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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Rhodia v. Paperboy and Co.

Case No. D2006-0851

 

1. The Parties

The Complainant is Rhodia S.A., Courbevoie, France, represented by an internal representative.

The Respondent is Paperboy and Co., Japan.

 

2. The Domain Name and Registrar

The disputed domain name <rhodia.org> (the “Domain Name”) is registered with eNom (“the Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Registrar “Center”) on July 4, 2006. On July 5, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 5, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2006.

The Respondent duly received the Complaint, and it sent an email to the Center on July 25, 2006, acknowledging receipt of the Complaint and making various other points relating to the Domain Name. By email dated July 27, 2006, the Center asked the Respondent for confirmation that its email of July 25, 2006, should be treated as its formal Response to the Complaint. The Center did not receive any such confirmation, and the Center notified the Respondent’s default on August 14, 2006.

The Center appointed Warwick Smith as the sole panelist in this matter on August 25, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant

According to the Complaint, the Complainant is a French Corporation, which carries on business in the production or distribution of chemical products. From February 18, 1994, the Complainant has operated under the “Rhodia” Trade Name, and it has the trademark RHODIA registered in more than 100 countries, including Japan (where the Respondent appears to be located).

In addition, the Complainant is the owner of numerous “Rhodia” domain names, including <rhodia.com>, <rhodia.biz>, <rhodia.info>, and <rhodia.name>, and a number of “rhodia” country code top level domains.

The Respondent and the Domain Name

The Complainant says that it learned in June 2005, that the Domain Name had been registered on May 29, 2005, by the Respondent. The Domain Name was not then directed to any active website. The Complainant conducted a company search for the Respondent, and found that the Respondent operates a business specializing in the reservation and sale of domain names.

By June 23, 2005, the Domain Name was pointing to an active web page, which the Complainant has produced as an exhibit to the Complaint. The web page appears to be primarily in the Japanese language, but it prominently features the mark RHODIA in bold capital letters beneath two small trees, and it includes a claim (in English) to a 2005 copyright in the expression “Rhodia”.

Pre-commencement Steps taken by the Complainant

On September 6, 2005, the Complainant sent a cease and desist letter to the Respondent at the email address provided in the Whois information for the Domain Name. In this letter, the Complainant drew attention to its rights in the trademark RHODIA, and to its Trade Name rights. It requested the transfer to it of the Domain Name.

On September 9, 2005, the Complainant received an answer from Akiko Watanabe, advising that “Paperboy & Co. is a reseller of domain names that performs the domain registration after receiving the registrant’s request”. Akiko Watanabe advised that he had forwarded the Complainant’s email and attachments to the registrant of the Domain Name, and asked him to contact the Complainant’s representative. Akiko Watanabe then advised that the Respondent does “not release the personal information of the registrant”.

The Complainant immediately sent an email to Akiko Watanabe asking the Respondent to identify the registrant.

It appears from the Complaint that nothing further was heard from Akiko Watanabe. The Complainant followed up with a reminder on March 6, 2006. On March 28, 2006, Akiko Watanabe sent an email advising that nothing had been heard from the registrant, but that Akiko Watanabe was willing to co-operate to solve the matter, and that “the domain name is under our control by our Terms and Conditions”. The email said that Akiko Watanabe had been trying to contact the registrant since March 6, “to ask for him to reach both of us”. Akiko Watanabe repeated the advice given in the September 9 email that details of the registrant could not be provided because of privacy considerations.

On March 31, 2006, the Complainant checked the Domain Name again, and found that it had been redirected to a page which simply stated “Under construction”. The Complainant then sent a further email to the Respondent, repeating its claims of trademark infringement and requesting the transfer of the Domain Name. It did not receive any answer.

The Domain Name was due for renewal on May 29, 2006, and the Complainant arranged to have a watch placed on the Domain Name, so that the Complainant might obtain registration itself if the Respondent’s registration was not renewed. In the event, the Domain Name was renewed, until 2007.

On June 12, 2006, the Complainant conducted new Internet searches, and ascertained that the Domain Name was then pointing to a portal site, which, among other things, referred to the Complainant. The pages from this site which the Complainant produced (at Annex 11 to the Complaint), are in the English language. The first page is headed “Welcome to Rhodia.Org”. Beneath that there appear a number of click-through links to other pages, including the following: “Rhodia”, “Cheap Airfare”, “Vacations”, “Car Quotes”, “Meet Singles” and “Cellular phones”.

The link to the “Rhodia” page contains further links to sites which apparently market “Rhodia” notebooks and pads, and also a link to an article on a company/business coverage website headed: “Rhodia SA: In-depth Company Info”.

The Complainant commenced this proceeding on July 4, 2006.

 

5. Parties’ Contentions

A. Complainant

1. The Complainant is the owner of the trademark RHODIA, which has been registered, for several decades, in more than 100 countries. The Complainant’s RHODIA mark is well known in France and around the world, designating chemical products.

2. The Domain Name is identical to the Complainant’s RHODIA mark, with the exception of the “.org” suffix. It is well established that the suffices such as .com, .org, or .net do not affect the determination of whether a domain name is identical or similar to a complainant’s trademark for the purposes of paragraph 4(a)(i) of the Policy.

3. The Respondent has no right or legitimate interest in the Domain Name, for the following reasons:

(i) The Respondent has not been licensed, contracted or otherwise permitted by the Complainant to use its RHODIA trademark, or to apply for any domain name including the expression “Rhodia”. Nor has the Complainant acquiesced in any way in such use or application of the Complainant’s RHODIA mark.

(ii) The Complainant’s RHODIA mark is sufficiently well known to qualify as a notorious trademark under the provisions of Article 6 of the Paris Convention.

(iii) There is no evidence that the Respondent’s use of (or demonstrable preparations to use) the Domain Name has been in connection with the bona fide offering of any goods or services.

The Domain Name has been registered and is being used in bad faith, for the following reasons:

(i) The Respondent has no right or legitimate interest in the Domain Name.

(ii) The Complainant’s Internet searches conducted on June 12, 2006, showing that the Domain Name was then pointing to an index site which referred (amongst other things) to the name “Rhodia”, shows that the Respondent has been using the Domain Name in bad faith in order to benefit financially from the goodwill and fame of the Complainant’s RHODIA mark.

B. Respondent

The Respondent responded to the Complaint by unverified email dated July 25, 2006. In that email, the Respondent asserted:

(i) When you look up .ORG Whois details for the Domain Name, it appears that the Domain Name has been renewed until May 29, 2007. But if the Registrar’s Whois details are checked, the following information is provided: “This name has EXPIRED, the former Whois information is:”

(ii) The Respondent is a reseller of domain names, not an actual domain name registrant. It has no reason to renew domain names without requests from its registrants to do so.

(iii) (Referring to the web pages at Annex 11 to the Complaint), all expired domain names registered through the Registrar are set to the same name server, which directs the browser to a site chosen by the Registrar. The Respondent had nothing to do with the contents of that site.

(iv) The Respondent had no intention to benefit financially from the goodwill and fame of the Complainant’s RHODIA mark.

 

6. Discussion and Findings

A. General Principles under the Policy and the Rules

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Paragraph 5(e) of the Rules provides that if the Respondent does not submit a response, in the absence of special circumstances, the Panel is to decide the dispute based upon the Complaint.

Paragraph 14(b) of the Rules provides that:

“(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under these Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

B. Identical or Confusingly Similar

The Complainant has proved that it is the registered proprietor of the trademark RHODIA. It therefore has a “right” in that mark for the purposes of paragraph 4(a)(i) of the Policy.

The Domain Name is identical to the Complainant’s RHODIA mark. The “.org” suffix is generic, and is not to be taken into account when deciding whether a domain name is identical or confusingly similar to a complainant’s mark.

The Complainant has therefore proved this part of the Complaint.

C. Rights or Legitimate Interests

In Cassava Enterprises Ltd. v. Victor Chandler International Limited ,WIPO Case No. D2004-0753, the Panel said:

“Although the Policy requires that the complainants must prove each of the elements in paragraph 4(a), it is often observed that difficulties are posed for a complainant in proving a negative, namely that the Respondent does not enjoy some right or legitimate interest in the domain at issue. The wording of paragraph 4(c) of the Policy appears to envisage the Respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, a finding of “no legitimate right or interest” should normally follow if the respondent does not advance any plausible “right or legitimate interest” case. If the respondent does put forward such a case, the Panel decides the issue on the basis of all of the evidence, with the complainant carrying the ultimate burden of proof.”

In this case, the Domain Name is identical to the Complainant’s mark, and the Complainant has not authorized the Respondent to use the Domain Name.

The Respondent itself has not advanced any claim to a right or legitimate interest in the Domain Name. In the email from Akiko Watanabe dated September 9, 2005, the Respondent disavowed any responsibility for the selection and registration of the Domain Name – in that email, Akiko Watanabe asserted that “the Respondent is a reseller of domain names and “performs the domain registration after receiving the registrant’s request. … All the domain names registered with us are the property of the registrant’s”.

The Panel has no doubt that the Respondent has failed to establish any claim to a right or legitimate interest in the Domain Name.

First, the Panel is prepared to infer that, in the absence of any denial or contrary indication, the Respondent was aware of the Complainant and its RHODIA mark at the time it registered the Domain Name. The Respondent is in the business of acquiring and selling domain names, and it would have had an obvious interest in the meaning and derivation of the word “Rhodia”, what value the word might have as a domain name, and whether any other party claimed rights in that expression. The Complainant’s RHODIA mark was registered in Japan, and the Panel infers that the Respondent was well aware of the mark.

Secondly, there is no evidence of the Respondent (or any business it may operate) being known by the name “Rhodia”, nor any evidence of the Respondent (or any person for whom the Respondent may have been acting) having used the Domain Name in connection with any bona fide offering of goods or services, at least before the Domain Name resolved to the website featured at Annex 11 to the Complaint. By then, the Respondent was clearly on notice of the present dispute.

The Domain Name did point to a Japanese language website in June 2005, but the Panel has not been provided with a translation of the Japanese characters on the relevant web pages. If they did provide evidence of some bona fide business being conducted at that website, the Respondent could easily have said so. It has not done so. In short, there is no evidence the Respondent might be able to claim a right or legitimate interest under one or more of the subparagraphs at para 4(c) of the Policy. Nor can the Panel see any other basis for finding that the Respondent has a right or legitimate interest in the Domain Name.

It was for the Respondent to put forward a plausible explanation for the choice and use of the Domain Name, and it has not done so. Asserting that that choice and use has been made by some third party whose identity is undisclosed but on whose instructions the Respondent claims to have been acting, is simply not good enough. It was the Respondent who registered the Domain Name, and in so doing the Respondent assumed all of the responsibilities of a registrant, including the responsibility to raise any right or legitimate interest in the event of the registration being challenged under the Policy. The Respondent has not attempted to discharge that responsibility, and accordingly the Panel concludes that the Respondent does not have any right or legitimate interest in the Domain Name.

D. Registered and Used in Bad Faith

The Panel also finds this part of the Complaint proved. The Panel’s reasons for that finding are as follows:

(i) The Respondent has chosen to register a domain name (the Domain Name) which is identical to the Complainant’s trademark.

(ii) The Respondent has no right or legitimate interest in the Domain Name.

(iii) The Complainant’s RHODIA mark is registered in numerous countries around the world. By way of example, the mark was registered in the United States of America with effect from January 20, 2001, and the mark is the subject of a Madrid Protocol registration under which the Complainant has been registered as proprietor since April 15, 1999. More importantly, the correspondence produced by the Complainant shows that its RHODIA mark has been registered in Japan, under No 2359294, in numerous international classes. The registration in Japan appears to date from at least May 2004, being one year before the Domain Name was registered by the Respondent.

(iv) The Respondent describes itself as a reseller of domain names. In those circumstances, the Panel infers that it would be well aware of the rights of trademark owners under the Policy, and would have done at least some basic checking before it registered the Domain Name. The Respondent is based in Fukuoka, Japan, and the first website to which the Domain Name resolved appears to have been in the Japanese language. In those circumstances, the Panel would have expected the Respondent to check the Japanese Trademark Register. Any such check would have disclosed the Complainant’s rights in the RHODIA mark.

(v) In the circumstances described in paragraphs (iii) and (iv) above, and in the absence of any claim from the Respondent that it was unaware of the Complainant and its mark, the Panel concludes that the Respondent knew of the Complainant and its RHODIA mark, when the Domain Name was registered in May 2005. That conclusion is reinforced by the specific reference to the Complainant in the pages from the website to which the Domain Name resolved in June of 2006.

(vi) The Panel rejects the Respondent’s explanation in its emails, that it was merely acting on the request of some undisclosed “registrant”. No details of the alleged third party registrant have been provided, and that party has not itself come forward with an explanation for its choice of the Domain Name and how it was intended to be used. On the material provided, the Panel entertains serious doubts about the existence of any such third party, but even if a third party “registrant” exists, the Respondent as the party named as registrant in the Registrar’s Whois information must be responsible for compliance with the Policy in all maters affecting the registration. If it acted on behalf of some undisclosed third party in registering the Domain Name, then, in the Panel’s view, that third party’s acts and intentions must be treated as the Respondent’s acts and intentions for the purposes of the application of the Policy.

The assumption by the Respondent of that sort of responsibility is consistent with Akiko Watanabe’s statement in the email dated March 28, 2006, that “the Domain Name is under our control by our Terms and Conditions”.

(vii) The Respondent’s professed inability to obtain instruction from the alleged third party registrant, is a factor indicating bad faith registration and use. Either no third party exists, or the Respondent has deliberately allowed itself to be used as a “front” for an undisclosed registrant who has elected to remain in the shadows. The Respondent’s failure to make any substantive response to the Complainant’s letter dated September 6, 2005, in which the Complainant put the Respondent on notice of the Complainant’s trademark rights, is also indicative of bad faith.

(viii) The Respondent has not filed any proper response to the claim. The email sent to the Center after the proceeding had commenced did not comply with the Rules. In particular, it did not contain any certificate that the information contained in it was to the best of the Respondent’s knowledge, complete and accurate (Rules, paragraph 5(b)(viii)).

(ix) The Panel rejects the Respondent’s explanation relating to the June 2006 website to which the Domain Name resolves. In essence, the Respondent appears to be saying that the linking of the Domain Name to this website was the work of the Registrar, and had nothing to do with the Respondent. As the Panel understands the Respondent’s email to the Center, the Respondent is saying that the Domain Name did indeed expire on May 29, 2006, and that it is the policy of this particular registrar to link expired domain names to portal sites such as that from which the Complainant has produced the pages which appear at Annex 11 to the Complaint. That seems to the Panel to be an improbable explanation, given the apparently commercial nature of this website (someone has presumably been paying for the commercial links on the site), and to the Complainant’s inability to register the Domain Name itself after May 29, 2006. Further, the Registrar would have presumably advised the Center immediately had the Domain Name status been “expired”, and if there were nothing preventing the Complainant from proceeding to register the Domain Name. In view of the fact that the Domain Name registration now appears to have been extended until May 29, 2007, and in the absence of any properly certified response, the Panel rejects the Respondent’s explanation for the linking of the Domain Name to this website.

(x) In the absence of any proper response, the Panel is entitled to draw such inferences as it sees fit. In this case, the Respondent is a reseller of domain names, and the likelihood is that it registered the Domain Name for the purpose of re-selling it at a profit. The Respondent was aware of the Complainant and its RHODIA trademark, and it must have considered that the most likely buyer would be the Complainant. In those circumstances, the Panel is prepared to infer that the Respondent (or any third party registrant whose actions and intentions must be considered to be those of the Respondent) acquired the Domain Name primarily for the purpose of selling it at a profit to the Complainant. That is of course an example of the kind of bad faith registration and use described at paragraph 4(b)(i) of the Policy. It is true that the Respondent did not make any approach to the Complainant to attempt to sell the Domain Name to the Complainant, but that is not necessary for a finding under paragraph 4(b)(i) of the Policy. The critical matter is the purpose of the domain name registrant at the time of registration, and the Panel is satisfied on the totality of the evidence, including the matters discussed at subparagraphs (i) to (x) above, that the Respondent probably had the bad faith purpose described in paragraph 4(b)(i). It is not uncommon for a party who has registered and used a domain name in bad faith in the manner contemplated by paragraph 4(b)(i) of the Policy, to wait for the Complainant to make the first approach.

For all of the foregoing reasons, the Panel finds that the Domain Name was registered and has been used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.

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Warwick Smith
Sole Panelist

Dated: September 8, 2006