WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

FNAC v. C-Cartier Mathieu

Case No. D2008-0728

1. The Parties

Complainant is FNAC, France, represented by Inlex IP Expertise, France.

Respondent is Mr. C-Cartier Mathieu, Paris, France.

2. The Domain Name and Registrar

The disputed domain names <fnac-informatique.com> and <fnacinformatique.com> are registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2008. On May 9, 2008, the Center transmitted to Register.com by email a request for registrar verification in connection with the domain names at issue. On May 13, 2008, Register.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on May 21, 2008. In accordance with paragraph 5(a) the Rules, the due date for Response was June 10, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 11, 2008.

On June 24, 2008, the Center appointed Nathalie Dreyfus as the sole panelist in this matter. 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.

The Panel issued a Panel Order on July 7, 2008 ordering Complainant to provide copies of the trademark registrations cited in the Complaint. On July 9, 2008 Complainant provided such evidence.

4. Factual Background

The domain names in dispute were both registered on September 7, 1999. They direct towards parking websites containing links in French and in English. Many links are in the informatics field. The websites contain other links such as “Boulanger” and “Cdiscount”, which are competitors of Complainant.

According to Complainant, the French Company FNAC was created in 1954. It is located in France and has several shops in countries such as Brazil, Spain, Portugal and Greece.

It commercialises books, videos, computers, CDs and provides cultural services such as organization of musical shows and travel services. It also provides computer services such as a hotline for assistance, after-sales services.

Complainant is the owner of numerous French, International and Community trademarks consisting of or containing the element “fnac”. The following is a non-exhaustive list of FNAC trademarks held by Complainant having been registered prior to the registration of the domain names in dispute:

Trademarks registered in France:

- Trademark FNAC n1392472 dated February 4, 1987;

- Trademark FNAC and device n 1568645 dated March 10, 1988;

- Trademark FNAC and device n 1568646 dated March 10, 1988;

- Trademark FNAC and device n 1568917 dated March 10, 1988;

- Trademark FNAC n1454178 dated March 11, 1988;

- Trademark FNAC and device n 96631714 dated June 26, 1996;

- Trademark FNAC and device n 98747835 dated August 31, 1998;

- Trademark FNAC LOGICIELS and device n 1623974 dated October 26, 1990;

- Trademark FNAC MUSIC n 1630953 dated December 4, 1990;

- Trademark FNAC SERVICE n 1268884 dated April 16, 1984.

Community trademarks:

- Trademark FNAC n000149708 dated April 1, 1996;

- Trademark FNAC and device n 000180885 dated April 1, 1996.

International Trademarks:

- Trademark FNAC n369818 dated May 8, 1970;

- Trademark FNAC n434515 dated September 28, 1977;

- Trademark FNAC and device n 555525 dated February 28, 1990;

- Trademark FNAC and device n 555526 dated February 28, 1990;

- Trademark FNAC and device n 667235 dated December 26, 1996;

- Trademark FNAC and device n 706673 dated August 31, 1998;

- Trademark FNAC and device n 706624 dated February 23, 1999;

- Trademark FNAC n 808821 dated April 10, 2003.

Complainant is also the owner of various domain names containing the word “fnac”, which were registered prior to the registration of the domain names in dispute, including the following ones:

- <fnac.com> registered on October 29, 1997;

- <fnaconline.com> registered on September 6, 1999;

- <fnacservice.com> registered on January 27, 1998.

Respondent is an individual living in Paris, France.

5. Parties’ Contentions

A. Complainant

First, Complainant asserts that the disputed domain names are confusingly similar to Complainant’s trademark FNAC as well as to Complainant’s various domain names consisting of/comprising the trademark FNAC.

Complainant also argues that the addition of the descriptive word “informatique” to the distinctive word “fnac” makes Respondent’s intentions even more suspicious, since it is obvious that Complainant would be interested in the disputed domain names.

Second, Complainant alleges that Respondent has no right or legitimate interest in the disputed domain names. Complainant claims that it has not licensed or otherwise authorized Respondent to use the FNAC trademark and there is no relationship between Complainant and Respondent. Complainant also asserts that Respondent is not the holder of any FNAC trademarks and he does not use a “fnac” symbol. Complainant finally claims that Respondent is intentionally diverting Internet users to its website for his own commercial gain.

Third, Complainant contends that the disputed domain names were registered and are used in bad faith due to the reputation of the trademark FNAC. Indeed, Complainant claims that Respondent could not have ignored the trademark FNAC when registering the domain names. Furthermore, it asserts that Respondent is using the disputed domain names in bad faith to create a likelihood of confusion in order to attract Internet users for commercial gains.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.

Paragraph 4(a) of the Policy requires Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that Respondent’s domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of domain names in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that Respondent has rights and legitimate interests in the disputed domain names.

A. Identical or Confusingly Similar

It is clearly beyond doubt that Complainant has rights in the trademark FNAC for purposes of paragraph 4(a)(i) of the Policy.

Complainant’s trademark FNAC is incorporated in the disputed domain names in its entirety with the adjunction of the descriptive term “informatique”. This term is a reference to the hardware and software sold by Complainant.

The addition of this generic term is not sufficient to exclude confusing similarity with the FNAC trademark. (See Chocoladefabriken Lindt & Sprngli AG v. Jules Mass & Yuan Yuan Chou, WIPO Case No. D2007-0446; Pepsico Inc., of Purchase v. Johan De Broyer WIPO Case No. D2007-1021; L’OREAL v. Lewis Cheng, WIPO Case No. D2008-0437; L’oreal v. Domain Park Limited, WIPO Case No. D2008-0072).

The adjunction of this term actually reinforces the association with Complainant to the extent that Complainant notably sells hardware and software. It is likely that French Internet users will make the link between the trademark FNAC and said products. As for Internet users speaking basic English, most of them will understand “informatique” to mean “informatics” in English.

As for the adjunction of gTLD “.com”, it is now well established that the generic top-level domain, in this case “.com”, should be excluded from consideration when determining whether the domain names at issue are identical or confusingly similar to the trademark held by Complainant. They are indeed deemed to be functional or generic components of the domain names (Gerling Beteiligungs-GmbH (GBG) v. World Space Corp, WIPO Case No. D2006-0223).

Complainant is also the registrant of various domain names such as the <fnac.com> domain name registered before the domain names <fnac-informatique.com> and <fnacinformatique.com>. The latter are also confusingly similar to the domain names held by Complainant.

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, Respondent may demonstrate his rights and interests in the disputed domain names by showing any of the following circumstances, in particular but without limitation:

(i) the use or demonstrable preparations to use the contested domain names or names corresponding to contested domain names in connection with a bona fide offering of goods or services before any notice to them of the dispute, or;

(ii) Respondent (as an individual, a business or other organizations) has been commonly known by the contested domain names, even if he acquired no trademark or service mark rights, or

(iii) Respondent is making a legitimate non-commercial or fair use of the contested domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel notes that Complainant alleges that FNAC is well known in France as a company name and as a trademark. The Panel notes that Complainant has not provided sufficient elements permitting to conclude this. Indeed, the Annex G provided with the complaint only contains copies of registered International trademarks FNAC. Such copies do not prove that the mark is well known,

The Panel also notes that Respondent’s address is in France, which means that Respondent probably resides in this country.

Respondent had the opportunity to demonstrate some rights or a legitimate interest in the disputed domain names but has chosen to file no response.

Respondent has not made any effort to use the domain names for any purpose that might explain his choice in a manner consistent with having rights or legitimate interests. (See Chocoladefabriken Lindt & Sprngli AG v. Jules Mass & Yuan Yuan Chou, WIPO Case No. D2007-0446, and Chocoladefabriken Lindt & Sprngli AG v. Domain Magic LLC, WIPO Case No. D2007-0461).

Indeed, there is no evidence that Respondent holds registered trademarks in France or in other countries consisting of/comprising the element “fnac”. There is also no evidence that Respondent has ever filed applications for the registration of such trademarks.

There is also no evidence that Respondent ever intended to conduct a legitimate activity via the domain names at issue. Maintaining parking websites such as the ones where the disputed domain names direct cannot be considered a legitimate activity. Indeed, said websites contain links such as “Boulanger”, “Cdiscount” and “mistergooddeal” which are competitors of Complainant. Other links are about software and hardware. Among other things, Complainant sells such products. It is therefore difficult to imagine that Respondent registered the domain names containing the trademark FNAC and the descriptive word “informatique” for another reason than diverting Internet users of Complainant’s products to the websites at issue using Complainant’s mark in the domain names.

In addition, according to Complainant, it has not licensed or otherwise authorized Respondent to use the FNAC trademark and there is no relationship between Complainant and Respondent.

Finally, Respondent chose not to respond to the Complainant’s allegations and in view of his failure to submit a response, the Panel will decide this dispute on the basis of the Complainant’s undisputed contentions of fact. Although Respondent’s default does not automatically result in a decision in favour of Complainant, the Panel may draw negative inferences from the same (See Unilever N.V. v. Kentech, WIPO Case No. D2005-1021).

Under these circumstances, the Panel takes the view that Respondent has no rights or legitimate interests in the domain names, so the requirements of paragraph 4(a)(ii) are also satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which if found shall be evidence of the registration and use of the domain names in bad faith, namely:

(i) circumstances indicating that Respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names; or

(ii) Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain names, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain names, Respondent intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on his web site or location.

As previously stated by the Panel, Complainant has not provided the Panel with sufficient documents establishing that the trademark FNAC is well known in France.

Complainant argues that when searching FNAC or FNAC INFORMATIQUE on the main browsers, the first result refers to Complainant’s website. Complainant has unfortunately not provided the Panel with copies of said results.

Therefore, the Panel cannot take this argument into account.

The Panel notes that “fnac” has no meaning in French or in English.

The Panel further notes that Respondent has not provided the Panel with any reasons, rights or legitimate interests to justify the use of the word “fnac”.

As a consequence, the Panel deems that the word “fnac” in the domain names at issue is by all appearances a reference to the trademark FNAC held by Complainant. It is therefore unlikely that Respondent just happened to register two domain names including the element “fnac” in good faith.

In addition, as the Panel previously stated, the presence of the word “informatique” reinforces the likelihood of association with Complainant to the extent that the latter notably sells hardware and software. It is likely that French Internet users will make the link between the trademark FNAC and said products. As for Internet users speaking basic English, most of them will understand “informatique” to mean “informatics” in English.

In conclusion, it is more likely than not that Respondent had Complainant in mind when he registered the domain names. The Panel concludes that Respondent registered the domain names in bad faith.

Respondent is using the domain names in an apparent effort to try to attract Internet users to his website containing various commercial links such as “Boulanger”, “Cdiscount” and “mistergooddeal” which are competitors of Complainant. Other links are about software and hardware. Given that Respondent has failed to demonstrate that he has a right or a legitimate interest in using the domain names, the Panel concludes that Respondent intentionally attracted, for commercial gains, internet users by creating a likelihood of confusion with Complainant’s mark.

Furthermore, the use of the domain names here in connection with a domain parking service provides further evidence of bad faith use (See Carrefour v. Iwama, WIPO Case No. D2007-1522; Charlotte Russe Holding, Inc. v. Whois ID Theft Protection, WIPO Case No. D2007-0371).

The Panel concludes that Respondent used the domain names in bad faith.

The Panel desires to add the following before drawing its decision to a close: the fact that Complainant notified Respondent by a cease and desist letter, that Respondent’s registrations were confusingly similar to Complainant’s mark, that Respondent failed to respond to the cease and desist letter and reminders, and that Respondent failed to respond to this Complaint, also suggests that Respondent was aware that he had no rights or legitimate interests in the domain names at issue, and that the domain names had been registered and are being used in bad faith (See America Online, Inc. v. Viper, WIPO Case No. D2000-1198).

The Panel concludes that Respondent registered and is using the domain names in bad faith according to 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 <fnacinformatique.com> and <fnac-informatique.com> be transferred to Complainant.


Nathalie Dreyfus
Sole Panelist

Dated: July 18, 2008