WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Football Club des Girondins de Bordeaux v. Annie Arr
Case No. D2000-0149
1. The Parties
Complainant is Football Club des Girondins de Bordeaux, having its registered offices at 46, av. du Parc-Lescure, 33000 Bordeaux, France.
Respondent is Ms. Annie Arr, who is domiciled at 12513, Everglade Str., Los Angeles, CA 90066, USA.
2. Domain Name and Registrar
The Domain Name at issue is :
The Registrar is Network Solutions, Inc. (the "Registrar"), 505 Huntmar Park Drive, Herndon, Virginia 20170 - 5139, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant on March 10, 2000, by e-mail and on March 13, 2000, in hard copy. The Complaint indicated that Respondent was Ms. Annie Arrieula.
On March 20, 2000, the Center sent to the Registrar a request for verification of registration data. On the same day, the Registrar confirmed, inter alia, that it is indeed the Registrar of the Domain Name in dispute and that the Domain Name is registered in the name of Annie Arrieula.
On March 20, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the « Supplemental Rules »).
Also on March 20, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent by post and e-mail, with a copy by e-mail to Complainant. The formal date of the commencement of this administrative proceeding is March 20, 2000.
On March 22, 2000, Respondent sent an e-mail to Complainant and to the Center, informing them that her correct surname was not Arrieula, but Arr. Respondent indicated that she had requested « the Internic » to correct this misspelling. On March 24, 2000, the Center acknowledged receipt of Respondent’s e-mail and noted that all future correspondence regarding the administrative proceeding should be addressed to Annie Arr. The Center received Respondent’s response on April 3, 2000, by e-mail and on April 6, 2000 in hard copy. The Response was thus submitted within the deadline provided by paragraph 5 (a) of the Rules. On April 4, 2000, the Center acknowledged receipt of Respondent’s Response.
On April 7, 2000, after receiving a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Anne-Virginie Gaide (the "Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Panelist.
On April 7, 2000, Complainant requested to be allowed to file an answer to the Response. When informed of this request, Respondent requested the right to reply to such answer. In view of the fact that Respondent raised in her Response an argument that Complainant could not expect, i.e. that she planned to use the name "Girondins de Bordeaux" for a historical web site, the Panelist decided to grant Complainant’s request. For the sake of equal treatment between the parties, the Panelist also granted Respondent’s request to reply to Complainant’s answer. Accordingly, an Interim Order setting deadlines for the answer and the reply was issued by the Panelist on April 11, 2000. On April 17, 2000, within the set deadline, Complainant filed an answer to Respondent’s Response (the "Answer"). On April 21, 2000, also within the set deadline, Respondent filed a reply to Complainant’s answer (the "Reply").
After reviewing the statements made by the parties in the Complaint, Response, Answer and Reply, the Panelist considered necessary, in order to reach a decision on the issue of the legitimate interests of Respondent, to request from Respondent evidence of certain facts alleged in the Response. Accordingly, as permitted by paragraph 12 of the Rules, the Panelist issued an Interim Order on April 26, 2000, requesting the submission of several documents. In the same Interim Order, the Panelist set a deadline for Complainant to submit observations on the documents (the « Observations ») and a deadline to Respondent to comment on such observations (the « Comments »). The Panelist considered that an exchange of Observations and Comments was justified by the fact that the requested documents might prove material to the issue of the case. On May 3, 2000, the Panelist received the original documents sent by Respondent. Copies of such documents were communicated to the Center and to Complainant. Complainant affirming that the copies received by fax were not legible, the Panelist sent a copy of her own set of documents by mail to Complainant. Because of this delay, the deadlines set for the submission of Observations and Comments had to be extended.
On May 11, 2000, within the set deadline, the Complainant submitted its Observations on the documents supplied by Respondent. Respondent submitted her Comments on such observations on May 15, 2000, within the set deadline.
In her Interim Order of April 26, 2000, the Panelist had specified that no new documents were to be submitted with the Observations and Comments. Therefore, the documents that have been submitted with such Observations and Comments by both parties shall not been taken into account in the present decision.
4. Factual Background
Complainant has demonstrated that it is the owner of two French trademarks "F.C. GIRONDINS DE BORDEAUX & design" for various products and services (registrations N° 93478495 of July 26, 1993, and N° 98742280 of July 17, 1998).
Moreover, Complainant has filed an application to register the same trademark as a community trademark on September 30, 1998. Such application is currently pending.
"F.C. Girondins de Bordeaux" is the name of the football club managed by Complainant (« football » is the name for « soccer » in France). The football club has used this name since 1936. The F.C. Girondins de Bordeaux took part in major football competitions in France and in Europe, and became champion of France for 1998 - 1999. The football club Girondins de Bordeaux is widely known in France and in Europe among football fans. Complainant publishes a magazine entitled "Marine et blanc", which is the official magazine of the F.C. Girondins de Bordeaux. "Marine et blanc" (meaning "Navy blue and white") are the colors of the football team. Complainant also issues a mail order catalogue.
On December 10, 1999, Mr. Yann Genest, in charge of the marketing of the football team, sent an e-mail to Respondent at the address "email@example.com with the purpose to inform Respondent that the football team planned to launch a web site under the address "www.girondinsdebordeaux.com", and offer that Respondent transfer her registration for such Domain Name to Complainant in exchange for compensation of her expenses. There is no evidence that Respondent actually received such e-mail. This seems unlikely as Respondent’s e-mail address is "firstname.lastname@example.org" and not "email@example.com".
On February 14, 2000, Complainant’s counsel sent a registered letter to Respondent demanding that Respondent transfer the Domain Name at issue to Complainant. This letter was addressed to Ms. Annie Arrieula at the address indicated in the Registrar’s database. Complainant mentions in its Answer that all correspondence sent by express mail to Respondent was returned. The Panelist therefore assumes that Respondent did not receive this letter.
Respondent is a retired history teacher. She has registered the Domain Name at issue on March 14, 1999. Respondent explains that she has spent ten years researching the political movement of the Girondins. The Girondins were members of the moderate republicans who controlled the legislative assembly in France from October 1791 to September 1792 during the Revolution. The Girondins were named after the Departement of Gironde, in which Bordeaux is situated, because many came from this area.
Respondent is the registered owner of several other Domain Names. According to the results of an online search done by Complainant on March 9, 2000, submitted with the Complaint, Respondent is the registrant of 46 domain names. These domain names include :
5. Parties’ contentions
Complainant contends that the Domain Name "girondinsdebordeaux" is confusingly similar to the trademark "F.C. GIRONDINS DE BORDEAUX & design".
Complainant contends that Respondent has no rights or legitimate interests to the Domain Name.
Complainant contends that Respondent registered and is using the Domain Name in bad faith.
Respondent contests that the Domain Name "girondinsdebordeaux" is identical or confusingly similar to Complainant’s trademark "F.C. GIRONDINS DE BORDEAUX & design".
Respondent contends that she has legitimate interests to the Domain Name because of Respondent’s preparations to use such Domain Name as the name of a non commercial historical web site dedicated to the French Revolution and the movement of the Girondins.
Respondent contends that for such reason, her registration and use of the Domain Name are in good faith.
6. Discussion and findings
According to paragraph 4 (a) of the Policy, the complainant must assert and prove each of the following:
i) the domain name registered by the respondent 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 domain name registered by the respondent has been registered and is being used in bad faith.
i) Identity or confusing similarity
Complainant is the owner of two trademarks « F.C. GIRONDINS DE BORDEAUX & design », which are registered in France in relation to a number of products and services (reg. N° 93478495 of July 26, 1993, and N° 98742280 of July 17, 1998).
Since domain names cannot comprise graphic elements, the comparison between trademarks and possibly conflicting domain names must be limited to the verbal elements of both. In the present case, the only difference between the trademarks of Complainant and the Domain Name is the presence, in the trademarks, of the letters « F.C. » at the beginning of the marks. The other terms composing the marks and the Domain Name are identical.
It is the Panelist’s opinion that the letters « F.C. » do not influence the overall impression left by the trademarks in a way that would remove the risk of confusion between the marks and the Domain Name. From a visual point of view, the letters « F.C. » occupy much less space than the words « Girondins de Bordeaux ». Thus, the terms that strike most the memory are « Girondins de Bordeaux ». In this respect, viewers are likely to overlook the presence of the acronym, especially if it does not make sense for them. From an intellectual point of view, the letters « F.C. » constitute also a weak element. Indeed, they usually stand for « Football Club », which terms are devoid of distinctiveness. Because of its descriptive character, this acronym plays only an accessory role in Complainant’s trademarks.
In view of the above, the Panelist reaches the conclusion that the Domain Name "girondinsdebordeaux" is confusingly similar to Complainant’s trademarks « F.C. GIRONDINS DE BORDEAUX & design ».
ii) Rights or legitimate interests
In the present case, Respondent alleges that she plans to open a cultural web site under the name "girondinsdebordeaux.com", dedicated to the French revolutionary movement of the Girondins. She contends in this respect that she has been making preparations to create such web site, which is meant to be open to scholars, students or curious web surfers. According to Respondent, this web site would contain articles on the Girondins, book references, photographs, and links to other sites. Respondent planned originally to open the site on July 14, 2000 but later mentioned the date of May 15, 2000.
According to paragraph 4 (c) of the Policy, the following circumstances (in particular but without limitation) shall demonstrate that a respondent has rights or legitimate interests to a domain name :
i) Before any notice of the dispute, the respondent has used, or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services, or
ii) the respondent has been commonly known by the domain name, even if he/she has acquired no trademark or service mark rights, or
iii) the respondent is making a legitimate noncommercial 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.
Generally speaking, the use of a domain name corresponding to a particular historical or cultural subject in connection with a cultural web site dedicated to such subject whose contents are made available for free does undoubtedly fall under the notion of a « legitimate noncommercial fair use » in the sense of paragraph 4 (c) (iii) of the Policy.
Thus, a person or company who registers as a trademark a name which belongs to the world’s historical and cultural patrimony should not be able to prevent third parties from using this name (as a domain name or otherwise) in relation to the historical or cultural theme at issue. For example, should someone manage to register « Charles Dickens » as a trademark, he/she cannot prevent the use of a corresponding domain name (such as « charlesdickens.com ») for a noncommercial web site dedicated to the life of the great British writer, unless particular circumstances warrant a finding that the domain name owner intended to divert consumers or to tarnish the reputation of the trademark.
It is the Panelist’s view that legitimate interests exist in the sense of paragraph 4 (c) (iii) of the Policy when the respondent has not yet begun use at the time it is notified of the dispute, but has already made demonstrable preparations towards such use. It would indeed not be justified, in this respect, to treat those who make preparations to use a domain name in connection with a bona fide offering of goods or services more favorably than those who make preparations to use such domain name in a noncommercial way. In the second case, the proposed use is even less threatening for the trademark owner than in the first, since there is no competition between the parties.
In the present case, Respondent asserts that « Girondins de Bordeaux » is the name of the French revolutionary movement that will be the subject of the cultural web site that she plans to launch. This assertion is disputed by Complainant, according to whom the accurate name of this movement is « Girondins », and not « Girondins de Bordeaux », the latter referring exclusively to the French football team. This question is crucial.
Indeed, whereas Respondent is certainly entitled to devote a web site to the subject of the Girondins, she will be found to have a legitimate interest to use the terms « Girondins de Bordeaux » only if these terms correspond indeed to the name of the concerned political movement. It should be noted here that « Girondins de Bordeaux », in French, means « Girondins of Bordeaux ».
Attached to her Response, Respondent submitted four « extracts of historical sources », among which a two page excerpt from the Encyclopedia Britannica (quoted as « copyright 1994-1999 Encyclopedia Britannica). These extracts are not photocopies from the actual books or reviews, nor screen print-outs from the Internet, but were typed, or downloaded and then processed, by Respondent. This is apparent from the presentation, the font and the page numbers of the extracts. Such extracts, all in the English language, refer to the « Girondins de Bordeaux ». The first paragraph of the quoted excerpt of the Encyclopedia Britannica reads as follows :
« Also called « Brissotins », members of the moderate republicans, many of them originally from Bordeaux in the département of Gironde, who controlled the Legislative Assembly from October 1791 to September 1792 during the French Revolution. Young lawyers who were basically idealists, the Girondins de Bordeaux soon attracted a large following of businessmen, merchants, industrialists and financiers. They were initially known as Brissotins, as followers of Jacques-Pierre Brissot de Warville [...] ».
In its Answer to the Response, Complainant raised the objection that the Girondins were not designated by the terms « Girondins the Bordeaux », and submitted results of Internet searches to demonstrate this assertion. One of those documents shows the results of the search for « Girondins » on the site of Britannica.com. These results consist in several headings, under which are subheadings, each of them followed by an short excerpt of its contents. One of the main headings is « Encyclopedia Britannica » (the others being « The Web’s Best Sites » and « Magazines »). Under this heading, the first subheading is « Girondin », followed by the following excerpt :
« member of the moderate republicans, many of them originally from the département of the Gironde, who controlled the Legislative Assembly from October 1791 to September 1792 during the French Revolution. Young lawyers who were basically idealists, the Girondins soon attracted a large following of... ».
Complainant wondered at the fact that the Encyclopedia Britannica excerpt provided by Respondent (which obviously matches the excerpt found on Britannica.com) refers to the « Girondins de Bordeaux » when the excerpt printed from Britannica.com refers only to the « Girondins ».
Moreover, Complainant submitted the results of two searches carried out on the site of the Encyclopedia Universalis (www.universalis-edu.com). The search request « girondins de bordeaux » yielded the following results (free translation from French by the Panelist) :
« 5 articles corresponding to your search girondins de bordeaux were found.[...]
1/ Girondins de Bordeaux
Founded in 1881, the French football club of the Girondins de Bordeaux plays at the Parc Lescure (36’000 seats). The jersey of the players is navy blue, with a white scapulary. The Girondins de Bordeaux win their first Coupe de France in 1941, their first Championnat de France in 1950. It is in the 80’s that the Girondins de Bordeaux, under the impulsion of president Clause Bez, pull themselves up to the top of French Football ...
2/ Bayern Munich
Founded in 1900, the Bayern Munich, German football club, plays at the Olympic Stadium [...]
3/ Jacquet (A)
Football player of a good level, Aimé Jacquet is four times champion of France [...]. In 1976, he takes up the career of coach, in Lyon. In 1980, he signs for the Girondins de Bordeaux, whom he leads to the title of Champion of France in 1984, 1985 and 1987.
4/ Trésor (M.)
Libero, the French football player Marius Trésor, who starts in Ajaccio, defends the colors of the Olympique de Marseille from 1972 to 1980, then those of the Girondins de Bordeaux from 1981 to 1984. [...]
5/ Zidane (Z.)
Offensive midfielder, the French football player Zinedine Zidane starts in the Championnat de France with the A.S. Cannes in 1989.[...] in 1996, he participates [...] to the adventure of the Girondins de .... ».
On the same website, the search request for « girondins » yielded the following results (free translation from French by the Panelist) :
« Your request girondins can orient the search in several directions. Please click on the proposal which correspond the best to your intentions [...] :
1/ GIRONDINS DE BORDEAUX, football
2/ GIRONDINS & MONTAGNARDS, historical
3/ GIRONDINS & MONTAGNARDS, ideological ».
In her Reply to Complainant’s Answer, Respondent admitted that « depending on the source, the revolutionary movement is sometimes referred simply as « The Girondins » ». Regarding the discrepancies between the Encyclopedia Britannica excerpts, Respondent affirmed that the Encyclopedia Britannica refers to both the « Girondins de Bordeaux » and to the « Girondins », depending on its edition. She further stated :
« My ten-year old copy (21 volumes) that I quoted in my Response mentioned the « Girondins de Bordeaux » ».
In the Interim Order of April 26, 2000 (in which documents evidencing the preparation of the web site were also asked for), Panelist requested that Respondent submit a photocopy of the extract of the Encyclopedia Britannica in hardcopy.
Respondent did not comply with this order. Instead, she submitted another computer processed extract, with the following hand written annotation :
« Encyclopedia Britannica excerpt (1967) as quoted in the edition I had access to (county library). The encyclopedia has used the terms Girondins de Bordeaux until 1989 and now refers either to Girondins de Bordeaux or simply Girondins as many other sources. Both are however used by historians although it is acknowledged here that the ’99 edition refers to the Girondins ».
The Panelist is not satisfied by this explanation. The purpose of the Interim Order was to provide the Panel with an original extract of the hardcopy encyclopedia allegedly quoted by Respondent, with the purpose to verify whether such encyclopedia uses the terms « Girondins de Bordeaux » or not. Respondent declared in her Reply that she had quoted her own « ten-year old copy ». She could easily have made a photocopy of this extract as requested. Even if she did not possess her own copy and used the copy of the county library, a photocopy could easily have been provided, more easily, in fact, than the new computer extract, whose origin Respondent does not indicate. Panelist concludes that Respondent has not demonstrated in a satisfactory manner that the excerpt of the Encyclopedia Britannica quoted in her Response refers to the « Girondins de Bordeaux ».
Admittedly, other documents submitted by Respondent refer to the « Girondins de Bordeaux ». Those documents are letters, e-mails or faxes sent to Respondent by other scholars and a descendant of the Girondin Brissot de Warville purporting to support her web site project. The Panelist does not find, however, that such documents are conclusive, because they were written in answer to letters or e-mails from Respondent (copy of which are not provided), who in all likelihood used the term « Girondins de Bordeaux » and thus might well have led the addressees to use the same terms. Another document is a computer processed historical article by Respondent herself. The only screen print-out submitted by Respondent following the Interim Order of April 26, 2000 is a portrait of Brissot de Warville. This document refers to the « Girondins », not to the « Girondins de Bordeaux ».
In view of all the evidence submitted by the parties, the Panelist reaches the conclusion that the name of the revolutionary movement at issue is « Girondins », and that the terms « Girondins de Bordeaux » are used exclusively in relation to the football club.
Since the revolutionary movement of the Girondins is not called « Girondins de Bordeaux », Respondent does not have a legitimate interest to use these exact terms to designate her website. She only has a legitimate interest to use the term « Girondins ».
iii) Registration and use in bad faith
To succeed in an administrative proceeding, a complainant must show not only that the domain name at issue is identical or confusingly similar to its registered trademark and that the respondent has no rights or legitimate interests to the domain name, but also that the respondent registered and used the domain name in bad faith.
According to paragraph 4 (b) (ii) of the Policy, registration and use of a domain name in bad faith is demonstrated when in view of the evidence, the panel finds that the respondent has registered the domain name at issue in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
In the present case, Respondent registered the Domain Name on March 14, 1999. On the same day, according to the NSI - Whois search results submitted with the Complaint, Respondent also registered the domain name « olympique-de-marseille.com ». The Olympique de Marseilles is a well-known French football club. On May 24, 1999, Respondent further registered « paris-st-germain.com ». Paris St Germain is another well-known French football club’s name. On February 11, 2000, Respondent registered the following domain names (among others) :
According to Complainant, those domain names are related to football. Respondent did not deny or dispute this assertion.
In particular, Complainant demonstrates by the means of the documents submitted with the Complaint and the Answer that « marine-et-blanc.com » is the name of the official magazine published by Complainant, and that it is moreover confusingly similar to the French trademark « V MARINE ET BLANC & design » registered in the name of Mr. Robert Martin, Association Football Club Girondières (sic) de Bordeaux (reg. no. 97660354).
Complainant also asserts in its Complaint that Respondent is the registrant of the domain name « lilian-laslandes.com ». Lilian Laslandes is a player of the F.C. Girondins de Bordeaux. Complainant did not provide a print out from the Registrar’s Whois database to evidence this assertion. However, since Respondent did not dispute or deny it in her Reply or in her Comments, the Panelist considers that this registration exists indeed.
Complainant finally asserts that « Irreductibles » is the name of the football team’s most popular fan club.
Respondent alleges that she registered all those domain names on behalf of her grandson, who is a football fan. According to Respondent, the registrations were made to allow Respondent’s grandson to create « fan sites » (except for « irreductibles.com », which was allegedly registered because Registered is a fan of the French cartoon « Asterix »). However, Respondent did not allege that any such fan site was actually created.
In view of the evidence, the Panelist finds that the football related domain names were registered in order to prevent the owners of corresponding trademarks or names to reflect their trademark or names in a domain name. In view of the number of concerned domain names, the Panelist finds that a pattern exists. Moreover, the Panelists finds that the registration of the Domain Name « girondinsdebordeaux » is a part of that pattern. According to Respondent’s presentation of the facts, she registered the football related domain names in order to satisfy her grandson’s wish, whereas « Girondins de Bordeaux », which is the name of a football club, would alone have been registered for a totally different purpose. The fact that « girondinsdebordeaux » happens to be the name of a football club would thus be a coincidence. The Panelist is not convinced by this interpretation of the situation and believes that the registration of the Domain Name was part of Respondent’s pattern of registering football related domain names, and that Respondent knew that « Girondins de Bordeaux » was the name of a football club.
Complainant did not submit evidence that the other domain names registered by Respondent are identical or confusingly similar to registered trademarks, except for « marine-et-blanc.com ». As a consequence, the Panelist cannot decide whether the Respondent engaged in a pattern of registering domain names corresponding to trademarks or service marks. However, the circumstances of a nature to demonstrate bad faith according to paragraph 4 (b) (ii) of the Policy are listed without limitation. Thus, although this provision only mentions trademarks or service marks, a pattern of registering the corporate or trade names of third parties with which a respondent has no connection whatsoever may also be considered as a circumstance demonstrating bad faith. In the Panelist’s opinion, the registration of names such as « olympique-de-marseille » and « paris-st-germain », which are the names of well-known football clubs with whom Respondent claims no relationship is such a circumstance.
Thus, in view of the fact that :
the Panelist reaches the conclusion that Respondent registered the Domain Name in order to prevent Complainant from registering its mark in a corresponding domain name, that she has engaged in a pattern of registering the marks or names of third parties, and that therefore the Domain Name has been registered and used in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name registered by Respondent is confusingly similar to the trademarks of Complainant, that Respondent has no rights or legitimate interests in respect of the Domain Name and that Respondent registered and used the Domain Name in bad faith.
Accordingly, pursuant to paragraph 4 (i) of the Policy, the Administrative Panel requires that the registration of the Domain Name at issue be transferred to Complainant. The Domain Name is: « girondinsdebordeaux.com ».
Dated : May 19, 2000