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and Mediation Center
Banque Accord v. Micheal Glawe
Case No. D2006-0855
1. The Parties
The Complainant is Banque Accord, of Croix, France, represented by Cabinet Dreyfus & Associйs, France.
The Respondent is Micheal Glawe, of Oregon, United States of America.
2. The Domain Name and Registrar
The disputed domain name <oneyecoins.com> is registered with Melbourne
IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2006, by email a hardcopy of which was received by the Center on July 17, 2006. On July 7, 2006, the Center transmitted by email to the concerned registrar Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name in dispute. On July 10, 2006 Melbourne IT trading as Internet Names Worldwide 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. 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 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2006.
The Center appointed Christophe Imhoos as the sole panelist in this matter on August 23, 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 the meantime, by email dated July 26, 2006, someone named “Michael Glawe” advised the Center in the following terms:
“I received a FedEx package on 7/24/06 concerning the domain dame oneyecoins.com. I emailed Dreyfus on Feb 17, 2006 after receiving a registered letter concerning this matter. At that time I told this company that the person doing the Internet things and who had the domain name was not me. I have an identify theft problem that I have been fighting to get resolved since 2/10/06. My name (spelled wrong) was used along with my address but the phone number listed [phone] is not mine and has never been my phone number. I also emailed domaintechs@yahoo at that time telling them the Yahoo account was opened fraudulently and was not mine. I also emailed firstname.lastname@example.org reference letter HE12808567 at that time alerting them to someone opening websites and buying items on ebay using my name without my permission. I did not receive any email notification at oneye56@[email address] because it is not my account.
Currently, Report #060210009612 with the Lane County Sheriff’s Office in Eugene, Or. is prosecuting Raymond Land with identity theft and other charges. Detective C. Wilkerson [number] is the officer in charge.
I don’t know how to solve this problem when I have no access to the information about the domain name.
Any help would be appreciated.
mkglawe@[email address] is my correct email address”.
4. Factual Background
The Complainant introduces itself as a wholly-owned subsidiary of the group “Auchan”, specialized in the distribution of products and financial services which employs more than 950 persons in 8 countries all over the world and has to deal with 3.8 millions customers.
“Oney” was formerly known under the name “EGG”. On December 1, 2004, the Complainant took over the British bank on line EGG. On August 31, 2005, EGG was renamed “Oney.fr”. As a result, “Oney” constitutes an additional entity to the activities developed by the Complainant.
“Oney” makes use of three international credit-card (“carte verte Oney”, “carte mauve Oney”, “carte Oney-net”) being used all around the world.
The Complainant owns various ONEY trademarks around the world in the field of finance, cash back and loan (Annex 9 to the Complaint):
- Community trademark ONEY No. 004579561, filed on August 5, 2005, in classes 9, 35, 36, 38, 39, 41 and 42;
- French trademark ONEY No. 053356227, filed on April 28, 2005, in classes 9, 35, 39, 41 and 42 ;
- French trademark ONEY No. 053341580, filed on February 16, 2005, in classes 36 and 38;
- French trademark ONEY No. 053356228, filed on April 28, 2005, in classes 9, 35, 39, 41 and 42;
- French Trademark ONEY No. 053346084, filed on March 10, 2005, in classes 36 and 38;
- French trademark ONEY.FR : VOTRE CRЙDIT SUR LE NET No. 053380242, filed on September 15, 2005, in classes 9, 35, 36 and 38;
- French trademark ONEY.FR : LA CARTE DE PAIEMENT QUI FAIT AUSSI CRЙDIT No. 053379984 in classes 9, 35, 36 and 38;
- French trademark ONEY.FR : LE SPЙCIALISTE DU CRЙDIT SUR INTERNET No. 053379985, filed on August 15, 2005, in classes 9, 35, 36 and 38;
- International trademark ONEY No. 865742, filed on August 11, 2005, in classes 9, 36 and 38;
- International trademark ONEY No. 867251, filed on October 4, 2005, in classes 9, 35, 39, 41 and 42.
The Complainant owns and uses the domain names <oney.fr>, <carte-de-credit-oney.com>, <oneybank.com> and <oney-shopping.com> connected with the trademark ONEY (Annexes 5 and 10 to the Complaint).
When the existence of the disputed domain name came into its knowledge, the
Complainant sent a warning letter by registered letter and e-mail, on January
20, 2006 to the Respondent (Annex 7 to the Complaint), asking him to transfer
amicably the domain name <oneyecoins.com>. The Complainant received no
answer and sent a reminder by e-mail to the Respondent on February 13, 2006
(Annex 8). The Complainant never received any answer thereto.
5. Parties’ Contentions
The Complainant’s main arguments are the following.
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The domain name <oneyecoins.com> reproduces entirely the previous marks ONEY with the mere adjunction of the term “ecoins”. The practice of adding a prefix or suffix to a well-known trademark has been the subject of numerous WIPO UDRP Panel decisions. Whether, in these circumstances, the trademark and the disputed domain name are confusingly similar depends on many factors, including the relative distinctiveness of the trademark and the non-trademark elements of the domain name.
Numerous WIPO UDRP Panel decisions have recognized
that adding a generic word, and more particularly adding a prefix or a suffix
to a well-known trademark is insufficient to give any distinctiveness to the
domain name in dispute (Star Systems, Inc. v. JIT Limited, WIPO
Case No. D2006-0180).
The addition of the word “ecoins” in the
domain name does not distinguish the use of the trademark ONEY from the association
with the Complainant, in the consumer’s mind. More particularly, the fact
that the disputed domain name includes the word “ecoins” does not
avoid the strong similarity between the signs in conflict since, on the one
hand the relevant word “oney” is identical, and on the other hand
the inclusion of the word “ecoins” in the disputed domain name is
not an obstacle to the conclusion that the signs in conflict are strongly similar
(Sunterra Centralized Services Company v. Sunterra Europe, Travel Sunterra
S.L.L., WIPO Case No. D2004-0837).
In addition, it is well established that the mere
adjunction of the gTLD “.com” is not a distinguishing feature and
do not change the likelihood of confusion. It has been held in numerous decisions
that the addition of the domain name indication does not remove the likelihood
of confusion (e. g. Gamefly, Inc. v. James Martin, WIPO
Case No. D2006-0236).
As a result, it clearly appears that the domain name <oneyecoins.com> is confusingly similar to the numerous trademarks registered by the Complainant, and implies a high risk of confusion, as a consumer may think that this domain directly refers to the Complainants’ services.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant contends that the Respondent is not affiliated with the Complainant in any way, which has not authorized the Respondent to use and register its trademarks, or to seek the registration of any domain name incorporating said marks.
Furthermore, the Respondent has no prior rights or legitimate interest in the domain name. The registration of several ONEY trademarks and of the various domain names owned by the Complainant preceded the registration of the domain name <oneyecoins.com>.
Similarly, the Respondent is not known under the name “oney”, or “oneyecoins” or any similar term.
Finally, the Respondent is not making any legitimate non-commercial or fair use of the domain names, as the domain names in dispute directs to a search engine proposing sponsored links in different products and services and among others to financial services, games, travel and computers (Annex 14 to the Complaint). Financial services are precisely the business of the Complainant.
The links to competitors of the Complainant, with the consequential tarnishing
of the Complainant’s trademark, show that the Respondent is trading, for
commercial gain, on the goodwill and reputation of the Complainant’s trademark
and thereby unfairly attracting to its own business and activities the goodwill
of the Complainant. The linking to competitive third-party websites shows that
the Respondent is well aware of Complainant as well as of it products and activities,
and, instead of making a bona fide use of the domain name, rather intends
to have a free ride on the fame and goodwill of Complainant and its trademarks.
(Wilmington Trust Company v. Domaincar, WIPO
Case No. D2006-0045).
(iii) The domain name was registered and is being used in bad faith.
The Complainant contends that it is obvious that the Respondent knew or must
have known the trademark ONEY at the time he registered the domain names. It
seems quite difficult to sustain that the Respondent was not aware of the existence
of the Complainant at the time it registered the domain name as the very precise
combination of the words “oney” and “ecoins” clearly
indicates the Respondent had the Complainant’s trademarks in mind while
registering the domain name in dispute (in the same way see Accor v. CampsActionNetwork,
WIPO Case No. D2005-1220).
The Respondent, by registering a domain corresponding to a famous name he seems
not to ignore, intentionally attempted to attract, for commercial gain, Internet
users by creating a likelihood of confusion with the Complainant’s marks.
This conduct constitutes evidence of bad faith use, since the Respondent is
trying to profit from the Complainant’s trademarks reputation, by increasing
the traffic on its website through the mere reproduction of somebody else’s
trademark, this constitutes obvious bad faith use of the domain name in dispute
(Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly”
v. Patrick Vanderhors, WIPO Case No. D2005-0636).
Furthermore it has been previously established that bad faith may be present
where a domain name “is so obviously connected with such a well-known
product that its very use by someone with no connection with the product suggests
opportunistic bad faith” (Sanofi-aventis v. Nevis Domains LLC,
WIPO Case No. D2006-0303). Here, the word
“ecoins” contains the term “coins” which is obviously
connected to the field of financial activities.
The use of the trademark ONEY with the addition of the term “ecoins” suggests that Respondent is deliberately trying to free ride on the goodwill of the Complainant. This leads the Complainant to conclude that the domain name was registered and is being used in bad faith. As provided previously, the domain names in dispute directs to a search engine proposing sponsored links in different products and services and among others to financial services (Annex 14 to the Complaint). Thus, the Respondent is trading, for commercial gain, on the goodwill and reputation of the Complainant’s trademark.
In addition, the Respondent did not answer the warning
letter and any of Complainant’s emails. This behavior is an element of
the bad faith of the Respondent. It is also possible that the given addresses
were false. This kind of behavior has been considered as a clear absence of
interest of the Respondent in proving the existence of a fair or legitimate
interest on the Domain Name. This conduct, the Complainant contends, confirms
the bad faith of the Respondent (Banque Transatlantique S.A. v. DOTSCOPE,
WIPO Case No. D2004-1100).
The Respondent did not reply to the Complainant’s contentions.
An email communication was received by the Center
on July 26, 2006, from one “Michael Glawe”, see quote under “Procedural
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to paragraph 4(a) of the Policy.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in the trademark ONEY with numerous registrations for such a name (Annexes 9 to the Complaint).
The Complainant’s trademark ONEY is obviously confusingly similar to the domain name <oneyecoins.com>. As rightly pointed out by the Complainant and the Panel decision precedents referred to in its Complaint, the mere adjunction of the word “ecoins” does not affect that finding.
For the above reasons, the Panel finds that the disputed domain is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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, in not responding to the Complaint, has failed to invoke any
of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of
the Policy, any rights to and/or legitimate interests in the domain name in
dispute. This entitles the Panel to draw any such inferences from such default
as it considers appropriate pursuant to paragraph 14 (b) of the Rules (see e.g.
Talk City, Inc. v. Michael Robertson, WIPO
Case No. D2000-0009 or Isabelle Adjani .v. Second Orbit Communications,
Inc., WIPO Case No. D2000-0867).
In addition the email communication from “Michael Glawe” dated July 26, 2006 (see Procedural History) does not suggest the existence of any rights or legitimate interests in the disputed domain name. On the contrary, the assertions regarding identity theft made in the email, although unsupported by evidence, are in the absence of any formal response a strong indication of the absence of such rights or legitimate interest.
The Complainant should nevertheless make out an initial prima facie
case that the Respondent lacks rights or legitimate interests (see Croatia
Airlines d.d. v. Modern Empire Internet Ltd., WIPO
Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO
Case No. D2004-0110).
The Complainant has not granted any license or otherwise permitting the Respondent to use such a trademark or to apply for any domain name incorporating the said trademark. Moreover, the Respondent is not known by the domain name at stake.
Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the disputed domain names.
Furthermore, the Complainant in its Complaint, has submitted a prima facie case that the domain names in dispute directs to a search engine proposing sponsored links in different products and services and among others to financial services, games, travel and computers (Annex 14 to the Complaint) which is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive
list of circumstances that evidence registration and use of a domain name in
bad faith. Any one of the following behaviors is sufficient to support a finding
of bad faith:
(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) 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
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the domain name in issue.
Nevertheless, the Panel still has the responsibility of determining which of
the Complainant’s assertions are established as facts, and whether the
conclusions asserted by the Complainant can be drawn from the established facts
(see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO
Case No. D2000-0944).
As pointed out by the Complainant in its Complaint, the Respondent could not ignore the Complainant’s trademark registrations at the time it set up the domain names in dispute. Bad faith registration is established in the opinion of the Panelist for the reasons indicated by the Complainant, as mentioned above.
The Panelist can also follow the Complainant’s submission that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark.
Likewise, the Panel considers that the Complainant has made a prima facie case that the Respondent is trading, for commercial gain, on the goodwill and reputation of the Complainant’s trademark when directing the domain name in dispute to a search engine proposing sponsored links in different products and services and among others to financial services (Annex 14 to the Complaint).
Such conduct, in the Panelist’s view, has in the circumstances to be considered as bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
Finally, the likelihood of bad faith is reinforced by the email dated July
26, 2006 received by the Center quoted above from which it may be understood
in the absence of any evidence to the contrary or any formal response that <oneyecoins.com>
is part of an unlawful scheme put in place by party allegedly unrelated to the
individual “Michael Glawe”.
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 <oneyecoins.com> be transferred to the Complainant.
Dated: September 6, 2006