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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PREPADOM v. Domain Drop S.A. (PREPADOM-COM-DOM)

Case No. D2006-0917

 

1. The Parties

The Complainant is PREPADOM of France, represented by Meralli Ryane, France.

The Respondent is Domain Drop S.A. (PREPADOM-COM-DOM) of Saint Kitts and Nevis.

 

2. The Domain Name and Registrar

The disputed domain name <prepadom.com> is registered with Capitoldomains, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2006. On July 20, 2006, the Center transmitted by email to Capitoldomains, LLC a request for registrar verification in connection with the domain name at issue. On July 21, 2006, Capitoldomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 27, 2006. The Center verified that the Complaint together with the Amendment to 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 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2006.

The Center appointed Keita Sato as the sole panelist in this matter on August 29, 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.

In accordance with paragraph 10(c) of the Rules for Uniform Domain Name Resolution Policy, the Administrative Panel extended the decision due date to September 20, 2006.

 

4. Factual Background

The Complainant is PREPADOM, French company SARL, settled in Paris since 2003. The Complainant is holder of the French trademark PREPADOM for classes 16, 35, 37, 39 including paper, cardboard and goods made from these materials not included other classes, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except for apparatus), plastic materials for packaging (not included other classes), printers’ type, printing blocks; and advertising, business management, business administration, office functions; and building construction, repair, installation services; and transport, packaging and storage of goods, travel arrangement; and education, providing of training, entertainment, sporting and cultural activities. Also the Complainant has a trademark registration PREPADOM for classes 41, 42, and 43 for publishing of books and reviews and instruction material, educational services printed material and instruction material, organization of conferences and meeting, educational services, coaching for homework, private lessons at home, and all services delivered at home to individuals, software, legal services. The registration number of this trademark under the French Law is 033257721. The Complainant has also registered the domain names <prepadom.fr> and <prepadom.org>.

The Respondent is Domain Drop S.A. (PREPADOM-COM-DOM) located in Charlestown, West Indies, Saint Kitts and Nevis. It registered the domain name <prepadom.com>, whose right was transferred from DOMIBOT (PREPADOM-COM-DOM) (hereinafter referred to as the “previous registrant”), located in Caracas, Venezuela.

 

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the domain name at issue <prepadom.com> is identical to its trademark which is registered in France. And the domain name at issue was registered immediately after expiration of the previous registration for <prepadom.com> held by the Complainant. The Complainant contends that it did not renew the previous registration for <prepadom.com> due to an error.

Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the domain name at issue, since the Respondent does not offer any educational service. The Respondent’s WebPages contains the following statement: “Domain Drop S.A. looks at expiring or previously registered domains using an automatic program. No people choose names at Domain Drop S.A.”.

Thirdly, the Complainant alleges that the Respondent registered and used the domain name at issue in bad faith. The Complainant contends that the domain name at issue was registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct. In the amendment to the Complaint, the Complainant alleges that the transfer made on July 21, 2006, is in the breach of paragraph 8(a) of the Policy and constitutes a typical case of cyber-flying. The Complainant also contends that the current registrant of the domain name, the Respondent, is not making a fair use of the domain name at issue as this was the case with the previous registrant. The Respondent does not offer any educational service. The Complainant contends that the Respondent’s purpose is the resale of the domain name <prepadom.com> at a high price either to the Complainant or to one of it’s competitors. In the meantime, the Complainant contends that the Respondent is diverting consumers of the Complainant and tarnishing the Complainant’s trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Procedural Matter

A preliminary issue for consideration by the Panel is whether the transfer of the domain name at issue amounts to a breach of paragraph 8(a) of the Policy. A related question is whether on balance this amounts to a case of cyber-flight for the purpose of these proceedings.

In the Complaint, the Complainant contends that the transfer of the domain name at issue from Domibot (previous registrant) to Domain Drop S.A. (current registrant) occurred on July 21, 2006, during the pending administrative proceeding, and is therefore in breach of paragraph 8(a) of the Policy. The Complainant also contends that this constitutes a typical case of cyber-flight, pointing out that the previous registrant, Domibot, is located in Venezuela, whereas the new registrant is located in Charlestown, New Kitts & Nevis, West Indies.

Paragraph 8(a) of the Policy provides in essence that a domain name registrant may not transfer the registration of a domain name to another holder during a pending administrative proceeding, and where this occurs the registrar reserves the right to cancel any such transfer. Individual registrars in exercising their discretion under this paragraph typically form a view on when precisely an administrative proceeding becomes “pending”.

Cyber-flying or cyber-flight means changing ownership of a domain name with intent to escape a current dispute. If such cyber-flight occurs during a pending administrative proceeding, the transfer of the domain name should generally be cancelled. See, e.g. British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683. Where found, cyber-flight may also be indicative of bad faith on the part of a respondent in UDRP proceedings.

Due to the operation of paragraph 3(xii) of the Rules, a respondent may receive notice of a proceeding before formal commencement. In the current dispute, the commencement date is July 28, 2006. It would appear both from the Complainant’s contentions and the registrar's verification response that the transfer of the disputed domain name occurred at some point either on or before July 21, 2006. It is therefore arguable that the transfer did not occur in breach of paragraph 8(a) of the Policy.

The Panel notes in passing that it is aware of several WIPO Panel decisions which have interpreted paragraph 8(a) of the Policy as applying from the initiation of the proceeding (that is to say, from the filing of the complaint) rather than from the formal commencement of the proceeding. (Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; Imperial Chemical Industries, PLC v. Oxford University, WIPO Case No. D2001-0292; Kabushiki Kaisha Isetan v. Stars Web International and Isetan, Inc., WIPO Case No. D2001-0732 and Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; Microsoft Corporation v. WDW Inc. and William Claude Dukenfield, WIPO Case No. D2002-0412).

Even if the Panel takes these views, it would still be difficult for the Panel to make a definitive finding on the issue for the following reasons.

The Complainant filed the Complaint with the Center on July 19, 2006. The Complainant also states that it sent a copy of the Complaint to the previous registrant of the disputed domain name on July 18, 2006, one day prior to filing. The registrar confirmed the Respondent, Domain Drop SA, as the registrant of the disputed domain name on July 20, 2006 and again on July 21, 2006. Although the transfer may very well have occurred after the filing of the Complaint on July 19, 2006, there is no concrete evidence that this occurred. The Complaint (Annex 1) includes evidence that DOMIBOT was the registrant of the disputed domain name on June 20, 2006, but as noted there is no evidence before the Panel of the actual date of transfer. So, it is conceivable on the available evidence that the actual transfer of the disputed domain name occurred at some point between July 20, 2006 and July 21, 2006.

In the absence of evidence regarding the registrar’s views on the issue, the circumstances and precise date of the transfer, the Panel is unable to make a definitive finding on the question of whether the transfer constitutes a breach of paragraph 8(a) of the Policy.

As regards the question of cyber-flight and its possible implications for bad faith which are discussed further below, although the evidence is not conclusive, the Panel notes on balance that cyber-flight would appear to be more likely than not. Although in the circumstances there is a slight possibility that the transfer occurred in genuine ignorance of the Complaint and before the filing date, a more plausible explanation would appear to be that the previous registrant, put on notice of the existence and likely filing of a Complaint by the Complainant prior to formal filing, elected to transfer the domain name to the current registrant in order to escape these proceedings.

B. Substantive Matters

As noted above, although the Center has taken reasonable efforts to bring the dispute to the Respondent’s attention and to enable the Respondent to be heard, there has been no Response. In these circumstances, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a response. This is not a simple “rubber stamping” procedure, however, as paragraph 15(a) of the Rules direct the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable. See, Sierra Health Styles LLC v. Modern Limited - Cayman Web Development, WIPO Case No. D2006-0020.

For the Complaint to succeed, the Panel must find the following elements under paragraph 4(a) of the Policy satisfied:

i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complaint 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.

The Panel will deal with each of these requirements in turn.

C. Identical or Confusingly Similar

First, there is no doubt that the domain name at issue is identical to the Complainant’s trademark followed by “.com”. As mentioned in the factual background section of this decision, the Complainant has a registered French trademark for PREPADOM. The sole difference between the domain name at issue and the Complainant’s trademark is the “.com” which is only a suffix of the domain name. The Panel takes the view that the suffix “.com” is immaterial when determining whether a domain name is identical or confusingly similar to a mark. See, Guinness United Distillers & Vintners Amsterdam B.V v. N/A & This Domain Is For Sale | Email Your Offers, WIPO Case No D2002-0178.

So, the Panel finds that the first element of the Policy is satisfied.

D. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name at issue.

It has been a consensus view in the WIPO UDRP Panel decisions (“WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1, “http://www.wipo.int/amc/en/domains/search/overview/index.html”) that once the complainant makes out an initial prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of proof to demonstrate rights or legitimate interests in the domain name shifts to the respondent. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests.

Under paragraph 4(c) of the Policy, the respondent may demonstrate its rights and interests to the disputed domain name by showing any of the following circumstances in particular but without limitation:

(i) Respondent’s use 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 before any notice to them of the dispute, or

(ii) Respondent (as individuals, businesses, or other organizations) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights, or

(iii) 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.

The Respondent did not come forward with any information that might indicate that any of the circumstances set for in paragraph 4(c) of the Policy are present, or any other circumstances that could indicate it has rights or legitimate interests in the domain name at issue.

The panel noted in Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383, that “the Panelists’ inferring factual or legal conclusions from complainants’ unsupported allegations coupled with no response are occasionally necessary (and appropriate), because matters involving a respondent’s motive, intent, purpose, and other subjective factors determinative under Paragraphs 4(a)(ii) and 4(a)(iii) will not always be susceptible of direct proof, at least without the discovery and cross-examination that are unavailable to a complainant or a panelist in proceedings under the Policy. A complainant must often prove such matters with a prima facie showing that, when unchallenged, a panelist can accept.”

Based on the foregoing, the Panel finds that the second element of the Policy is satisfied.

E. Registered and Used in Bad Faith

The registration of the domain name at issue was transferred from the previous registrant, DOMIBOT. So the Panel has to examine whether such transfer was in bad faith, and whether the use of the domain name at issue by the Respondent is in bad faith.

First, the Panel will examine whether the registration of the domain name at issue was in bad faith. While there is no clear evidence to show bad faith registration, the Panel believes there are several reasons where bad faith may be inferred. In this context, the cited decisions on “cyber-flight” gave us a hint for this case, since several cases clearly said that the cyber-flight itself is an indication of bad faith registration and use under 4(b) of the Policy.

“Cyber flying” is the term used to describe an attempt to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of a complaint. The Panel agrees with the conclusion of other UDRP panelists that this conduct is itself an indication of bad-faith registration and use under Paragraph 4(b) of the Policy. See Kirkbi AG v. Company Require / Karlina Konggidinata and Pool.com, Inc., WIPO Case No. D2004-0359; British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683.

Although there is no evidence to show that the previous registrant and the Respondent are the same person, the conduct of the Respondent is quite similar to that of the previous registrant. www.domaindropsa.com and www.domibot.com are quite similar. The web site linked to <domaindropsa.com> has the statement “Domain Drop S.A. looks at expiring or previously registered domains using an automatic program. No people choose names at Domain Drop S.A.”, and the web site linked to <domibot.com> has the statement “it’s kinda robot domain registration system and no humans involved to this”.

Without making a definitive finding whether a breach of paragraph 8(a) of the Policy has ocurred, the probability of cyber-flight as the motivating intent behind the transfer to the Respondent does support a conclusion of bad faith, as it is consistent with a pattern of evasion and non-responsiveness for which the Respondent has offered no explanation (See, Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case, No. D2006-0696). In the present case, as noted above, the Panel considers on balance that cyber-flight is more likely than not.

Therefore the Panel finds bad faith registration.

Second, the Panel will consider whether the use of the domain name at issue is in bad faith. The Respondent operates a web site linked to the domain name at issue. The web site is a portal with links to web sites that are commercially competing with the Complainant in educational services. This fact falls within the situation mentioned paragraph 4(b) (iv), which reads, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.

Therefore, the third element of paragraph 4(a) of the Policy is satisfied.

 

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 <prepadom.com> be transferred to the Complainant.

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Keita Sato
Sole Panelist

Date: October 9, 2006