WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FNAC v. SZK.com
Case No. D2004-0413
1. The Parties
The Complainant is FNAC, of Clichy, France, represented by Inlex Conseil, France.
The Respondent is SZK.com, of Pineto, Italy.
2. The Domain Name and Registrar
The disputed domain name <fnacdigitale.com> (the “Domain Name”) is registered with NamesDirect.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2004. On June 4, 2004, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue. On June 4, 2004, NamesDirect.com 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 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2004.
The Center appointed Adam Taylor as the sole panelist in this matter on July 13, 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
The Complainant is a French public limited company incorporated on April 27, 1971. It is the parent company of the FNAC group which sells books, videos, CDs and other products worldwide.
The Complainant holds numerous registered trade marks consisting of or containing the word FNAC including the following:
Word FNAC no. 1392472 dated February 4, 1987, in classes 35,39,41.
Words FNAC DIGITALE and device no. 3194924 dated November 19, 2002, in classes 9,16,35,38,40–42.
Words FNAC DIGITALE and device no. 3208378 dated February 6, 2003, in classes 9,16,35,38,40–42.
Word FNAC no. 000149708 dated April 1, 1996, in classes 9,16,35,39,41
International (designating Italy)
Word FNAC no. 369818 dated May 8, 1970, in classes 9,11,16,21,25,28
The Complainant operates a website at “www.fnac.com”. The Complainant or its local subsidiaries also own various domain names / websites comprising “fnac” plus a country code suffix including a website in Italian at “www.fnac.it”.
The Complainant has five shops in Italy at Milan, Genova, Torino, Verona and Naples.
The Respondent registered the Domain Name on December 17, 2003.
As at February 3, 2004, the Domain Name resolved to a directory website headed “Fnacdigitale.com. Your source for the most popular Fnacdigitale info!”. The website contained a search box and a list of products and services linking to commercial websites in English and French. The products and services were of a varied nature but included products sold by the Complainant such as video games, cameras and DVDs.
Bad faith has been established on the part of the Respondent and Michele Dinoia – the administrative and technical contact for the Domain Name – in a number of other UDRP cases (see further below).
5. Parties’ Contentions
Identical or Confusingly Similar
The Domain Name is similar to the European and international FNAC trade marks designating Italy registered since 1970, and identical to the French trade marks FNAC DIGITALE registered end 2002, and beginning 2003. The extension indicating the gTLD “.com” is irrelevant.
Rights or Legitimate Interests
Lack of rights or legitimate interests stems from the existence of well-known trade marks and websites FNAC belonging to the Complainant. These trade marks are long standing, widely used and promoted and well known in France and worldwide. Many commercials and advertisements concerning the FNAC products have been produced in France and elsewhere.
The Respondent supposedly lives in Italy and must be aware of the website at “www.fnac.it” as well as the Complainant’s shops in Italy.
To the Complainant’s knowledge, the Respondent is not using the FNAC symbol, and has no FNAC trade mark registered under its name.
The Complainant has not licensed or otherwise authorized the Respondent to use the FNAC or FNAC DIGITALE trade marks and there is no relationship between the Complainant and the Respondent or Michele Dinoia.
The term FNAC has no meaning by itself in French, English or Italian.
The Respondent uses the Domain Name as a competitor website to the Complainant. The Respondent is intentionally diverting internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the Domain Name as already decided in several similar cases, eg, Kosmea Pty Ltd. v. Krpan, WIPO Case No. D2000-0948 and Vapor Blast Mfg. Co. v. R & S Tech., Inc., NAF Case FA 96577.
The cases involving the Respondent itself are also relevant (see below).
The Respondent is using the Domain Name in an opportunistic attempt to attract customers via Complainant’s famous trade marks. This cannot be considered as a bona fide offering of goods or services.
Registered and Used in Bad Faith
The Complainant’s trade marks, websites and shops are well-known in France and all over the world. The first Complainant’s first trade mark registration dates back to 1970.
As an Italian company the Respondent must have been aware of the existence of FNAC trade marks, shops and websites. An internet search against FNAC would have revealed the existence and fame of the Complainant.
The trade mark FNAC is distinctive and moreover has been extensively used so that it can be considered as well-known to the average consumer in France and worldwide.
The fame of the trade mark FNAC clearly shows that the Respondent registered the Domain Name knowingly and without carrying out any prior availability search.
The Respondent is engaged in a pattern of such conduct, as evidenced by the other UDRP cases in which it was involved.
The Respondent’s use of the Domain Name is not bona fide. The only purpose of the Domain Name is to divert Internet users to various commercial websites. The Respondent is using the Domain Name in bad faith. It is reproducing the Complainant’s trade marks exactly in order to profit from the likelihood of confusion.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has many registered trade marks for the distinctive word FNAC which substantially pre-date the Respondent’s registration of the Domain Name.
The Domain Name consists of the word FNAC plus the generic term DIGITALE. The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trade mark. See, eg, The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010. Indeed many panels have held that confusing similarity is established when a domain name wholly incorporates a complainant’s trade mark. See, eg, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
It is well established that domain names suffixes are disregarded for the purpose of this comparison.
The Domain Name is therefore confusingly similar to the Complainant’s trade marks for the word FNAC.
The Complainant asserts that the Domain Name is identical to the French trade marks 3194924 and 3208378, each consisting of the words FNAC DIGITALE plus device. The Panel disagrees as those trade marks are not for words only. However, the words are by far the most prominent aspect of trade mark 3208378 and in the Panel’s view the Domain Name is confusingly similar to that trade mark. (The other mark was not displayed on the certificate.)
The Panel concludes that the Domain Name is confusingly similar to trade marks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests (see, eg, Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).
According to Paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the Domain Name by showing, among other circumstances, any of the following elements:
(i) before any notice to it of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) it (as an individual, business, or other organization) has been commonly known by the Domain Name, even it has acquired no trade mark rights; or
(iii) it is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue.
As to paragraph 4(c)(i), the Respondent has used the Domain Name in connection with an offering of goods or services. The issue is whether such use is bona fide.
The Panel considers that the following factors are significant.
The Complainant has not licensed or otherwise authorized the Respondent to use its trade marks and there is no business or other relationship between the Complainant and the Respondent or Michele Dinoia.
The name FNAC DIGITALE has no obvious descriptive connection with the goods and services listed on the directory website at the Domain Name.
The Respondent has not submitted a response to deny the Complainant’s assertions concerning the illegitimate nature of the Respondent’s use.
The Panel has concluded below that the Complainant used the Domain Name to profit by creating a likelihood of confusion with the Complainant’s trade mark.
In these circumstances, the Panel’s opinion is that the Respondent’s offering was not bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) apply.
The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy specifies certain non exhaustive circumstances which, if found by the Panel to be present, are evidence of the registration and use of the Domain Name in bad faith.
The Complainant relies on the fame of the Complainant’s trade marks, its five shops in Italy and its website at “www.fnac.it” as demonstrating that the Respondent must have been aware of the Complainant and its trade marks when it registered the Domain Name. The Complainant has not, however, produced any evidence concerning the period for which it has traded in Italy, its turnover or marketing expenditure in Italy, the number of visitors to its website at “www.fnac.it” or indeed any details about its use of the name FNAC DIGITALE. Nor has the Complainant established that the Respondent is located in any of the towns in Italy where the Complainant has shops.
Nonetheless, the Panel considers that the following factors are significant.
As stated earlier, the trade mark FNAC is distinctive. It has no obvious descriptive or generic meaning.
The French word and device trade marks 3194924 and 3208378 indicate a likelihood that the Complainant has used the word DIGITALE in connection with FNAC (albeit that the nature and extent of that use is unclear).
It is difficult to conceive that the Respondent registered or used the Domain Name for a genuine purpose. The Respondent has not submitted a response to deny the Complainant’s assertions nor to explain its purpose in registering and using the Domain Name.
A number of other UDRP cases have found that the Respondent and Michele Dinoia, the administrative contact for the Domain Name, acted in bad faith by registering and using domain names containing the names of trade marks in order to profit from internet traffic diverted to other websites or otherwise trade off the goodwill associated with these marks. See, eg Société Air France v. SZK.COM, WIPO Case No.D2003-0518 <frequenceplus.com>, Geoffrey, Inc. v. no aka Michele Dinoia, NAF Case FA 0201000104089 <kidsrus.com>, Venator Group Retail Inc. v. Michele Dinoia d/b/a SZK.com, NAF Case FA0110000101506 <wwwfootlocker.com>, Travelzoo v. SZK.COM, NAF Case No. FA00115088 <wwwtravelzoo.com>, Anheuser-Busch, Inc. v. Michele Dinoia, NAF Case FA0206000114465 <anheuserbusch.com>.
It can reasonably be inferred the Respondent is profiting from the website at the Domain Name.
The Panel is satisfied from the above factors that, in using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. The Complainant has therefore established Paragraph 4(b)(iv) of the Policy.
The Panel concludes that the Domain Name was registered and is being used in bad faith.
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, <fnacdigitale.com> be transferred to the Complainant.
Dated: July 26, 2004