A.Preliminary Matters
Procedural aspect - deficient Response
The Response submitted by Respondent is formally deficient.
The Panel notes that the hardcopy Response, which differs from the one filed through the online platform, is not in compliance with paragraph 5(b)(viii) of the Rules for UDRP that provides that a response must conclude with the following statement followed by the signature of the Respondent or its authorized representative:
«Respondent certifies that the information contained in this Response is to the best of Respondent’s knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.»
There are also other differences between the two versions such as: the lack of the indication of the Panel type, the chosen mean of communication and the confirmation that a copy of the response was sent to the Complainant.
On the contrary, the Response filed on the online platform contains all the above indications and certifications.
After comparing the two versions, it seems to the Panel that Respondent, instead of printing, signing and then filing as an hard copy the Response version that was filed trough the online platform, rewrote, on its own headpaper, only the part which in the electronic version appears under the heading Factual and Legal Grounds.
The decision as to whether these deficiencies shall lead to the Panel’s disregard of the Response, is left to the Panel’s sole discretion.
Since there is no provision regulating the consequences for responses that do not meet the formal requirements comparable to paragraph 4(b) of the UDRP Rules for complaints. Whether and under what conditions responses are to be taken into account if they do not satisfy the formal requirements of paragraph 5 of the UDRP Rules has been determined differently by different panels. The majority of the UDRP panelists assume that they are entitled at their discretion to determine whether to consider responses which are formally incorrect (Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591 - <younggenius.com>).
In addition, this Panel, considers that under paragraph 10(b) of the Rules, the Panel must ensure that the parties are treated with fairness and equality, and the Panel has the power, under paragraph 10(c) and (d) of the Rules, to extend time periods and to determine the admissibility, relevance and weight, etc. of evidence filed. In this regard, this Panel finds that it would be appropriate to give the Respondent an opportunity to remedy the deficiencies taking into consideration that the Complainant has an opportunity to correct its complaint if it is filed with deficiencies. (See paragraph 4(b) of the Rules for UDRP).
The Panel considers that the deficiencies are of a purely formal character and are not material to the substantive issues to be resolved in these proceedings. Moreover, as the decision in this case would have been the same had the Panel considered the uncertified copy, in the interests of expediency, this Panel considers it unnecessary to give the Respondent an opportunity to remedy the shortcoming and will commence the proceedings allowing the deficient Response.
Supplemental filings
Given the proceeding’s aim of an expeditious settlement of disputes, the UDRP does not provide the parties with any right to reply, unless the panel requests, in its sole discretion, further statements or documents from either of the parties pursuant to paragraph 12 of the UDRP Rules.
Opinions differ as to whether and under what conditions the Panel can take into account unsollicited additional submissions. Despite the wording of paragraph 12 of the UDRP Rules, “the Panel may request”, the majority of the panels refer to the general requirement of procedural fairness and assume that unrequested submissions by the complainant can be taken into account by the panel, depending on the circumstances, if the additional submission concerns questions that were not known before the filing of the complaint or if objections have been raised by the respondent that were not foreseeable when the complaint was filed.
In this case, Complainant does not point to any exceptional circumstances necessitating further submissions, nor does the Reply itself disclose any new facts not available at the time the Complaint was submitted. Instead, Complainant appears to have submitted the Reply to provide argument rebutting the assertions in Respondent’s Response. Such a Reply is not permitted by the Rules and the Panel elects not to accept the Reply filed by Complainants and thus has not relied on it in reaching this decision (See Universal City Studios, inc. v. GA.B. Enterprises, WIPO Case No. D2000-0416 – <fieldofdreams.com>).
Discussion and findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Paragraph 4(a) of the Policy lists three elements that Complainant must prove to merit a finding that the domain name registered by the Respondent be transferred to the Complainant:
1) the domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
2) the 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.
A. Identical or Confusingly Similar
Complainant has established that it has prior rights in the trademark BACCARAT.
This Panel agrees with the Complainant’s thesis and previous decisions, which affirmed that Adding “COM” to Complainant's trademark is not sufficient to distinguish the domain name from the trademark owned by the Complainant.
In this sense:
- WIPO Case No. D2000-1160 AltaVista Company v. O.F.E.Z. et al., altavistacom.com : The addition of "com" to Complainant’s mark in the <altavistacom.com> domain name also is confusingly similar to the ALTAVISTA mark, as it fully incorporates Complainant’s mark and is a common typing error users make when searching the Internet.
- WIPO Case No. D2003-0516 PHE, Inc. v. Bill McCall <adamevecom.com>: Respondent’s domain name <adamevecom.com> is virtually identical to Complainant’s mark but for the repetition of the top-level domain name ".com". This is classic "typo-squatting", capitalizing on user error when seeking a well-known site. This type of cybersquatting has been declared confusingly similar many times in previous National Arbitration Forum cases, as well as previous WIPO cases.
- WIPO Case No. D2007-0955, Credit Industriel et Commercial S.A v. Maison Tropicale SA, <filbanquecom.com>: The adding (…) of the suffix “com” in the domain name <filbanquecom.com> cannot be a factor of differentiation.
This Panel therefore finds that the first requirement of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
a) that before any notice to the respondent of the dispute, he or she used or made 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;
b) that the respondent is commonly known by the domain name, even if he or she has not acquired any trademark rights; or
c) that the respondent is making a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Respondent has no connection or affiliation with Complainant, which has not licensed or otherwise authorised Respondent to use or apply for any domain name incorporating Complainant’s trademark. Respondent does not appear to make any legitimate use of the domain name for non-commercial activities. On the contrary, it appears that Respondent’s used the disputed domain name to direct consumers to a presumed Pay Per Click (PPC) parking page suggesting general links to websites that offered goods and/or services of different nature. Respondent does not appear to have been commonly known by the domain name.
Respondent has not shown any facts or elements to justify prior rights and/or legitimate interests in the disputed domain name.
Respondent has only alleged that the registration of the disputed domain name was part of a plan to build networks of domain names around particular themes and that the theme of these domain names was 'com' - each domain name ending in 'com'. Respondent claimed that it has over 350 similar domain names across many TLD's. The theme of these domain names is related to COMmerce.
In this regard the Panel notes that Respondent, in order to show its claim, attached to its Response several printouts of WhoIs pages showing that AZLO Ltd was the holder of the domain names: lotterycom.co.uk, casinoscom.eu, lottocom.eu, gamblercom.com, bragcom.com and bingocom.eu.
However, Respondent did not provide any elements to demonstrate, as requested by the Policy, that it used or made preparations to use the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services.
In fact the Policy requires the Respondent to show, before any notice to him of the dispute, its 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.
It is the Panel’s view that the mere proof of the registration of several domain names ending in the same way as the disputed domain name, i.e. with “com” as the last three letters, does not demonstrate any 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
Accordingly, the Panel finds that Complainant has satisfied the burden of proof with respect to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that the holder has registered or has 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 holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the holder 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 holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.
Accordingly, for a Complainant to succeed, the Panel must be satisfied that the domain name has been registered and is being used in bad faith.
This Panel considers that Respondent’s use of a slight variation of Complainant’s trademark can be regarded as typosquatting. The Panel agrees with Complainant’s view that typosquatting itself is inference of bad faith.
Besides, considering the fame of Complainant’s trademarks, the Panel finds that there are good reasons to believe that Respondent had actual knowledge of Complainant’s trademark when it registered the disputed domain name. The Panel, in accordance with previous decisions issued under the UDRP, is of the opinion that actual knowledge of Complainant’s trademark and activities at the time of the registration of the disputed domain name may be considered an inference of bad faith (See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil WIPO Case No. D2000-1409. “It is inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant. The Respondent was not authorized by the Complainant to use neither its mark nor the disputed domain name”.
It is the Panel’s view that Respondent’s assertions that it registers domain names automatically and that when registering the domain names baccaratcom.com, baccaratcom.co.uk and baccaratshop.co.uk it was unaware of the 'BACCARAT' trademark held by the complainant, do not prove that these registrations were done in good faith.
In fact, as affirmed by the Panel in Modern Times Group (MTG) AB v. Stefan Häge, Kriströms Advokatbyrå AB WIPO Case No. DTV2000-0004 (domain name everyday.tv), “In these days when "cybersquatting" has become an important issue it falls naturally to assume that a purchaser of a domain name takes adequate actions in order to avoid a violation of another persons trademark rights” and “One must assume that a company that decides to register a domain name with the intention of making real use of the domain name in its business activities on the Internet must have checked if the domain name in question is available for registration in the gTLD’s at least. If there are competitors that use a similar domain name or if the domain name is registered in other TLD, it is reasonable to take precautions in order to avoid confusion or trademark infringement, at least if there is a bona fide intention to offer goods and services under the domain name”
It is the Panel’s opinion that the above sentence, affirming that «it is reasonable to take precautions in order to avoid confusion or trademark infringement, at least if there is a bona fide intention to offer goods and services under the domain name», is even more true when considering Respondent’s practice of registering hundreds of domain names automatically.
Finally, as regards Respondent’s use of the Domain Name, it appears that Respondent’s website was used for a parking site with commercial ads and sponsored links redirecting to websites offering goods and services of various types. By so deflecting Internet users, Respondent has shown bad faith registration and use of the Domain Name that clearly falls within the example given in paragraph 4(b)(iv) of the Policy.
Considering the foregoing, the Panel concludes that Respondent registered and is using the Domain Name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy are satisfied.
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