WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Socit Franaise du Radiotlphone-SFR v. Karen

Case No. D2004-0386

 

1. The Parties

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

The Respondent is Karen, Brentwood, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <tvssfr.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the“Center”) on May26,2004. On May27,2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May28,2004, Network Solutions, LLC 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June8,2004. The Center verified on June14,2004 that the Complaint together with the amendment to 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 June14,2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July4,2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July5,2004.

The Center appointed Mladen Vukmir as the sole Panelist in this matter on July8,2004. 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

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 “SOCIETE FRANCAISE DE RADIOTELEPHONIE” (“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 million customers at December31,2002. 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 players, and the leading private mobile telephony operator in France. SFR is the owner, among others, of the trademark “SFR”.

The Complainant provided various registration certificates in the USA, Germany and the European Union for all three marks (Annex 5). Between others, the following are some of the trademarks applicable:

(i) “SFR, LE CHOIX DES INTERNATIONAUX”, CTM, trademark n001880061, filed September19,2001, cl. 9, 16, 35, 36, 38, 41 and 42 ;

(ii) “SFR” and “SFR, LE MONDE SANS FIL EST A VOUS” International Trademarks n643.842 and 635.603, cl. 9, 35 and 38;

(iii) “SFR” and “SFR, LE MONDE SANS FIL EST A VOUS”, UK and Northern Ireland Trade marks, n2029359 and 2009123, cl. 9 and 38 ;

(iv) More than 200 French trade marks including the mark “SFR”, covering mainly goods and services in classes 9, 35, 38, 41 and 42, among which:

- “ESPACE SFR”, French trademark n95594616, filed on October14,1995, cl. 9, 35, 37, 38, and 42.

- “L’ACCS SFR”, French trademark n97694859, filed on September9,1997, cl. 9, 16, 35, 36, 37, 38, 39, 41 and 42.

The Complainant has noticed that the domain name <tvssfr.com> has been registered. A WHOIS database search revealed that said domain name was registered by the Respondent. The Complainant sent a warning letter via registered mail and e-mail, dated October30,2003, to the Respondent, requesting the amicable transfer of the domain name <tvssfr.com> (Annex 3).

The Respondent replied by mail on November11,2003, arguing that it has been the victim of a credit card fraud and it has no intention of using the domain name <tvssfr.com> nor has access to do so. As the Respondent appeared as administrative contact, the Complainant requested its help to organize the transfer amicably. But the Respondent notified the Complainant that it contacted the registration unit to ask for the dissociation of the domain name from its name, request which received no answer (Annex 4). The Respondent still appears as administrative contact on the WHOIS database (Annex 1). The Respondent’s apparent inability to independently transfer the domain name resulted in Complainant’s initiating of these proceedings.

 

5. Jurisdictional Basis

The dispute is within the scope of the Policy and the Panel has jurisdiction to decide the dispute. The Registrar’s registration agreement incorporates the Policy. The domain name was registered on September12,2003.

The Complainant avers that each of the requirements of Paragraph 4(a) of the Policy has been satisfied and the Respondents are therefore required to submit to mandatory administrative proceeding.

 

6. Parties’ Contentions

A. Complainant

The Complainant claims that the domain name <tvssfr.com> should be transferred to it because (a) the domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; (b) the Respondent has no rights or legitimate interests in respect of the domain name; and (c) the domain name was registered and is being used in bad faith.

(a) The domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights; (Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

SFR is the owner of numerous trademarks rights throughout the world, including Great Britain. In particular, SFR is the owner of several international trademarks and registrations having a specification of goods and services mainly in the field of fixed and mobile telecommunications. Some of the pertinent registered trademarks are listed above in this decision. All of the cited device trademarks feature prominently the letters SFR as the dominant segment of the trademarks.

The Complainant’s analysis shows that the domain name <tvssfr.com> entirely reproduces the SFR marks with the mere addition of the descriptive term “tv”, usually an abbreviation for “television”, and the repetition of the letter “s”, which creates no distinction in itself. Moreover, SFR proposes an online television service entirely devoted to mobile telecommunications, and the generic word “tv” added by the Respondent suggests a television service, leading the public to think that the domain name in dispute will resolve to a website related to SFR’s official website and services, specially dedicated to television. Furthermore, the generic suffix “.com” is not distinctive and certainly not subject to protection in itself. It is already established that the fact that a domain name wholly includes a Complainant’s mark is sufficient to establish confusing similarity, despite the addition of generic words. This has been held by numerous prior Panelists: Nokia Corporation v. Nokiagirls.com a.k.a. IBCC , WIPO Case No. D2000-0102, EAuto, L.L.C. v. EAuto Parts , WIPO Case No. D2000-0096 (Annex 6).

(b) The Respondent has no rights or legitimate interests in respect of the domain name; (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Complainant alleges that the Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register its trademarks and service marks, or to register any domain name incorporating said marks. The Complainant has not granted any license or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the said mark.

The Respondent has no rights or legitimate interests in the domain name. The Respondent has never used the term “SFR” in any way before or after the Complainant developed its services in the field of fixed and mobile telecommunications. And, as SFR is famous throughout the world and also in UK, any attempt to use the name is made in bad faith when the Respondent registered the domain names, in September12,2003, SFR had already been existing for years. The Respondent is absolutely not known under the name SFR or any similar term.

Finally, the Respondent is not making any legitimate non-commercial or fair use of the domain names. There is no active website linked to the domain name (Annex 7), which demonstrates that the domain names owner just prevents the Complainant from registering said domain name.

(c) The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Respondent knew or must have known the existence of SFR at the time it registered the domain name in dispute. The Respondent did not claim otherwise.

The Respondent alleged in the correspondence which preceded this proceeding that it was victim of computer fraud and that it did not want to register the domain name at all. The Respondent, however, did not in transferring the domain name, because it allegedly did not have sufficient access to the domain name registration technical procedures.

The fact that there is no active website linked to the disputed domain name is another element to show that the Respondent does not use said domain name in good faith (Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No D2000-0003; Annex 8). Bad faith can also result from inaction in relation to the domain name, in certain circumstances and it does appear to be so in the present case.

SFR is the owner of numerous trademarks rights throughout the world, including in Great Britain. The registration by the Respondent, not followed by any use, tends to create in the public’s mind the impression that SFR owns a domain name without having constructed the website related to it, which would be quite unprofessional by Complainant’s standards. Accordingly, the Complainant thinks that the registration of the domain name was designed to tarnish the reputation of the mark, and therefore the Complainant.

The domain name was registered in bad faith, if only because said domain name is composed of the Complainant’s trademark to which are added the letters “tvs” and thus that the Respondent is associated with the Complainant’s trademark SFR. The Complainant concludes, that it is inconceivable that the Respondent has chosen to include the invented word, i.e. the abbreviation SFR in the domain name by accident. Any actual or contemplated use of the domain name by the Respondent would be illegitimate, taking into account the fact that the trademark SFR is registered, and might even have achieved famous status in certain markets. Furthermore, no intention to use the mark has been expressed.

B. Respondent

The Respondent did informally contact the Complainant and the Center. In its emails to Complainant’s representative of November11,2003, and to the Center of June16,2004, agreed that the domain name in question should be transferred to the Complainant.

In addition, the Respondent’s representative requested WIPO or the Panelist in its email of June16,2004, to refrain from publishing the name and the address of the Respondent as indicated in the Registrar Database, albeit without elaborating either on factual or legal basis regarding this point. All the correspondence referred hereto actually preceded the appointment of the Panelist and no formal Response was ever filed by the Respondent in the proceedings.

 

7. Discussion and Findings

An interesting and not entirely infrequent issue arises in this case. What should the Panelist do when the Respondent does not contradict the Complainant’s contentions and agrees to its request to transfer the domain name? Should it just take the Complainant’s arguments as proven without any consideration or should it go into the merits and consider whether all requirements have been cumulatively fulfilled for a transfer of a domain name to be effected? Past WIPO cases have taken both approaches. The former view has been taken in decisions such as Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398, Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620, Juventus F.C. S.p.a. v. Sergio Bragana WIPO Case No. D2000-1466, and Deutsche Bank AG v. Carl Sieger, WIPO Case No. D2000-0984. In the cases The State of the Netherlands v. Goldnames Inc., WIPO Case No. D2001-0520 and Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745 the Panels took the view that even though the Respondent agreed to transfer the domain name, there was still a necessity to make substantive findings. What should be the test to determine which approach to take? In Panel’s view one should take into account whether (i) the Respondent’s consent was authentic and obviously expressed its true will and intention indicating expressly and unconditionally that the domain name should be transferred, (ii) the Respondent is without doubt the true registrant, and (iii), there are no other circumstances which may give rise to a reasonable doubt as to the true intention of any of the parties involved.

Considering the above, in this case the Panel concludes that not all the above tests have been satisfied because (i) the Respondent seems not to be the true owner and registrant of the domain name, (ii) the matter involves alleged credit card and/or computer fraud which the Panel shall not look into details for the purpose of this decision as they fall out of the scope of the UDRP. Consequently, this Panel considers its duty to make findings on the following issues before reaching a final decision and the Panel shall now turn to examine each one of them separately.

A. Identical or Confusingly Similar

The Panel is convinced that the domain name is identical or confusingly similar to the Complainant’s registered trademarks.

The Complainant argued that (i) domain name <tvssfr.com> reproduces entirely the SFR trademark; (ii) the “sfr” is accompanied by a descriptive term “tv”, usual abbreviation for “television”, and the letter “s”, which creates no distinction in itself; (iii) the term “tv” adds to the confusion because SFR offers a service of television online entirely devoted to the universe of mobile telecommunication and it is reasonable to expect that the public would be lead to think that the domain name in dispute will direct to a website related to SFR’s official website and services, specially dedicated to television; (iv) the generic suffix “.com” is not distinctive and certainly not subject to protection as itself. The Complainant goes on to cite cases where the fact that a domain name wholly includes a Complainant’s mark was considered sufficient to establish confusing similarity, despite the addition of generic words (Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 and EAuto, L.L.C. v. EAuto Parts, WIPO Case No. 2000-0096).

B. Rights or Legitimate Interests

The Panel concludes that the Respondent had no rights or legitimate interests in using the domain name in question.

The Complainant stated that the Respondent is not affiliated with the Complainant in any way. The Complainant further submitted that it has not authorized the Respondent to use and register its trademarks and service marks, or to seek the registration of any domain name incorporating said marks. The Complainant also has not granted any license or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the concerned mark.

Furthermore, the Complainant argued that the Respondent has no prior rights or legitimate interest in the domain name. The Respondent has never used the term “SFR” in any way before or after the Complainant developed its services in the field of fixed and mobile telecommunications. When the Respondent registered the domain name, in September12,2003, SFR had already been existing for years.

The Complainant stated that the Respondent is not known under the name SFR or any similar term.

Finally, the Complainant contended that the Respondent is not making any legitimate non-commercial or fair use of the domain name. There is no active website linked to the domain name, which demonstrates that the domain name owner just prevents the Complainant from registering said domain name.

Again, in the absence of the Response, the Panel can assume that none of the above arguments have been denied by the Respondent and therefore concludes that the Respondent had no rights or legitimate interests to use the disputed domain name.

C. Registered and Used in Bad Faith

The Panel finally concludes that the Respondent has registered and used the domain name in bad faith.

The Complainant argued that the Respondent knew or must have known of the existence of SFR at the time it registered the domain name in dispute. The Respondent never alleged to the contrary.

The Complainant stated that the fact that there is no active website linked to the disputed domain names is another element to show that the Respondent does not use said domain names in good faith (see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003, also Sanrio Company, Ltd. And Sanrio, Inc. v. Neric Lau, WIPO Case No. D2002-0172).

The Complainant further stated that the SFR is owner of numerous trademarks rights including in Great Britain. The registration by the Respondent, not followed by any use, tends to create in the public’s mind the impression that SFR owns a domain name without having constructed the website related to it, which would be quite unprofessional. It may lead to think that the registration of the domain name was designed to tarnish the reputation of the mark, and therefore the Complainant.

In addition to the above, the Respondent itself in its email of June16,2004, confirmed that the domain name had been registered and used by an unknown person and therefore implicitly agreed that it had been registered and used in bad faith.

The Respondent offered no counter arguments to the Complainant’s submissions and the Panel holds the Complainant’s contentions as true and proved and hence concludes that the Respondent had registered and used the disputed domain name in bad faith.

D. Publishing the personal details

Finally, the Panel turns to the Respondent’s representative request that the name and the address of the Respondent be kept confidential and not publicized once this decision is issued or otherwise made publicly available.

The Policy in paragraph 4(j), second sentence, provides that “All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision”. The Panel therefore has power to decide “in exceptional case” to keep portions of its decision away from the public.

Before reaching any decision to this effect this Panel will have to consider the following.

Firstly, the first name and the possibly true address of the Respondent have already been made public and are currently publicly available on WHOIS database, related to the domain name in question. There is no family name stated and only a string of capital letters in parenthesis is added to the first name. Secondly, the Panel’s duty when delivering the decision, is to state the full name and address available on the Registrar’s records so as to avoid any possible confusion in the enforcement of the decision. Thirdly, in this particular case the name of the Respondent has not been displayed on WHOIS records in full and the work email address has been left out as well. However, it may be possible to track down the Respondent personally by its address, provided it is indeed the correct Respondent’s address.

On the other hand, this Panel sees no detriment in view of the outcome and enforcement of this decision if the Respondent’s address is not made public on the official WIPO website.

Moreover, the Panel finds that the ever increasing role reserved for privacy protection in the EU plays a subtle role in this particular case. Although this concept falls outside the scope of the UDRP, it does have an impact between the two parties who are both of EU origin. Therefore, the Panel will accept that the somewhat confounding, although unproven, circumstances of the Respondent’s situation in conjunction with the privacy protection provisions might constitute an “exceptional case” in the sense of the Policy paragraph 4(j).

Thus, on balance, the Panel considers this argument as reasonably convincing and will advise the Center to keep blank the Respondent’s street address and postal code spot in Section1 of this decision when publicizing the decision. The Panel holds that the first name and the country of the Respondent cannot in any meaningful way reveal the identity of the Respondent.

 

8. 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, <tvssfr.com> be transferred to the Complainant.

 


 

Mladen Vukmir
Sole Panelist

Dated: July22,2004