HOM INNOVATIONS POUR L’ELEGANCE MASCULINE and HUBER HOLDINGS ASIA Limited v. PHMC GPE
Claim Number: FA1601001658722
Complainant is HOM INNOVATIONS POUR L’ELEGANCE MASCULINE and HUBER HOLDINGS ASIA Limited (“Complainant”), represented by Valérie Perrichon, France. Respondent is PHMC GPE (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ho1.us>, registered with Domain.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2016; the Forum received payment on February 1, 2016.
On January 29, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <ho1.us> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2016 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@ho1.us. Also on February 1, 2016, the 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 March 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 usTLD Dispute Resolution Policy ("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 usTLD Policy, usTLD 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
1. Complainant uses the HO1 mark in connection with its business selling men’s garments. Complainant has registered the HO1 mark with France’s National Institute of Industrial Property (“NIIP”) (e.g., Reg. No. 97 710 243, registered December 23, 1997), which demonstrates rights in the mark. Respondent’s <ho1.us> domain name is identical to Complainant’s mark as it incorporates the mark in its entirety and adds the country code top-level domain (“ccTLD”) “.us,” which does not distinguish the domain name from Complainant’s mark.
2. Respondent has no rights or legitimate interests in the <ho1.us> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the domain name. Rather, the domain name resolves to a website containing a hyperlink to Respondent’s marketing issues website.
3. Respondent registered and is using the <ho1.us> domain name in bad faith. Respondent’s use of the website serves as a disruption of Complainant’s legitimate business purposes. Respondent also had actual or constructive notice of the HO1 mark and Complainant’s rights therein.
B. Respondent’s Contentions
1. Respondent did not submit a response, other than an email that was received by Forum.
1. Respondent’s <ho1.us> domain name is confusingly similar to Complainant’s HO1 mark.
2. Respondent does not have any rights or legitimate interests in the <ho1.us> domain name.
3. Respondent registered or used the <ho1.us> domain name in bad faith.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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.”).
Complainant uses the HO1 mark in connection with its business selling men’s garments. Complainant claims to have registered the HO1 mark with France’s NIIP (e.g., Reg. No. 97 710 243, registered December 23, 1997), arguing such registration demonstrates rights in the mark, even where Respondent operates in a different country. Panels have found, under such circumstances, that a complainant’s valid NIIP registration to be sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Tahiti One Travel v. Menini, FA 1152430 (Nat. Arb. Forum Aug. 4, 2008) (“The Panel finds that Complainant’s registration of the mark with the French trademark authority is sufficient to establish rights pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel agrees that Complainant has demonstrated rights in the mark under Policy ¶ 4(a)(i).
Complainant also argues that Respondent’s <ho1.us> domain name is identical to Complainant’s mark as it incorporates the mark in its entirety and adds the ccTLD “.us,” which Complainant contends does not distinguish the domain name from Complainant’s mark. Panels have found domain names distinguishable from a mark only by the addition of a ccTLD to be identical under Policy ¶ 4(a)(i). See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). Therefore, the Panel agrees that Respondent’s <ho1.us> domain name is identical to the HO1 mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 argues that Respondent has no rights or legitimate interests in the <ho1.us> domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel sees that the WHOIS information regarding the disputed domain name lists “PHMC GPE” as registrant. Complainant contends that RHMC GPE is a company whose founder and manager is Phillippe E. Maille. See Compl., at attached Ex. 6. Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, this Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(iii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Under usTLD Policy ¶ 4(c)(i), the Panel must find as to whether the respondent is the owner or beneficiary of a trade or service mark that is identical to the disputed domain name. Complainant did not present an argument as to this point. Past Panels have found there to be no rights or legitimate interests where a respondent was not the owner or beneficiary of a mark that is identical to the domain name. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel finds that Respondent is not the owner or beneficiary of a trade or service mark identical to the disputed domain name, and finds no rights or legitimate interests under Policy ¶ 4(c)(i).
Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <ho1.us> domain name. Rather, Complainant contends that the domain name resolves to a website containing the words “Holistic Overview #1” and “Everything You Always Wanted to Know About the Holistic Marketing concept…But Were Afraid to Ask!” as well as a link to registrant’s marketing issues website. See Compl., at Attached Ex. 5. Complainant contends that Respondent’s purpose is to cause detriment to Complainant’s business by limiting its visibility on the Internet and damaging its reputation and image. Complainant claims this is demonstrated in Respondent’s Facebook messages regarding Complainant. See Compl., at Attached Ex. 7 and 8. The Panel finds such use by a respondent to evince neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent’s use of the <ho1.us> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because the website delists Complainant’s website from the top of the list of search results for Complainant’s legitimate business. Complainant offers no evidence for this assertion. The Panel finds that Complainant does not offer evidence of Respondent’s disruption of Complainant’s legitimate business.
Complainant further asserts that Respondent had actual knowledge of Complainant’s rights in the HO1 mark. Complainant alleges that Respondent company’s founder and CEO is the spouse of an employee of Complainant. See Compl., at Attached Ex. 6. Complainant argues that Respondent thus had actual and/or constructive knowledge of Complainant's rights in the HO1 mark. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ho1.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 14, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page