Societe Anonyme Des Eaux Minerales d'
Evian v. Marques de Peralta
Claim
Number: FA0310000198913
Complainant is Societe Anonyme Des Eaux Minerales d'Evian,
France (“Complainant”) represented by Jeffrey
H. Kaufman, of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C., 1940 Duke Street,
Alexandria, VA 22314-3454. Respondent is Marques de Peralta, calle 6 av 3 y 5, Cartago, Costa Rica
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <eviancasino.com>, registered with Bulkregister.com,
Inc.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 30, 2003; the Forum received a hard copy of the
Complaint on October 1, 2003.
On
October 2, 2003, Bulkregister.com, Inc. confirmed by e-mail to the Forum that
the domain name <eviancasino.com> is registered with Bulkregister.com,
Inc., and that Respondent is the current registrant of the name. Bulkregister.com,
Inc. has verified that Respondent is bound by the Bulkregister.com, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
October 3, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 23, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@eviancasino.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 29, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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.” 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <eviancasino.com>
domain name is confusingly similar to Complainant’s EVIAN mark.
2. Respondent does not have any rights or
legitimate interests in the <eviancasino.com> domain name.
3. Respondent registered and used the <eviancasino.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds numerous marks for EVIAN registered with the United States Patent and
Trademark Office (“USPTO”) and other countries (e.g. the Benelux, Switzerland,
Spain, Italy, Sweden, and others).
Complainant has used the mark since 1981 in the U.S. and since 1960 in
Europe. Complainant uses the mark in
relation to mineral water, liquor, clothing, cosmetics, as well as other trade
and service marks incorporating the word mark EVIAN in international markets
(e.g. Reg. No. 235956, Reg. No. 323720, Reg. No. 411912) and in the United
States (e.g. Reg. No. 1,155,024, Reg. No. 1,778,995, Reg. No. 1,610,010, Reg.
No. 2,711,967, Reg. No. (78/026,109), Reg. No. (76/314/100)). Complainant has also registered EVIAN.COM
with the USPTO.
Respondent
registered the <eviancasino.com> domain name on March 22,
2000. Respondent is using the disputed
domain name to redirect Internet users to <theonlinebet.com>, an Internet
gambling website.
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.”
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.
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.
Complainant has established rights in the EVIAN mark
through registration with the U.S. Patent and Trademark Office as well as
through widespread and continuous use of the mark in commerce.
Respondent’s <eviancasino.com> domain name is
confusingly similar to Complainant’s EVIAN mark. Complainant’s famous EVIAN
mark is entirely incorporated into the disputed domain name, along with the
generic word “casino.” The dominant
feature remains Complainant’s distinctive mark. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24,
2000) (finding the domain name <casinoyahoo.com> is confusingly similar
to Complainant’s mark); see also Arthur
Guinness Son & Co. (Dublin) Ltd. V.
Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of Complainant
combined with a generic word or term).
Accordingly,
the Panel finds that the <eviancasino.com>
domain name is confusingly similar to Complainant’s EVIAN mark under Policy
¶ 4(a)(i).
Respondent has
not demonstrated anything that asserts rights and legitimate interests in the
domain name. When Complainant asserts a
prima facie case against Respondent, the burden shifts to Respondent to
show that he has rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant
asserts that Respondent has no rights or legitimate interests with respect to
the domain, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
see also Parfums Christian Dior v.
QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
Response, the Respondent has failed to invoke any circumstance that could
demonstrate any rights or legitimate interests in the domain name).
Respondent is
using the disputed domain name to divert Internet users to an Internet gambling
website. This type of use is not a bona
fide offering of goods or services pursuant to Policy ¶ 4(C)(i), nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(C)(iii). See Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan.
8, 2001) (finding no rights or legitimate interests where Respondent used the
<casinomontecarlo.com> and <montecarlocasinos.com> domain names in
connection with an online gambling website); see also Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks).
Respondent has
not alleged that it is commonly known as EVIAN CASINO or <eviancasino.com>. As a result, the Panel infers that
Respondent has no rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(C)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Victoria’s Secret v. Asdak, FA 96542
(Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was
not commonly known by a domain name confusingly similar to Complainant’s
VICTORIA’S SECRET mark because of Complainant’s well-established use of the
mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the disputed domain name to divert Internet users to
<theonlinebet.com>, an online casino.
The Panel infers that Respondent is making a profit from the Internet
traffic that is diverted to this website.
Respondent is therefore using a confusingly similar domain name to
create Internet user confusion for its own commercial benefit, which is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant’s mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see Mars, Inc.
v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith
under Policy ¶ 4(b)(iv) where Respondent linked the domain name
<marssmusic.com>, which is identical to Complainant’s mark, to a gambling
website); see also Encyclopaedia
Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding
that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name
<britannnica.com> to hyperlink to a gambling site).
Furthermore,
given the strength and fame of Complainant’s EVIAN mark, the Panel can infer
that Respondent had actual knowledge of Complainant’s mark when it registered
the <eviancasino.com> domain name. Given the amount of Complainant’s foreign trademark and service
mark registrations, the Panel can infer that a foreign Respondent would be
aware of Complainant’s rights in the mark.
See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given the worldwide prominence of the mark and thus Respondent
registered the domain name in bad faith); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”).
Registration of a domain name confusingly similar to Complainant’s
mark, despite actual knowledge of Complainant’s rights, is evidence of bad
faith registration pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
Thus, the Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <eviancasino.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
November 6, 2003
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