WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nutrition et Sante v. Le Hecho Romain, NA

Case No. D2018-0162

1. The Parties

The Complainant is Nutrition et Sante of Revel, France, internally represented.

The Respondent is Le Hecho Romain, NA of Lorient, France.

2. The Domain Name and Registrar

The Domain Name <gerble-nutrition.com> (“the Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2018. On January 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 26, 2018, 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 February 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2018.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on March 12, 2018. 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 food company which manufactures and sells dietetic and organic products in France and in more than 30 countries outside France, notably under its well-known trademark GERBLE. In this respect, NUTRITION ET SANTE is the owner and the licensee of the following GERBLE trademarks and domain names:

- International trademark “GERBLE”, n°204385, registered on October 25, 1957, renewed;

- International trademark “GERBLE”, n°465627, registered on November 13, 1981, renewed;

- International trademark “GERBLE”, n°646728, registered on December 4, 1995, renewed;

- French trademark “GERBLE”, n°1408067, registered on May 13, 1987, renewed;

- French trademark “GERBLE”, n°3861101, registered on September 23, 2011;

- French trademark “GERBLE”, n°1389473, registered on January 16, 1987, renewed;

- French trademark “GERBLE”, n°3881105, registered on December 13, 2011;

- European Union Trade Mark “GERBLE”, n°4275996, registered on March 27, 2006, renewed;

- <gerble.com>, registered on July 22, 1997, renewed;

- <gerblé.com>, registered on December 9, 2009, renewed;

- <gerble.eu>, registered on February 1, 2008, renewed;

- <gerblé.eu>, registered on December 10, 2009, renewed;

- <gerble.fr>, registered on October 9, 2006, renewed;

- <gerblé.fr>, registered on May 3, 2012, renewed;

- <gerble.info>, registered on July 27, 2001, renewed;

- <gerble.mobi>, registered on February 6, 2008, renewed;

- <gerble.net>, registered on December 3, 1999, renewed;

- <gerble.org>, registered on December 3, 1999, renewed;

- <gerble.tm.fr>, registered on October 27, 1998, renewed;

- <gerble-sans-gluten.com>, registered on December 8, 2011, renewed;

- <gerble-sans-gluten.fr>, registered on December 8, 2011, renewed.

The core products of the GERBLE trademarks are biscuits, cakes, bread, supplements, bars, preparations made from cereal, flour, pastas and juices, as it is presented on the website “www.gerble.fr”.

The Domain Name was registered on September 27, 2017. According to the evidence provided by the Complainant, the Domain Name resolved to a website that copied the Complainant’s website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s GERBLE trademarks;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name was registered and is being used in bad faith.

The Complainant argues that the Domain Name is confusingly similar to the Complainant’s trademarks since it is composed of the entire trademark GERBLE together with the word “nutrition” which refers to the first part of the Complainant’s company name “Nutrition Et Sante” which emphasizes the confusion for consumers. The Complainant further argues that the Respondent proceeded to copy the Complainant’s website at “www.gerble.fr” on September 24, 2017 for the Domain Name website in order to make consumers believe that the website is edited by Nutrition Et Sante. The Complainant then states that, in this way, the Domain Name is used for identical products to the ones designated by the Complainant’s trademarks.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Domain Name as the Respondent who is a natural person and has no known business activity, copied the Complainant’s website content for the Domain Name website and which is also constitutive of a copyright infringement. The Complainant further argues that the Respondent is therefore not making a fair use of the Domain Name and its unique intent is to create a confusion for consumers and generate web traffic without making any effort.

The Complainant states that the Respondent registered the Domain Name in bad faith and is also using it in bad faith as the Respondent is used to this kind of practice. The Complainant argues that the Respondent has no business activities or a registered company and is the owner of at least 100 domain names and already proceeded to the copy of the “www.overstims.com” website for its <overstims-nutrition.com> domain name. The Complainant further argues that by using the Domain Name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant further alleges that its lawyers sent to the Respondent a formal notice that it did not even acknowledge, and that this proves the bad faith of the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, and is therefore in default.

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has submitted evidence of its prior rights in the “Gerble” sign in the form of trademarks and domain names.

The Domain Name <gerble-nutrition.com> consists of the Complainant’s GERBLE trademarks, together with the descriptive term “nutrition”.

First, the applicable Top Level Domain in a domain name such as “.com” is viewed as a standard registration requirement and, as such, is disregarded under the confusing similarity test. RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.

Second, the Domain Name reproduces the Complainant’s trademarks in its entirety together with the descriptive term “nutrition”, which refers to the Complainant’s business activities and its company name. This is sufficient to find confusing similarity in the sense of the Policy. See Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy, WIPO Case No. D2017-0075; M/s Daiwik Hotels Pvt. Ltd v. Senthil Kumaran S, Daiwik Resorts, WIPO Case No. D2015-1384; and ERGO Versicherungsgruppe AG v. Idealist, WIPO Case No. D2008-0377.

Based on the evidence provided by the Complainant, decisions of prior UDRP panels cited above, and the Panel’s own analysis, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy has been met.

Consequently, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights 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 domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent comes forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Respondent is not affiliated or connected to the Complainant in any way nor has it been authorized and licensed by the Complainant to register and use the Domain Name which incorporates the Complainant’s trademarks. It does not appear to have any independent right to the Domain Name. There is no evidence that the Respondent is commonly known by the Domain Name. The Domain Name refers to a website which is a copy of the Complainant’s website and is reproducing, among others, the Complainant’s trademarks, its website design and offers the same type of product and service.

The Panel finds that the Complainant has made out a prima facie case. The Respondent has not filed a response and is therefore in default, thus, the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Pursuant to the Policy (paragraph 4(a)(iii)), the Complainant must show that the Respondent registered and is using the Domain Name in bad faith.

The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the GERBLE trademarks at the time the Respondent registered the Domain Name. The Complainant has submitted evidence, which shows that the Respondent registered the Domain Name long after the Complainant registered its trademarks. According to the evidence filed by the Complainant, the Complainant has owned a registration for the GERBLE trademark since at least the year 1957. It is suggestive of the Respondent’s bad faith in these particular circumstances that the GERBLE trademarks, owned by the Complainant, were registered long before the registration of the Domain Name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735). WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). The Domain Name falls into the category stated above and the Panel finds that registration is in bad faith.

The “Gerble” sign does not have any meaning in English or in French and is distinctive, and thus, it refers directly and only to the Complainant’s trademarks. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name that combines a reproduction of the Complainant’s trademark in its entirety and the adjunction of a descriptive word unless there was an intention to create a likelihood of confusion between the Domain Name and the Complainant’s GERBLE trademarks.

The Domain Name is confusingly similar to the Complainant’s trademark. Previous UDRP panels have found that “[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.

Furthermore, it is reasonable to infer that the Respondent’s intention in registering the Domain Name was to put it to the specific purpose for which it has subsequently been used, namely to promote his capability and willingness to service and maintain the products of the Complainant in the form which has been adopted in its website. As set out above, the manner in which the Respondent has done so is likely to cause confusion to Internet users. The lack of a disclaimer of any relationship with the Complainant, the adoption of the Complainant’s stylized GERBLE trademark coupled with the adoption of the format used by the Complainant on its website all contribute to the inaccurate impression that the Respondent is the Complainant or is officially authorized by the Complainant. The fact that the Respondent has chosen not to respond either to a notice delivered by a bailiff or to this Complaint strongly suggests that the Respondent has nothing to say which might assist in rebutting the Complainant’s assertions.

Ultimately, the evidence reveals that the Respondent has taken advantage of the Complainant’s GERBLE trademarks to intentionally attempt to attract Internet users 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 website. As held in recent UDRP decisions involving similar circumstances, namely AB Electrolux v. Muneer Mohamed, WIPO Case No. D2015-0874 and Aktiebolaget Electrolux v. eletroluxmedellin.com, Domain Discreet Privacy Service / Luis Rincon, WIPO Case No. D2014-0487, such conduct of deliberately misleading and diverting Internet users is undoubtedly evidence of bad faith registration and continued bad faith use.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name <gerble-nutrition.com> be cancelled.

Nathalie Dreyfus
Sole Panelist
Date: March 21, 2018