WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Office québécois de la langue française v. Nancy Orlean

Case No. D2003-0358

 

1. The Parties

The Complainant is the Office québécois de la langue française of Montréal, Québec, Canada represented by Patrick Gingras.

The Respondent is Nancy Orlean of, San Diego, California, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <granddictionaire.com> and <grandictionnaire.com> are registered with eNom Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 8, 2003. On May 9, 2003, the Center transmitted by email to eNom Inc a request for registrar verification in connection with the domain names at issue. On May 15, 2003, eNom Inc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and also the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an English language version of the Complaint on May 27, 2003. The Center verified that the Complaint as amended 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 June 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2003. The Response was filed with the Center on June 26, 2003.

The Center appointed David Perkins as the sole panelist in this matter on July 10, 2003. 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

4.1 The Complainant

4.1.1 The Complainant is the Office québécois de la langue française, an agency of the Government of Quebec.

4.1.2 The mission of the Complainant is defined in the Charter of the French Language [RSQ, Chapter C-11, sections 159 to 164] as involving:

- defining and conducting Québec policy on linguistic officialisation and terminology;
- monitoring the linguistic situation in Quebec;
- promoting the French language; and
- assisting and informing the civil administration, semipublic agencies, enterprises, -associations and natural persons as regards to the correction and enrichment of spoken and written French in Québec.

Section 1 of Chapter C-11 provides that French is the official language of Québec.

The Complainants trademark

4.1.3 The Complainant is the proprietor of Canadian trademark LE GRAND DICTIONNAIRE TERMINOLOGIQUE and device in Classes 5, 26 and 27 registered with effect from September 29, 1997.

4.1.4 That registered trademark is used by the Complainant in relation to its dictionary of the same name, Le Grand dictionnaire terminologique. Currently, the dictionary contains almost 800,000 terminological files and some 3 million French and English terms from the industrial, scientific and commercial vocabulary. It covers 2,000 specialist areas of subject matter and is the equivalent of 3,000 reference books. It has been and is provided in the following ways:

1995 2001: During this period Le Grande dictionnaire terminologique was accessible on CD-ROM at an annual cost of Canadian $300.00.

1997 September 2000: During this period Le Grand dictionnaire terminologique was accessible through the web services of CEDROM-Smi, for an annual subscription of Canadian $300.00 covering a maximum of 5,000 searches.

September 2000 to date: Since September 18, 2000, the Complainant has offered free and general access to Le Grand dictionnaire terminologique through its web address on its own website at "www.granddictionnaire.com." That website is updated every month as a result of the terminological scanning work carried out by the Complainant.

4.1.5 It is possible through that web page for users to search Le Grand dictionnaire terminologique, free of charge, using a French or English term to find the corresponding term in the other language. The website also provides access to definitions, note and usage contexts, all in easy-to-consult files grouped into classes of usage.

4.1.6 Within one month from launch of Le Grand dictionnaire terminologique website on September 18, 2000, it attracted 1.3 million searches per month, with peak daily searches of 60,000. Currently, the average number of searches is 40,000 per day and over 2 million per month.

4.1.7 The Complainants Le Grand dictionnaire terminologique website has received various awards and distinctions and exhibited to the Complaint are a number of press articles and advertisements from daily newspapers published in Québec and Belgium relating to it.

The Complainants domain names

4.1.8 In addition to the <granddictionnaire.com> domain name which the Complainant owns and which has been used for its website for Le Grand dictionnaire terminologique since September 2000, the Complaint lists a further 23 domain names owned by the Complainant which incorporate the words LE GRAND DICTIONNAIRE, of which 6 incorporate the words of its registered trademark LE GRAND DICTIONNAIRE TERMINOLOGIQUE.

4.1.9 The Complaint exhibits print outs of searches using the words GRAND DICTIONNAIRE on the search engines Yahoo. Google, Lycos and La Toile du Québec, all of which refer to the Complainants dictionary, Le Grand dictionnaire terminologique, at its <granddictionnaire.com> domain name.

4.2 The Respondent

In the absence of a detailed Response [see, paragraph 5.[ ] below], little is known about the Respondent. The two domain names in issue were registered by her on September 8, 2002. Both resolve to a website at the address "http://www.pussy-first.com." This is a pornographic website, the homepage for which is exhibited to the Complaint. This advertises in five languages and depicts two naked women.

 

5. Parties Contentions

5.A The Complainant

5.A.1 Identical or Confusingly Similar

5.A.1.1 The Complainant says that the two domain names in issue are identical to its official mark LE GRAND DICTIONNAIRE TERMINOLOGIQUE to which it has held rights since 1992, to its LE GRAND DICTIONNAIRE TERMINOLOGIQUE Canadian trademark registered since September 29, 1997, to its dictionary of that name which has been made available (in various formats) since 1995, and to its <granddictionnaire.com> domain name which has been used in relation to the web version of the dictionary since September 2000.

5.A.1.2 The Complainant says that the Respondents use of the two domain names in issue constitutes an infringement of its Canadian registered trademark under Section 9(i)(ii)(iii) of the Canadian Trademarks Act (R.S.C. 1985, Chapter T-13).

5.A.1.3 The prefix "Le" and the suffix "terminologique" of the Complainants LE GRAND DICTIONNAIRE TERMINOLOGIQUE registered trademark are used, respectively, to introduce and to qualify the words GRAND DICTIONNAIRE. These words are the core of its trademark. In this respect the Complainant refers to the <granddictionnaire.com> domain name which resolves to its online dictionary.

5.A.1.4 The domain name in issue <granddictionaire.com> differs from the Complainants GRAND DICTIONNAIRE trademark by the mis-spelling of "dictionnaire" with only one letter "n." The domain name in issue <grandictionnaire.com> differs from the Complainants GRAND DICTIONNAIRE trademark by the conjoining of the two words into one and the omission of one letter "d." In both cases, the domain names in issue are visually and phonetically the same as the Complainants trademark.

5.A.1.5 The Complainant cites the following cases brought under the Policy where confusing similarity has been found.

Playboy Enterprises International Inc .v. Hector Rodrigues [WIPO Case No. D2000-1016].

Domain name <playboynetwork.com> found to be confusingly similar to Complainants PLAYBOY TV NETWORKS trademark.

Royal Bank of Canada .v. Personal [WIPO Case No. D2001-0761].

Domain name <royalbank.com> found to be confusingly similar to Complainants ROYAL BANK OF CANADA trademark.

Ultimate Electronics Inc .v. Phayse Inc [WIPO Case No. D2002-0851].

Domain name <ultimatelectonics.com> which resolves to a pornographic website found to be confusingly similar to Complainants ULTIMATE ELECTRONICS trademark.

5.A.1.6 The Complainant also refers to a Decision of the Versailles Appeal Court, France on January 8, 2000, in Christiane Ly .v. S.A. LOreal. Various domain names in different languages which translated into French as the expression "parce que je le vaux bien" were held to be confusingly similar to LOreals registered trademark "LOREAL, parce que je le vaux bien" under Art. 713-5 of the French Code de la propriété intellectuelle. This was on the basis that LOreals slogan "parce que je le vaux bien" had acquired notoriety apart from the "LOreal" prefix and, therefore, even absent that prefix constituted the distinctive feature of the trademark. LOreal had used that slogan for a number of years in four languages other than French, namely English, German, Italian and Spanish. The English translation of "parce que je le vaux bien" is "because Im worth it."

5.A.1.7 The Complaint also exhibits emails received by the Complainant during the period September 2002, to April 2003, from users who misspelt the Complainants <granddictionnaire.com> domain name when intending to access its dictionary website and instead wrongly accessed the pussy-first website to which the Respondents domain names in issue both resolve.

5.A.2 Rights and Legitimate Interests

The Complainants case is the Respondent has no rights or legitimate interest in the two domain names in issue for the following reasons:

5.A.2.1 The Complainant sent its cease and desist letter on March 6, 2003. The Respondent has never used either of the domain names in issue in connection with a bona fide offering of goods or services. Use of those domain names to direct users to the pussy-first pornographic website was not bona fide. The Complainants Canadian trademark was published on December 10, 1997, its dictionary entitled LE GRAND DICTIONNAIRE TERMINOLOGIQUE has been available since 1995 and its free Internet version of that dictionary has been available since September 2000, at the <granddictionnaire.com> domain name. The Complainants GRAND DICTIONNAIRE trademark was well known by September 8, 2002, when the Respondent registered the two domain names in issue.

5.A.2.2 The Complainant has never authorized the Respondent to use its GRAND DICTIONNAIRE trademark.

5.A.2.3 The Respondent has no registered trademarks or service marks in Canada or the USA for either of granddictonaire (one "n") or grandictionnaire (one "d").

5.A.2.4 The Respondent is not commonly known in Québec or in other French speaking countries by either of the domain names in issue.

5.A.2.5 Both domain names represent typical cases of typo-squatting. In other words, the domain names are visually the same as the Complainants GRAND DICTIONNAIRE trademark, save for minor mis-spellings to take advantage of typing mistakes by web users who are wrongly directed to the Respondents pussy-first pornographic website. This unfair use of the Complainants GRAND DICTIONNAIRE trademark with intent to misleadingly divert consumers for commercial gain.

Consequently, the Respondent cannot fulfill any of the circumstances set out in paragraph 4(c) of the Policy as determinative of rights or legitimate interests.

5.A.3 Registered and Used in Bad Faith

Here, the Complainants case is as follows:

5.A.3.1 The typo-squatting referred to in paragraph 5.A.2 (above) points to the Respondents clear intention to register domain names so close to the Complainants GRAND DICTIONNAIRE trademark as to create a likelihood of confusion amongst Internet users with that trademark. This is born out by the use to which the two domain names have been put and the evidence of actual confusion [see, the emails referred to in paragraph 5.A.1 above] amongst Internet users which the Complaint has demonstrated.

5.A3.2 The name and address given to the registrar by the Respondent when registering the two domain names appears to be false. All communications addressed to Nancy Orlean at the San Diego address have been returned by the occupant of that address.

5.B The Respondent

The Response comprises an email addressed to the center in the following terms:

"Complaint has no right to take away the above domains from Respondent. Complainant has registered many domains under dictionnaire. This is like Coca-Cola, you can find thousands of colas brands worldwide. This like Dove Soap trademark and Dove ice cream brand.

Thank you."

The Response was sent by one, Dani Filah.

 

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

• that the Respondents domain name 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 in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondents rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The Complainant is the proprietor of the registered Canadian trademark LE GRAND DICTIONNAIRE TERMINOLOGIQUE registered with effect from 1997. The Complainant is the proprietor of the domain name <granddictionnaire.com> registered in September 2000. The Complainant has used the registered trademark in relation to its dictionary since 1995. Its website for the dictionary to which the <granddictionnaire.com> domain name resolves has been operational since September 2000, and attracts the order of 24 million searches a year. There is, in the Panels view, no doubt that quite apart from the Canadian registered trademark the Complainant has trademark rights in the words GRAND DICTIONNAIRE.

6.6 Both domain names are mis-spellings, by only one letter, of that trademark. They are to all intents and purposes identical with that mark.

6.7 Further, applying the principles consistently adopted by Panellists adjudicating administrative proceedings under the Policy, it is equally plain that both domain names are confusingly similar to the name of the Complainants well-known dictionary and its registered Canadian trademark.

6.8 The Complaint, therefore, meets the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.9 The Respondents case is that the, so called, core elements of the registered Canadian trademark namely, GRAND DICTIONNAIRE are as generic as "cola" and/or as widely used for different products as DOVE [e.g. for soap and for ice cream]. On that basis, its use of the domain name in issue for the pornographic pussy-first website is bona fide and fair.

6.10 But, given the notoriety of the Complainants GRAND DICTIONNAIRE trademark, the use to which the domain names have in fact been put cannot be regarded either as bona fide for the purposes of paragraph 4(c)(i) or fair for the purposes of paragraph 4(c)(iii) of the Policy.

6.11 The Complainants case in relation to this requirement of paragraph 4(a) of the Policy has been convincingly made out [see, paragraph 5.A.2 above] and has not been rebutted by the Respondent. Further, the respondent has failed to establish that any of the circumstances of paragraph 4(c) of the Policy are applicable. Accordingly, the Complainant succeeds in establishing the requirements of paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.12 Here, the Complainants case is based, essentially, on paragraph 4(b)(iv) of the Policy and, generally, applying the additional bad faith criteria enumerated in the Telstra case [WIPO Case No. D2000-0003]. For example, the Respondent appears to have taken steps to conceal its true identity by providing false details in breach of it Registration Agreement. Further, the Complainants trademark clearly has a strong reputation and is widely known. Still further, the Respondent has failed to show rights or legitimate interests in the domain names at issue. Finally, taking all the circumstances into account, it is really not possible to conceive of any plausible or contemplated use of the domain names by the Respondent that would not be illegitimate, such as by passing-off or an infringement of the Complainants rights under trademark law.

6.13 For these reasons, the Panel finds that the Complaint meets the requirements of paragraph 4(a)(iii) of the Policy.

 

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 names, <granddictionaire.com> and <grandictionnaire.com> be transferred to the Complainant.

 


 

David Perkins
Sole Panelist

Dated: July 15, 2003