The Complainant is Les Parfumeries Fragonard of Grasse, France, represented by Inlex IP Expertise, France.
The Respondent is Texas International Property Associates NA NA of Dallas, Texas, United States of America, represented by Rothstein Rosenfeldt Adler, United States of America.
The disputed domain names <fragonad.com> and <fragonar.com> are registered with Compana LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2009. On June 24, 2009, the Center transmitted by email to
Compana LLC a request for registrar verification in connection with the disputed domain names. On June 25, and July 1, 2009, Compana LLC 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” or “UDRP”), 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 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2009. The Response was filed with the Center on July 21, 2009.
At the request of the Complainant, the Proceedings were suspended between July 21, 2009 and August 21, 2009 to allow Parties to explore amicable settlement options between themselves. The Proceedings were re-instituted on August 19, 2009 at the Complainant's request.
The Center appointed Isabel Davies as the sole panelist in this matter on August 25, 2009. 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 Complainant is a well-established French company, which is engaged in the field of perfumery. It is the proprietor of French and European Community trade marks for FRAGONARD and of numerous other trade marks featuring the word FRAGONARD. It is also the registrant of numerous domain names featuring the word FRAGONARD, including <fragonard.com>.
The Respondent is a United States company engaged in the secondary domain name market. It is well known in the domain name industry having been involved as the respondent in 107 WIPO UDRP decisions and 157 NAF UDRP decisions (searches for previous decisions were carried out on August 28, 2009 by the Panel on the WIPO and NAF websites by searching for “Texas International” as “respondent”).
From the Whois information made available to the Panel, the domain name <fragonar.com> appears to have been registered by the Respondent on November 8, 2005, and the domain name <fragonad.com> appears to have been registered on December 27, 2005. From screenshots exhibited to the Complaint, it is apparent that both domain names have been used to display natural and sponsored/pay-per-click search results, some of which resolve to competing perfumery companies.
On at least three occasions in 2008 (April 2, June 19 and September 4), the Complainant wrote to the Respondent to attempt to obtain a transfer of the domain names. It appears from the correspondence that the letters, and one email, were not responded to by the Respondent and the Response does not make any assertion that the Respondent replied.
The Complainant alleges that the domain name <fragonar.com> is aurally identical to the trade mark FRAGONARD because of the manner in which the words are pronounced in the French language. The Complainant alleges that both domain names are quasi-identical and/or confusingly similar to the trade mark FRAGONARD.
The Complainant alleges that, to the best of the Complainant's knowledge, the Respondent has no legitimate interest in the domain names. The Complainant has submitted evidence that the Respondent has no trade marks registered for “fragonar” or “fragonad” and that the Respondent has no other links with those names. The Complainant has not licensed or otherwise authorised the Respondent to use the FRAGONARD trade mark or “fragonar” or “fragonad”, none of which is a generic or descriptive phrase.
The Complainant makes a number of allegations in respect of the registration and use of the domain names in bad faith by the Respondent. These include that: the domain name is obstructing the Complainant's ability to perform its communication through the Internet; the Respondent has made no use of the domain names other than for parking websites providing links to competitors of the Complainant; and the Respondent has been involved in 34 WIPO UDRP domain name cases as respondent (the actual number appears to be far higher).
The Complainant requests a transfer of the domain names.
The Respondent has submitted an unusual Response. The Respondent has submitted similar responses in a number of previous UDRP cases. The Respondent has agreed to the relief requested by the Complainant and has offered a “unilateral consent to transfer”. The Respondent has specifically stated that this is not an admission of the three elements of 4(a) of the UDRP. The Respondent requests an opportunity to prepare “a more formal response” if the Panel decides that an analysis is required.
Before proceeding to make its decision, the Panel comments on the Respondent's approach to this dispute. It appears to the Panel that the Respondent employs this tactic in all UDRP decisions in which it considers it will lose. The Respondent appears to: (a) state that it will transfer the domain name; and (b) request a stay in proceedings, in the hope that this will delay the proceedings and allow its revenue from the domain names to continue for a further period of time. In this respect, the Panel has read and agrees with the comments of the panel in paragraph 6D of President and Fellows of Harvard College v. Texas International Property Associates - NA NA, WIPO Case No. D2008-0597.
Paragraph 4(a) of the UDRP requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
An initial key decision for the Panel is whether it should comply with the Respondent's request and order the transfer of the domain names without considering whether the Complainant has proved the above three elements required by paragraph 4(a) of the UDRP. Different UDRP decisions, the majority of which have involved the Respondent in some manner, have reached different conclusions on this point.
Paragraph 10 of the Rules provides the following general powers to the Panel:
(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.
Paragraph 15(a) of the Rules provides:
A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law it deems applicable.
Although Paragraph 10(c) of the Rules could be read to give a discretion to the Panel to order the transfer of a domain name without considering the requirements of paragraph 4(a) of the UDRP, it is the view of this Panel that Paragraph 10 of the Rules, in particular when combined with Paragraph 15(a) of the Rules, requires that the merits of every dispute be considered by the Panel.
Even if the Rules did allow the Panel to proceed without considering paragraph 4(a) of the UDRP, this Panel considers such discretion should not be used without considering the implications for future complainants in UDRP proceedings. Findings of bad faith against cybersquatters may assist complainants in future cases where it is necessary to prove a pattern of behaviour under paragraph 4(b)(ii) of the UDRP. There is therefore a public interest in examining the merits in each case, even if the Respondent consents to the Complainant's request for a transfer.
The Respondent has requested to “prepare a more formal response” if the Panel conducts an analysis. Paragraph 5 and 12 of the Rules provide for the filing of any Response within the stated deadline and do not allow the parties to submit additional statements without the permission of the Panel. In the present case it is noted that the Respondent has been the Respondent in more than 250 UDRP disputes and is legally represented. In the circumstances, the Panel refuses the Respondent's request. If the Respondent wished to make a substantive case (whether in the alternative to its provision of consent to transfer or otherwise) it should have done so in its Response.
The Panel will therefore consider whether the Complainant has proved the three requirements of paragraph 4(a) of the UDRP. Due to the consent of the Respondent to transfer the domain name, and the fact that the Respondent is a known cybersquatter, the Panel will consider each requirement briefly:
The Panel finds, on the evidence in the Complaint, the domain names are both confusingly similar to the Complainant's trade mark.
The Panel finds that the Respondent does not have or claim to have rights or legitimate interests in the domain names.
The Respondent is engaged in a pattern of conduct whereby it registers domain names that are known trade marks or are confusingly similar to known trade marks in order to extract revenue from such domain names. In this Panel's view, in the case of some persons involved the secondary market in domain names, the term “cybersquatter” is applied unfairly. However, in this case, the term “cybersquatter” accurately describes the Respondent.
The Panel finds that the Respondent registered and has used the domain names in order intentionally to attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation, or endorsement of such website.
The Panel therefore finds that the domain names have been registered and used in bad faith by the Respondent.
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, <fragonad.com> and <fragonar.com>, be transferred to the Complainant.
Dated: September 2, 2009