Le Dauphin Pirate Sarl v. Reto Stossel
Claim Number: FA0609000788274
Complainant is Le Dauphin Pirate Sarl (“Complainant”), represented by Francoise
Gilbert, of IT Law Group,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <explicite.com>, registered with DIRECT INFORMATION PVT LTD d/b/a PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On Sepeptember 6, 2006, DIRECT INFORMATION PVT LTD d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <explicite.com> domain name is registered with DIRECT INFORMATION PVT LTD d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECT INFORMATION PVT LTD d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECT INFORMATION PVT LTD d/b/a PUBLICDOMAINREGISTRY.COM 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 September 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 28, 2006 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@explicite.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <explicite.com> domain name is identical to Complainant’s EXPLICITE mark.
2. Respondent does not have any rights or legitimate interests in the <explicite.com> domain name.
3. Respondent registered and used the <explicite.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Le Dauphine Pirate Sarl, is a French
corporation that specializes in the production and sale of photographs and
videos for the adult market. In
connection with the operation of its business, Complainant holds a registration
of the EXPLICITE mark in
Respondent has been listed as the Registrant of the <explicite.com>
domain name since
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. 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.”).
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 holds a registration of the EXPLICITE mark with
the INPI, thus establishing Complainant’s rights in the mark. While it appears that Respondent is located
in
Respondent’s <explicite.com> domain name is
identical to Complainant’s EXPLICITE mark.
The addition of the top-level domain “.com” does not differentiate the
disputed domain name from Complainant’s mark.
Thus, the Panel finds that the disputed domain name is identical to
Complainant’s mark within the meaning of Policy ¶ 4(a)(i). Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s assertion constitutes a prima facie case for purposes of the Policy and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent had the opportunity to present the Panel with evidence and arguments in support of its rights or legitimate interests in the <explicite.com> domain name by submitting a Response. Respondent’s failure to do so suggests to the Panel that Respondent lacks rights or legitimate interests. Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Nonetheless, the Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests as outlined in Policy ¶ 4(c).
Prior to Respondent’s acquisition of the <explicite.com>
domain name, Complainant held the registration of the disputed domain name
and was using the domain name in connection with its legitimate business. While it is difficult for the Panel to
establish precisely how Respondent came to register the disputed domain name, it
seems clear from the record that the registration occurred without
Complainant’s consent and may have involved an illegal transfer of the domain
name. Because Respondent has failed to
respond to this dispute, the Panel assumes that Complainant’s assertion that
the disputed domain name was hijacked is accurate. Because the disputed domain name was acquired
under suspicious circumstances without Complainant’s permission it is
impossible for Respondent to use the disputed domain name in connection with a bona
fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use as
contemplated by Policy ¶ 4(c)(iii). The
Panel finds that the foregoing circumstances constitutes evidence that
Respondent lacks rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See Mezenin v.
Baselmans, FA 664060 (Nat. Arb. Forum May 8, 2006) (finding no rights or
legitimate interests where the respondent hijacked the disputed domain name to
operate a website virtually identical to the complainant’s original website
operated at that domain name); see also Bortz v. Gagne, D2002-0689 (WIPO
Sep. 3, 2002) (finding that the respondent lacked rights or legitimate
interests in the disputed domain name because the respondent hijacked the
disputed domain name).
Respondent is using the <explicite.com> domain
name to host a website with content that is exactly the same as the content
available at the disputed domain name when Complainant was the registrant. Thus, not only is Respondent using
Complainant’s EXPLICITE mark in a domain name, it is also using the domain name
to pass itself off as Complainant online.
By posting a copy of Complainant’s original website content on its
website, Respondent is taking advantage of the goodwill of Complainant’s
customers, as well as potentially profiting from those customers. The Panel finds that Respondent’s attempt to
pass itself off as Complainant by using Complainant’s EXPLICITE mark in a
domain name and by copying Complainant’s web content is evidence that
Respondent lacks rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). American Int’l Group,
Inc. v. Busby, FA 156251 (Nat. Arb. Forum
Furthermore, there is no evidence in the record that
Respondent is commonly known by the <explicite.com> domain
name. Respondent’s WHOIS information
identifies Respondent as “Reto Stossel,” a name with no apparent relationship
to the disputed domain name. The Panel
finds that Respondent is not commonly known by the disputed domain name and
thus, lacks rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii).
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb.
Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
A reasonable inference from the record is that Respondent hijacked the <explicite.com> domain name from Complainant without Complainant’s permission. Respondent is now operating a website at the disputed domain name that duplicates the content of the website that was previously hosted by Complainant. The duplicate website includes a copy of Complainant’s subscription page, suggesting that Respondent is now receiving subscription fees from Complainant’s customers. The Panel finds that such use disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with.”); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Internet users are accustomed to finding
Complainant’s website at the <explicite.com> domain name. By hijacking the disputed domain name and
retaining Complainant’s content, Respondent is attempting to pass itself off as
Complainant. Internet users visiting the
website located at the <explicite.com> domain name have every
reason to believe that they are visiting a website controlled by Complainant,
and have no way of knowing that Respondent is now the registrant of the
disputed domain name. Respondent is
presumably profiting from this confusion by collecting the fees generated by
the subscription page Respondent copied from Complainant. The Panel finds that such use is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)
(finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the
complainant’s mark on its website and offering identical services as those
offered by the complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site).
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 <explicite.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 18, 2006
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