WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Societe Du Figaro v. The Yak Corp
Case No. DTV2008-0008
1. The Parties
The Complainant is Societe Du Figaro of Paris, France, represented by Teissonnière Sardain Chevé A.A.R.P.I., France.
The Respondent is The Yak Corp of Cadiz, Spain, represented by Vanessa Bouchara, France.
2. The Domain Name and Registrar
The disputed domain name <lefigaro.tv> (the “Domain Name”) is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2008. On July 7, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the Domain Name. On July 7, 2008, eNom, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on July 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2008. The Response was filed with the Center on July 30, 2008.
The Center appointed Luca Barbero as the sole panelist in this matter on August 13, 2008. 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 Center received from the Complainant on July 31, 2008, an email communication containing corrected Annexes to the Complaint, and on August 18, 2008 two additional copies of trademark registrations (United States of America trademark “LE FIGARO” and International trademark “LE FIGARO” covering Spain) “in order to complete the Annexes 4, 5 and 6 of our Complaint” (the “Supplemental Filing”). On August 19, 2008, the Center forwarded the Supplemental Filing by email to the Respondent and informed the Complainant that the Rules do not provide for such Supplemental Filings. The Center advised that the Supplemental Filing would be brought to the attention of the Panel and that, in accordance with paragraph 10(d) of the Rules, it would be at the sole discretion of the Panel whether the Supplemental Filing would be considered.1 The Panel has considered and accepts the Supplemental Filing; nonetheless, the Panel sees no need to invite further submissions from either party in that regard.
4. Factual Background
The Complainant is the owner of trademarks consisting or comprising “LE FIGARO” used in connection with newspapers and magazines, including the following trademarks:
- French trademark LE FIGARO registered on May 11, 1987 No. 1447624 in classes 16, 35, 38, 39 and 41;
- French trademark LEFIGARO.FR registered on November 6, 2000 No. 003062563, in classes 9, 16, 25, 38, 41 and 42;
- French trademark LE FIGARO TV MAGAZINE registered on May 2, 1988 and registered in France under number 1465023, for products and services of classes 16, 35, and 41;
- International trademark LE FIGARO registered on August 26, 1966, No. 319381 in class 16 covering Spain;
- Trademark registration LE FIGARO in the United States of America No. 571473 of March 10, 1953 in class 16.
The Complainant is also the owner of the domain name <lefigaro.fr> registered on August 14, 1996.
The Respondent registered the Domain Name <lefigaro.tv> on September 7, 2000.
5. Parties’ Contentions
The Complainant informs the Panel that LE FIGARO is the oldest French daily newspaper – published since 1826 by Societe Du Figaro – and one of the most famous.
The Complainant indicates that Societe Du Figaro has also been publishing magazines such as LE FIGARO TV MAGAZINE since 1987 which is the most sold television magazine in France.
According to the Complainant the trademarks consisting or comprising LE FIGARO are well and widely known throughout France in the press sectors. The Complainant informs the Panel that according to OJD (association for auditing media circulation) the website “www.lefigaro.fr” is the third most browsed French site among 121 media website editors.
The Complainant contends that the Domain Name is confusingly similar to the marks of the Complainant LE FIGARO, LEFIGARO.FR, and LE FIGARO TV MAGAZINE.
The Complainant asserts that the trademark LE FIGARO is entirely reproduced in the Domain Name <lefigaro.tv>.
The Complainant highlights that the risk of confusion with the trademark LE FIGARO is all the more important that the Complainant is the registrant of the trademark and identical domain name <lefigaro.fr> which points to the Complainant’s web portal since its registration on August 14, 1996.
The Complainant underlines that the Domain Name <lefigaro.tv> is confusingly similar to the magazine and trademark LE FIGARO TV MAGAZINE.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainant asserts that the Respondent has not been licensed by the Complainant and has no right to use the Complainant’s trademarks, the trade name LE FIGARO or the Domain Name <lefigaro.fr>.
The Complainant states that LE FIGARO is neither a common name, nor a descriptive name, but the title of the Complainant’s French newspaper, LE FIGARO, created in 1826 which refers to the name of a play character imagined by Beaumarchais.
The Complainant contends that the Domain Name has been registered by the Respondent in order to take advantage of the Complainant’s well-known trademarks and trade name, and to disrupt the Complainant’s online presence under the ccTLD “.tv”.
With reference to the circumstances evidencing bad faith, the Complainant contends that the Respondent has intentionally registered the Domain Name with the country code “.tv” in order to take advantage of the confusion generated and to attract Internet users to pornographic websites.
The Complainant further states that the use of the Domain Name damages the brand and corporate image of the Complainant.
The Respondent contends that the Complainant cannot claim rights on the French Trademark LEFIGARO.FR to challenge the domain name of the Respondent since the Complainant’s trademark was filed after the Domain Name.
The Respondent asserts that the Complainant does not claim any rights in the United States of America where the Respondent was located when the Domain Name was registered or/and in Spain where the Respondent is now located.
The Respondent states that the Domain Name has “never been used by the Complainant for an activity that is identical or similar to the products and services designated under the invoked trademarks.”
With reference to rights or legitimate interests in respect of the Domain Name, the Respondent asserts that the Complainant does not have an absolute right on the denomination “figaro”, even where it is preceded by “le” since “figaro” is not only the title of a newspaper but also the central character in various comedies, a kitten created by The Walt Disney Company, a fictional kingdom in Final Fantasy VI, etc.
The Respondent points out that the Domain Name was registered 8 years ago and that the Complainant “never considered that this domain name was registered in order to take advantage of the Complainant’s reputation and therefore never complained about this domain name registration, even by way of a registered letter that could have been sent to the Respondent.”
With reference to the circumstances evidencing bad faith, the Respondent contends that the word “figaro” has many possible references and does not refer exclusively to the Complainant’s French Newspaper.
The Respondent highlights that it is further not proven by the Complainant that LE FIGARO was known in the United States of America when the Respondent registered the Domain Name <lefigaro.tv> and that therefore the registration of the Domain Name <lefigaro.tv> was made in bad faith.
As to bad faith in the use of the Domain Name, the Respondent asserts that the use of the Domain Name for a pornographic website was without the knowledge or permission of the Respondent.
The Respondent informs the Panel that as soon as the Respondent was alerted to the use of the Domain Name for a pornographic website, an email was sent to “Register.com” – believing them to be the Registrar for the Domain Name – explaining that he did not understand why the same was being used for an adult pornographic website without his consent.
While preparing a Response to the Complaint, the Respondent noticed that the registrar was not Register.com but in fact is eNom, Inc. The Respondent had therefore sent an email by mistake to the wrong Registrar.
The Respondent also indicates that on April 30, 2007 he noticed that his website was being used by others and made a Complaint to eNom, Inc. which provided him with steps to take in order to de-activate such pages.
The Respondent wrote on July 28, 2008 and July 29, 2008, to the Registrar eNom, Inc. and has not received any response yet. The Respondent states that it is contemplating engaging an action against the Registrar.
Therefore the Respondent asserts that the Domain Name <lefigaro.tv> has not been used in bad faith.
The Respondent further contends that it does not hold any domain name consisting of third party trademarks and has never been involved in such proceedings.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of, inter alia, the French trademark registration LE FIGARO registered on May 11, 1987 (No. 1447624 in classes 16, 35, 38, 39, and 41) and other trademark valid registrations, including in the countries of the Respondent.
The Panel finds that the Domain Name is therefore identical to the trademark owned by the Complainant.2
In comparing the Complainant’s marks to the Domain Name with reference to <lefigaro.tv> it should be taken into account the well established principle that the suffixes, including the generic top level domains, may be excluded from consideration as being merely a functional component of a domain name. See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”).
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is identical to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the Domain Name, even if he has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the Domain Name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Case No. 852581).
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name, has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the Domain Name.
The Panel notes that the Domain Name was, at the time of the filing of the Complaint, pointing to a “pornographic” or at least adult-oriented website as per detailed report provided in the Annexes and the Respondent did not provide any convincing counter evidence that was not aware of such use.3 The Panel observes that the Domain Name currently displays a home page which reads: “Welcome to LEFIGARO.TV”, “This website may contain information, links, images and videos of sexually explicit material.”, and “Click Here to Enter!”. Leaving the home page and entering the “underlying” web page reveals a sponsored pay-per-click website containing, inter alia, active links also to competitors of the Complainant, e.g., “Journal Le Monde”, “French News”, “Dating Online”, “Marriage of Figaro”, and “Le Figaro FR”.
The Panel finds that under the circumstances the use of the disputed Domain Name, to direct visitors to an apparently adult-oriented website4 through which are accessible various third party commercial websites does not constitute a legitimate, noncommercial use of the Domain Name under the Policy. See Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.
See also Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146, where the panel stated: “the evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”
Thus on balance, and in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) the holder has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration the Panel notes that the Domain Name is identical to the Complainant’s LE FIGARO trademark, and is moreover confusingly similar to the Complainant’s LE FIGARO TV MAGAZINE mark.
Furthermore, the Panel observes that the Complainant’s trademark is even explicitly referenced in both the adult-oriented home page and the underlying pay-per-click website and the link “Le Figaro FR” indicates that the Respondent was aware of the Complainant’s trademarks.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of the Complainant’s trademark at the time of the registration of the Domain Name is to be considered in drawing an inference of bad faith5 (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
With reference to the use of the Domain Name in bad faith, the Panel finds that Internet users, in light of the contents of the web pages linked to the Domain Name, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Moreover, in all likelihood, the Respondent profits by earning pay-per-click revenues (see, inter alia, Manheim Auctions Inc. v. Whois ID Theft Protection WIPO Case No. D2006-1044; Fry’s Electronics, Inc v. Whois ID Theft Protection WIPO Case No. D2006-1435; Barry D. Sears, Ph.D. v. YY / Yi Yanlin WIPO Case No. D2007-0286).
The Respondent has reproduced the Complainant’s trademark on its website with the addition of “FR” in displaying on its website a link ostensibly corresponding to the official website of the Complainant (in fact this link produces yet another similar pay-per-click link website). The Panel further observes that apparent links to competitors’ websites are displayed also on the current underlying website at the Domain Name.6
With reference to the use of a domain name to induce confusion with competing activities see Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (“Respondent’s registration and continued use of the contested domain name for re-directing Internet users, i.e., particularly customers and potential customers of the Complainant from the Complainant’s website to the website of Bestnet, Inc., a company which directly competes with the Complainant, constitutes bad faith and use.”); Marriott International, Inc. v. Vladimir Kyznetsov, NAF Case No. FA95648 (October 24, 2000) (bad faith where respondent registered the domain name <marriottrewards.com> and used it to route Internet traffic to another website that “promotes travel and hotel services…identical to the services offered by the Complainant”).
The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.
In view of the above, the Panel finds 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, <lefigaro.tv> be transferred to the Complainant.
Dated: August 27, 2008
1 The July 31, 2008 email communication was, in Complainant’s words, necessary because “some pages of the Annexes 4 to 6 we sent to the WIPO have been mixed by mistake.” The August 18, 2008 email communication containing the Supplemental Filing was, in Complainant’s words, similarly necessary “in order to complete the Annexes 4, 5 and 6 of our Complaint.” Notably however, the “List of Annexes” attached to the Complaint lists those exhibits as: “Annex 4 Certificate of registration for the French trademark “LEFIGARO.FR” n° 003062563”, “Annex 5 Certificate of registration for the French trademark “LE FIGARO” n° 1447624”, and “Annex 6 Certificate of registration for the French trademark “LE FIGARO TV MAGAZINE” n° 1465023”. Thus it appears that in sending the Supplemental Filing, the Complainant was attempting to address specific arguments made in the Response, i.e., the existence of trademark rights in two of Respondent’s purported domiciles. As these matters were not unforeseeable at the time of the filing of the Complaint, the Panel is initially inclined not to consider them as the Complainant did not disclose to the Panel that these were additional Annexes, and not as Complainant’s email stated merely to “complete” those Annexes referenced in the Complaint, i.e., they introduced entirely new evidence. The Complainant’s counsel would be well-advised to exercise candor in such matters which may indeed affect its client’s rights. Nevertheless, in the circumstances, the Panel notes that the Respondent will not be prejudiced by their introduction into the record, and as the two trademark registrations might have been easily uncovered by the Panel, they will be deemed part of the Complaint.
2 Incidentally, though is it by now axiomatic that the TLD portion (here, “.tv”) of a domain name is not considered for purposes of assessing identity or confusing similarity under the Policy, this case presents a somewhat unique scenario whereby assessing the Domain Name with the TLD portion would also augment a finding of confusing similarity with the Complainant’s LE FIGARO TV MAGAZINE mark.
3 The website at the Domain Name references that “sexually explicit” content might be found in the underlying web pages as it states: “You must be 18 or older to view these pages. If you are not over 18, you are not allowed to view this site.”
4 The Panel notes that the Respondent claims unauthorized third parties are responsible for such content. The Panel does find such claim credible, especially where the Respondent notes that it was provided with instructions on removing such content and has taken no such action for nearly 5 months. In any event, previous panels have held that registrants cannot simply disclaim responsibility for advertising content on the websites at their domain names. See e.g., Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448. Moreover, to the extent the Respondent might rely on the adult-oriented site (as opposed to the underlying pay-per-click site), the Panel likewise finds that the Respondent lacks rights or legitimate interests in the Domain Name as such use would in the Panel’s view be an attempt to trade off the Complainant’s registered marks. Moreover, the French article “le” bolsters this inference as this article is not used in the languages of either of the Respondent’s claimed domiciles.
5 This is true whether due to the pay-per-click links to competitors of the Complainant on the underlying site, or with regard to the likely confusion to the Complainant’s LE FIGARO TV AMGAZINE mark on the adult-oriented home page.
6 Similarly these links – as with others on the page – produce yet another pay-per-click link website.