WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Societé Française du Radiotelephone - SFR v. Tobadoros Musicania
Case No. D2011-0815
1. The Parties
The Complainant is Societé Française du Radiotelephone - SFR of Paris, France, represented by Cabinet Vidon - Marques & Juridique PI Dpt, France.
The Respondent is Tobadoros Musicania of Casa, Italy.
2. The Domain Name and Registrar
The disputed domain name <alert-information-sfr.com> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2011. On May 10, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On May 16, 2011, Tucows 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” 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2011.
The Center appointed Brigitte Joppich as the sole panelist in this matter on June 15, 2011. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a global telecommunications operator with more than 10,000 associates serving more than 20 million of clients, including more than 4.8 million of home clients and more than 140,000 companies, and maintaining inter alia GSM/GPRS services for almost 99% of the French population for which GSM/GPRS is available, an optic fibers network of 57.000 km, the first high speed network in France, with almost 88% of the population for which 3G is available, and the first ADSL platform in France. The Complainant’s sales figures amounted to 12.4 billion Euros in 2009.
The Complainant is registered owner of more than 1,000 trademarks, many of them including the acronym “SFR”, inter alia International trademark registration no. 643842 SFR & design filed on August 2, 1995 in international classes 9, 35 and 38, Community trademark registration no. 004648309 SFR filed on September 22, 2009 in international classes 9, 38, 41 and 42 and French trademark registration no. 003071323 SFR & design filed on December 15, 2000 in international classes 9, 16, 35, 36, 37, 38, 39, 41 and 42 (hereinafter referred to as the “SFR Marks”). Furthermore, the Complainant is owner of numerous Internet domain names including the letters “SFR”, inter alia <sfr.com>, <sfr.net>, <sfr.fr>, <sfr.asia>, <sfr.org> and <information-sfr.com>.
The disputed domain name was registered on December 17, 2010 and is not actively used in connection with a website.
The Complainant sent a cease and desist letter to the Respondent on January 21, 2011 asking for the transfer of the disputed domain name and forbearance of use of the SFR Marks. The Respondent neither replied to the cease and desist letter nor to a reminder sent by the Complainant.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the Complainant’s SFR Marks, which are well-known at least in France, and to the Complainant’s company name as the additional generic terms “alert” and “information” do not have any effect on the likelihood of confusion.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name because he enjoys no trademark rights or rights in the company name “SFR” and is not a licensee of the Complainant and therefore neither allowed to use prior trademarks nor its commercial name.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant contends that the disputed domain name was registered and is being used with the aim of disrupting the business of the Complainant. The Complainant argues that the two terms “alert” and “information” combined with the acronym “SFR” lead Internet users to believe that the website is a domain name owned by the Complainant, and that via such website either the Complainant wishes to communicate pieces of serious information to its clients (which is not the case) or another person (such as the Respondent) wishes to reveal secret information on the Complainant. The Complainant finally states that the passive holding of the disputed domain name is to be considered as evidence of bad faith and that the disputed domain name has been registered in order to prevent the Complainant from reflecting the SFR Marks in a corresponding domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s SFR Marks in which the Complainant has rights and is confusingly similar to such marks.
Firstly, the fact that some of the Complainant’s SFR Marks include additional graphical elements does not hinder a finding of confusing similarity under the Policy. It is well established that the similarity between a trademark and a disputed domain name is not eliminated by the fact that the trademark includes additional graphical elements (see Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems, WIPO Case No. D2001-0932).
Secondly, the additional words “alert” and “information” in the disputed domain name are merely generic. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, such as “information” or “alert” (see UPMC v. John Pequeno, NAF Claim No. 1319984; Société Française De Radiotéléphone-SFR contre Fabio Canavarou, WIPO Case No. D2009-1575; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345; Pink OTC Markets Inc. v. Consolidated Diversified Inv. c/o Jeff Galpern, NAF Claim No. 1305256; Expedia, Inc. v. Domain Park Limited, NAF Claim No. 1053504).
Finally, it is also well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of productions of the respondent's rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either, as the disputed domain name is not actively used.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the SFR Marks. The Complainant provided evidence that its SFR Marks are well known, at least in France. Previous UDRP panels have already confirmed that the present Complainant is well-known and has a strong market position (see Cegetel, Société Française du Radiotéléphone-SFR v. Casper Blue.com Inc., WIPO Case No. D2003-0786: “The registration of a domain name which is exactly coinciding to the combination of the two trademarks owned by the Complainants, two related companies one of which is well known in many countries, is a circumstance evidencing the Respondent’s bad faith in the registration and use of the domain name.”; Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386: “SFR has a strong market position in the area of telecommunication”). In addition, the Respondent registered a domain name which fully includes one of the Complainant’s domain names, namely <information-sfr.com>. Based on these circumstances, the Respondent was in all likelihood aware of the Complainant and its right in the SFR Marks when registering the disputed domain name.
As the disputed domain name is not actively used by the Respondent, the Panel has to decide whether or not the Respondent’s (non-)use of the disputed domain name is to be considered as bad faith use under the Policy.
It is consensus view that the lack of an active use of a domain name does not as such prevent a finding of bad faith. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).
The Complainant provided evidence that the SFR Marks are well established, while the Respondent failed to provide evidence of any actual or contemplated good faith use although he had been contacted by the Complainant several times. Furthermore, the Respondent registered a domain name which fully includes one of the Complainant’s domain names, namely <information-sfr.com>, which in all likelihood is not a coincidence given that the Respondent’s first choice when searching for a “.com” domain name should have been “www.alertinformationsfr.com”, which is still available. Finally, the fact that the disputed domain name fully incorporates the Complainant’s highly distinctive SFR Marks by merely adding the generic words “alert” and “information” is rendering the false impression that the domain name is somehow related to the Complainant and provides information on the Complainant’s services. As a result, such domain name is a domain name Internet users might mistakenly enter when searching for the Complainant’s services or website.
In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent’s non-use of the domain name equals use in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <alert-information-sfr.com> be transferred to the Complainant.
Dated: June 24, 2011