WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FNAC SA v. Mahdi Emami

Case No. DIR2010-0003

1. The Parties

Complainant is FNAC SA, of Ivry-sur-Seine, France, represented by Inlex IP Expertise, France.

Respondent is Mahdi Emami, of Ardabil, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <fnac.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2010. On August 2, 2010, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On August 8, 2010, IRNIC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 August 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 6, 2010.

The Center appointed Nasser A. Khasawneh as sole panelist in this matter on September 15, 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 owns a large, well-known business in France and elsewhere, which among other things commercializes media, music, computers, magazines and other products and services. Complainant’s business is conducted through numerous retail outlets and electronic commerce over the Internet.

Complainant owns the trademark FNAC dating back as early as 1970 in several countries. For example, see International Trademark registration number 369818 dated May 8, 1970 in classes 9, 11, 16, 21, 25 and 28.

The website to which the disputed domain name routes was registered on March 10, 2009. According to exhibits to the Complaint and the content presently displayed in the Persian language on the website, the website is used to promote and commercialize media, dvds, software, videogames, written articles and other products.¹

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is similar to Complainant’s many trademarks and domain names incorporating the term “fnac”.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, in that Respondent owns no trademark rights in the term “fnac”, and has no license or authorization by Complainant to incorporate Complainant’s well-known mark in the disputed domain name. Complainant avers that the website to which the disputed domain name routes has been changed several times, but that it has included an unauthorized copy of Complainant’s commercial logo and also offers products in competition with Complainant. Therefore, Complainant contends, Respondent is not making a bona fide offering of goods or services and is opportunistically using Complainant’s trademark.

Finally, Complainant contends that the disputed domain name was registered in bad faith, since Respondent undoubtedly knew of Complainant’s famous trademarks. Complainant also contends that Respondent is using the domain name in bad faith.

Among other support for the allegation of bad faith use, Complainant describes several communications sent to Respondent respecting the unauthorized use of Complainant’s trademarks which went unanswered. Complainant also notes that the website to which the disputed domain name routes (1) falsely stated that a FNAC store would soon be opening in Iran, (2) reproduced elements of Complainant’s commercial websites and (3) is being used to commercialize products similar to those of Complainant in the hopes of making profit by misleading consumers into thinking they are doing business with Complainant.

On the basis of the above, Complainant seeks transfer.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Complainant must establish these elements even if Respondent does not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

A. Identical or Confusingly Similar

The Panel finds that Complainant’s allegation that the disputed domain name is similar to Complainant’s trademarks does not go far enough: the Panel finds instead that the disputed domain name is identical to Complainant’s FNAC trademark.

Panels disregard the domain name suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.

Without the “.ir” country code suffix, the disputed domain name is identical to Complainant’s FNAC trademark.

The requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

B. Rights or Legitimate Interests

The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.

The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).

A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).

The Panel accepts Complainant’s undisputed allegation that Respondent has no authorization or license to use its trademark in the disputed domain name.

The website to which the disputed domain name routes displays links commercializing products similar to those of Complainant. A check by the Panel of the site of the disputed domain name on the day of submission of this Decision showed that the site now shows a page stating that the domain name is for sale for a price up to USD 14,000, and provides contact details for anyone interested; the details of the person provided include the same family name as that of Respondent. The Panel finds therefore that Respondent has been using Complainant’s marks for its own commercial purposes and not for a noncommercial purpose.

Although Complainant does not address this point, it does not appear on the record that Respondent is commonly known by the disputed domain name. The Panel agrees with Complainant that by offering commercial products on the website, Respondent is seeking to attract Internet users through Complainant’s marks for Respondent’s own commercial purposes. Since Complainant credibly alleges without opposition that it has no relation with Respondent, the Panel also finds that the use of the disputed domain name is not a bona fide offering.

The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds that Complainant makes out a prima facie case.

Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of “rights or legitimate interests” in use of the disputed domain name.

Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered or Subsequently Used in Bad Faith

The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and/or bad faith use, is also established, as elaborated below.

Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Examining the circumstances in this case, the Panel finds that Respondent was undoubtedly aware of Complainant’s well-known FNAC mark, which Respondent deliberately adopted to create confusion and attract Internet users to its website for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Respondent’s website shows that the disputed domain name is used to promote and commercialize products similar to those sold by FNAC, in competition with FNAC’s online offerings. The Panel concludes that this activity evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Services North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070, (citing Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031).

Furthermore, the most recent use of the site to entice visitors to buy the disputed domain name only strengthens the Panel’s views in this regard.

The Panel further finds that Respondent’s failure to reply to Complainant’s cease and desist letters and the Complaint are cumulative evidence of bad faith use.

The Panel concludes therefore that, in addition to having registered the disputed domain name in bad faith, Respondent is also using the domain name in bad faith.

Consequently, the Panel concludes that the requirements of the third element of Policy, paragraph 4(a) are fulfilled.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <fnac.ir> be transferred to Complainant.

Nasser A. Khasawneh
Sole Panelist
Dated: October 5, 2010

¹ The Panel has undertaken limited factual research by viewing the website to which the disputed domain name resolves. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.