WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Socit Franaise du Radiotlphone-SFR v. Modern Limited - Cayman Web Development

Case No. D2004-0385

 

1. The Parties

The Complainant is Socit Franaise du Radiotlphone-SFR, Paris La Defense, France, represented by Cabinet Dreyfus & Associs, France.

The Respondent is Modern Limited - Cayman Web Development, George Town, Cayman Islands, United Kingdom of Great Britain and Northern Ireland, represented by ESQwire.com Law Firm, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <sfr.org> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on May 26, 2004. On May 27, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 28, 2004, eNom 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, billing, and technical contact. 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 June 7, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was on June27,2004. The Response was filed with the Center on June 29, 2004.

The Center appointed Jonas Gulliksson, Olivier E. Itanu and David E. Sorkin as panelists in this matter on July 22, 2004. 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.

In accordance with the Rules and the Supplemental Rules the Administrative Panel will decide in its sole discretion whether to consider the late filed Response. In accordance with i.a. The Board of Governors of the University of Alberta v. Michael Katz d.b.a. Domain Names for Sale, WIPO Case No. D2000-0378, Voigtlnder GmbH v. John Voigtlander, WIPO Case No. D2003-0095 and BMW AG v. Loophole, WIPO Case No. D2000-1156, the Panel has decided to consider the Response, although the Respondent failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding.

The Administrative Panel shall therefore issue its decision based on the Complaint, the Response, the Policy, the Rules, and the Supplemental Rules.

 

4. Factual Background

The Complainant is proprietor of numerous trademark rights.

The Complainant has attached copies of the following trademark registrations to the Complaint.

- “SFR, LE CHOIX DES INTERNATIONAUX”, CTM, trademark n001880061, filed on September 19, 2001, covering goods and services in classes 9, 16, 35, 36, 38, 41 and 42;

- “SFR” and “SFR, LE MONDE SANS FIL EST A VOUS” International Trademarks n643.842 and 635.603 covering goods and services in classes 9, 35 and 38 ;

- “SFR” and “SFR, LE MONDE SANS FIL EST A VOUS”, UK and Northern Ireland Trade marks, n2029359 and 2009123, covering goods and services in classes 9 and 38 ;

- “ESPACE SFR”, French trademark n95594616, filed on October 14, 1995, covering goods and services in classes 9, 35, 37, 38, and 42.

- “L’ACCS SFR”, French trademark n97694859, filed on September 9, 1997, covering goods and services in classes 9, 16, 35, 36, 37, 38, 39, 41 and 42.

Moreover, the Complainant owns the domain names <sfr.fr> and <sfr.com>. The domain name <sfr.fr> has been registered by SFR on February 15, 2001, and directs visitors to the main Internet website of SFR, ”www.sfr.com”. SFR is also protected as a trade name.

 

5. Parties’ Contentions

A. Complainant

Background

SFR, formerly known as Cegetel, is the first private French telecommunications operator, which figures among the top 50 French companies. Due to internal reorganization of the company, Cegetel has taken over its subsidiary SFR, which was specialized in mobile telecommunications, and has changed its company name from Cegetel to “Socit Franaise du Radiotlphone” (“SFR”).

SFR offers a wide range of telecom services both on an individual and corporate basis. SFR is the leading private telecommunications operator in France with 16.8 millions customers at December 31, 2002. SFR has a strong market position in the area of telecommunication.

With 13, 9 million customers in 2003, SFR is one of Europe’s major mobile phone companies, and the leading private mobile telephony operator in France. SFR is the owner, among others, of the trademark “SFR”.

Thus, the Complainant’s trademarks enjoy a great notoriety in France and all over the world.

The Complainant has noticed the registration of the domain name <sfr.org>. A Whois Database search revealed that this domain name was registered by the Respondent (Annex 1 to the Complaint). The Complainant sent a warning letter, by registered letter, on October 10, 2003, via two e-mails, dated October 10 and December 1, 2003, and via fax dated December 1, 2003, to the Respondent, asking him to transfer amicably the domain name <sfr.org> based on their trademark rights (Annex 3 to the Complaint). The e-mails could not be delivered to one of their destinations, and were returned to the sender with the words “Delivery to the following recipients failed: e-mail address” (Annex 4 to the Complaint). The Respondent did not answer to any of these letters and e-mails.

The domain name <sfr.org> resolves to a search engine web page, as provided in Annex 5 to the Complaint

I. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

The domain name in dispute <sfr.org> consists in the trade mark “SFR”, which is precisely the trademark of the Complainant, and the generic suffix “.org”, not subject to protection as itself.

As a result the domain name <sfr.org> is a mere reproduction of the protected trademarks owned by the Complainant.

It is already established that the fact that the domain name is an identical reproduction of a trademark reveals the will of the Respondent to use the domain name to divert the considerable amount of Internet traffic to its search engine, as recognized in Microsoft Corporation v. Modern Limited – Cayman Web Development, WIPO Case No. D2003-0919 (Annex 8 to the Complaint).

Moreover, it’s also well established that the addition of the TLD should not be taken into account when appreciating the question whether there is an identity between the trade mark and the domain name (Joe David Graedon v Modern Limited – Cayman Web Development, WIPO Case N D 2003-0640, Annex 9 to the Complaint), merely because it is necessary for the registration of the domain name itself.

As a result, it clearly appears that the domain name <sfr.org> is identical to the numerous trademarks registered by the Complainant, whichleads to high risk of confusion, as a consumer may think that this domain directly refers to the Complainants’ services

II. The Respondent has no rights or legitimate interests in respect of the domain name;

The Respondent is not affiliated with the Complainant in any way. The Complainant has not given any license, consent or other right by which the Respondent could have been entitled to use the domain name in dispute.

Furthermore, the Respondent has shown no effort to use the domain name in connection with a bona fide offering of goods or services. As already mentioned, the domain name resolves to a search engine website (Annex 5 to the Complaint). Before receiving notice of the present Complaint, the Respondent gave no evidence of use or intent to use the domain name in dispute.

The Respondent does not show any evidence it has been commonly known by the domain name.

Furthermore, the Respondent did not answer the registered letter and e-mails sent by the Complainant in order to find an amicable settlement.

For all these reasons, the Respondent has no rights or legitimate interests in the domain name.

III. The domain name was registered and is being used in bad faith.

All of the following grounds establish that the domain name in dispute has been registered and is being used in bad faith

- The Respondent never answered the cease-and-desist letter and e-mail sent by the Complainant, as shown by materials attached in annex 4 and 5 to the Complaint. The lack of any reply seems to prove the Respondent registered the litigious domain name under a false identity, being in such in breach of its registration agreement.

- The fact that the various trademarks owned by the Complainant, and especially the trademark “SFR”, are well-known throughout the world makes it obvious the Respondent knew about the Complainant’s marks and that he registered the domain name at issue in bad faith.

- Furthermore, the Respondent has been involved in a number of UDRP cases including: (<cinecolombia.com>, Cine Colombia SA v. Modern Limited – Cayman Web Development, WIPO Case No. D2003-0671,Annex 10 to the Complaint), (<elservier.com>, Les Laboratoires Servier v. Cayman Trademark Trust, WIPO Case No. D2003-0667, Annex 11 to the Complaint) and (<peoplespharmacy.com>, Joe David Graedon v. Modern Limited – Cayman Web Development WIPO Case N D2003-0640, Annex 9 to the Complaint).

- Respondent does not conduct any legitimate commercial or non commercial activity through the domain name. This can imply that the Respondent has registered the domain name in dispute in bad faith.

B. Respondent

The Respondent has contested the allegations of the Complainant and stated the following.

The disputed domain name is composed solely of the common 3-letter combination SFR. SFR is incorporated in over 8 active and pending third party trademarks in the U.S. alone, including the following:

Number Mark Owner

•1325295 SFR Cook Paint and Varnish Co.

•1489815 SFR RHS Enterprises Inc.

•2006374 SFR State Chemical Mfr. Co.

•2175598 SFR Franklin Carter

•2125674 SFR Uniroyal Chemical Co.

•2751048 SFR Bio-Microbics Inc.

•76370340 SFR Security Benefit Life Insurance Co.

The U.S. Patent and Trademark Office Report is annexed as Exhibit 1 to the Response. SFR is a very common abbreviation used by thousands of third parties for many different word combinations. An advanced search on the Google.com search engine for “SFR” excluding the words “sfr.com”, “Societe”, “Francaise”, “Radiotelphone”, “telephone” and “phone” to avoid pages referencing Complainant, yielded over 1.4 million web pages containing the common 3-letter combination.

Respondent registered the disputed domain name when it expired and was deleted and became available for anyone to register. Declaration of Kara Fox at 1. (hereinafter “Fox Dec.” annexed as Exhibit 3 to the Response. Respondent chose the disputed domain name because it incorporates a common 3-letter combination. Id. Respondent uses the disputed domain name in connection with affiliate advertising programs operated by Google.com. Id. at 2. Respondent did not register the disputed domain name for the purpose of selling it to Complainant, and had no knowledge of Complainant or its trademark when it registered it. Id. at 3. Respondent did not register the disputed domain name with the intent to disrupt Complainant’s business, or to confuse consumers seeking to find Complainant’s web site. Id. Respondent did not register the disputed domain name to prevent Complainant from owning a domain name incorporating its alleged trademark. Id. Regarding the other decisions against Respondent cited in the Complaint, in each case Respondent only registered domain names that were deleted due to expiration and became available for anyone to register. Id. at 4.

I. Complainant’s Trademark is Identical to the Disputed Domain Name

Respondent does not dispute this element of the Policy. However, because Complainant has not proven the other elements of the Policy, it is not necessary for the Panel to evaluate this element of the Policy.

II. Respondent Has Rights And A Legitimate Interest In The Disputed Domain Name

The second element Complainant must prove is that Respondent has no rights or legitimate interest in the name. The Complaint fails here.

“SFR” is simply a 3-letter combination to which Complainant does not have exclusive rights. A search on the Internet search engine Google.com search engine for “SFR” yielded over 1.4 million web pages containing the common 3-letter combination. There are 8 pending and active third-party trademark registrations for “SFR” in the U.S. alone. This substantial third party use is irrefutable evidence that Complainant does not have exclusive rights to the term SFR and, thus, supports Respondent’s legitimate interest in the disputed domain name. The fact that SFR is subject to substantial third party use on the Internet, in and of itself, establishes Respondent’s legitimate interest in the disputed domain name. Energy Source Inc. v. Your Energy Source, NAF Case No. 96364 (“energy source” “not exclusively associated with Complainant’s business”).

It is well-established that, like common words, anyone is entitled to register a 3-letter combination and the respondent’s legitimate interest is established per se at the point of registration, since no other party can claim exclusive rights to it. Tenenhaus v. Telepathy, Inc., NAF Case No. 94355 (complainant not entitled to “exclusive use of the domain name DAF”); Trans Continental Records, Inc. v. Compana LLC, WIPO Case No. D2002-0105 (“use of [LFO.com] . . . even for sale, is a legitimate business.”); Kis v. Anything.com Ltd., WIPO Case No D2000-0770 (registration of 2 and 3-letter domain names found to be legitimate.) As the Panel noted in Kis v. Anything.com, WIPO Case No D2000-0770, “The Domain Name at issue here is a three-letter second-level domain within the popular “.com” top-level domain. All or nearly all of the three-letter names have long been taken; respondent itself holds a number of other short domain names (as reflected in Network Solutions’ Whois database), including <an.com>, <hw.com>, <vz.com>, <xv.com>, <yz.com>, <zw.com>, <aex.com>, <fii.com>, <ldn.com>, <lna.com>, <mhi.com>, <nnc.com>, <otl.com>, <tbj.com>, <tca.com>, <ukt.com>, <vaz.com>, <vdj.com>, <wla.com>, and probably many more. Respondent appears to have selected the Domain Name <kis.com> because of its length . . . , rather than because it corresponds to Complainant’s trademark -- indeed, it seems unlikely that Respondent was even aware of Complainant’s trademark when it selected the domain name.

Under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the Policy. . . .

Under these circumstances, the Administrative Panel finds that Respondent has a legitimate interest in the Domain Name.”

Complainant has alleged that Respondent does not have a legitimate interest in the disputed domain name because disputed domain name resolves to a “search engine website.” To the contrary, such use does establish Respondent’s legitimate interest under the Policy. Respondent generates advertising revenue from the disputed domain name through an affiliate program with Google.com. It is well-established under the Policy that this is a bona fide offering of goods/services, pursuant to paragraph 4(c)(i). Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031. Williams, Babbitt & Weisman, Inc. v. Ultimate Search, NAF Case No. 98813 involved the use of the 3-letter combination <wbw.com for the same type of pay-per-click advertising associated with the disputed domain name here. The Respondent in <wbw.com> case owns tens of thousands of domain names that are used in this manner. In finding a legitimate interest, the 3-member panel in <wbw.com> case noted that “[n]either the current UDRP nor current ICAAN registrar contracts preclude this type of domain name use.” See also Dial-a-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764; Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654; GLB Servicos Interativos S.A. v. Ultimate Search, WIPO Case No. D2002-0189.

Accordingly, because Respondent has a legitimate interest in the disputed domain name, the Complaint should be denied.

III. Complainant Has Not Demonstrated That The Disputed Domain Name Was Registered and Is Being Used In Bad Faith

The third element that Complainant must show is Respondent’s bad faith registration and use. The Complaint fails on this count as well. The Policy identifies four circumstances that may constitute evidence of bad faith registration and use.

There is absolutely no evidence that Respondent registered the disputed domain name to sell to Complainant. Nor is there any evidence that Respondent had even heard of Complainant or its purported trademark when it registered the disputed domain name. Absent direct proof that a common term domain name was registered or acquired solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use. Ultrafem, Inc. v. Warren Royal, NAF Case No. 97682. There, the 3-member panel, when ruling in favor of the owner of the common term domain name <instead.com> held:

“A bad faith showing would require the Complainant to prove that the Respondent registered <instead.com> specifically to sell to the Complainant, or that the value of “instead” as a domain derived exclusively from the fame of its trademark. Neither has been proven in this case. In the absence of an intent to capitalize on the Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common, generic term. (emphasis added).”

Here, the undeniable fact is that “SFR” is an extremely common 3-letter combination, appearing on over 1.4 million third party web pages unrelated to Complainant. This extensive worldwide third party use is overwhelming evidence that Complainant does not enjoy exclusive use of the disputed domain name, thus it cannot be concluded that Respondent selected the disputed domain name with Complainant in mind. It did not. There can be no bad faith registration where there is no evidence that a respondent had knowledge of a Complainant or its mark. Kis v. Anything.com Ltd., supra. (“the Administrative Panel finds that there are no indications that Respondent knew of Complainant or its trademark when registering the Domain Name.”)

Respondent certainly had no basis for having knowledge of Complainant or its mark when it registered the disputed domain name. Complainant operates in the country of France and Respondent is located in the Cayman Islands. There is no evidence that Complainant does business in the Cayman Islands or that it known there, so there is no basis for inferring that Respondent was aware of Complainant or it mark when it registered the disputed domain name. Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 (“Complainant has not provided any evidence of facts which might indicate that U.S. Respondent knew or should have known of its [German] trade name use or trademark registrations”). FreedomCard, Inc. v. Mr. Taeho Kim, WIPO Case No. D2001-1320) (“There is no evidence, and no basis for inferring, that Respondent, in Korea, was aware, or should be deemed to have been aware, of Complainant or its U.S. trademark prior to the registration of the disputed domain name.”) Cream Holding Ltd. v. Nat’l Internet Source, Inc., WIPO Case No. D2001-0964 (“There is no evidence, and no basis for inferring, that the Respondent was aware, or should be deemed to have been aware, of the Complainant or its trademark prior to the registration of the disputed domain name.”); John Fairfax Publications Pty Limited v. Domain Names 4 U and Frederick Gray, WIPO Case No. D2000-1403 (no bad faith registration on the part of U.S respondent not on notice of Australian trademark); VZ VermgensZentrum AG v. Anything.com, WIPO Case No. D2000-0527 (Cayman Islands Respondent would not have knowledge of Swiss and German trademarks); Koninklijke KPN N.V. v. Telepathy, Inc., WIPO Case No. D2001-0217 (May 7, 2001) (U.S. registrant could not “reasonably have been expected to know about the Complainant or its Benelux trademark.”); Deutsche Lufthansa SA v. Greenwald (German trademark not “so well-known in the United States.”)

Complainant points to other rulings against Respondent. However, an administrative panel must decide “each case on its own merits.” EPLAN Software & Service GmbH & Co K.G. v. Chad Folkening, ECORP.com, Inc E-PLAN, and ECAST, WIPO Case No. D2000-0806. As noted by the 3-member Panel in Sustainable Forestry Management Limited v. SFM.com, et al., WIPO Case No. D2002-0535:

“The Complainant has referred to various other Panel decisions which it says show that the Respondent has acted in bad faith with regard to domain names on other occasions. However, the Panel must deal with this case on its own merits, and we cannot take into account decisions made in other cases on the basis of different evidence and submissions.”

In all of the cases cited by Complainant, Respondent filed no response. Respondent registered the disputed domain names there, as here, because they expired and were deleted, and decisions under the Policy expressly hold that Respondent is entitled to infer that no party has rights to such deleted domain names. It would be unfair for this Panel to conclude that Respondent has engaged in bad faith here, because of other decisions involving this Respondent – where no response was filed, and where it has been held that a party is entitled to register deleted domain names in good faith. The Panels simply had no evidence from Respondent contradicting the allegations raised by those complainants. The Panel here does have substantial evidence supporting Respondent’s right to retain the disputed domain name and strong evidence contradicting Complainant’s allegations. Moreover, here the disputed domain name is a simple 3-letter combination to which Complainant certainly cannot claim it has exclusive rights.

It is respectfully submitted that it is the evidence of record in this proceeding that should guide the Panel in reaching a decision.

Complainant’s alleges that Respondent’s failure to respond to Complainant’s cease and desist letter and email constitutes bad faith. It does not. There is no affirmative obligation for a domain name owner to respond to any communications or to UDRP complaints. In Eauto, LLC v. Triple S. Auto Parts d/b/a Kung Fu Yea Ent., Inc., WIPO Case No. D2000-0047 (March 24, 2000), the Panel stated:

“Complainant’s final allegation of bad faith – that Respondent refused “Complainant’s attempts to amicably settle this dispute and refus[ed] receipt of Complainant’s cease and desist letter” – is no evidence at all of bad faith. A domain name registrant has no obligation to respond to or even receive demand letters.”

Accordingly, for all the above reasons, Complainant has failed to meet its burden of proving bad faith registration and use and, the Complaint must, therefore, be dismissed.

 

6. Discussion and Findings

According to Paragraph15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph4(a) of the Policy directs that the Complainant must prove each of the following:

1) 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

2) that the Respondent has no legitimate interests in respect of the domain name; and

3) that the domain name has been registered and is being used in bad faith.

I. Complainant’s Trademark is Identical or Confusingly Similar to the Disputed Domain Name

The Complainant is the owner of several registered trademarks covering the three letters SFR or combinations thereof in the European Union and in the form of International Trademarks registered according to the Madrid Agreement in many countries of the world in classes 9, 35 and 38.

The international registrations for the marks SFR (device), SFR LE MONDE SANS FIL EST A VOUS, SFR, SFR. SFR (device) SFR LE MONDE SANS FIL EST A VOUS (device) and L’ACCES SFR some of which have been registered already in 1995 i.e. before the registration of the disputed domain name <sfr.org> which was registered on March3,2000.

The Community Trademark Registration was filed on September 27, 2000, i.e. later than the Respondent’s domain name but nevertheless represents an exclusive trademark right in the European Union.

The International Trademark Registrations are protected in more than 20 countries of the world including United Kingdom and Northern Ireland and the Community Trademark Registration covering the 25 countries of the European Union.

Consequently, the Complainant’s trademarks enjoy extensive international protection within the fields relevant to Complainant’s business.

The fact that a party owns a series of marks built upon a common element is normally taken as an indication that the scope of protection of the common element is strengthened. The same applies to trademarks which are identical with the dominant part of a company name.

The fact that the letters SFR is a letter-mark consisting of three letters does not mean that it should be considered a generic word.

It is in line with established international trademark practice to grant protection to trademarks consisting only of non-pronounceable letter combinations.

In this case the acronym “sfr” has no particular connotation which would be generic or descriptive in relation to the business activities or registered classes of goods and services of the above trademark registrations.

The Respondent, in the Response submitted to the Center expressly mentions that “Respondent does not dispute this element”.

The Panel finds that the disputed domain name is identical with the trademarks consisting of the letters “sfr” in various shapes and combinations and that it is at least confusingly similar with the marks consisting of a combination of “sfr” and various slogans.

II. Rights or Legitimate Interests

The Complainant indicates that it has not provided any authorisation for the use of its trademarks.

The Complainant also argues that the Respondent has shown no effort to use the <sfr.org> domain name in connection with a bona fide offering of goods or services, as “the domain name resolves to a search engine website” and that no evidence exists of the use or intent to use the domain in dispute before the Complaint was notified to the Respondent.

The Respondent has stated that the domain name was registered after the expiration of the domain name registration.

This means that the Respondent was aware of the fact that there had existed a domain name <sfr.com> owned by a third party.

Since the ownership of a domain name does not grant any exclusive right to use it as a trademark the fact that a domain name has expired does not mean that the letter combination can be fully used and registered by anyone.

The only one of the parties that owns rights in the trademark SFR is the Complainant.

The existence of eight (8) trademarks by parties un-related to the Complainant has no relevance in this case since parallel trademarks can exist if they cover different goods and services without any risk of dilution or degeneration.

The fact that the letters “sfr” can be found on the Google search engine does not preclude Complainant from obtaining trademark rights in the letter combination sfr in relation to its goods and services.

Several of the references to “sfr” in Google refer to abbreviations or acronyms without indicating whether they enjoy protection or not and without indication of any combination or meaning. These references do not constitute prima facie evidence that the letter combination sfr is free to be used by others.

Consequently, these references do not constitute evidence of any rights or legitimate interests of the Respondent in respect of the domain name.

In its response, the Respondent argues that certain precedents would have ruled that “like common words, anyone is entitled to register a 3-letter combination” and that Respondent’s “legitimate interest” would be “established per se at the point of registration since no other party can claim exclusive rights to it”, namely

- the Tenenhaus v/ Telepahy Inc. NAF Case No. 94355, in a case relating to the domain name <daf.com>,

- the Kis v. Anything.com Ltd., WIPO Case No. D2000-0770, in a case relating to the domain name <kis.com>,

- the Trans Continental Records, Inc. v. Compana LLC, WIPO Case No.D2002-0105, in a case relating to the domain name <ifo.com>.

A further analysis of the above mentioned cases reveals that

- in the <daf.com> case, the Complainant in such case admitted that it had not registered any trademark comprising the term “DAF”. In the present case, the Complainant can establish rights in numerous trademarks, as recognised by the Respondent,

- in the <kis.com> case, the Panel found that legitimate interest in the domain name was established, as it was used as the address for its Korean Information Site, which perfectly describes the nature and objective of his site and which “resolve to a page entitled “Korean Information Site” featuring hyperlinks to various websites, which contain information about Korea and Asia”; and that “Respondent’s interest in the Domain Name <kis.com> appears to be unrelated to Complainant’s trademark”. In the present case, the Complainant does not explain what is the meaning of the three letters “sfr” and does not provide any evidence of the legitimacy of its choice of the three letters “sfr” in relation to the Web content of the page displayed after typing “www.sfr.org”,

- in the <ifo.com> case, the Panel found that “Respondent lacks legitimate rights or interests in the domain name <ifo.com> because respondent in this case didn’t provide enough evidence that the domain name was to be used for a vanity email business”.

It is the Panel’s opinion that, contrary to the Respondent’s argument in this case, it cannot be argued that the Policy states that “anyone is entitled to register a 3-letter combination” and that Respondent’s “legitimate interest” would be “established per se at the point of registration since no other party can claim exclusive rights to it”. Rather, the Panels should seek (as in these cases cited by the Respondent) whether the effective use of the disputed domain name is a bona fide use.

Respondent also argues that the fact that the disputed domain name resolves to a “search engine website” would establish in itself Respondent’s legitimate use. In the WIPO case reported by the Respondent to support this statement Sweeps Vacuum & Repair Center, Inc. v. Nett Corp, WIPO Case No. D2001-0031 relating to a domain name <sweeps.com> (which is not a 3 letter domain name, and is a domain name with meaning), the Panel ruled that the domain name at issue was used in a legitimate locator service in which “Respondent was using the domain name not in the trademark sense, but in the descriptive sense, describing the types of businesses (sweepstakes related) listed on the directory page”. The same logic applied in the other cases cited by the Respondent:

- in Dial-A-Mattress Operating Corp. v Ultimate Search, WIPO Case No. D2001-0764, for the domain name <matress.com> used in connection with a search engine related to mattresses

- in Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654, for the domain name <tammy.com> which is a common English-language women’s first name, which was used in order to redirect to an adult site,

- in GLB Servicos Interativos S.A. v. Ultimate Search, WIPO Case No. D2002-0189, for the domain name <paparazzo.com>, which was used to provide links related to pornographic contents.

All the cases mentioned above related to domain names having a meaning and used in connection with a Website where the contents were consistent with such meaning.

As mentioned above, in the present case, Complainant does not explain what the meaning of the three letters “sfr” is and does not provide any evidence of the legitimacy of its choice of the three letters “sfr” in relation to the web content of the page displayed after typing “www.sfr.org”.

The only case involving a domain name having no particular evident meaning cited by the Respondent in relation to its statement is Williams, Babbitt & Weisman, Inc. v. Ultimate Search, NAF Case No. 98813, relating to the domain name <wbw.com>, having no obvious meaning. Contrary to Respondent’s allegations nothing in the finding of the Panel indicates that the Respondent uses “pay-per-click” advertising associated with the disputed domain name. Instead, the Panel noted that the Respondent was engaged in a “pattern of registering domain names in large quantity for advertising purposes not clearly explained in the pleadings”. Also the Respondent alleges that the respondent in that case “owns tens of thousands of domain names that are used in this manner”. Nevertheless, again, the decision does not contain such information. Finally the Respondent misquotes the decision by citing incompletely the discussion of this case.

The Pane wishes to cite the Red Nacional De Los Ferrocarriles Espanoles v. 0x90, WIPO Case No. D2001-0981. This dispute involved the domain name <renfe.com> which has no particular obvious meaning. “RENFE” is the acronym of the Spanish railways, being a Spanish well known trademark by which the Complainant is internationally known. In this case the <renfe.com> domain name was merely used to direct the users to a portal advertising page which appeared, despite the fact that it was purporting to be a site of “renfe.com”, to be a standard page used by the Respondent for all of its unused registered domain names. The Panel in that case ruled that “This advertising page appears […] to be nothing more than a “placeholder,” […] for the purpose of making it appear that the Respondent is making a legitimate commercial use of the domain name. The Panel does not regard this situation as evidence of use of the Domain Name “in connection with a bona fide offering of goods or services,” as required by the rules”.

It is the Panel’s opinion that the Respondent has no rights or legitimate interests in respect of the domain name domain name <sfr.org>.

III. The Domain Name was registered and is being used in Bad Faith

The Complainant has alleged that the Respondent has not answered to cease and desist letters and e-mails attached to the Complaint as Annexes 4 and 5. This does not, however, indicate registration and use in bad faith.

A fact that could indicate bad faith would be the Respondent’s statement that it only registered the disputed domain name after it had expired. If the expired domain name was <sfr.org> and held by the Complainant it would indicate that Respondent was aware of the fact that the Complainant had been the registered owner of the domain name and that the owner of it was Socit Francaise du Radiotlphone-SFR SA, that may be the owner of company names and trademarks covering the acronym and SFR.

The fact that the Complainant’s trademarks are widely used and registered in a large number of countries including the United Kingdom and Northern Ireland could be sufficient to prove knowledge of the Complainant’s rights.

In addition the Respondent has not given any reasonable explanation why it has selected the letter combination “sfr” as its domain name.

Furthermore, the Respondent has on several occasions adopted domain names consisting of famous foreign trademarks belonging to third parties which have later been transferred in Administrative Procedures.

In the WIPO case cited by the Complainant Les Laboratoires Servier v. Cayman Trademark Trust, WIPO Case No. D2003-0667, which relates to another French famous trademark registered by the Respondent, the panel reminds that “as established in Georgia Boot LLC v. Modern Limited - Cayman Web Development, NAF Case No. FA00149173, the Respondent has registered over 2,200 domain names and is in the business of acquiring and selling domain name registrations”. This last finding especially mentions that many of the domain names registered to Modern Limited - Cayman Web Development “are identical or confusingly similar to valuable, registered and famous trademarks (e.g., <toshibalaptop.com>, <yamahadirtbike.com>, <yamahadirtbikes.com>, <nelson-mandela.com> and <theweatherchannel.com>)”. In the recent WIPO case Infinity Broadcasting Corporation v. Cayman Trademark Trust, WIPO Case No. D2004-0251, the Panel also mentions that “several of Respondent’s domain names appear to be misspellings of, or otherwise confusingly similar to well-known trademarks of others such as <bloomindales.com> and <uyahoo.com>”. In WIPO case Microsoft Corporation v. Modern Limited – Cayman Web Development, WIPO Case No. D2003-0919, the Complaint was directed against the domain names <windowsmediaplayer.com> and <microsoftupdate.com>, etc.

The Respondent argues that “Complainant operates in the country of France and Respondent is located in the Cayman Islands” and claims that registration of the domain name <sfr.org> was done without prior knowledge of the Complainant’s trademark.

Nevertheless, as proved by the cited cases, Complainant seems to have a good knowledge of French famous trademarks (as well as American, Japanese, etc.).

As reminded in the cited case Les Laboratoires Servier v. Cayman Trademark Trust WIPO Case No. D2003-0667, “the Respondent is in the habit of preventing trademark owners from reflecting their marks in a corresponding domain name: numerous complaints have been filed against the Respondent”. The Panel notes that the Respondent argues that the Panel “must deal with this case on its own merits, and we cannot take into account decisions made in other cases on the basis of different evidence and submissions” but the Panel also notes that the Respondent is not able to provide any single case in its favour.

Respondent is engaged in a pattern of intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with third party’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The disputed domain name <sfr.org> is being used by the Respondent in a way that could derive revenue from the Internet traffic generated through the Complainant’s investments.

In view of all of the above-mentioned facts it is the Panel’s opinion that Respondent’s registration and use of the <sfr.org> domain name, with the intent to profit from the goodwill attributable to Complainant’s registered mark, constitutes bad faith under Policy 4(b)(i).

 

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 <sfr.org> be transferred to the Complainant.

 


 

Jonas Gulliksson
Presiding Panelist

Olivier E. Itanu
Panelist

Dated: August 5, 2004

 


DISSENT

I respectfully dissent

Respondent claims that it registered the disputed domain name because it incorporates a common three-letter combination, rather than because it corresponds to Complainant’s trademark. That claim, if accepted by the Panel, is dispositive of this matter, since a domain name that was registered for reasons unrelated to the trademark has not been registered in bad faith for purposes of the UDRP. See, e.g., Fbricas Agrupadas de Muecas de Onil S.A. v. Palameta, WIPO Case No. D2000-1689 (March 14, 2001). This case therefore turns on whether the Panel accepts Respondent’s claim as truthful. This assessment requires the Panel to consider circumstantial evidence of Respondent’s intentions, and we ought not place undue weight upon Respondent’s self-serving declaration. See id. n.5. Nonetheless, under the circumstances of this case, taking into consideration the nature of the disputed domain name, the plausibility and credibility of Respondent’s claimed motivation, and all of the other evidence before the Panel, I am of the view that Complainant has failed to sustain its burden of proof on this question. I therefore would find that Complainant has not proved that the disputed domain name was registered in bad faith, and would dismiss the Complaint on that basis.

 


 

David E. Sorkin
Dissenting Panelist

Dated: August 5, 2004