WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avantages v. PT. IndoInternet
Case No. D2010-1629
1. The Parties
Complainant is Avantages of Issy Les Moulineaux, France, represented internally.
Respondent is PT. IndoInternet of Jakarta, Indonesia, represented internally.
2. The Domain Name and Registrar
The disputed domain name <famili.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2010. On September 27, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On September 27, 2007 Network Solutions, 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 Respondent of the Complaint, and the proceedings commenced on October 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2010. The Response was filed with the Center on October 20, 2010.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 4, 2010. 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
Complainant is the owner of registrations for the trademark AVANTAGES FAMILI and FAMILI in a number of countries. The trademark AVANTAGES FAMILI was registered in France, registration number 92444058, on December 1, 1992, in International Class (IC) 16 covering, inter alia, printed matter. That registration formed the basis for international registration under the Madrid System, international registration number 600657, dated May 18, 1993, likewise in IC 16, and designating principally countries in Europe, but also People's Republic of China. The trademark FAMILI was registered in France, registration number 92444059, on December 1, 1992, in ICs 16, 38 and 41. The trademark FAMILI was registered in Canada, registration number TMA 458,301, dated May 31, 1996; in Taiwan, registration number 651976, dated August 16, 1994. The trademark AVANTAGES FAMILI was registered in Brazil, registration number 817303740, dated November 22, 1994; in Hong Kong Special Administrative Region of the People's Republic of China, registration number B 08808, dated December 1, 1992. There are additional registrations for AVANTAGES FAMILI in Greece, Mexico, Republic of Korea, Singapore and Turkey.
Complainant publishes a magazine in France under the AVANTAGES FAMILI and FAMILI trademarks, and indicates that it exports this magazine to several countries. Complainant states that the magazine is well known in France, as evidenced by its receipt of certain awards. Complainant operates a commercial Internet website at "www.famili.fr" that it claims to have launched in 2001 in connection with its magazine.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to the Registrar, the record of registration of the disputed domain name was created on August 22, 1997. Respondent has asserted that it is the original registrant of the disputed domain name, and there is nothing on the record of this proceeding to suggest otherwise.
According to Complainant, as of the filing of its Complaint, Respondent had not used the disputed domain name in connection with an active website. The file prepared by the Center included a screenshot of a webpage addressed by the disputed domain name dated October 12, 2010, showing a message from a server operator "HAVP" indicating that the server was down. In its Response dated October 20, 2010, Respondent referred to a webpage addressed by the disputed domain name at "www.famili.com", but without including an annexed screenshot. As of the date of this administrative panel decision, the disputed domain name directs Internet users to a website headed "famili.com", with text principally in Indonesian, and dominated by photos of smiling families, with reference to "indonet". Clicking through on the home page link, the Internet user is redirected to the website of "indonet", which appears to be that of a substantial Indonesian Internet service provider offering a wide range of enterprise and personal products and services associated with telecommunications. The link on the "www.famili.com" webpage associated with the disputed domain name is specifically directed to "www.indonet.famili.com", and that webpage shows the same content as "www.indo.net.id". Respondent has indicated that it is "indonet", and "PT. Indonet" is Respondent's name as shown in the record of registration of the disputed domain name.
Respondent has asserted that "famili" in the Indonesian language means "family" in English. Respondent has provided evidence in the form of a report on the results of a Google translates operation that this is the case. The Panel translated "famili" from Indonesian into English using Google translate and confirmed Respondent's report of the results. The term "famili" was translated to "family". The associated Google dictionary refers to a noun showing "1. family, 2. relatives, 3. kin".1
Complainant transmitted cease and desists and cancellations/transfer demands to Respondent in 2006, 2008 and 2009, and did not receive a response from Respondent.
The registration agreement in effect between Respondent and Network Solutions, LLC, subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts ownership of rights in the trademark AVANTAGES FAMILI and FAMILI as evidenced by registrations in a number of countries. Complainant further asserts that it has made use of the trademark to identify a magazine that is published in France and exported to several other countries, as well as to identify a commercial Internet website.
Complainant argues that the disputed domain name is identical in appearance and sound to its FAMILI trademark.
Complainant contends that Respondent has no legitimate interests in the term "famili" or in the disputed domain name. Complainant states that Respondent has not used the disputed domain name in connection with an active website, and has not responded to its cease and desists and transfer demands.
Complainant argues that Respondent registered the disputed domain name in bad faith in order to prevent Complainant from reflecting the mark in a corresponding domain name, and for the purpose of disrupting the business of Complainant.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent contends that it registered the disputed domain name in 1997 because it "resembles the service we have since the day of its creation to our home users which consists of family members, hence the name famili.com".
Respondent argues that the term "famili" in Bahasa Indonesian means "family" in English.
Respondent refers to the address of the disputed domain name.
Respondent expresses the hope that its explanation adequately clarifies this matter.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the proceeding at the physical and email addresses shown in the record of registration of the disputed domain name. Respondent acknowledged receipt of the relevant documents and transmitted a Response. The Panel is satisfied that the Center that Respondent received adequate notice of these proceedings and a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has demonstrated ownership of rights in the trademarks AVANTAGES FAMILI and FAMILI based on registration in a number of countries, including France and several countries or autonomous regions of Asia (i.e., People's Republic of China, Hong Kong Special Administrative Region of the People's Republic of China, Republic of Korea, Singapore and Taiwan). Complainant has provided evidence of use of the trademark in France.
The disputed domain name directly incorporates the term FAMILI, adding only the generic top-level domain (gTLD) ".com". For purposes of the Policy the disputed domain name is identical to Complainant's trademark.
The Panel determines that Complainant has rights in a trademark and that the disputed domain name is identical to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))
Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain name because it has not used the disputed domain name in connection with an active website.
Respondent has indicated that it registered the disputed domain name because it bears a relationship to services that it offers for families, and that the term "famili" in the Indonesian language means "family" in the English language. The Panel has confirmed to its reasonable satisfaction by use of "Google translate" (as also undertaken and reported by Respondent) that Respondent's assertion regarding the meaning of "famili" in Indonesian is correct.
The evidence on the record of this proceeding suggests that Respondent did not use the disputed domain name in connection with an active Internet website until it received the Complaint. This means that Respondent had not used the disputed domain name in connection with an active website for 13 years following its registration. Following receipt of the Complaint, Respondent used the disputed domain name to direct Internet users to its commercial website where it offers a wide range of goods and services as an Internet service provider. There is nothing on Respondent's website presently identified by the disputed domain name that suggests an association with Complainant.
The disputed domain name consists of a generic term in the Indonesian language for "family". Had Respondent used the term "famili" in the disputed domain name prior to commencement of this proceeding, the Panel would have little difficulty in determining that Respondent has rights or legitimate interests in the disputed domain name within the meaning of Paragraphs 4(c)(i) and (iii) of the Policy. Inter alia, use of the term "famili", generic in Respondent's language, in association with providing a service that is reasonably related to that term (e.g., providing Internet services for the home or family) would constitute fair commercial use of the term, notwithstanding that Complainant holds trademark rights in that term in some other countries. However, the fact that Respondent did not use the disputed domain name in association with any website for a period of 13 years prior to commencement of this proceeding makes it difficult to bring its "new" use within the language of paragraph 4(c), even accounting for some flexibility in that language as has been previously recognized by this Panel (see, e.g., Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000).
The Panel might conclude that Respondent has rights or legitimate interests in the disputed domain name merely because it is a generic term in Respondent's language, and because Complainant does not have trademark rights in Respondent's home country. However, because of the Panel's disposition of this proceeding in the context of the criterion of bad faith registration and use, the Panel chooses not to make a determination on the question of rights or legitimate interests.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include "(i) circumstances indicating that [respondent has] registered or [respondent 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 [respondent's] documented out-of-pocket costs directly related to the domain name; (ii) [respondent] 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 respondent has] engaged in a pattern of such conduct; or (iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the 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 [respondent’s] web site or location”.
Complainant has argued that Respondent registered the disputed domain name to prevent Complainant from reflecting its trademark in a corresponding domain name. There is little on the record of this proceeding to suggest that might be true in light of the fact that Respondent registered the disputed domain name in 1997 and Complainant did not establish a commercial website for its magazine until 2001. It is unclear other than from viewing a website (in French) how Respondent might have come to know of Complainant's trademark registrations when it registered the disputed domain name in 1997. But, putting that to one side, Complainant has neither argued nor demonstrated that Respondent has engaged in any pattern of conduct with respect to the registration of domain names that reflect third-party trademarks. For that reason, Complainant's assertion that Respondent registered the disputed domain name in bad faith within the meaning of Paragraph 4(b)(ii) of the Policy is not persuasive.
Complainant has also argued that Respondent registered the disputed domain name to disrupt the business of Complainant. According to the express terms of Paragraph 4(b)(iii) of the Policy, in order for such conduct to constitute bad faith, Respondent should have been a competitor of Complainant. The Panel can not find plausible factual basis from which it might conclude that in 1997 Respondent was a present or foreseeable future competitor of Complainant, nor can the Panel discern a plausible motive for Respondent to have wished to disrupt Complainant's business.
Complainant has provided a minimum of explanation of its cause of action against Respondent, and the Panel will not attempt to fashion an alternative theory of bad faith conduct on the part of Respondent.
The Panel determines that Complainant has failed to establish that Respondent registered and used the disputed domain name in bad faith within the meaning of the Policy.
Complainant has not succeeded in demonstrating registration and use of the disputed domain name in bad faith, and the Panel will not direct the Registrar to transfer the disputed domain name to Complainant.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: November 19, 2010
1 Panel operation of Google translates of November 19, 2010.