WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Société Nationale de Radiodiffusion Radio France v. France Info

Case No. D2002-1052

 

1. The Parties

The Complainant is Société Nationale de Radiodiffusion Radio France of Paris, France, represented by Cabinet Bird & Bird of France.

The Respondent is France Info of Panama City, Panama.

 

2. The Domain Name and Registrar

The disputed domain name <france-info.org> is registered with Melbourne IT trading as Internet Name Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 15, 2002. On November 15, 2002, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On November 18, 2002, 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 and technical contact as Peter Cunnings of Tel Aviv, Israel. 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 November 22, 2002. In accordance with the Rules, Paragraph 5(a), the due date for Response was December 12, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 13, 2002.

The Center appointed Ross Carson as the sole panelist in this matter on December 31, 2002. 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.

 

4. Factual Background

The Complainant is the owner of the following registered trademarks:

- The French trademark FRANCE INFO, filed on November 8, 1996, registered under the nį 96 649 869 which covers goods and services of International classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42.

- The French trademark FRANCE INFO, filed on April 5, 2001, registered under the nį 3 093 684 which covers goods and services of International classes 9, 16, 35, 38, 41 and 42.

- The French trademark FRANCE INFO, filed on October 1, 2001, registered under the nį 3 123 627 which covers goods and services of International classes 9, 16, 35, 38, 41 and 42.

Copies of the registration certificates for the above noted trademarks are included in the Complaint, Annex [3].

The Complainant also owns the domain name <france-info.com> registered on January 18, 2000, and <france-info.fr>.

Those domain names have been used by the Complainant since on or about that date namely by the way of the website "www.france-info.fr" or "www.france-info.com". Copies of the registration documents for the above noted domain names are included in the Complaint, Annex [3].

The trademark FRANCE INFO identifies radio stations operated by the Complainant which provide 24-hour rolling news which is not interrupted by advertisements or music other than a musical jingle punctuating each news item. FRANCE INFO radio stations boast the highest increase in audience figures of all French stations since June 1989. FRANCE INFO reaches over 10% of the national audience in France. FRANCE INFO radio stations provide up-to-date news items from around the world. FRANCE INFO broadcasts are also made available over the Internet through the domain name <france-info.com> and <radiofrance.fr>. FRANCE INFO radio news is advertised and promoted in France and throughout the francophone world (Complaint, Annexes [4], [5]).

 

5. Partiesí Contentions

A. Complainant

(i) The Complainant alleges that the domain name in dispute <france-info.org> is confusingly similar to the trademark FRANCE INFO as the domain name in dispute consists of the Complainantís trademark with the addition of the gTLD "org". The addition of the gTLD "org", which is required for registration of the domain name, has no distinguishing capacity in the context of deciding whether the domain name in dispute is confusingly similar to the Complainantís registered trademarks for INFO FRANCE news radio. The Complainant further submits that the use of the lower case letter format or a hyphen between "france" and "info" are insufficient to avoid a finding of confusing similarity.

(ii) The Respondent should be considered as having no rights or legitimate interests in respect of the domain name <france-info.org> that is the subject of the Complaint, for the following reasons:

There is no license, consent or other right by which the Respondent would have been entitled to register or use the domain name incorporating the Complainantís trademarks FRANCE INFO.

The Complainant has prior rights in these trademarks, which precede Respondentís registration of the domain name.

Furthermore, the Respondent has made no use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.

Moreover, the trademark FRANCE INFO is well known throughout France and the world to designate services relating to broadcasting.

As a result, it seems that the Respondent who has no legitimate interest in respect of the domain name <france-info.org>, has registered this domain name with the intention to divert consumers.

(iii) The domain name should be considered as having been registered and used in bad faith, for the following reasons:

The obvious bad faith of the Respondent results from the following elements :

a) the Respondent has no prior right and no authorization given by the Complainant concerning the FRANCE INFO trademarks.

b) The notoriety of the trademark FRANCE INFO.

c) The Respondentís intention to hide its true identity.

d) The Respondentís intention to create a likelihood of confusion with the Complaint's trademarks.

a) The Respondent has no prior right and no authorization given by the Complainant concerning the FRANCE INFO trademarks.

As it is demonstrated above, the Respondent has no prior right with respect to the trademark FRANCE INFO, and no authorization to use this trademark in any form and knows perfectly well this notorious trademark. Thus, the registration of the domain name <france-info.org> has not been made with bona fide intention.

b) The notoriety of the trademark FRANCE INFO.

The FRANCE INFO trademark enjoys a great notoriety in France and all over the world.

By way of example :

- the FRANCE INFO trademark has for a long time has been the subject of a large advertising campaign (Complaint, Annex [4]).

- the FRANCE INFO trademark is used in France and all over the world and use of the trademark FRANCE INFO on the internet increases this international use (Complaint, Annex [5]). Indeed, it is possible to find reference to FRANCE INFO by the way of various web sites.

The notoriety of the trademark FRANCE INFO demonstrates that the Respondent registered the domain name <france-info.org> knowingly.

c) The Respondentís intention to hide its true identity.

The Respondent attempted to hide its true identity in different ways:

- The Respondent attempted to hide its true identity behind a trade name, which reproduces the Complainantís trademark. Indeed, the organization name which appears on the Whois information is "France Info" (Complaint, Annex [2]);

- The Respondent uses a post office box address located in Panama (Complaint, Annex [2]);

- The contact information has been changed during the time that Complainant was trying to contact the Respondent. Indeed, on October 22, 2002, the Administrative contact and the Technical contact were the same person : David Osborne. On October 29, 2002, the Administrative contact and the Technical contact are: Peter Cunning, at the same address. However, the Complainant notes that the technical email includes both the following address : liberty-web.net (Complaint Annex [6]).

The Respondent has taken deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made.

There is no doubt that such behavior demonstrates bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 20, 2000); Hunton & Williams v. American Distribution Systems, WIPO Case No. D2000-0501 (August 3, 2000).

d) The Respondentís intention to create a likelihood of confusion with the Complainant's trademarks and namely to damage the Complainant.

By using the domain name subject of the Complaint, the Respondent attempts to create a likelihood of confusion with the Complainant's marks as to the source or affiliation of the Respondent's website which is linked to the domain name.

There is no doubt that the Respondent's use and misappropriation of Complainant's marks is for purely harmful purposes.

Indeed, the website owned by the Respondent and accessible at the address: "www.france-info.org", reproduces exactly the Complainant website accessible at the address "www.france-info.com".

Indeed, the Respondentís website reproduces the graphic chart of the Complainantís website, by reusing all of its colour codes (black, yellow, etc.) and typographic model, even though these elements are protected under copyright, it reproduces also the Complainantís trademarks "FRANCE INFO" (Complaint, Annex [7]).

However, if the website appearance is the same, the content is clearly different and damages the Complainant.

Indeed, the Respondent and most particularly Mr. David Osborne, who appears in the Whois information, famous in France regarding such website diversion (Complaint, Annex [8]), broadcasts as it was the Complainant, racist and xenophobic messages (Complaint, Annex [9]).

There is no doubt that such facts, remarks and diversion largely exceed and in an inadmissible way what can usually be tolerated under the freedom of expression, and undermine directly and seriously the rights, reputation and image of the Complainant, which is causing it considerable moral and commercial damage.

Respondentís bad faith is further evidenced by its primary purpose of disparaging and tarnishing Complainantís reputation and interfering with the Complainantís activity.

Although Respondent is not a competitor of the Complainant, such activity of broadcasting racist and xenophobic messages forms an independent act of bad faith, which is compounded by the fact that France Info is a state owned company.

Therefore, the Respondent has obviously registered the domain name for the purpose of misleading Internet users by causing confusion as to its source and content.

The Respondent has created a likelihood of confusion with the Complainant's mark and website as to the source or affiliation of the Respondent's website which is linked to the domain name in order to mislead the Complainantís audience.

Furthermore, because of the well-known character of the Complainant's trademarks, the Respondent could not have been unaware of the Complainant's trademarks and its reputation when the domain name was registered by him.

The Respondent has the clear intention to attract viewers familiar with the well know FRANCE INFO trademarks.

Mr. Osborne who was the first administrative contact, has never answered to the cease and desist letter sent to him by the Complainant (Complaint, Annex [10]).

However and because of the cease and desist letter sent, Mr. Osborne is fully aware that he is not allowed to use the denomination "FRANCE INFO".

Consequently, he decided to get round the prohibition by using the denomination and domain name "rance-info.org" (France-info without F) (Complaint, Annex [11]).

In French, "rance" signifies "rancid" which, according to Mr. Osborne describes the quality of the information supplied by the journalists of Radio France.

Of course, the domain name <rance-info.org> has been registered by Mr. Cunnings, the actual administrative contact of <france-info.org> (Complaint, Annex [12]).

Therefore, it emerges from these facts that the domain name <france-info.org> has been registered in bad faith for the purpose of creating a likelihood of confusion with Complainant's trademark as to the source or affiliation of Respondent's website.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

Failure to file a Response

Failure to file a Response permits the Panel to infer that the Respondent does not deny the facts which the Complainant asserts nor the conclusions which the Complainant asserts can be drawn from those facts. America Online, Inc v Andy Hind, WIPO Case No. D2001-0642 (July 1, 2001), Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (July 20, 2000).

Substantive Issues

Paragraph 15(a) of the Rules instructs the 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."

The burden for the Complainant, under Paragraph 4(a) of the Policy, is to prove:

- 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, and

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainant has used the trademark FRANCE INFO in association with radio broadcasting since 1987, in France. FRANCE INFO radio broadcasts news items 24 hours per day. The up-do date news is collected by employees of FRANCE INFO as well as 400 journalists located at 35 regional radio stations of Radio France in France and foreign journalists located abroad in Bonn, Brussels, Jerusalem, Cairo, London, Madrid, Moscow, Rome and Washington. FRANCE INFO radio broadcasts are listened to by over ten percent of radio listeners in France. FRANCE INFO also provides up-to-date broadcasts over the Internet (http:www.radio-france.fr/france-info/). This web site receives over 5,000 hits a day, the majority of which come from abroad (Complaint, Annex [5]).

The domain name in dispute <france-info.org> incorporates as its distinctive element the registered trademarks FRANCE INFO of the Complainant which trademark registrations are summarized in paragraph 4 entitled Factual Background above. The differences between the domain name in dispute <france-info.org> and the registered trademark of the Complainant are inconsequential comprising a dash between "france" and "info" and the addition of ".org" in the domain name. (Telecom Personal v. namezero.com, WIPO Case No. D2001-0015 (April 10, 2001)).

The Panel finds that the domain name in dispute is confusingly similar to the Complainantís registered trademark.

B. Rights or Legitimate Interests

The Policy (Paragraph 4(c)) outlines circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's right or legitimate interest in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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 did not file a Response. The Respondent registered the domain name in dispute on October 17, 2002, over 15 years after the Complainant commenced using the trademark FRANCE INFO in relation to radio broadcasting. The Respondent was not and is not commonly known by the domain name. By notice to the public on the website on December 11, 2002, the Respondent stated "Attention: for legal reasons, we are not permitted to use the domain name Ďfrance-infoí ". The Respondent advised that the Respondent had registered the domain name <rance-info.org> which should be bookmarked (Complaint, Annex [11]).

There is no licence consent or other right by which the Respondent would have been entitled to register or use the domain name in dispute. The Respondent not only used the distinctive elements of the Complainantís registered trademark FRANCE INFO but also used the graphics and get up from the Complainantís web page in association with Respondent web page (Complaint, Annex [9]). The web site associated with the domain name in dispute includes racial and xenophobic material (Complaint, Annex [9]) which is not tolerated on the web site identified by a domain name incorporating the Complainantís registered trademark.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in 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 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".

It should be noted that the circumstances of bad faith are not limited to the above.

The Respondent registered the domain name in dispute <france-info.org> which is confusingly similar to the Complainantís trademark FRANCE INFO used in association with radio and Internet broadcasting. The web site associated with the domain name in dispute also includes the graphics and get up associated with the Complainantís web side and advertising material. Internet users using the domain name in dispute will be confusingly led to the Respondentís web site when connecting to the domain name in dispute <france-info.org>. The content of the Respondentís web site which includes racial and xenophobic material (Complaint, Annex [9]) tarnishes the Complainantís trademark and reputation and constitutes strong evidence of bad faith (DFO, Inc v. Christian Williams, WIPO Case No. D2000-0191 (June 8, 2000)).

The Respondent changed the administrative and technical name and address of the registration for <france-info.org> after receipt of a cease and desist letter dated October 24, 2002, which was e-mailed to the original administrator at the original administration address on October 24, 2002, (Complaint, Annex [10]). The original administration address was in Panama City (Complaint, Annex [6]). The administratorís name and address for the domain name in dispute was amended on October 23, 2002, to name a new Administrator and a new administrator address in Tel Aviv (Complaint, Annex [6]). However, the administrative and technical e-mail address remained the some in both the original and amended registrations.

The Respondent has attempted to hide its true identity by using the organisation name France Info which is identical to the Complainantís trademark. The Respondent organisation address is a post office box address is Panama City. The Respondent has taken the deliberate steps to ensure that the true identity of the Registrant cannot be determined. Such behaviours demonstrated bad faith (Teletra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 20, 2000)).

After receipt of the cease and desist letter dated October 24, 2002, from the solicitor for the Complainant to the administrative contact (Complaint, Annex [10]), the Respondent posted a notice on its web site stating "Attention: by reason of law, we are not authorised to use the domain name "france-infoí".

The notice further stated that Internet users can now connect to <rance-info.org>. The notice included a link to <rance-info.org> (Complaint, Annex [11]). The notice further state that the adjective "rance" which incorporates the meaning rancid is significant of the quality delivered by journalists of a certain French publicly owned broadcaster having an association with islamic-marxists. The use of the domain name in dispute to link the Respondentís domain name <rance-info.org> constitutes evidence of use of the domain name in dispute in bad faith.

The Panel finds that the domain name in dispute has been registered and is being used by the Respondent in bad faith.

 

7. Decision

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 <france-info.org> be transferred to the Complainant.

 


 

Ross Carson
Sole Panelist

Date: January 11, 2003