FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
Factual and Legal Grounds
(Policy, paras. 4(a), (b), (c); Rules, para. 3)
The Complaint is based on the following grounds:
1. Background
The RueDuCommerce Company has been registered on April 27th, 1999 under the number B 422 797 720 R.C.S. BOBIGNY. Its head office is situated 44-50 Avenue du Capitaine Glarner – 93400 ST OUEN, FRANCE.
RueDuCommerce is the owner of a portfolio of Trademarks for the course of its internet-order selling business activities on web sites accessible in particular at the following address: www.topachat.com.
During more than eleven years RueDuCommerce has gained an important fame among the French net surfers and consumers. It is now a major e-merchant in France whose integrity and reliability are known from the Internet users.
Since 6 February 2009, date of the buyout of Top Achat’s businesses by RueDuCommerce, it has notably in charge to watch over the protection of the following trademarks registered by the Top Achat Company:
The Complainant has registered the following trademarks in France:
• « TOP ACHAT », registered May 4th, 2004 under number 3289599, for goods and services class 10, 20 and 21.
• « TOPACHAT.COM », registered July 6th, 2011 under number 10103067, for goods and services class 9, 35, 36, 38, 41 and 42.
The Complainant has registered the following CTM:
• « TOP ACHAT », registered August 9th, 2004 under number 4034211, for goods and services class 11, 20 and 21.
• « TOP ACHAT », registered September 19th, 2002 under number 2827976, for goods and services class 9, 35, 36, 38, 41, 42 and 43.
The Complainant has registered the following international trademark:
• « TOP ACHAT », registered October 8th, 2004 under number 841118, for goods and services class 11, 20 and 21.
Proof of the trademarks owned by the Complainant were provided in the Annex of the Complaint.
During more than eleven years RueDuCommerce has gained an important fame among the French net surfers and consumers. It is now a major e-merchant in France whose honorability and reliability are known from the Internet users.
2. The disputed domain name is confusingly similar to trademark in which the Complainant have rights
The litigious domain name contains the two same joined words as the Complainant’s protected trademark, with an addition at the end of the name of the letter “s”.
The disputed domain name is almost identical to the registered trademarks of the Complainant.
Hence, the will of the Respondent to illegitimately copy the domain name is established without any possible doubt.
3. The disputed domain name has been registered by the Respondent without rights or legitimate interest in the name.
Internet inquiries as well as trademark database searches have not revealed any use or registrations by the Respondent that could be considered relevant.
The disputed domain name, “topachats.info” has been registered on February 11th 2013.
The RueDuCommerce Company reached the owner(s) of the domain name topachats.info :
- On February 19th, 2013 a recorded delivery mail addressed to,
M. Collin
Rue d’Angleur 88
4130 Tilff
BELGIUM
The domain name owner gave a first answer through his counsel on March 6th, 2013. Then, the RueDuCommerce Company sent a recorded delivery mail dated May 28th, 2013.
This exchange ended with a second letter from M. Collin’s counsel on June 3rd, 2013.
According to the two letters from M. Collin, which use the same arguments, the RueDuCommerce Company has no rights on the domain name “topachats.info”. M. Collin’s counsel carries on saying that his client is only a mediator for a Chinese company.
However, M. Collins still appears as the owner of the disputed domain name on a whois of June 10th, 2013.
The RueDuCommerce Company also reached the registrar on February 19th, 2013, with a recorded delivery mail addressed to Host Master for which no answer was given.
Moreover, the website is not operated; nothing can be done on the website.
In fact, this nonuse of the domain name is passive holding with the aim to prevent from anyone, including trademarks owners, to be able to register the domain name “topachats.info” and use a corresponding domain name. This passive holding prevents the trademarks owner from using the rights conferred by his marks. It clearly appears the respondent is saving the domain name for himself without any rights or legitimate motivation.
Furthermore, the Respondent does not provide any elements to demonstrate, as requested by the Policy that it made preparations to use the disputed domain name in connection with a bona-fide offering of goods or services.
Accordingly, the Complainant submits that the disputed domain name is been registered without rights or legitimate interest in respect of the domain name.
4. The domain name is registered and being used in bad faith
(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))
The domain name is registered and is used in bad faith. The purpose of the registration of the disputed domain name has been to prevent the Complainant, legitimate owner of TOPACHAT.com trademarks from reflecting the mark in a corresponding domain name while not exploiting the disputed domain name.
Indeed, UDRP rules provide several ways of establishing bad faith. One, on paragraph 4 (a) (ii) is where the domain name is used intentionally by the Respondent “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”.
It appears that the disputed domain name was only registered in order to prevent Complainant from using the disputed domain name himself.
As the registrant of “topachats.info” has no legal right to use the Complainant trademarks’, there is clearly bad faith in maintaining the domain name to the benefit of the Respondent.
UDRP rules provide other ways of establishing bad faith. One is where the domain name is inactive and is not being used.
The fact that the Respondent does not use the domain name and does not give any clue about the use it wished to make of the disputed domain name shows intention to prevent third parties from reflecting their trademarks in corresponding domain names.
The lack of satisfactory response from TOPACHATS.INFO forbid Complainant to seek damages against him.
Accordingly, the disputed domain name is registered in bad faith.
5. Conclusion
The Respondent has registered a domain name that is identical to the trademark registered and used by the Complainant. Only one neutral letter, “s”, has been added to the domain name, which does not change, nor the sonority, nor the look of RueDuCommerce trademark.
The domain name is infringing Complainant’s intellectual property rights, violating the UDRP rules registering and being used in bad faith. Additionally, the domain name is registered to prevent third parties from reflecting their trademarks in corresponding domain names.
Despite good faith attempts, the Complainant has not managed to find anything that would suggest that the Respondent has rights or legitimate interest in holding the domain name.
Accordingly, the Complainant respectfully submits that the disputed domain name is transferred to the Complainant, the RueDuCommerce Company.
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