WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

France Printemps v. Reinhard Herrmann

Case No. D2007-0971

 

1. The Parties

The Complainant is France Printemps, Paris, France, represented by Andr R. Bertrand & Associs, France.

The Respondent is Reinhard Herrmann, Ockenheim, Germany.

 

2. The Domain Names and Registrars

The disputed domain name <printempsdeux.com> is registered with Key-Systems GmbH dba domaindiscount24.com and the domain name <printemps2.com> with PSI-USA, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2007. On July 3, 2007, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com and PSI-USA, Inc. a request for registrar verification in connection with the domain names at issue. On July 9 and 10, 2007 respectively, Key-Systems GmbH dba domaindiscount24.com and PSI-USA, Inc. transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 30, 2007, insisting however that the proceedings be held in English instead of German which is the language of the Registration Agreement. The Center acknowledged receipt of the amendment to the Complaint and the request that English should be the language of the proceedings by e-mail of August 1, 2007 and invited the Respondent to provide any comments he may have on the Complainant’s request within two days. The Respondent’s answer of August 6, 2007 contained some arguments on the merits of the case, but no objection to the English language of the proceedings. By e-mail of August 10, 2007, the Center informed the parties of its decision to accept (i) the Complaint as filed in English and (ii) a Response in either English or German. Otherwise, the Center verified 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 August 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2007. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 3, 2007.

The Center appointed Tobias Zuberbhler as the sole panelist in this matter on September 19, 2007. The prospective decision date was set for October 3, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is the parent company of “Le Printemps”, a widely known French chain of department stores. The tradename “Le Printemps” has allegedly been used for more than 130 years.

The Complainant is also the owner of a range of French PRINTEMPS trademarks (first registered on April 22, 1993), of the trademarks PRINTEMPS A 2 and PRINTEMPS A DEUX and of the domain names <printemps.com>, <printempsa2.com> and <printempsadeux.com>. The trademarks PRINTEMPS A 2 and PRINTEMPS A DEUX and the corresponding website are used by the Complainant in connection with the sale of gifts for weddings in its department stores.

The disputed domain names were registered by Respondent on January 19 and 31, 2007, respectively. They are used for a portal including links to wedding sites.

 

5. Parties’ Contentions

A. Complainant

Confusing similarity

The disputed domain names are completely identical to the Complainant’s trademarks, except for the fact that the “a” in the disputed domain names is written with an accent mark (“”), in accordance with its normal French spelling.

Respondent’s rights and legitimate interests

There are no indications of any rights or legitimate interests of Respondent in respect of the domain names at issue.

Bad faith registration and use

The Respondent uses the disputed domain names for offering to the public in French “cadeaux de marriage” (wedding gifts), “listes de cadeaux de marriage” (lists for wedding gifts), “listes de souhaits pour votre mariage” (lists of wishes for your wedding), etc. By using the domain names, the Respondent intentionally attempts to attract for commercial gain, Internet users to the Respondent’s web site, by creating a likelihood of confusion with the Complainant’s marks. In fact a Google search with the words “printemps2” immediately lists - in French - the web site of the Respondent with references to wedding gifts in French. In addition, the Respondent refused to transfer the disputed domain names to the Complainant, but has offered to sell the disputed domain names to the Complainant for EUR 9’999.

B. Respondent

In its e-mail of August 6, 2007, the Respondent argued that the expression “printemps deux” (= enjoying spring as a couple) was a common expression, that it did not sell products like Printemps and that its websites were for informational purposes only.

 

6. Discussion and Findings

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

(i) that the Respondent’s domain name(s) are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name(s); and

(iii) that the domain name(s) have been registered and are being used in bad faith.

Paragraph 4(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the domain name(s) at issue.

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

A. Language of the Proceedings

According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

In the present case, the Center has in the circumstances made a decision to accept the Complaint as filed in English, despite the fact that the original Registration Agreement is in German; to accept a Response in either English or German; to appoint a Panel familiar with both languages (if available); on the basis that such determination remained subject to the Panel’s discretion to determine the language of proceedings. As to the circumstances of the proceeding, it is noted that the Respondent has not expressed any objections to the Complainant’s request that English be the language of the proceeding. Further, the Respondent has displayed a certain of familiarity with the English language in his e-mail to the Center of August 6, 2007.

Considering the above, the Panel finds that the language of the proceedings shall be English.

B. Identical or Confusingly Similar

The disputed domain names are virtually identical to the Complainant’s trademarks, except for the fact that the “a” in the disputed domain names is written with an accent mark (“”), in accordance with its normal French spelling.

This minor difference is not sufficient to prevent a finding of confusing similarity. The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of Respondent in respect of the domain names at issue. Therefore, the Complainant, having made a prima facie case which remains unrebutted, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Respondent uses the disputed domain names for offering to the public - among others via links to French websites - different products and services related to weddings. Thereby, the Respondent is in the Panel’s view taking advantage of the Complainant’s strong reputation and the brand recognition of the Complainant’s various trademarks and is intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark (cf. paragraph 4(b)(iv) of the Policy).

In addition, the Respondent has apparently offered to sell the disputed domain names to the Complainant for EUR 9’999 when it was contacted by the Complainant.

It may also reasonably be assumed that the Respondent knew about the Complainant’s trademarks and business when it registered the disputed domain names in January 2007.

The Respondent’s arguments - as stated in its e-mail to the Center of August 6, 2007 - that the expression “printemps deux” (= enjoying spring as a couple) was a common expression and that it did not sell products like Printemps, appear to be purely defensive and are not in the circumstances compelling.

The Panel find that the Respondent’s conduct constitutes bad faith registration and use, thus fulfilling 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 <printemps2.com> and <printempsdeux.com> be transferred to the Complainant


Tobias Zuberbhler
Sole Panelist

Dated: October 3, 2007