Doosan Corporation v. philippe champain
Claim Number: FA1509001636675
Complainant is Doosan Corporation (“Complainant”), represented by Laura M Konkel of Michael Best & Friedrich LLP, United States of America. Respondent is philippe champain (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <doosanbenelux.com>, registered with Gandi SAS.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 4, 2015; the Forum received payment on September 4, 2015. The Complaint was received in both French and English.
On September 8, 2015, Gandi SAS confirmed by e-mail to the Forum that the <doosanbenelux.com> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 15, 2015, the Forum served the French language Complaint and all Annexes, including a French language Written Notice of the Complaint, setting a deadline of October 5, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@doosanbenelux.com. Also on September 15, 2015, the French language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the French language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <doosanbenelux.com> domain name is identical to Complainant’s DOOSAN mark.
2. Respondent does not have any rights or legitimate interests in the <doosanbenelux.com> domain name.
3. Respondent registered and uses the <doosanbenelux.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has rights in the DOOSAN mark through its registration with the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 011828449, registered on October 16, 2013).
Respondent registered the <doosanbenelux.com> domain name on July 6, 2015, and uses it to redirect Internet users to a webpage operated by Complainant, and to impersonate Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant has rights in the DOOSAN mark through its registration with the OHIM (Reg. No. 011828449, registered on October 16, 2013). See Argenta Spaarbank NV v. Argenta, Mailadmin Ltd., D2009-0249 (WIPO June 8, 2009) (finding that Complainant had provided evidence of a trademark registration with the OHIM and had thus established rights in the mark).
Respondent’s <doosanbenelux.com> domain name contains Complainant’s entire mark, merely adding the descriptive term “benelux,” and the generic top-level domain gTLD “.com.” Past panels have found that the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel notes that the term “benelux” is descriptive of Complainant’s business because Complainant conducts business in the Benelux region of Europe, in conjunction with its subsidiary, known as “Doosan Benelux S.A.” Past panels have found that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Therefore, the Panel finds that Respondent’s <doosanbenelux.com> domain name is confusingly similar to Complainant’s DOOSAN mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <doosanbenelux.com> domain name because the available WHOIS information lists “philippe champain” as Registrant, and because Complainant has not consented to Respondent’s use of the DOOSAN mark. Respondent has failed to provide evidence to the contrary. Thus, the Panel finds that Respondent is not commonly known by the <doosanbenelux.com> domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent does not use the <doosanbenelux.com> domain to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to redirect Internet users to a website operated by Complainant. Past panels have found that using a disputed domain name to redirect to a complainant’s own website suffices to show a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Therefore, the Panel finds that Respondent fails to use the <doosanbenelux.com> domain to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant further alleges that Respondent fails to use the <doosanbenelux.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses an e-mail address hosted at the disputed domain name to pass itself off as Complainant and fraudulently induce purchases. Prior panels have found that passing off constitutes a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The Panel finds that Respondent attempts to pass itself off as Complainant, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses the <doosanbenelux.com> domain name for the purpose of disrupting Complainant’s business operations because the domain name redirects to Complainant’s own website. The Panel agrees and finds that Respondent uses the <doosanbenelux.com> domain name in bad faith under Policy ¶ 4(b)(iii). See MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.").
Complainant provides evidence that Respondent uses the <doosanbenelux.com> domain name for commercial gain because it uses an e-mail address hosted at the domain to pass itself off as Complainant. Prior panels have found passing off to be evidence of bad faith. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Therefore, the Panel finds that Respondent has demonstrated an intent to deceive Internet users and thus uses the <doosanbenelux.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the <doosanbenelux.com> domain name with actual knowledge of Complainant’s rights in the DOOSAN mark based upon Complainant’s longstanding use of the mark. The Panel agrees, noting also that Respondent’s use of the disputed domain name is clear evidence that it knew of Complainant and its rights in the DOOSAN mark. Thus, the Panel finds that Respondent registered and uses the <doosanbenelux.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <doosanbenelux.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 13, 2015
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