WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Opera National de Paris v. Vertical Axis Inc.
Case No. D2013-0874
1. The Parties
The Complainant is Opera National de Paris of Paris, France, represented by Cabinet Santarelli and Ordipat, France.
The Respondent is Vertical Axis Inc. of Christ Church, Barbados, represented by ESQwire.com, P.C., United States of America.
2. The Domain Names and Registrar
The disputed domain names <operaparis.com> and <parisopera.com> are registered with Fabulous.com Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2013. On May 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 20, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 27, 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 May 28, 2013. In response to a further notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 30, 2013.
The Center verified that the Complaint together with the amended Complaints 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 amended Complaints, and the proceedings commenced June 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for the Response was June 23, 2013. The Response was filed with the Center on June 23, 2013.
The Center appointed Andrea Mondini, Christian-André Le Stanc and The Hon Neil Brown Q.C. as panelists in this matter on July 25, 2013. The Panel finds that it was properly constituted. Each member of 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.
On August 8, 2013, the Panel requested the Center to inform the parties that the decision due date had been extended to August 22, 2013.
4. Factual Background
The Complainant is Opera National de Paris, a French Public Utility Company managing the Opéra Garnier and the Opéra Bastille in Paris, France. The Complainant inter alia owns the following registered trademarks:
- OPERA DE PARIS, French word trademark, filed under the number 04 3 329 411 on December 13, 2004;
- OPERA NATIONAL DE PARIS, French device trademark, filed under the number 94 538 657 on October 4, 1994;
- OPERA NATIONAL DE PARIS, device trademark, international registration, filed under the number 814 215 on August 19, 2003, designating Switzerland, Liechtenstein, Monaco and the Russian Federation;
- OPERA NATIONAL DE PARIS, device trademark, community trademark registration number 003320041, filed on August 20, 2003.
The Disputed Domain Name <operaparis.com> was registered on June 10, 2006 and the Disputed Domain Name <parisopera.com> was registered on May 19, 2004. Both disputed domain names shall be referred to as the Disputed Domain Names hereinafter.
The Respondent is Vertical Axis, Inc., a company with its seat in Barbados.
5. Parties’ Contentions
The Complainant contends:
- that Opera National de Paris is a French Public Utility Company, managing the Opéra Garnier and the Opéra Bastille in Paris, France creating and hosting shows in Paris, and touring in France and throughout the world with its ballet company;
- that OPERA NATIONAL DE PARIS is known worldwide in the arts sector;
- that the Complainant owns a registered trademark for the word trademark OPERA DE PARIS in France and registrations of the trademark OPERA NATIONAL DE PARIS in France and other countries;
- that both Disputed Domain Names reproduce the two distinctive elements of the trademark OPERA DE PARIS without the preposition “de”;
- that the absence of the preposition “de” is not sufficient to diminish confusing similarity, since both elements obviously designate the Paris Opera;
- that its website is hosted on the domain name <operadeparis.fr> and that it is the registrant of numerous other domain names, such as <operaparis.info> or <operaparis.net> etc.;
- that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names, since no license or authorization has been given to the Respondent to use the OPERA DE PARIS trademark;
- that both Disputed Domain Names resolve to websites that show sponsored links relating to the display of various links to competing third party websites;
- that by using the Disputed Domain Names, the Respondent intentionally tries to attract Internet users by creating a likelihood of confusion with the Complainant’s marks and thereby generating income;
- that the Respondent was aware of the existence of the different OPERA DE PARIS trademarks, since the websites to which the Disputed Domain Names resolve contain explicit links to websites proposing the purchase of tickets for the shows hosted by the Complainant’s opera houses;
- that the Respondent obtains a financial gain every time an Internet user inadvertedly accesses its websites and activates any of the sponsored links;
- that the Respondent was aware of the existence of the Complainant’s OPERA DE PARIS family of marks because its use of the Disputed Domain Names also points to the Complainant’s opera houses;
- that therefore the Disputed Domain Names were registered and are being used in bad faith.
The Respondent contends:
- that the Disputed Domain Names were registered on May 19, 2004 and June 10, 2006, i.e. nine and seven years ago;
- that the Respondent has registered over 100 descriptive domain names incorporating the terms “Paris” or “opera”, such as <musicopera.com> or <canadianopera.com> etc.;
- that the Respondent did not have the Complainant’s trademarks in mind when it registered the Disputed Domain Names and did not intend to sell them to Complainant or to disrupt the latter’s business;
- that the Respondent has registered thousands of generic dictionary common word domain names;
- that the Respondent has used the Disputed Domain Names to display pay-per-click (“PPC”) advertising links related to topics of general interest;
- that the Complainant should be barred by the doctrine of laches because it waited over nine years to initiate the proceedings;
- that the Complainant has brought a claim against another party in 2011 but took no action against Respondent;
- that the doctrine of laches should be considered in evaluating all claims under the UDRP;
- that the doctrine of laches as applied in The New York Times Company v. Name Administration, Inc., NAF Claim No. 1349045 should also be applied in the present case;
- that the Complainant was likely aware of the Disputed Domain Names before the Respondent acquired them, particularly demonstrating that laches is appropriate;
- that the Complainant’s trademarks are neither identical nor confusingly similar to the Disputed Domain Names;
- that under the UDRP very small differences are sufficient to avoid a finding of confusing similarity;
- that the Disputed Domain Names are merely generic English words that the public uses to refer to “Opera de Paris” or “Opera National de Paris” and for which no party has exclusive rights to use;
- that the public understands that a domain name referencing the Opera National de Paris with the English words “Paris Opera” may not be the official entity and that <parisopera.com> is not the same as “Opera De Paris” or “Opera National De Paris”;
- that the Complainant’s trademarks are merely descriptive of the Complainant’s goods and services and are generic terms because they identify the very genus or category of goods and services;
- that generic marks are entirely incapable of acquiring secondary meaning and thus cannot provide common law trademark rights under the Policy;
- that the Disputed Domain Names are part of the public domain;
- that the Respondent has rights and a legitimate interest in the Disputed Domain Names;
- that the registration of domain names that contain common words are permissible on a first come, first served basis and such registration establishes the Respondent’s legitimate interest;
- that the Respondent registered the Disputed Domain Names based on their common generic or descriptive meaning and not to target a trademark;
- that the Respondent’s good faith in registering the Disputed Domain Names based on descriptiveness is corroborated by many similar descriptive term domain names it has registered;
- that several UDRP panels have expressly recognized the bona fide nature of the Respondent’s domain names registration and use practices;
- that the use of the Disputed Domain Names to post generic advertising is legitimate;
- that there is no evidence of bad faith registration or use.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following to have the Disputed Domain Names transferred to it:
(i) that the Disputed Domain Names registered by the Respondent are 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 Names; and
(iii) that the Disputed Domain Names have been registered and are being used in bad faith.
Before elaborating on these points, the Panel will briefly discuss whether the Complainant’s claim is time barred, since the Respondent has invoked the doctrine of laches.
A. Doctrine of Laches
The Respondent in the present case argues that the Complainant’s claim should be barred due to the application of the doctrine of laches.
It is correct, that the panel in The New York Times Company v. Name Administration Inc. (BVI), NAF Claim No. 1349045 cited by the Respondent stated that “[t]he Panel believes that the doctrine of laches should be expressly recognized as a valid defense in any domain dispute where the facts so warrant. Prior decisions rejecting the applicability of the doctrine due to the failure of its express recognition in the UDRP Policies appear to be an unsound basis for ignoring the potential defense.”
However, the most recent UDRP decision on this issue convincingly holds otherwise. In Alimak Hek, Inc. v. Richard Wheat, WIPO Case No. D2011-1344, the panel after a careful evaluation of the issue refused to apply the doctrine of laches to a delay of more than ten years. It based its decision mainly on the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.10, which clearly states that:
“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.
However: Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith. A small number of panels have also begun to acknowledge the possible applicability, in appropriate and limited circumstances, of a defense of laches under the UDRP where the facts so warrant.”
The panel in Alimak Hek, Inc. v. Richard Wheat, supra, thoroughly evaluated whether the practice of UDRP panels as summarized in the WIPO Overview 2.0 was still justified and to be followed. It came to the following conclusion:
“In this Panel’s opinion, the New York Times panel gives no sound reason for its holding quoted above; its only apparent rationale is its members’ contrary opinion. As reported in that proceeding there was no extraordinary factual setting justifying departure from the established rule of decision, and application of laches was unnecessary to that panel’s decision, as the complaint was denied on other grounds. This Panel will therefore treat the New York Times case as an aberration and continue to follow the Overview’s consensus approach on time-based defenses.”
The majority of the Panel in the present case concurs with the panel in Alimak Hek, Inc. v. Richard Wheat, supra, in that it is not justified to apply the doctrine of laches as such in UDRP proceedings. Neither the Policy or the Rules nor the case law of UDRP panels provides a sufficient basis for applying the doctrine.
In the view of the majority of this Panel, it is more appropriate to address issues of delays in seeking legal remedies “squarely within the terms of paragraphs 4(a)(ii) and (iii) of the Policy, rather than analyzing them under the equitable doctrine of laches”, the same approach already followed by the panel in Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant has shown that it holds rights in the word mark OPERA DE PARIS and several device marks that contain the words “Opera National De Paris”. The distinctive elements of these trademarks in the view of the majority of the Panel are the words “opera” and “Paris”.
Taken separately, the words “Opera” and “Paris” are generic terms. The combination of such terms, however, may be a trademark if they are perceived as source identifier or become a trademark if they acquire secondary meaning, particularly where they designate only one relevant player in the market. In the present case, the Complainant operates both of the two operas in Paris so that the trademarks OPERA DE PARIS and OPERA NATIONAL DE PARIS are source identifiers. In addition, French courts (Annex 1 to the Complaint) as well as the UDRP panel in the decision Opera National de Paris v. Admin, Domain email@example.com, NA, WIPO Case No. D2011-2055 have considered the OPERA NATIONAL DE PARIS trademarks to be valid and well-known. In addition, if the terms “Opera” and “Paris” are used together, they clearly refer to the two operas in Paris, generally known as the “Opera National De Paris”.
The Disputed Domain Name <operaparis.com> contains the two distinctive words composing the Complainant’s trademark OPERA DE PARIS but lacks the French preposition “de” (with the meaning “of” in French). Except for the preposition “de” the Disputed Domain Name and the OPERA DE PARIS mark are thus identical. The preposition “de” is not a distinctive element of the mark and in the view of the majority of the Panel, the words “opera” and “Paris” combined will be understood by consumers as referring to the mark OPERA DE PARIS. As a result, the Disputed Domain Name <operaparis.com> is confusingly similar to the OPERA DE PARIS trademark. In the same way, the lack of the preposition “de” and the word “National” (meaning “national” in French) in the Domain Name <operaparis.com> is not sufficient to dispel the risk of confusion between the Domain Name and the well-known trademarks of the Complainant. Even if it does not explicitly contain the word “National”, consumers will understand the Domain Name as referring to the OPERA NATIONAL DE PARIS, since this trademark is used for the two only operas in Paris. The Disputed Domain Name <operaparis.com> as a result is also confusingly similar to the Complainant’s OPERA NATIONAL DE PARIS trademarks.
The Disputed Domain Name <parisopera.com> differs from the Disputed Domain Name <operaparis.com> only in the order of the words. This Disputed Domain Name too, however, consists of the two words “opera” and “Paris”, which are distinctive for the Complainant’s trademarks. The order of the words is irrelevant, especially since the meaning is the same and will be understood to refer to the marks OPERA DE PARIS or the OPERA NATIONAL DE PARIS, respectively. The Disputed Domain Name <parisopera.com> is therefore also confusingly similar to the Complainant’s trademarks.
In view of the above, the majority of the Panel concludes that the Complainant has proven that the Disputed Domain Names are identical or confusingly similar to the trademarks in which it has demonstrable rights.
The Complainant has satisfied the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
Previous UDRP panels have held that the use of the domain name to direct visitors to various third party commercial websites does not constitute legitimate bona fide use under the Policy and does not confer legitimate interests in the domain name (see Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146). In that case the panel stated that “the evidence in the Complaint indicates that the website at the disputed domain name is commercial in the sense that it appears to provide links to other sites being competitors of the Complainant, and of an apparently commercial nature from which the Respondent presumably derives or intends to derive profit. Such use does not constitute a legitimate non-commercial or fair use of the disputed domain name by the Respondent within the meaning of Paragraph 4(c)(iii) of the Policy.”
In the present case, the Respondent has chosen to use domain names that are confusingly similar to the Complainant’s trademarks without authorization by the Complainant. According to the assertion of the Respondent itself, the Disputed Domain Names are hosted with a service which places PPC advertising links. The Disputed Domain Names are used to display PPC advertising links for different services, some of them related, others unrelated to the trademarks of the Complainant. The websites at the Disputed Domain Names thus provide links to other sites, some of which are competitors of the Complainant. No rights or legitimate interests derive from such use of the Complainant’s trademark according to the decisions cited above.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the Disputed Domain Names. In addition, the Complainant has denied having any connection with the Respondent or providing any authorization. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.”
Based on the above, the majority of the Panel holds that the Respondent has no rights or legitimate interests in the Disputed Domain Names. This finding is in line with an earlier decision of a UDRP panel also concerning the trademarks in question in the present case (Opera National de Paris v. Admin, Domain firstname.lastname@example.org, NA, supra). The fact that the Respondent has registered many other domain names with generic terms, some of them also containing the words “Paris” or “Opera”, does not change this finding.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith. Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including (iv) where a domain name is “used to deliberately attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”
It does not per se constitute bad faith to use domain names for post parking and landing pages or PPC links. However, if such domain name is obviously exploiting the goodwill associated with the complainant’s mark, this may generally be considered to be unfair use resulting in misleading diversion. In Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708, the panel decided that the fact that the website provided multiple links to goods and services, some of which related to the complainant’s trademark, indicated that the respondent knowingly used the complainant’s trademark and evidenced that the respondent unfairly and opportunistically benefited from the goodwill associated with the complainant’s mark. In Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, the panel found that bad faith exists where a domain name is so obviously connected with the complainant that its very use by someone with no connection with the complainant suggests opportunistic bad faith. In the case Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774 the panel assumed registration and use in bad faith because under the domain names the respondent not only sold products of the complainant but also products of competitors. The panel held that this “constitutes an improper use of Complainants’ mark to attract Internet users to Respondent’s site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site.”
In the present case, the Respondent uses two domain names which are confusingly similar to the Complainant’s well-known OPERA DE PARIS and OPERA NATIONAL DE PARIS marks. The sites posted under the Disputed Domain Names <operaparis.com> and <parisopera.com> on the one hand contain links to “Paris Opera” or “Opera de Paris” which shows that the Respondent was aware of the Complainant’s marks. On the other hand, these links direct users to sites that sell all kinds of tickets, also for competitors of the Complainant. Some links also direct users to sites offering services totally unrelated to the Complainant’s artistic shows. The Respondent thus attracts Internet users to its sites by using the well-known trademarks of the Complainant, obviously with the aim of (also) selling them products of competitors of the Complainant. These facts in the view of the majority of the Panel indicate that the Respondent knowingly used the Complainant’s trademarks and is evidence that the Respondent is unfairly and opportunistically benefiting from the goodwill associated with the Complainant’s marks.
Accordingly, the majority of the Panel finds that both of the Disputed Domain Names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <operaparis.com> and <parisopera.com> be transferred to the Complainant.
Christian-André Le Stanc
The Hon. Neil Brown Q.C.
Date: August 22, 2013
This panelist disagrees with the decision of the majority in this matter. The decision deprives the Respondent of two domain names that are essentially ordinary words in common use that are being used by the Respondent within their ordinary meaning and are not confusingly similar to any of the trademarks on which the Complainant relies. Moreover, the Complainant seems to have sat by for nine years since the registration of one of the Disputed Domain Names and for seven years since the registration of the other Disputed Domain Name when it must be assumed that the Complainant knew of the Disputed Domain Names and how they were being used and yet did nothing to stop it. During that time, the Respondent was able to build up a legitimate business using the Disputed Domain Names and yet has now been denied the right to continue doing so. As such, the decision is a very serious restriction on the rights of the Respondent to its property in the Disputed Domain Names1, goes further than the UDRP has previously gone to protect the legitimate rights of trademark owners and in effect gives a monopoly to the Complainant on the use of ordinary words.
Identical or Confusingly Similar
The Complainant is a French Public Utility Company engaged in theatrical presentations, in particular opera and ballet. It operates two very prestigious opera houses in Paris, the Palais Garnier and the Opera Bastille which are widely known as the opera houses of the Complainant. It has changed its name 27 times since its inception, moving through “Opera” to “Opera de Paris”, “Opera National” and, since 1994, it has been known by its present name, “Opera National de Paris”2. Virtually the only potential names it has not assumed are the two expressions used in the Disputed Domain Names, <operaparis.com> and <parisopera.com>. Nor has it ever applied for a trademark in either “operaparis” or “parisopera”. For all business and artistic purposes it operates under the name Opera National de Paris; thus, for example, its website at “www.operadeparis.fr” makes it very plain that its name is “Opera National de Paris”, that its presentations take place at the Palais Garnier and the Opera Bastille and that it does not use and apparently never has used the names “Opera Paris” or “Paris Opera”.
The Complainant, in seeking recovery of two Disputed Domain Names relies on four registered trademarks, one for OPERA DE PARIS and three for OPERA NATIONAL DE PARIS. As has been noted it does not have a registered trademark for “opera Paris” or “Paris opera” and it has not submitted or tendered any evidence that might show it has common law trademark rights to “opera Paris” or “opera Paris”.
With that background, the first question that arises is whether either of the Disputed Domain Names is identical or confusingly similar to either of the registered trademarks that are in evidence.
The trademark OPERA NATIONAL DE PARIS
In the opinion of this panelist, neither of the Disputed Domain Names <operaparis.com> or <parisopera.com> is identical to the trademark OPERA NATIONAL DE PARIS. That is so because the Disputed Domain Names are not the same in every respect as the trademark, which is the test of whether they are identical and also because, although the Disputed Domain Names connote a broadly generic notion, namely opera in Paris, the trademark goes out of its way to declare that it is invoking not opera in general but a specific, national body with all of the authority of the city of Paris. This view reflects the intention of the Complainant that it should be, should be known as and should promote itself as “Opera National De Paris”, which it does. So, the Disputed Domain Names <operaparis.com> and <parisopera.com> are not identical to OPERA NATIONAL DE PARIS.
Nor, in the opinion of this panelist, is either Disputed Domain Name confusingly similar to the trademark OPERA NATIONAL DE PARIS. They are similar, of course, as both contain the words “opera” and “Paris”, but the question of whether they are confusingly so depends on whether an objective Internet user would assume that the opera in Paris intended to be covered by the Disputed Domain Names is the same as the opera invoked by the trademark. As pointed out above, the Disputed Domain Names <operaparis.com> and <parisopera.com> both invoke the concept of opera in Paris, in general and not necessarily or solely the OPERA NATIONAL DE PARIS company that runs the two prestigious houses at Palais Garnier and the Opera Bastille and whose very name announces that it is the national body. However, the trademark is limited to the OPERA NATIONAL DE PARIS and does not embrace opera in general. Although some Internet users might conclude that the Disputed Domain Names were referring to the trademark and the opera houses operated under the auspices of that trademark, it cannot be said that the preponderance of Internet users would agree and certainly not on the balance of probabilities. Many Internet users, including those not as familiar with the structure of the opera and ballet in Paris as opera lovers and balletomanes, would assume that there was a reason why the Complainant included the word “National” in its name and embedded it in its trademark and its promotions on the Internet and may well think that the reason was to distinguish the national body from other companies in Paris providing opera, ballet or like entertainment. That would strengthen their view that the two Disputed Domain Names were more likely to be referring to opera, in general and in Paris, rather than the OPERA NATIONAL DE PARIS. There is more opera and there are more opera houses and theatres performing ballet and opera in Paris than the prestigious venues of the Complainant. Residents of Paris would be aware of this and visitors and tourists would assume it, as it is correct and a look at the Respondent’s website shows so. A simple Internet search will also show that although the Complainant’s venues are rich in tradition and quality, there are other venues in Paris and they also offer opera and ballet. Put bluntly, the Disputed Domain Names cover the whole of that field and the trademarks of the Complainant embrace only their own venues, which is exactly as one might expect.
This panelist finds that the Disputed Domain Names are referring to opera in general in the generic sense and that accordingly neither Disputed Domain Name is confusingly similar to the trademark OPERA NATIONAL DE PARIS, which refers only to the theatres owned by the Complainant.
The trademark OPERA DE PARIS
More difficult questions arise, however, with respect to the sole remaining registered trademark on which the Complainant relies, namely OPERA DE PARIS, because that trademark does not include the word NATIONAL and the Disputed Domain Names and the trademark are closer to each other in their wording. In that regard the first question that arises is whether either Disputed Domain Name is identical or confusingly similar to the trademark OPERA DE PARIS. Clearly, neither of the Disputed Domain Names is identical to the trademark because of the presence of the word “de” in the trademark. It has now been universally accepted that parties who register trademarks and other names and who do so by registering common or generic words accept the risk that others will register names that are very close to the registered name and that “small differences matter” in the way their meaning will be absorbed. Thus in the present case it is far too simplistic to argue that the “de” of the trademark can be ignored and that in reality the Disputed Domain Names are the same as the trademark. The contrary is the case, as the use of the word “de” connotes that what is being invoked by the trademark is the specific opera company and that what is being invoked by the Disputed Domain Names is something entirely different, namely opera in general.
But if they are not identical, are the Disputed Domain Names confusingly similar to the trademark OPERA DE PARIS? It would be naïve to believe that no-one would think the Disputed Domain Names were referring to the OPERA DE PARIS; some Internet users would probably reach that conclusion. Some would assume that the Disputed Domain Names were referring to the two houses operated by the Complainant rather than one of the many other opera houses in Paris. However, it is a separate question whether Internet users as a whole, or even “a large proportion of internet users” (the term used with approval in Societé Air France v. Virtual Dates, Inc, WIPO Case No. D2005-0168) would assume the same. In that decision it was noted that “far from all international customers” are familiar with the pejorative meaning of particular words and that every case must be judged on its merits. Likewise, “far from all international customers”, opera goers and tourists would assume that the words “opera Paris” and “Paris opera” mean only the two opera houses run by the Complainant, rather than what the words actually say, which is in effect opera in Paris. The Internet is international and the rules and practices associated with it have to cater for the fact that Internet users have different backgrounds and language skills and that, in cases such as the present, a “large proportion of internet users” will not come to the issue with the same knowledge and will not make the same assumptions as the opera-going cognescenti. It is therefore more likely than not that “a large proportion of internet users” would take the words of the Disputed Domain Names to mean exactly what they say, namely that they are referring to opera in Paris rather than to the single company known as the OPERA DE PARIS. This is an important feature that serves to distinguish the Disputed Domain Names from the trademark.
It must also be borne in mind that not only is the onus on the Complainant to show that the Disputed Domain Names are confusingly similar to the trademark, but there is a heavy onus on the Complainant in the present case, as it must show that the popular and generic words “paris” and “opera” are not to be given their ordinary and popular meaning, but are to be given a singular and unique meaning at the behest of the Complainant and for its benefit alone and one that amounts to giving it a monopoly on the use to which the two words may be put.
Moreover, it is normally the case that this issue is resolved by a straight comparison between the domain name and the trademark. In the present case, however, the Complainant has opened up a wider issue and asserted that Internet users are as a matter of fact confused by the two Disputed Domain Names and the trademark, as users will take the Disputed Domain Names to mean the Complainant’s venues, rather than what the Disputed Domain Names actually say, which is opera in general. However, no evidence was adduced by the Complainant to show how Internet users in Paris, in France as a whole or in other countries perceive the expressions “parisopera” and “operaparis”. Nor was any evidence adduced as to how the expressions are received and used in the media in France or elsewhere. Instead, the Complainant has simply relied on a series of assertions that the two Disputed Domain Names “obviously designate the Paris’ Opera”, (whatever is meant by the expression “the Paris’ Opera”), that “This information will be understood by consumers’ “, that “…English speaking consumers designate the “Opéra de Paris” by “Paris’ Opera” … (and that)… (t) hey will consequently believe that the contested domain name refers to the Complainant’s trademark”. Those assertions are simply that, assertions, they carry no weight and are not evidence one way or the other on what is clearly an arguable and disputed issue. In fact, they are not evidence of anything. This panelist, for one, is not prepared to give a virtual monopoly to the Complainant on the use of the two words in the Disputed Domain Names without evidence and with no more than a series of assertions that there is only one interpretation that can be put on the Disputed Domain Names and that it is “obvious.” One cannot help but observe in addition that if the interpretation contended for by the Complainant were so obvious, it would have been a simple matter to produce some evidence from the international media or opera publications to prove the point.
Putting all of those factors together, this panelist is unable to find on the balance of probabilities that either of the two disputed Disputed Domain Names is confusingly similar to the trademark OPERA DE PARIS.
Rights and Legitimate Interests
This panelist is also of the opinion that the Respondent has rights or legitimate interests in the Disputed Domain Names. At the very least, as the onus is on the Complainant, the case for the Respondent having such rights is strong enough to make it unsafe to find that it does not have such rights or legitimate interests. As has already been noted, the Disputed Domain Names are essentially common and popular words in everyday use, one of them, “opera” is undoubtedly generic and the other is a geographic identifier. That being so, the widely accepted principle comes into play, namely that a domain name is legitimate if used within the ordinary meaning of the words used in the domain name, provided that it is not used to target a trademark owner or to pretend that it is the trademark owner or for some other untoward purpose. That principle has been followed in many UDRP decisions such as those cited by the Respondent, CNRV, Inc. v. Vertical Axis, Inc., NAF Claim No. 1300901, National Gardening Association, Inc. v. CK Ventures Inc., NAF Claim No. 1294457, Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc., WIPO Case No. D2008-0321, and C Brewer and Sons Limited v. Vertical Axis Inc. / wallpaperdirect.com/ c/o Nameview Inc. Whois IDentity Shield, WIPO Case No. D2009-1759.
Moreover, the Respondent has given evidence of numerous other generalised domain names it has registered of an analogous nature, some including the words “Paris” and “opera”, tending to suggest that it has a regular practice of registering such names rather than copying the trademarks of others. Indeed, that business model has been accepted as legitimate in Hotel Plaza Limited, Parkroyal Hospitality Management Pte Ltd. (PHM) v. DomainWorks Inc./PARKROYAL.COM c/o Whois IDentity Shield/Vertical Axis, Inc., WIPO Case No. D2008-1760 and Brewer and Sons Ltd. v. Vertical Axis, Inc., supra.
These matters tend to suggest that the Respondent is in fact using the Disputed Domain Names for the purpose it claims, namely to put to use as domain names two words commonly in use and to use them within their ordinary meaning. The question then is whether the use made of the Disputed Domain Names is itself legitimate. The websites to which the Disputed Domain Names resolve offer a range of links to what are themselves generic services described as, for example, “opera tickets”, “Paris Opera House”, “Paris Opera Schedule”, which are all clearly within a reasonable definition of <parisopera.com> and <operaparis.com>, for the Disputed Domain Names, as every Internet user knows, are assumed to provide ticketing as well as other services. When those links are followed they lead to several destinations. They lead to reservation facilities for the two opera houses operated by the Complainant, which is not surprising, seeing that the Complainant’s venues come within the genus just as much as other opera houses. But the websites also carry booking facilities for the “Theatres des Champs-Elysees”, “Opera at Versailles”, and “Salle Playel” as well as for the Complainant’s opera houses. All of these facilities, both the Complainant’s theatres and the others fall reasonably within the meaning of the two Disputed Domain Names. The Disputed Domain Names are therefore being used for nothing but legitimate and widely used services that come squarely within the ambit of the Disputed Domain Names. As if to demonstrate that the websites are generic or general rather than aimed at the Complainant, they also offer other services not in the Complainant’s field but which would clearly be of interest to the sort of Internet user who would make a search for opera in Paris or Paris opera, such as tourists or music lovers.
Accordingly, the use of the Disputed Domain Names comes within the accepted UDRP principle that there is a legitimate interest in the Disputed Domain Names if they consist of generic or common words and if they are used within the generally accepted meaning of the Disputed Domain Names and not to exploit their trademark value.
With specific reference to the Disputed Domain Name <parisopera.com> and possibly with respect to both Disputed Domain Names, the Disputed Domain Name is legitimate for another reason, namely that it uses a geographic identifier over which no-one can claim a monopoly, it does not pretend that it is a government or municipal authority with a particular entitlement to the name and it does not take advantage of the trademark rights of the Complainant, but uses the Disputed Domain Name to promote services coming within the ordinary meaning of the word. Thus, the domain name <tenerife.info> was held to be legitimate when it was to be used for “an active commercial website” with “commercial portals” and was justified because it “…. does not purport to be associated with the government of Tenerife or its tourism promotion authority.” See Excmo. Cabildo Insular de Tenerife and Promocion Exterior de Tenerife, S.A. v. Jupiter Web Services Limited, WIPO Case No. D2003-0525. The domain name registrant had just as much right to use the name “Tenerife” in its domain name as anyone else. The same principle has been applied when generic goods and services have been added to the name of the city or country in question: see, for example, Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 (held that there was a right or legitimate interest in the domain name <wifiparis.com>, used for identifying wifi hotspots in Paris when “…the Respondent has been using the generic expressions “wifi” and “Paris” in combination, to describe a business which that combination of words is entirely apt to describe or suggest.”). Could it be seriously contended that a company who took the name and trademark WIFIDEPARIS could stop a registrant from using the generic domain name <wifiparis.com> or <pariswifi.com>? It is extremely unlikely that such an argument would be advanced or be successful. Likewise in the instant case, the domain name invokes the capital city of France and adds to it the generic service “opera”, one of the notable activities to be found in that city and it describes the Respondent’s business which the “combination of words is entirely apt to describe or suggest.” The Disputed Domain Name and its website do not pretend to be the government of Paris or the Complainant itself or attempt to deceive users into believing that it is the Complainant; the briefest of visits to the Respondent’s website makes it plain that it is primarily a ticketing services not only for the Complainant’s opera houses but for all operas being performed in Paris and related subjects. It is therefore indeed a remarkable result that such a use of the name of a city together with one of its most important cultural activities can be prohibited in this way. The UDRP was never intended to do such an extreme thing and if it is to be used in such a way it can only bring the UDRP into disrepute for overreaching its ambit and its intention.
In general, there is also an air of unreality about the Complainant’s case: as has been noted, the UDRP was never intended to stop the sort of useful service now being provided by the Respondent for Internet users; it is hard to see how the Complainant suffers from it; there are clearly many other sites offering exactly the same service; and the Complainant must have known for some time that this service was being offered by the Respondent but has allowed it to continue. Moreover, the Respondent’s websites do not pretend to be the official websites of the Complainant and they seem to be no more unique than the many other websites offering tickets at the Complainant’s theatres, from which the Complainant must benefit through the sale price of tickets, as well as promoting tickets offered at other venues.
Accordingly, the Respondent is using the Disputed Domain Names to promote services that come within the meaning of the Disputed Domain Names which consist of common and generic words and it is doing so in a legitimate manner. This gives rise to a right or legitimate interest in the Disputed Domain Names.
It is not necessary to deal with this element in any detail, except to say that there is nothing in evidence to suggest that the Respondent was motivated by bad faith either in registering or using the Disputed Domain Names. Moreover, it is difficult to see how the Respondent has acted in bad faith when the Complainant must have known that the Disputed Domain Names had been registered and were being used and yet it allowed that state of affairs to continue for some time.
Evidence tending to suggest that the Respondent was not targeting the Complainant and that Respondent did not register or use the Disputed Domain Names in bad faith
As has been said above, the Complainant’s trademark OPERA NATIONAL DE PARIS is of little value to the Complainant in the present proceeding as the Disputed Domain Names in dispute are too far apart from that trademark in their wording and meaning to be confusingly similar to it. But even in the case of the trademark OPERA DE PARIS, the sequence of events makes it unlikely that the Respondent registered the Disputed Domain Names with the Complainant in mind, targeted it or registered the domains in bad faith.
Taking the two Disputed Domain Names in turn:
(a) <parisopera.com>. This Disputed Domain Name was registered on May 19, 2004. The trademark OPERA DE PARIS was registered on December 13, 2004, several months after the Disputed Domain Name. The Respondent could not therefore have been motivated by bad faith towards the Complainant’s trademark when registering this Disputed Domain Name as it did not then exist.
(b) <operaparis.com>. This Disputed Domain Name was registered on June 10, 2006. The trademark OPERA DE PARIS was registered on December 13, 2004. But there was no evidence that the trademark was known outside France or that it had acquired or obtained any currency or particular meaning by the time the Disputed Domain Name was registered. It is therefore difficult to see that the Respondent at the time it registered the Disputed Domain Name was or could have been motivated against the Complainant or its trademark.
(c) That is particularly so as it was not until after the registration of the Disputed Domain Names that Complainant ever used the expression “Opera Paris” or “Paris Opera” to designate its business. As has been noted, it registered the trademark OPERA DE PARIS on December 13, 2004. On the same day it registered the domain name <operaparis.fr>, by which time the Respondent had already registered <parisopera.com>, on May 19, 2004. The Complainant also registered the domain name <parisopera.fr>, but on December 23, 2004 and this was seven months after the Respondent had registered its own Disputed Domain Name <parisopera.com>. The only uses of a domain name or any other designation with the combination “Opera Paris” or “Paris Opera” therefore occurred subsequent to the Respondent registering both of the Disputed Domain Names.
This makes it highly unlikely that the Respondent was targeting the Complainant, that it was ill motivated towards it or that it was using the wording of its two Disputed Domain Names in any way other than to convey the generic meaning of the services it was describing; i.e. it was using generic and common words to describe a generic situation, namely opera in Paris. This analysis makes it more likely that the Respondent has a right or legitimate interest in the Disputed Domain Names and less likely that the Respondent acted in bad faith.
Laches, delay and bad faith
There is now an in-built reluctance in some quarters to give any scope at all to laches or delay in UDRP proceedings, despite the fact that paragraph 15(a) of the Rules mandates that a panel is to apply “any rules and principles of law that it deems applicable” and despite the increasing length of delays of up to 15 years now encountered in UDRP cases. However, this panelist is not going to enter into a sterile discussion on laches when it is the effect of any delay that is far more important. The modern approach to delay is best summed up by the light it throws on whether a complainant could ever have believed that the respondent was ever guilty of bad faith, a submission made by the Respondent in the present case, or on whether the delay itself shows that there has been no bad faith that was recognised by anyone involved in the case. The unanimous decision in Spielwarenmesse eG v. Name Administration Inc. (BVI), WIPO Case No. D2013-0744, a decision by 3 panellists who have seen the UDRP in operation over many years, showed the significance of the latter point when it said that a delay of almost 10 years in bringing a complaint “adds to” other facts showing that there was no bad faith; if the status quo has been allowed to continue for so long it suggests that there was no conduct that could reasonably be described as bad faith or the complainant would have done something about it or at least protested. But if it stood by for years without taking any action it rather suggests that there may have been nothing to complain about. Applying that approach to the present case, we are dealing with the highly competitive field of ticketing for prestigious cultural events and in that context it is highly unlikely that the Complainant would not have known that the Respondent had registered the two Disputed Domain Names, an act the Complainant now says is in breach of its trademark, but apparently not serious enough at the time to warrant taking any action or even complaining about. Apart from this, we know that the Complainant registered the domain name <operaparis.fr> on December 23, 2004 and it is equally unlikely that the Complainant did not at that time notice that the “.com” domain name had been taken by the Respondent. And yet the Complainant did nothing in response. The only rational interpretation of this sequence of events, particularly the delay, is that it “adds to” the facts showing that there was no bad faith and that the Complainant probably believed there was none.
This panelist would therefore dismiss the Complaint.
The Hon. N A Brown QC
Dated: August 22, 2013
1 Tucows.Com Co. v. Lojas Renner S.A., 2011 ONCA 548 (Ontario) establishes that domain names are personal property.