Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Rights
So far as the first element is concerned, the Complainant’s trade mark registrations for VIVENDI including the trade mark in respect of which full details are provided above, establish its rights in this mark.
For the purpose of comparing the disputed domain name with the Complainant’s mark, it is established practice to disregard the generic Top Level Domain, that is “.link” in the case of the disputed domain name, as this is a technical requirement of registration. The remaining element of the disputed domain name comprises the Complainant’s trade mark, in full and without alteration. The Panel accordingly finds that the disputed domain name is identical to a trade mark in which the Complainant has rights.
Rights and legitimate interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.
The only known use of the disputed domain name, namely to resolve to a webpage containing a notice that it is offered for sale, does not comprise a bona fide offering of goods and services for the purpose of the second element of the Policy. Section 2.2 of the WIPO Overview of WIPO Panel Viewson Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides examples of non-exhaustive examples of prior use, or demonstrable preparations to use a domain name, in connection with a bona fide offering of goods or services and explains that: “While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required”. Simply offering the disputed domain name for sale does not meet this requirement. See, by way of example, Ruby’s Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868, in which the panel found that registering a domain name and doing no more with it than to advertise that it is for sale does not support a respondent’s legitimate interest under the Policy. The absence of any genuine content at the Respondent’s webpage points against there being any bona fide or any non commercial or fair use of the disputed domain name; see, by way of example, CAC Case No. 101784, Christian Wiesner v Michael Benlevi.
There is no evidence that the Respondent has been commonly known by the disputed domain name, nor does the Respondent’s passive holding of the domain name amount to making a legitimate non commercial or fair use of it. Furthermore, the registration of the disputed domain name, being identical to the Complainant’s mark carries with it a high risk of implied affiliation.
The Complainant having made out a prima facie case in relation to the second element, the burden of proof shifts to the Respondent to rebut it; see, for example, CAC Case No. 102333, Amedei S.r.l. v sun xin. In the absence of any response by it to the Complaint, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Bad faith
The Panel accepts the Complainant’s submission that, given the distinctive nature of the Complaint’s VIVENDI trade mark, it is highly improbable that the Respondent registered the disputed domain name without an awareness of the Complainant and its trade mark rights. Although the disputed domain name is not entirely inactive, the use of a domain name to resolve either to a blank or “coming” soon webpage or, as here, to a web page which does nothing other than offer it of sale, is essentially the same as passive holding, which panels in many earlier decisions under the Policy have found capable of amounting to bad faith registration and use. The material factors in this respect were first set out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and are fulfilled in the circumstances of these proceedings. In particular, the Panel takes into account that (1) the Complainant has established that its rights in its VIVENDI mark are both extensive and established , (2) the Respondent has not provided any evidence of actual or contemplated good faith use by it of the disputed domain name, (3) the Respondent has concealed its true identity, by use of a privacy service and (4) it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate or infringe the Complainant’s trade mark rights.
Moreover, the circumstances of the Respondent’s registration and use of the disputed domain name fall within, or closely approximate to, the example of bad faith registration and use set out at paragraph 4(b)(i) of the Policy, namely that the Respondent is likely to have acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or a competitor of the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name.
For these reasons the Panel finds that the disputed domain name was both registered and used in bad faith.
|