the reputation of the COUSTEAU marks, which are associated by the public with oceanic and environmental conservation.

The Panel finds in particular that, by using the disputed domain name, the Respondent has intentionally attempted 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).

The Panel also takes note of the Complainant’s evidence that the Respondent did not reply to a letter from the Complainant’s representatives concerning the disputed domain name, but on the same day transferred the registration of the disputed domain name to a privacy protection service.

The Panel finds in the circumstances that the disputed domain name has been 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, <cousteau.com>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: May 17, 2017

¹The Panel notes that the WhoIs lists the Respondent’s country as Malaysia, however, noting that the postal code listed in the WhoIs corresponds to the locality of Saint-Remy-les-Chevreuse, the Panel determines that the Respondent is most likely based in France, the WhoIs information being inaccurate.