WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Societe d’Editions Scientifiques et Culturelles v. Domain Protection LLC / Domain Administrator, See PrivacyGuardian.org

Case No. D2019-2808

1. The Parties

The Complainant is Societe d’Editions Scientifiques et Culturelles, France, represented by Cabinet Desbarres & Staeffen, France.

The Respondent is Domain Protection LLC, United States of America / Domain Administrator, See PrivacyGuardian.org, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lequotidiendumedecin.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2019. On November 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 20, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 20, 2019.

The Center verified that the Complaint together with the amended 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 November 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 11, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on December 20, 2019. 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 was incorporated in France in 1982. It is specialized in newspaper publishing in the field of health. It publishes the French newspaper “Le quotidien du médecin”, which was created in 1971 and is specialized in medical and scientific news. The newspaper is addressed at nearly 48,000 doctors in France, and is published twice a week, while a daily edition is reserved for subscribers. It has been recognized by the ACPM (Alliance pour les Chiffres de la Presse et des Médias) as the French leader in the medical press. The digital version of “Le quotidien du médecin” was launched in 2000 and is located on the website “www.lequotidiendumedecin.fr”. It has an average audience of 675,000 visits per month and a total of 2.1 million page views per month.

The Complainant is the owner of the French trademark LE QUOTIDIEN DU MEDECIN with registration No. 96638597, registered on August 5, 1996 for goods and services in International Classes 16 and 41 (the “LE QUOTIDIEN DU MEDECIN trademark”).

The disputed domain name was registered on November 23, 2005 and resolves to a pay-per-click page.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to the Complainant’s LE QUOTIDIEN DU MEDECIN trademark, as it reproduces its verbal elements entirely.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name, because the Complainant has not granted any authorization to the Respondent to use the LE QUOTIDIEN DU MEDECIN trademark or to register domain names containing it, and the Respondent is not commonly known by the disputed domain name. The Complainant notes that its adoption and use of the LE QUOTIDIEN DU MEDECIN trademark precedes by many years the registration of the disputed domain name.

The Complainant further points out that the disputed domain name resolves to a parking webpage that contains various headings, related to magazine and medical industries, which are similar and competitive to the Complainant’s activities under the LE QUOTIDIEN DU MEDECIN trademark. According to the Complainant, the LE QUOTIDIEN DU MEDECIN trademark is popular in France and will attract many Internet users to the links on the webpage, and as a result, the Respondent may obtain click-through revenues when Internet users click on the sponsored links on this webpage.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent must have been aware of the Complainant’s LE QUOTIDIEN DU MEDECIN trademark when it registered the disputed domain name, because it is confusingly similar to this trademark and is being used with an intent to attract Internet users for commercial gain by creating a likelihood of confusion with the LE QUOTIDIEN DU MEDECIN trademark. In this regard, the Complainant points out that the webpage associated with the disputed domain name displays links to services in the magazine and medical industries, including magazine subscription services and medical job announcements, which are directly competitive to the services provided by the Complainant.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

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

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”.

The Respondent has however not submitted a Response and has thus not disputed the Complainant’s statements and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the LE QUOTIDIEN DU MEDECIN trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the sequence “lequotidiendumedecin”. It incorporates the verbal elements of the LE QUOTIDIEN DU MEDECIN trademark, only omitting the spaces between the words, which do not form part of domain names for technical reasons. As discussed in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. Here, the verbal elements of the LE QUOTIDIEN DU MEDECIN trademark are easily recognizable in the disputed domain name.

In view of the above, the Panel finds that the disputed domain name is identical to the LE QUOTIDIEN DU MEDECIN trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the disputed domain name and has not been authorized by the Complainant to use the LE QUOTIDIEN DU MEDECIN trademark. The Complainant also points out that the Respondent is using the disputed domain name to attract Internet users to a webpage that displays sponsored links to services that compete with the services offered by the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that it has rights or legitimate interests in the disputed domain name and has not disputed the statements of the Complainant and the evidence provided by it.

The disputed domain name is identical to the LE QUOTIDIEN DU MEDECIN trademark, to the name of the Complainant’s magazine “Le quotidien du médecin”, and to the domain name <lequotidiendumedecin.fr>, at which the digital version of the Complainant’s magazine is located. As contended by the Complainant, the disputed domain name resolves to a webpage that contains sponsored links related to magazine and medical industries, which are similar and competitive to the Complainant’s activities under the LE QUOTIDIEN DU MEDECIN trademark.

In view of the above, it appears to the Panel that the Respondent, being well aware of the attractiveness of the LE QUOTIDIEN DU MEDECIN trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill for commercial gain by attracting Internet users them to a webpage that contains sponsored links offering services competitive to those of the Complainant. In the Panel’s view, this conduct of the Respondent does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.

Also, the Panel finds that the disputed domain name carries a high risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0.

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

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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.”

As discussed above, the disputed domain name is identical to the LE QUOTIDIEN DU MEDECIN trademark, to the name of the Complainant’s magazine “Le quotidien du médecin”, and to the domain name <lequotidiendumedecin.fr>, at which the digital version of the Complainant’s magazine is located. The disputed domain name is being used for a webpage that contains sponsored links offering services competitive to those of the Complainant. The Complainant contends that the Respondent has not received any authorization for its activities by the Complainant, and the Respondent does not dispute the statements of the Complainant and does not provide any plausible explanation about the registration and use of the disputed domain name.

Taking the above into account, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the LE QUOTIDIEN DU MEDECIN trademark. It is more likely than not that by creating a likelihood of confusion with the Complainant’s LE QUOTIDIEN DU MEDECIN trademark, the Respondent has attempted for commercial gain to attract traffic to the disputed domain name and then switch them to third-party websites offering services in competition to the Complainant.

The Panel notes that the disputed domain name was registered in 2005, and the Complaint was filed in 2019. However, as discussed in section 4.17 of the WIPO Overview 3.0, Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits.

Therefore, the Panel finds that the disputed domain name has been registered and 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 <lequotidiendumedecin.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: January 20, 2020