WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NEXTINTERACTIVEMEDIA v. MSI Hassen FAKHFAKH

Case No. D2013-0209

1. The Parties

The Complainant is NEXTINTERACTIVEMEDIA of Paris, France, represented by Markplus International, France.

The Respondent is MSI Hassen FAKHFAKH of Sfax, Tunisia.

2. The Domain Name and Registrar

The disputed domain name <01telecharger.org> (“the Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2013. On January 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 31, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 7, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 8, 2013.

The Center verified that the Complaint together with the amended 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 February 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2013. The Center received informal email communications from the Respondent on February 4, 6, 12 and March 8, 2013. On February 12, 2013, the Center informed the parties of the possibility of suspending the proceeding in order to explore a possible settlement. On February 14, 2013, upon the request of the Complainant, the Center notified the suspension of the proceeding. On March 18, 2013, the Complainant requested the reinstitution of the proceeding. Accordingly, the due date for Response was extended to April 5, 2013. The Respondent did not submit any formal response. Accordingly, the Center notified about the commencement of panel appointment procedure on April 9, 2013.

The Center appointed Isabel Davies as the sole panelist in this matter on April 15, 2013. 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 has a variety of French trademarks dating from 1999. These include registrations for TELECHARGER, 01NET and 01 with various additional terms such as “business” and “management”.

The Complainant also has domain names including <telecharger.com>, <01telecharger.com> and <01telecharger.fr>. These date from 1998.

The Domain Name <01telecharger.org> was registered on August 29, 2011.

5. Parties’ Contentions

A. Complainant

The Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; (Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), 3(b)(ix)(1))

The Complainant states that it is the owner of the following trademarks which were filed before the registration of the Domain Name (which was registered on August 29, 2011). These prior trademarks are mostly related to the fields of media and new technology.

- French Trademark n°99.817.112 TÉLÉCHARGER filed on October 4, 1999, in classes 35, 38, 42;

- French Trademark n°05/3.352.217 TELECHARGER.COM filed on April 11, 2005, in classes 9, 16, 35, 38, 41, 42;

- French Trademark n°03/3.226.183

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filed on May 20, 2003, in classes 9, 16, 35, 38, 41, 42;

The Complainant also owns many trademarks which includes the number 01 such as:

- French Trademark n°11/3.830.502 01NET filed on May 11, 2011, in classes 9, 16, 35, 38, 40, 41, 42;

- French Trademark n°99.808.038 01NET filed on August 16, 1999, in classes 9, 16, 35, 38, 40, 41, 42, 45;

- French Trademark n°98.766.111 01 INFO filed on December 23, 1998, in classes 9, 16, 35, 38, 41, 42;

- French Trademark n°09/3.683.965 GROUPE 01 filed on October 15, 2009 in classes 16, 35, 38, 41, 42;

- French Trademark n°00/3.009.824 01 BUSINESS filed on February 24 2000, in classes 9, 16, 35, 36, 38, 40, 41, 42, 45;

- French Trademark n°11/3.823.325

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filed on April 13, 2011, in classes 16, 35, 38, 41.

- French Trademarks 01 MAGAZINE, 01 MANAGEMENT, 01 RESEAUX, 01 RECRUTEMENT, 01NETPRO, 01NET MUSIQUE.

It is stated that the Complainant is also the owner of the following domain names, which are highly popular.

- <telecharger.com> registered on September 3, 1998 which redirects to one on the most famous downloading website for the French public;

- <01telecharger.com> registered on September 1, 1999;

- <01telecharger.fr> registered on December 4, 2009;

- <01net.com> registered on February 27, 1999, which redirects to one of the most famous computing news and downloading website for the French public.

The Complainant refers to the homepage of their popular website which can be found at “www.telecharger.com” / “www.01net.com”.

The Complainant avers that the Domain Name reproduces the essential components of its previously registered trademarks, listed above, namely the word “telecharger” preceded by the numbers “01”.

The Complainant avers that the addition of the generic extension “.org” is not sufficient to distinguish the signs and therefore to avoid any likelihood of confusion in the public mind.

It avers that the Domain Name presents a risk of confusion visually, phonetically and intellectually with the prior cited trademarks as the elements referred to have exactly the same meanings as those in the Complainant’s trademarks and its domain names.

The Complainant puts in evidence actual confusion of Internet users who have called the Complainant to report this Domain Name which misled them, regarding the origin of the website to which it refers.

The Respondent has no rights or legitimate interests in respect of the Domain Name.

(Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))

The Complainant contends that the Respondent has no rights or any legitimate interests in relation to the Domain Name. He is not known under this name and the combination of the elements is not logical or necessary in order to offer an online downloading service.

On the contrary it contends, the Respondent has obviously chosen the Domain Name only to maintain a likelihood of confusion with the well-known website “www.telecharger.com” / “www.01net.com” and accordingly to divert Internet users for commercial gain.

The Domain Name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant contends that its websites “www.telecharger.com” and “www.01net.com” have a strong reputation which the Respondent could not ignore when he registered the Domain Name and refers to Annex 5 of the Complaint.

It avers that the Respondent has knowingly registered the equivalent Domain Name with the “.org” extension with the Complainant already having the same domain names but with “.com” (<01telecharger.com>), and “.fr” (<01telecharger.fr>) which both redirect to a very well-known website.

This is also a mix of 01 and TELECHARGER.

The Complainant contends that the Respondent is taking advantage of the reputation of the Complainant’s websites: indeed, the Domain Name also redirects to a downloading website as exhibited at Annex 2 of the Amended Complaint and therefore captures some clients of the Complainant who are misled by the origin of the website. Moreover, Internet users have contacted the Complainant because they were surprised that the website “www.01telecharger.org” offers downloads of pirated magazines, which have never been offered by “www.01telecharger.com” / “www.telecharger.com” with which they thought that the domain name in ”.org” was affiliated as shown in Annex 6 of the Complaint.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. There was however correspondence during the suspension period and the Respondent did not disagree with any of the Complainant’s contentions saying, for example:

“Hello, I Read this 2 files, and I accept it, all my informations are correct, Please complete this transfert of my domain Thank’s”.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) the Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interest in respect of the Domain Name;

(iii) the Domain Name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.

In the absence of a formal Response, the Panel may also accept as true the reasonable factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the disputed domain name.

A. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, paragraph 4(a)(i); Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The Panel accepts that the Complainant is the owner of a considerable number of prior french trademarks for TELECHARGER, 01NET and other “01” marks with a variety of suffixes which were filed before the Domain Name was applied for and that these prior trademarks are mostly related to the fields of media and new technology.

It accepts that the Complainant is also the owner of the following domain names, and that these are popular.

- <telecharger.com> registered on September 3, 1998;

- <01telecharger.com>registered on September 1, 1999;

- <01telecharger.fr> registered on December 4, 2009;

- <01net.com> registered on February 27, 1999.

The Panel accepts that the homepage of the Complainant’s popular website can be found at “www.telecharger.com” / “www.01net.com”.

The Panel also accepts that the Domain Name reproduces the essential components of the Complainant’s previously registered trademarks, namely the word “telecharger” preceded by the numbers “01”.

The Panel agrees that the addition of the generic extension ”.org” is not sufficient to distinguish the signs and therefore to avoid any likelihood of confusion in the public mind. The presence of “.org” serves purely to identify the text in question as a domain name and does not change the likelihood of confusion between a domain name and a registered mark (see BIC Deutscheland GmbH & Co KG v. Paul Tweed, WIPO Case No. D2000-0418).

The Panel also accepts that the Domain Name presents a risk of confusion visually, phonetically and conceptually with the prior cited trademarks and in particular the domain names as the elements referred to have the same meanings.

The Complainant has put in evidence actual confusion of Internet users who have called the Complainant to report that they had been misled regarding the origin of the website. In particular the evidence of Mr. Maslo, Managing Editor of “www.01net.com” in a statement made on January 17, 2013 states that he received complaints in November 2012 that the website to which resolves the Domain Name had used pirated versions of magazines, confusing this site with the Complainant’s. The website provides content which does not distinguish the Domain Name from the Complainant’s websites.

The Panel accepts that in accordance with the Policy, paragraph 4(a)(i) that the Domain Name in question is confusingly similar to the Complainant’s trademark.

B. The Respondent has no rights or legitimate interests in respect of the Domain Name

(Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2))

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

The Panel accepts that the Respondent has no rights or any legitimate interests in relation to the Domain Name. No evidence has been provided to suggest that he is known under this name and the Panel accepts that the combination of the elements is not logical or necessary in order to offer an online downloading service.

The Panel also accepts that the Respondent has chosen the Domain Name to create a likelihood of confusion with the websites “www.telecharger.com” / “www.01net.com” and accordingly to divert Internet users for commercial gain, which is not a bona fide or noncommercial use.

The Panel accepts that, in accordance with the Policy, paragraph 4(a)(ii), the Respondent has no rights or legitimate interests in the Domain Name.

C. The Domain Name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Policy provides in paragraph 4(b) that certain circumstances, “in particular but without limitation”, will be evidence of bad faith registration and use of a domain name, and lists four possible circumstances which shall be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. These circumstances include the situation where a respondent uses the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

The Panel accepts that the Complainant’s trademarks and websites “www.telecharger.com” and “www.01net.com” have a strong reputation which the Respondent could not ignore when he registered the Domain Name as demonstrated in Annex 5 to the Complaint by evidence showing the high regard in which the websites are held.

The Panel accepts that that the Respondent must have knowingly registered the equivalent domain name with the “.org” extension with the Complainant already having the same domain names but with “.com” (<01telecharger.com>), and “.fr” (<01telecharger.fr>) which both redirect to a very well-knowm website and contain a mixture of 01 and TELECHARGER.

The Panel accepts that the Respondent is taking advantage of the reputation of the Complainant’s websites as the Domain Name redirects to a downloading website and will therefore capture some clients of the Complainant who are misled as to the origin of the website.

The Panel accepts that Internet users have contacted the Complainant because they were surprised that the website “www.01telecharger.org” offers downloads of pirated magazines, which have never been offered at “www.01telecharger.com” / “www.telecharger.com” with which they thought that the Domain Name was affiliated.

The Respondent has chosen to refrain from responding formally to the Complaint and has corresponded during the proceedings making no suggestion that the statement made in the Complaint were anything but correct. Such circumstances taken together support an inference of bad faith registration and use.

For the reasons cited above, the Panel finds that the Domain Name was registered and is used in bad faith and the Complainant has therefore met the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <01telecharger.org> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: April 29, 2013