national arbitration forum

 

DECISION

 

Le Dauphin Pirate Sarl v. Reto Stossel

Claim Number:  FA0609000788274

 

PARTIES

 

Complainant is Le Dauphin Pirate Sarl (“Complainant”), represented by Francoise Gilbert, of IT Law Group, 555 Bryant Street #603, Palo Alto, CA 94301.  Respondent is Reto Stossel (“Respondent”), Schweiz Suisse Svizzera, Zurich ZH, 20 CIC, CH.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <explicite.com>, registered with DIRECT INFORMATION PVT LTD d/b/a PUBLICDOMAINREGISTRY.COM.

 

PANEL

 

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.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 5, 2006.

 

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 October 5, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

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.

 

FINDINGS

 

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 France with National Institute of Industrial Property (“INPI”) (Reg. No. 23,178,371 issued July 31, 2002).  On March 14, 2000 Complainant registered the <explicite.com> domain name, which it used in connection with its business until July 20, 2006.  Until July 20, 2006 the disputed domain name was registered with GoDaddy.com, with the WHOIS information reflecting Complainant as registrant and Complainant’s CEO as the Administrative and Technical Contact.  On July 20, 2006, Complainant became aware of security issues with its GoDaddy.com account, and then realized that the account had been broken into and that the domain name had been hijacked and transferred to a different domain name registrar with different registrant, administrative and technical contacts.  

 

Respondent has been listed as the Registrant of the <explicite.com> domain name since August 21, 2006.    Respondent is using the disputed domain name to host a pirated copy of the content originally hosted at the <explicite.com> domain name when the domain name was registered to and controlled by Complainant.  Respondent is continuing to use the subscription page originally created by Complainant.

 

DISCUSSION

 

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.

 

Identical and/or Confusingly Similar

 

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 Switzerland, it is not necessary for Complainant to hold a registration of the EXPLICITE mark in the territory in which Respondent is located.  The Panel finds that Complainant’s registration of the EXPLICITE mark in France is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

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 July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). 

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

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 May 30, 2003) (finding that the respondent’s attempt to pass itself off as the complainant online is evidence that the respondent has no rights or legitimate interests in the disputed domain name). 

 

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 Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).    

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

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.


 

DECISION

 

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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