WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Française du Radiotéléphone - SFR v. Robin Manix
Case No. D2011-1258
1. The Parties
The Complainant is Société Française du Radiotéléphone – SFR of Paris, France, represented by Cabinet Vidon - Marques & Juridique PI Dpt, France.
The Respondent is Robin Manix of Casablanca, Morocco.
2. The Domain Name and Registrar
The disputed domain name <moncompte-neuf-sfr.net> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2011. On July 22, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 August 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2011.
The Center appointed Jacques de Werra as the sole panelist in this matter on August 26, 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 the Rules, paragraph 7.
4. Factual Background
The Complainant is a French 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 the registered owner of numerous trademarks including the acronym SFR, among which the international trademark registration no. 643842 SFR & design filed on August 2, 1995 in international classes 9, 35 and 38, the Community trademark registration no. 004648309 SFR filed on September 22, 2005 in international classes 9, 38, 41 and 42 and the 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 (jointly referred to as the “SFR Trademark”). It is also the owner of a French trademark SFR LE COMPTE n° 033224813 filed on May 13, 2003 in international classes 9, 38, 41 and 42 (the "SFR LE COMPTE Trademark").
Through its partnership with Neuf Cegetel, the Complainant has become the second largest French telecommunication operator and the first European alternative one. The Complainant is also the owner of various trademarks containing the word NEUF, including the Community trademark NEUF n° 005119102 filed on May 19, 2006 in international classes 35, 38, 41 and 42 and the French trademark NEUF n° 033249216 filed on October 3, 2003 in international classes 9, 35, 38 and 42 (jointly referred to as the “NEUF Trademark”).
The Complainant is the owner of numerous Internet domain names including the acronym “SFR”, inter alia <sfr.com>, <sfr.net>, <sfr.fr>, <sfrlecompte.eu> and < sfrlecompte.fr>.
The Disputed Domain Name was registered on March 10, 2011 and is not actively used but merely resolves to an Internet page presently containing the Italian text « Sito web in manutenzione » (based on the documents filed by the Complainant the text used to be « Sito in costruzione », whereby this difference has not significance for the purpose of these proceedings). In this respect, the Panel notes that, even if the address of the Respondent is allegedly in Morocco, it appears by reference to the official records (WhoIs) that the Respondent is based in Italy in view of the country extension indicated in the address ("IT") and of the relevant phone numbers which have been indicated (with a +39 extension which corresponds to Italy).
The Complainant sent a cease and desist letter to the Respondent on March 23, 2011 asking for the transfer of the Disputed Domain Name and a reminder on April 27, 2011. The Respondent did not reply to these letters.
5. Parties’ Contentions
The Complainant’s contentions may be summarized as follows:
The Disputed Domain Name is confusingly similar to numerous prior trademarks owned by the Complainant and namely the SFR Trademark and the NEUF Trademark, whereby the combination of these two trademarks in the Disputed Domain Name cannot be a coincidence. The addition of the terms “moncompte” does not have any consequence on the likelihood of confusion, insofar as these terms are descriptive, and further create a confusion with the SFR LE COMPTE Trademark owned by the Complainant.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because he has no trademark right for the name SFR or no Company name and is not allowed by the Complainant to use its prior trademarks nor its commercial name (namely, the Respondent is not a licensee of the Complainant).
The Disputed Domain Name was registered and is being used in bad faith by the Respondent for disrupting the business of the Complainant firstly because the combination of the two terms SFR and NEUF leads inevitably the Internet users to believe that the website is operated by the Complainant and because the term “moncompte” which is understood at least by the French public, as meaning “my account” leads the public to believe that the Complainant has created a website on which its clients can create and/or visualize their SFR account and notably their mobile phone account. Furthermore, the Respondent does not seem to be known under the Disputed Domain Name insofar as this address refers to a inactive homepage without any other content. This element demonstrates that the Disputed Domain Name is not of interest for the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint 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 Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights to the SFR Trademark and the NEUF Trademark in various jurisdictions and particularly in the European Union.
A comparison between the Disputed Domain Name and the trademarks owned by the Complainant shows that the Disputed Domain Name is clearly confusingly similar to them to the extent that it combines the SFR Trademark and the NEUF Trademark and partly reproduces the SFR LE COMPTE Trademark. In this respect, the addition of the descriptive terms “moncompte” in the initial section of the Disputed Domain Name does not affect this finding of confusing similarity. Quite to the contrary, the addition of these terms can rather increase the risk of confusion with the trademarks of the Complainant, given that they can directly refer to services offered by the Complainant to its customers (i.e. on line access to the customers’ accounts).
As a result, based on the rights of the Complainant in the trademarks and on the confusing similarity between these trademarks and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which integrates and combines the SFR Trademark and the NEUF Trademark owned by the Complainant in a way which can only be explained by reference to the Complainant’s business activities. This is further reinforced by the addition of the terms “moncompte” (for my account in the French language) which reinforces the impression of an intended reference to the Complainant’s services (and a proximity to the SFR LE COMPTE Trademark owned by the Complainant).
The Complainant has also stated without being contradicted that the Respondent has no rights in the Disputed Domain Name, that he is not authorized or licensed to use the trademark of the Complainant and that the Respondent has not been commonly known by the Disputed Domain Name.
The Panel thus accepts the Complainant’s prima facie showing and it was consequently up to the Respondent to come forward with evidence of a right to or legitimate interests in the Disputed Domain Name, which has not been done given Respondent’s absence of participation in these proceedings.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain name;
(ii) circumstances indicating that the Respondent registered the Disputed 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;
(iii) circumstances indicating that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the Disputed Domain Name in an attempt 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 examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the SFR Trademark and the NEUF Trademark are distinctively identifying the Complainant and the Complainant’s services so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to these trademarks owned by the Complainant. A finding of bad faith registration is further justified by the words “moncompte” contained in the Disputed Domain Name which directly refer to usual on-line services that customers and Internet users generally expect from a telecom operators, i.e. accessing their personal on-line account under a “my account” (“moncompte”) designation (as reflected by the SFR LE COMPTE Trademark owned by the Complainant).
The fact that the Disputed Domain Name is not actively used does not bar a finding of bad faith use. As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), para. 3.2, the lack of active use does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith.
In this case, the Panel considers that the circumstances establish that the Respondent is acting in bad faith because no good faith use of the Disputed Domain Name can reasonably be conceived in the future. See, by analogy (also relating to the Complainant), Société Française du Radiotéléphone – SFR v. Tobadoros Musicania, WIPO Case No. D2011-0815.
As a result, the Panel holds that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <moncompte-neuf-sfr.net> be transferred to the Complainant.
Jacques de Werra
Dated: September 9, 2011