WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société du Figaro v. Tropic Telecom
Case No. D2000-1389
1. The Parties
The Complainant is Société du Figaro, a French société anonyme having its registered office in Paris, France.
The Respondent is Tropic Telecom with an address at Via del Avozo 38, Belize City, BZ 51000, Belize.
2. The Domain Name and Registrar
The domain name at issue is <figaromagazine.com>. The domain name registrar is Abacus America, Inc. dba Names4Ever, 5266 Eastgate Mall, San Diego, CA. 92121, United States of America.
3. Procedural History
Complainant filed its complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received by email on October 13, 2000, and in hard copy on October 16, 2000.
On October 20, 2000, the Center transmitted a request for register verification to Abacus America, Inc. dba Names4Ever in connection with this case.
On October 23, 2000, Abacus America, Inc. dba Names4Ever sent via email to the Center a verification response confirming that the Respondent is the registrant and that the contact for administrative and billing is Annie Robert at email@example.com.
On October 26, 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 (the "Supplemental Rules").
On October 27, 2000, the Center formally commenced this proceeding and notified Respondent that its response would be due by November 15, 2000. The notification was sent to the Respondent by courier and by email. The emails appear to have been transferred without receipt of any "undeliverable" notice. Fedex appears not to have been able to deliver the courier package to Respondent at the above address.
On November 8, 2000, the Complainant’s attorney contacted the Center by email with additional allegations of bad faith against the Respondent.
Respondent did not file a response by the due date. The Center sent a notification of respondent default to the Respondent by fax and email on November 20, 2000.
Complainant elected a single-member Panel. On December 11, 2000, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the Panelist, and set December 24, 2000 as the deadline for issuance of a decision.
4. Factual Background
Because there is no response, the following facts are taken from the complaint and are generally accepted as true in the circumstances of this case.
"Société du Figaro…is publishing famous newspapers and magazines, including the daily newspaper LE FIGARO and the weekly FIGARO MAGAZINE.
LE FIGARO is one of the most famous French daily newspaper.
LE FIGARO and its supplements are distributed throughout the world in their French version. Furthermore, Société du Figaro has foreign stand-alone editions published in local languages for some of its supplements.
Société du Figaro also operates a web site under the domain name http://www.lefigaro.fr where information regarding LE FIGARO MAGAZINE and its redaction can be found."
5. Parties Contentions
Complainant makes the following allegations. The factual elements of such allegations are generally accepted as true in the circumstances of this case in light of the Complainant's supporting documents and in the absence of a response from the Respondent. The legal issues are discussed in the next section of this decision.
In respect of the domain name being identical or confusingly similar to a trademark or service in which the Complainant has rights, Complainant alleges that:
"Complainant has registered FIGARO worldwide and is the owner of 760 trademarks. FIGARO and the trademarks derived from FIGARO including FIGARO MAGAZINE are well-known marks in the sense of Article 6 bis of the Paris Convention. These marks are famous in France obviously but also throughout the world at least in the press and edition area.
Société du Figaro is the owner of the following trademarks registered in class 16 for products including publication, newspapers, periodicals and magazines, which are almost identical to the Domain Name, the only difference between these trademarks and the Domain Name being the article "Le" i.e. "The":
- LE FIGARO MAGAZINE: French trademark registration n°1479415 filed on July 22, 1988 and renewed on February 17, 1998.
- LE FIGARO MAGAZINE International trademark registration n°R442333 renewed on January 8, 1999, designating Algeria, Germany, Austria, Belarus, Benelux, Egypt, France, Hungry, Italy, Liechtenstein, Morocco, Monaco, Portugal, Czech Republic, Romania, Russia, Saint Marino, Swiss, Vietnam, Yugoslavia.
These trademarks are exploited on a very extensive basis.
Société du Figaro is also the owner of FIGARO trademarks in class 38, for example:
- FIGARO: French trademark registration n° 97666372 filed on February 28 1997 for products and services including telecommunication, communication between computers, sending and transmitting messages, electronic messages, transmission of messages and images by computers."
Complainant contends that the Respondent has no rights or legitimate interests in the domain name and relies on the following elements:
"There are no relations between Respondent and Complainant. Respondent is not a licensee of Complainant, nor does Respondent has otherwise obtained any authorization to use the Complainant's trademarks. Respondent is not commonly known by the domain name and could not claim having a bona fide intention of use since the Domain Name is immediately understood by everyone as having a link with Complainant."
Complainant further alleges that the domain name was registered and used in bad faith by the Respondent based on the following elements. In respect of registration in bad faith:
(i) "The FIGARO trademarks are famous in France and throughout the world…
(ii) The choice of the association of the words "FIGARO" and "MAGAZINE" shows that Respondent when registering the Domain Name was perfectly aware that FIGARO is selling newspapers and magazine and knew the existence of FIGARO MAGAZINE.
(iii) It is clear that the Domain Name can only refer to Complainant. The Domain Name is very obviously connected with the well known name FIGARO and with the products sold by FIGARO.
The registration of the Domain Name by someone having no connection with the products suggests opportunistic bad faith." (emphasis not added)
In respect of use in bad faith:
(i) "The Domain Name did resolve to a site bearing an "under construction" sign and to an e-mail address until approximately the end of September. The Domain Name does now resolve to an active web site in French (some other languages being also available upon request only) which offers information that are usually offered in newspapers and magazines including in the famous FIGARO and FIGARO MAGAZINE such as job opportunities, real estate advertisements, stock exchange information …
The risk that Internet users believes that the web site is the property or under the supervision of the Complainant is excessively high.
In addition, the Internet user is redirected to third parties web sites when trying to experience a heading or is directed to an under construction sign…
By using the Domain Name, the Respondent intentionally attempts to attract for financial gain, Internet users to its web site and to other on-line location, by creating a likelihood of confusion with the Complainant's marks as to the source of Respondent's web site.
(ii) When people are typing the Domain Name "FIGAROmagazine.com" they can send an e-mail at sales@.figaromagazine.com. This e-mail address suggests that either the Domain Name itself is for sale or FIGARO branded goods developed in FIGARO's merchandising program are for sale.
(iii) Respondent is likely to have registered many domain names in order to sell them or to attract for financial gain, Internet users by creating a likelihood of confusion as to the source of web sites for the following reasons:
- Tropic Telecom is the owner of domain names including: "metropoletelevision.com"; "tropictelevision.com" and "tropictele.com". Until the end of September, none of these domain names resolved to an active web site. They only had and still have very similar e-mail address to the one available under the Domain Name, beginning with the word "sale". All of them now resolve to the same active web site than the one available under "figaromagazine.com".
- Respondent registered "metropoletelevision.com". However, it must be noted that Metropole Television is the corporate name of another French company which is the owner of the well known TV Channel, M6 Television…Respondent does not have any relationship with Metropole Television M6. The registration and use of this Domain Name evidencing once again Respondent's bad faith…
(iv) On June 30, 2000, Complainant's attorney sent to Respondent a cease and desist letter by registered mail, fax and e-mail regarding Respondent's registration and use of the Domain Name in order to reach an amicable resolution to the dispute…The registered letter has been sent back to Complainant's attorney. The address of Respondent seams not to be accurate. The fax number of Respondent did not work and also seams not to be accurate.
It suggests that Respondent took deliberate steps to hide his identity and the Domain Names Respondent has registered." (emphasis not added)
Subsequent to the filing the complaint, Complainant’s attorney contacted the Center by email on November 8, 2000, with the following additional allegations of bad faith:
"TROPIC TELECOM has registered other domain names identical to other titles of famous French magazines or newspapers…The other domain names registered by Tropic Telecom are the following:…lautojournal.com…enjeuxlesechos.com…
These domain names give access to websites which are identical to the one accessible under "FIGAROmagazine.com".
…The registration of these numerous domain names matching with famous titles of magazines/newspapers and pointing on one same identical content is an additional proof of the Registrant’s bad faith registration and use."
No supporting documents were submitted by Complainant for these additional allegations.
The Respondent did not contest the above allegations of the Claimant.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
A. Similarity of the Domain Name and Trademark.
Complainant has established its rights in the trademark "LE FIGARO MAGAZINE" with numerous trademark registrations in France and internationally and its rights in the trademark "FIGARO" in France: see Chanel, Inc. v. Estco Technology Group, Case No. D2000-0413 (WIPO, Sept. 18, 2000).
This panelist finds that <figaromagazine.com> is confusingly similar to the trademark "LE FIGARO MAGAZINE". The deletion of the word "LE" and the addition of the gTLD ".com" is not significant in determining whether the domain name is identical or confusingly similar to the mark: see Marriott International, Inc. Thomas, Burstein and Millar, Case No. 2000-0610 (WIPO, Sept. 14, 2000); CBS Broadcasting Inc. v. Worldwide Webs, Inc., Case No. 2000-0834 (WIPO, Sept. 4, 2000). The domain name is also confusingly similar to the trademark "FIGARO" since members of the public are likely to associate it with the trademark.
Therefore, the Complainant has satisfied the first requirement.
B. Respondent's Rights and Legitimate Interests.
The Complainant has established that these trademarks are well-known in France and internationally. The Complainant has not licensed or otherwise authorized the Respondent to use any of its trademarks or to apply for any domain name incorporating the trademarks. Therefore prior to any notice of this dispute, the Respondent had not used the domain name in connection with any bona fide offering of goods or services within the meaning of Paragraph 4 (c) (i) of the Policy.
Nor is there any evidence that the Respondent is commonly known by the domain name or is making a legitimate noncommercial or fair use of the domain name within the meaning of Paragraph 4 (c) (ii) or (iii) of the Policy. As discussed below, the Complainant’s evidence suggests that the Respondent has attempted to use the domain name for commercial gain.
By not submitting a response, the Respondent has failed to demonstrate, pursuant to paragraph 4(c) of the Policy, that it has rights or a legitimate interest in the domain name.
Therefore, this panelist concludes on the basis of the evidence of the Complainant that the Respondent has no rights or legitimate interests in the domain name.
C. Bad Faith Registration and Use.
The domain name in dispute is so clearly connected with the well-known names LE FIGARO MAGAZINE and FIGARO that its very use by the Respondent who has no connection with Complainant’s names or products suggests opportunistic bad faith: see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, Case No. 2000-0226 (WIPO, April 3, 2000); GA Modefine SA v. Armani International Investment, Case No. D2000-0305 (WIPO, June 26, 2000), GA Modefine SA v. AES Optics, Case No. Case No. D2000-306 (WIPO, June 26, 2000). Therefore, based on the Complainant’s evidence and in the absence of any response by the Respondent, bad faith can be inferred from Respondent’s registration and use of a domain name consisting wholly or partly of the Complainant’s notorious trademarks.
Annex 6 of the Complaint contains copies of the web site at www.figaromagazine.com with what appears to be links to third party web sites offering items for sale. Complainant’s evidence demonstrates that Respondent has engaged in a pattern of registering French trademarks or names in the areas of media and press as domain names, several of which appear to have an active web site similar to Respondent’s site. Registration of a domain name which prevents the trademark owner from reflecting that mark in a corresponding domain name is evidence of bad faith under paragraph 4(b)(ii) of the Policy provided that there has been a pattern of such conduct.
The Respondent’s use of the LE FIGARO MAGAZINE and FIGARO trademarks as a domain name appears to be an attempt to attract Internet users to Respondent’s web site and to other on-line locations for commercial gain by "creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement" of the web site. This constitutes evidence of bad faith under paragraph 4(b)(iv) of the Policy.
The panelist therefore concludes that the Respondent registered and is using the domain name in bad faith in accordance with the criteria set out under paragraph 4(b)(ii) and (iv) of the Policy.
For the foregoing reasons, the panelist holds:
(a) that the domain name is confusingly similar to the trademarks "LE FIGARO MAGAZINE" and "FIGARO" in which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the Respondent registered and has used the domain name in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist decides that the domain name <figaromagazine.com> must be transferred to the Complainant.
Thomas H. Webster
Dated: December 22, 2000