WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Brigitte Poulin, Jean-Guy Poulin v. Ggot, Ltd.
Case No. D2010-0834
1. The Parties
The Complainants are Brigitte Poulin and Jean-Guy Poulin both of Hartford Connecticut, United States of America, represented by Lott & Friedland, PA, United States of America.
The Respondent is Ggot, Ltd. of Budapest, Hungary.
2. The Domain Name and Registrar
The disputed domain name <78-poulinracing.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2010. On May 25, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 25, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 18, 2010.
The Center appointed Nicholas Weston as the sole panelist in this matter on June 24, 2010. 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.
The language of this administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainants operate a business involving the promotion, marketing and merchandising of a racing car team under the name and trademark POULIN RACING in the United States (“USA”). The Complainants are the owners of two unregistered trademarks POULIN RACING and 78 POULIN RACING which they have used to identify their racing cars in the USA since 1990. They own the domain name <poulinracing.com> registered on March 31, 2009 and operate a website relating to its car racing business at that domain name. They previously owned the domain name <78poulinracing.com> and operated a website relating to their car racing business at that domain name from 1999. They also owned the domain name <78-poulinracing.com> (the “Disputed Domain Name”) and operated a website relating to their car racing business at that domain name from August 2000.
The Respondent registered the Disputed Domain Name <78-poulinracing.com> on March 30, 2009.
The Respondent uses the Disputed Domain Name for a “click-through” or “pay-per-click” (“PPC”) web page. PPC advertising is a marketing technique for directing traffic to a web page containing sponsored links or sponsored advertisements. In this case, when the Disputed Domain Name <78-poulinracing.com> is typed in, it redirects traffic to a PPC web page for pornography.
5. Parties' Contentions
A. The Complainants
The Complainants cite their unregistered trademarks via use since 1990 of the words POULIN RACING and 78 POULIN RACING in the promotion, marketing and merchandising of a car racing team that participates in NASCAR® stock-car racing which, the evidence indicates, is a class of motor vehicle racing that is widely known in the USA, as prima facie evidence of ownership.
The Complainants submit that the unregistered marks POULIN RACING and 78 POULIN RACING are distinctive and that their rights in these marks predate the Respondent's registration of the Disputed Domain Name <78-poulinracing.com>. They submit that the Disputed Domain Name is confusingly similar to their trademark, because the Disputed Domain Name incorporates in its entirety the POULIN RACING trademark, or alternatively the 78 POULIN RACING trademark, and that the similarity is not removed by the omission of a space between the words “poulin” and “racing” (citing Banca Intesa S. p.A v. Roshan Wickramaratna, WIPO Case No. D2006-0215).
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the POULIN RACING mark.
Finally, the Complainants allege that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, pursuant to the Policy, paragraphs 4(a)(iii) and 4(b) and the Rules, paragraph 3(b)(ix)(3). On the issue of registration, the Complainants contend that it was registered in bad faith because the Disputed Domain name “is derived from Complainants' family name and has no pornographic or explicit connotation” (citing Caledonia Motor Group Limited v. Amizon, WIPO Case No. D2001-0860). On the issue of use, the Complainants contend that “Respondent is using the disputed domain name to redirect Internet users to explicit adult pornographic material [and that by doing so] Respondent is exploiting Complainants' trademarks, and trading on the goodwill created by Complainants' trademarks, for its own financial gain”. In this case, when the Disputed Domain Name <78-poulinracing.com> is typed in, it resolves to a web page containing pornography and links to pornography.
The Respondent did not reply to the Complainants' contentions. However, the Complainants' evidence is that on April 10, 2010 (prior to the filing of the Complaint with the Center on May 24, 2010) the Respondent replied to the Complainants' cease and desist communication as follows: “My name is Paul Muranyi, I'm the current owner of this domain. I'm ready to sell it for you, for a reasonable price. Currently it makes about $80-$100 income monthly of the advertisements in the footer. Please make your offer for buying it back.”
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants have the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have produced sufficient evidence to demonstrate that they have unregistered trademark rights in the mark POULIN RACING in the United States. In light of the undisputed evidence provided by the Complainants, the Panel finds that the Complainants have established that the names POULIN RACING and 78 POULIN RACING have achieved secondary meaning or association with Complainants (see: Uitgerverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575; Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; Universal City Studios Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784). It is undisputed that the Complainants have been identifying their car racing business with the POULIN RACING and 78 POULIN RACING marks since 1998 and that their business is widely known and distinctive to a wide audience of those interested in NASCAR® stock-car racing. Also undisputed are the Complainants' claims to have used their personal name “Poulin” together with the word “racing” as a marketable commodity, for direct commercial purposes in marketing their own goods or services and this Panel finds that they do have what appears, prima facie, to be a sufficient reputation in the name to establish common law passing off which, other panels have found, can establish common law trademark rights (see: Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Dr. Michael Crichton v. In Stealth Mode, WIPO Case No. D2002-0874; Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540; Chinmoy Kumar Ghose v. ICDSoft. com and Maria Sliwa, WIPO Case No. D2003-0248; WIPO Overview of WIPO Panel Views on Selected UDRP Questions paragraph 1.6).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the POULIN RACING or 78 POULIN RACING trademarks, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainants' trademark 78 POULIN RACING containing (b) a “dash” between the number “78” and the words “poulin racing”, then followed by (c) the top level domain suffix “.com” all in one continuous domain name.
It is well-established that the top-level designation used as part of a domain name should be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name: “78 poulin racing”.
It is also well-established that where a domain name incorporates a complainant's well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, the “dash” between the number “78” and the words “poulin racing”: (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006 0033; CVS Pharmacy, Inc. and CVS Vanguard, Inc. v. gd, WIPO Case No. D2004-0113; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345).
This Panel finds that the omission of a space between the word “poulin” and the word “racing” does not serve to adequately distinguish the Disputed Domain Name which therefore remains confusingly similar to the registered trademark: (see: Banca Intesa S. p.A v. Roshan Wickramaratna, supra).
The Respondent's email to the Complainants indicates that it is using the Disputed Domain Name for commercial purposes and is deriving click-through revenue from advertising. In considering the elements of paragraph 4(a) of the Policy, the contents of a website - which is the direct manifestation of the potential uses of the domain name -are typically not relevant. In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainants' mark into thinking they are on their way to the Complainants' Website”. The Disputed Domain Name is therefore confusingly similar to the 78 POULIN RACING trademark.
Accordingly, the Panel finds that the Complainants have established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice of the dispute, the Respondent's use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the Complainants to establish the absence of the Respondent's rights or legitimate interest in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainants need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The evidential burden then shifts to the Respondent to rebut that prima facie case (see: World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1).
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the POULIN RACING or the 78 POULIN RACING marks. The Respondent's email to the Complainants neither confirms nor denies whether he is authorized or licensed to use the POULIN RACING mark and there is no evidence that the Respondent is commonly known by the Disputed Domain Name. The Respondent's name as reflected in the registrar's WhoIs database is Ggot Ltd, not POULIN RACING or 78 POULIN RACING. The issue is not whether the Respondent has any rights or legitimate interests in the trademark 78 POULIN RACING. Rather, the issue is whether the Respondent has any rights or legitimate interests in the Disputed Domain Name, for example by making the bona fide offering of a product or service called “78 POULIN RACING”.
The Complainants provided evidence (in the form of screen captures, Exhibit C) that typing in the Disputed Domain Name diverts traffic to a website with pornographic content and links. Pornography, click-through revenues, parked sites, aggregation or resale of domain names, and Internet revenue from advertising are none of them per se illegitimate under the Policy, but that fact alone does not give the Respondent the unqualified right to appropriate a trademark belonging to someone else, for such activities. The evidence is that typing in the Disputed Domain Name misleadingly directs Internet users to a webpage composed of PPC links and thereby attempts illegitimately to trade for commercial gain and with the purpose of capitalizing on the fame of the Complainants' mark 78 POULIN RACING. In MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205, for example, the panel found that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material.
The Respondent's email to the Complainants does not appear to allege the existence of any rights or legitimate interests as per paragraphs 4(c)(ii) or (iii) of the Policy. The Respondent neither contends that it is making a bona fide offering of goods or services, or that it is commonly known by the Disputed Domain Name, or alternatively, that it is making a legitimate noncommercial or fair use of the domain name.
While the linking of domain names to pornographic websites can constitute bona fide offerings of services for the purposes of paragraph 4(c)(i) (see: The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743) that decision turned on the lack of evidence to support that the respondent had heard of the complainant's trademark when it had adopted the disputed domain name for its own website. In Angus Sholto-Douglas, Kwandwe Private Game Reserve v. Sergey Fedorov, WIPO Case No. D2006-1184, the panel found that “the Respondent undoubtedly had knowledge” of the complainant's trademark, since the complainant had registered and used the disputed domain name whose registration the complainant had mistakenly allowed to lapse, and the respondent immediately hijacked the domain name. This case is sufficiently similar, in the absence of any evidence to the contrary, to form the same conclusion.
The Panel finds for the Complainants on the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the Complainants must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), 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, (relevantly):
i. you have 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 you have engaged in a pattern of such conduct; or
ii. you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iii. 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.”
The examples of bad faith registration and use in paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found; (see: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See: Match. com, LP v. Bill Zag and NWLAWS. ORG, WIPO Case No. D2004-0230).
The Respondent does not admit or deny actual knowledge of the Complainants' activities, trademark or its secondary meanings at the time of the registration. Rather, the Respondent appears to be indifferent to such rights and simply describes himself as the “current owner”, stating in his email of May 24, 2010: “My name is Paul Muranyi, I'm the current owner of this domain. I'm ready to sell it for you, for a reasonable price. Currently it makes about $80-$100 income monthly of the advertisements in the footer. Please make your offer for buying it back.” A simple Internet search would have revealed the Complainants' interest in the 78 POULIN RACING mark. There is no evidence that the Respondent had reasonable grounds to give the warranty under paragraph 3 of the GoDaddy Parked Page Service Agreement that “You have no knowledge of infringing upon or conflicting with the legal rights of a third party or a third party's trademark or trade name”. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder's] responsibility to determine whether your domain name registration infringes or violates someone else's rights”. The lack of any good faith attempt to ascertain whether or not he was registering and using someone else's trademark, may support a finding of bad faith: (see: Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141).
The Respondent's use of the Disputed Domain Name is apparently for domain monetization unconnected with any bona fide supply of goods or services by the Respondent. The PPC business model in this case, is that the Respondent passively collects click-through revenue generated solely from the Complainants' goodwill and Internet users' inaccurate guessing of the correct domain name associated with the Complainants' 78 POULIN RACING stock-car driving team, such guessing made harder in this case by virtue of the Complainants prior ownership and use of the Disputed Domain Name. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See: L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
In addition, the Respondent's inclusion of advertising links for pornography on the website hosted at the Disputed Domain Name potentially creates the false impression that the Complainants might have endorsed content of that nature. Regardless of whether Internet users would know that the Complainants and their trademarks are not connected with pornography, the Respondent has used the Complainants' trademarks to attract unwitting Internet users (see National Spiritual Assembly of the Bahá'ís v. Buy This Name, WIPO Case No. D2001-1302). Numerous panels have previously found that when a disputed domain name associates a distinctive trademark with pornography, such use provides additional evidence of bad faith (see: Ty Inc v. O. Z. Names, WIPO Case No. D2000-0370; Barry Diller v. Internetco Corp., WIPO Case No. D2000-1734; AltaVista Company v. Alt Pile Co., WIPO Case No. D2002-0933; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022).
Moreover, the Respondent's email confirms that it is not only directly profiting from the use of Complainants' marks, but also makes the suggestion that it will sell the Disputed Domain Name to the Complainants for valuable consideration in excess of its out-of-pocket costs. Both of these behaviours reinforce a finding of bad faith.
This Panel finds that the Respondent has taken the Complainants' trademark 78 POULIN RACING and incorporated it in the Disputed Domain Name without the Complainants' consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC web page containing pornography and links to pornography for commercial gain.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <78-poulinracing.com> be transferred to the Complainant, Brigitte Poulin, as requested in the Complaint.
Dated: July 8, 2010