Decisión del Panel Administrativo nº D2013-0874 of WIPO Arbitration and Mediation Center, August 22, 2013 (case Opera National de Paris v. Vertical Axis Inc.)
| Resolution Date | August 22, 2013 |
| Issuing Organization | WIPO Arbitration and Mediation Center |
| Decision | Transfer with dissenting opinion |
| Dominio | Generic Domains |
The Complainant is Opera National de Paris of Paris, France, represented by Cabinet Santarelli and Ordipat, France.
The Respondent is Vertical Axis Inc. of Christ Church, Barbados, represented by ESQwire.com, P.C., United States of America.
The disputed domain names [operaparis.com] and [parisopera.com] are registered with Fabulous.com Pty Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2013. On May 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 20, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 27, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 28, 2013. In response to a further notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 30, 2013.
The Center verified that the Complaint together with the amended Complaints 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 amended Complaints, and the proceedings commenced June 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for the Response was June 23, 2013. The Response was filed with the Center on June 23, 2013.
The Center appointed Andrea Mondini, Christian-André Le Stanc and The Hon Neil Brown Q.C. as panelists in this matter on July 25, 2013. The Panel finds that it was properly constituted. Each member of 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.
On August 8, 2013, the Panel requested the Center to inform the parties that the decision due date had been extended to August 22, 2013.
The Complainant is Opera National de Paris, a French Public Utility Company managing the Opéra Garnier and the Opéra Bastille in Paris, France. The Complainant inter alia owns the following registered trademarks:
- OPERA DE PARIS, French word trademark, filed under the number 04 3 329 411 on December 13, 2004;
- OPERA NATIONAL DE PARIS, French device trademark, filed under the number 94 538 657 on October 4, 1994;
- OPERA NATIONAL DE PARIS, device trademark, international registration, filed under the number 814 215 on August 19, 2003, designating Switzerland, Liechtenstein, Monaco and the Russian Federation;
- OPERA NATIONAL DE PARIS, device trademark, community trademark registration number 003320041, filed on August 20, 2003.
The Disputed Domain Name [operaparis.com] was registered on June 10, 2006 and the Disputed Domain Name [parisopera.com] was registered on May 19, 2004. Both disputed domain names shall be referred to as the Disputed Domain Names hereinafter.
The Respondent is Vertical Axis, Inc., a company with its seat in Barbados.
The Complainant contends:
- that Opera National de Paris is a French Public Utility Company, managing the Opéra Garnier and the Opéra Bastille in Paris, France creating and hosting shows in Paris, and touring in France and throughout the world with its ballet company;
- that OPERA NATIONAL DE PARIS is known worldwide in the arts sector;
- that the Complainant owns a registered trademark for the word trademark OPERA DE PARIS in France and registrations of the trademark OPERA NATIONAL DE PARIS in France and other countries;
- that both Disputed Domain Names reproduce the two distinctive elements of the trademark OPERA DE PARIS without the preposition “de”;
- that the absence of the preposition “de” is not sufficient to diminish confusing similarity, since both elements obviously designate the Paris Opera;
- that its website is hosted on the domain name [operadeparis.fr] and that it is the registrant of numerous other domain names, such as [operaparis.info] or [operaparis.net] etc.;
- that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, since no license or authorization has been given to the Respondent to use the OPERA DE PARIS trademark;
- that both Disputed Domain Names resolve to websites that show sponsored links relating to the display of various links to competing third party websites;
- that by using the Disputed Domain Names, the Respondent intentionally tries to attract Internet users by creating a likelihood of confusion with the Complainant’s marks and thereby generating income;
- that the Respondent was aware of the existence of the different OPERA DE PARIS trademarks, since the websites to which the Disputed Domain Names resolve contain explicit links to websites proposing the purchase of tickets for the shows hosted by the Complainant’s opera houses;
- that the Respondent obtains a financial gain every time an Internet user inadvertedly accesses its websites and activates any of the sponsored links;
- that the Respondent was aware of the existence of the Complainant’s OPERA DE PARIS family of marks because its use of the Disputed Domain Names also points to the Complainant’s opera houses;
- that therefore the Disputed Domain Names were registered and are being used in bad faith.
The Respondent contends:
- that the Disputed Domain Names were registered on May 19, 2004 and June 10, 2006, i.e. nine and seven years ago;
- that the Respondent has registered over 100 descriptive domain names incorporating the terms “Paris” or “opera”, such as [musicopera.com] or [canadianopera.com] etc.;
- that the Respondent did not have the Complainant’s trademarks in mind when it registered the Disputed Domain Names and did not intend to sell them to Complainant or to disrupt the latter’s business;
- that the Respondent has registered thousands of generic dictionary common word domain names;
- that the Respondent has used the Disputed Domain Names to display pay-per-click (“PPC”) advertising links related to topics of general interest;
- that the Complainant should be barred by the doctrine of laches because it waited over nine years to initiate the proceedings;
- that the Complainant has brought a claim against another party in 2011 but took no action against Respondent;
- that the doctrine of laches should be considered in evaluating all claims under the UDRP;
- that the doctrine of laches as applied in The New York Times Company v. Name Administration, Inc., NAF Claim No. 1349045 should also be applied in the present case;
- that the Complainant was likely aware of the Disputed Domain Names before the Respondent acquired them, particularly demonstrating that laches is appropriate;
- that the Complainant’s trademarks are neither identical nor confusingly similar to the Disputed Domain Names;
- that under the UDRP very small differences are sufficient to avoid a finding of confusing similarity;
- that the Disputed Domain Names are merely generic English words that the public uses to refer to “Opera de Paris” or “Opera National de Paris” and for which no party has exclusive rights to use;
- that the public understands that a domain name referencing the Opera National de Paris with the English words “Paris Opera” may not be the official entity and that [parisopera.com] is not the same as “Opera De Paris” or “Opera National De Paris”;
- that the Complainant’s trademarks are merely descriptive of the Complainant’s goods and services and are generic terms because they identify the very genus or category of goods and services;
- that generic marks are entirely incapable of acquiring secondary meaning and thus cannot provide common law trademark rights under the Policy;
- that the Disputed Domain Names are part of the public domain;
- that the Respondent has rights and a legitimate interest in the Disputed Domain Names;
- that the registration of domain names that contain common words are permissible on a first come, first served basis and such registration establishes the Respondent’s legitimate interest;
- that the Respondent registered the Disputed Domain Names based on their common generic or descriptive meaning and not to target a trademark;
- that the Respondent’s good faith in registering the Disputed Domain Names based on descriptiveness is corroborated by many similar descriptive term domain names it has registered;
- that several UDRP panels have expressly recognized the bona fide nature of the Respondent’s domain names registration and use practices;
- that the use of the Disputed Domain Names to post generic advertising is legitimate;
- that there is no evidence of bad faith registration or use.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following to have the Disputed Domain Names transferred to it:
(i) that the Disputed Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect...
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