The Dream Merchant Company Kft. and
Créations Méandres Inc. v. Richard Mandanice d/b/a Domain Strategy Inc.
Claim Number: FA0212000137097
PARTIES
Complainant
is The Dream Merchant Company Kft. and Créations Méandres Inc., Budapest, HUNGARY (“Complainant”)
represented by David Kelly,
of Finnegan Henderson Farabow
Garrett & Dunner L.L.P.
Respondent is Richard Mandanice d/b/a Domain Strategy Inc., Bury, CANADA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <cirquedusoliel.com>,
registered with OnlineNIC.
PANEL
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 16, 2002; the Forum received a hard copy of the
Complaint on December 17, 2002.
On
December 17, 2002, OnlineNIC confirmed by e-mail to the Forum that the domain
name <cirquedusoliel.com> is
registered with OnlineNIC and that Respondent is the current registrant of the
name. OnlineNIC has verified that
Respondent is bound by the OnlineNIC registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
December 18, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of January 7,
2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@cirquedusoliel.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
January 15, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s submission makes the
following assertions:
1.
Respondent’s
<cirquedusoliel.com> domain name is confusingly similar to
Complainant’s CIRQUE DU SOLEIL registered mark.
2.
Respondent does not have any rights or legitimate interests in the <cirquedusoliel.com> domain name.
3.
Respondent registered and uses the <cirquedusoliel.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, The Dream Merchant Co., was
founded in 1984 in Quebec, Canada by a French Canadian and visionary
entertainer who orchestrated the “marriage of cultures and artistic and
acrobatic disciplines” that has become the hallmark of Cirque du Soleil’s
innovative theatrical entertainment performances. Complainant’s Cirque du Soleil production has been continuously
performed in Canada, Respondent’s place of domicile, under the CIRQUE DU SOLEIL
mark since 1984, and is based in Montreal, Canada.
Complainant is the holder of numerous
trademarks that incorporate the CIRQUE DU SOLEIL mark, including the following
Canadian registrations listed without limitation: Reg. No. TMA418918 issued on
October 29, 1993; and Reg. No. TMA 410234 issued March 26, 1993.
Since its 1984 inception, Complainant has
produced and presented theatrical entertainment under the trade name and
trademark CIRQUE DU SOLEIL in over 130 cities on three continents. Nearly 33,000,000 spectators have seen
Complainant’s live performances, and by 2001, almost 20,000,000 people in the
United States alone had been exposed to Complainant’s production. In 2001, Complainant’s United States’
revenues were more than $178,000,000.
Having been widely promoted among members
of the general consuming public, the CIRQUE DU SOLEIL mark and name symbolize
significant goodwill and secondary source identification for Complainant.
Respondent registered the <cirquedusoliel.com> domain name on January 13, 2002. Complainant’s investigation into
Respondent’s use of the disputed domain name reveals that <cirquedusoliel.com> resolves to a pornographic website entitled
“Tina’s Free Live Cam” located at <internetcam.net>. Internet users who attempt to exit the
aforementioned website are subjected to a barrage of additional browser windows
and pop-up advertisements opening sequentially to pornographic and casino websites. Complainant’s examination of Respondent’s
use of the disputed domain name indicates that Respondent has subsequently
ceased using the domain name in connection with any purpose.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2)
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.
Complainant has established rights in the
CIRQUE DU SOLEIL mark by registering the mark with various international
trademark authorities, and continually using the mark in connection with its
offering of live entertainment services and related goods.
Respondent’s <cirquedusoliel.com> domain
name is confusingly similar to Complainant’s CIRQUE DU SOLEIL mark. Respondent’s transposition of two adjacent
letters (“e” and “i”) does not distinguish the domain name from Complainant’s
mark. Common typographical errors
incorporated into famous marks fail to overcome a Policy ¶ 4(a)(i)
analysis. See Google Inc. v. Jon G.,
FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be
confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition
of two letters does not create a distinct mark capable of overcoming a claim of
confusing similarity, as the result reflects a very probable typographical
error”); see also Pier 1 Imp., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that
the domain name <peir1.com> is confusingly similar to Complainant's PIER
1 mark).
Further, because
top-level domains are a required feature for domain name registrants, their
presence is inconsequential when determining confusing similarity or identicality
under the Policy. See Pomellato
S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the generic top-level domain (“gTLD”) “.com” after
the name POMELLATO is not relevant).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Complainant has submitted a prima
facie case fulfilling the requisite provisions enunciated under Policy ¶¶
4(a)(i) – (iii). Because Respondent has
failed to respond, all of Complainant’s inferences will be accepted as true
unless clearly contradicted by the evidence.
Further, Respondent has failed to establish any circumstances that would
demonstrate its rights or legitimate interests in the domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also Desotec N.V.
v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing
to respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence).
Respondent is currently not using the
disputed domain name, nor has it demonstrated its intent to use the subject
domain name in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i).
Additionally, Complainant’s uncontested documentation of Respondent’s
use of the <cirquedusoliel.com> domain name
reveals that Respondent has previously used the infringing domain name as a
gateway to pornographic material and websites. Bona fide use does not exist
when the intent of a respondent is the deliberate infringement of a
complainant’s rights. See Big
Dog Holdings, Inc. v. Day,
FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when
Respondent was diverting consumers to its own website by using Complainant’s
trademarks); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D.
Mass. 2002) (finding that, because Respondent's sole purpose in selecting the
domain names was to cause confusion with Complainant's website and marks, its
use of the names was not in connection with the offering of goods or services
or any other fair use).
No evidence suggests that Respondent is commonly
known by the <cirquedusoliel.com> domain
name. Because Respondent’s activities
resemble typosquatting, where a respondent seeks to benefit opportunistically
by registering a variation of a famous mark, there is a presumption that
Respondent does not have rights in the domain name under Policy ¶
4(c)(ii). Additionally, Respondent is
not licensed or authorized to make use of Complainant’s CIRQUE DU SOLEIL mark,
or any variation thereof. See Valigene
Corp. v. MIC, FA 94860 (Nat. Arb. Forum Aug. 1, 2000) (finding no rights or
legitimate interest in the non-use of a domain name that was a misspelling of a
famous mark); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
As stated, Respondent initially used the disputed domain
name as a link to a commercial website.
Complainant’s unrefuted evidence also indicates that Respondent’s
infringing domain name and corresponding website host numerous advertisements
from which Respondent presumably receives a commission, or some other form of
compensation. Therefore, Respondent’s
past use of the <cirquedusoliel.com> domain name reveals that
Respondent is not making a legitimate noncommercial or fair use of the domain
name without intent for commercial gain as articulated in Policy ¶
4(c)(iii). See Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic site is not a legitimate or
fair use).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent’s bad faith registration and
use of the disputed domain name is enunciated by Policy ¶ 4(b)(iv). Specifically, Respondent initially used <cirquedusoliel.com> for commercial gain, to divert Internet users
to pornographic and casino-related websites and advertisements. Respondent incorporated a common
typographical error into Complainant’s mark, thus creating a likelihood of
confusion with Complainant and its CIRQUE DU SOLEIL mark as to the source,
sponsorship, affiliation and endorsement of Respondent’s website and
advertisements. Respondent’s infringing
activity not only monetarily benefits Respondent, but concurrently tarnishes
the goodwill established in Complainant’s mark. Therefore, Respondent’s registration and use of the domain name
constitutes bad faith under the Policy.
See Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of
another's well-known mark to provide a link to a pornographic site is evidence
of bad faith registration and use); see also G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <cirquedusoliel.com>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: January 23, 2003
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