WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NC Numericable v. James and Choo
Case No. D2014-1371
1. The Parties
The Complainant is NC Numericable of Champ-Sur-Marne, France, represented by Fidal, France.
The Respondents are James of Anyang, Republic of Korea and Choo of Seoul, Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names <numericablesfr.com> and <sfrnumericable.com> are registered with Korea Server Hosting Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 13, 2014. On August 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 19, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondents as the registrants and providing the contact details.
On August 21, 2014, the Center notified the Parties in both English and Korean regarding the language of proceeding. On August 25, 2014, the Complainant requested English to be the language of proceeding and on August 26, 2014, the Respondents requested Korean to be the language of proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceeding commenced on August 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on September 17, 2014.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on September 26, 2014. 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.
It has become necessary for the Panel to extend the Decision due date to November 3, 2014.
4. Factual Background
The Complainant is a cable operator and telecommunications service company, publicly listed on the Paris NYSE Euronext stock exchange.
The Complainant has registered nearly 40 trademarks incorporating or containing the name "Numericable" in France and internationally. The earliest evidence provided of its NUMERICABLE trademark registration was in 1997.
The Complainant has also registered numerous domain names to support and promote its business, including <numericable.com> and <numericable.fr> which were registered respectively on February 11, 1998 and March 16, 2007.
In June 2014, the Complainant purchased Vivendi's SFR mobile telecommunications affiliate; the news of the two companies' merger has been widely covered by media since February 2014.
The Respondents registered the disputed domain names <sfrnumericable.com> and <numericablesfr.com> respectively on February 27 and March 5, 2014.
5. Parties' Contentions
The Complainant claims that the domain names <sfrnumericable.com> and <numericablesfr.com> are identical or confusingly similar to its NUMERICABLE trademark.
The inclusion of the generic Top-Level Domain (gTLD) "com" does not give any distinctiveness to the disputed domain names and therefore is typically irrelevant to determine the confusing similarity between the trademark and the domain names.
The domain names <sfrnumericable.com> and <numericablesfr.com> incorporate the NUMERICABLE trademark in its entirety in combination with a third-party trademark SFR. The combination of the trademarks into the disputed domain names establishes that the domain names are confusingly similar and may confuse the Internet users.
The Complainant claims that the Respondents have no rights or legitimate interests in respect of the disputed domain names.
The Complainant claims that the Respondents have never been known under its trademark NUMERICABLE. The Complainant also claims that the Respondents are not in anyway related to its business, and do not carry out any activity for or have any business with it. Furthermore, the Complainant has never given any authorization or permission to the Respondents to register or to use the disputed domain names.
It is highly unlikely that the Respondents have any rights or legitimate interests in respect of the disputed domain names.
The Complainant claims that the Respondents have registered and are using the disputed domain names in bad faith.
The notoriety of the Complainant's trademark, the mere absence of right or legitimate interest in the disputed domain names, and the Respondents' offer for sale of the disputed domain names demonstrate the Respondents' bad faith in registration and use.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the panel is to decide the complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and principles of law that it deems applicable.
Under Paragraph 4(a) of the Policy, the Complainant must establish three elements:
(i) the disputed domain names are identical or confusingly similar to the Complainant's trademark or service mark;
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Language of Proceeding
The Complaint was filed in English. The Registrar confirmed that the language of the registration agreement for the disputed domain names is Korean. Nonetheless, the Complainant asserts that English should be the language of the proceeding, whereas the Respondents assert that Korean should be the language of the proceeding.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties' level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
In the present case, although the registration agreement for the disputed domain names was made in Korean, it is also apparent from the written communications exchanged between the Parties the Respondents seem to have little difficulty in communicating in English.
On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant was to submit all documents in Korean, the proceeding will be unduly delayed and the Complainant would incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both Parties, the Panel decides, under paragraph 11 of the Rules, that (i) English shall be the language of the administrative proceeding in this case, but on the condition that (ii) to the extent that the Respondents would have submitted any documents or assertions in Korean, such documents or assertions would have been considered by the Panel. The Panel notes that this was not the case here, as the Respondents did not reply to the Complainant's contentions. See Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989.
B. Consolidation of Respondents
Consolidation of multiple registrants as respondents in a single complaint may be appropriate in certain circumstances if the complainant demonstrates that the domain names are under common control and the panel finds consolidation efficient, fair and equitable to all parties.
The Panel notes that the registrants of the two disputed domain names are "James" and "Choo", individuals both located in Republic of Korea. Both disputed domain names resolve to an identical landing page and the disputed domain names both contain the same trademarks in different order. The disputed domain names were registered within one week of each other, and the Respondent James has communicated with the Complainant regarding both domain names. The Panel finds it likely that the disputed domain names are under common control and finds it fair and equitable to issue a single decision in the present circumstances.
C. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a) (i) of the Policy.
First, according to previous UDRP decisions, the gTLD is generally not an element of distinctiveness and typically discarded when evaluating the identity or confusing similarity between a complainant's trademark and a disputed domain name. See Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603; cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374)
Second, the disputed domain names are a combination of trademarks. Prior panels recognized that the combination of trademarks into domain names allows establishment that a domain name is confusingly similar to a trademark pursuant to the Policy, especially in light of the Complainant's purchase of Vivendi's SFR mobile telecommunications affiliate in June 2014. See Simbec-Orion Group Limited, Simbec Research Limited, Orion Clinical Services Limited v. James Park, WIPO Case No. D2014-1187.
As a consequence, the Panel finds that the disputed domain names are identical or confusingly similar to the Complainant's trademarks.
D. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the Respondents have rights or legitimate interests if the disputed domain names are used for a bona fide offering of goods or service, if the Respondents have been commonly known by such disputed domain names, or if the Respondents are making a legitimate noncommercial or fair use of such disputed domain names. The Complainant needs to establish a prima facie case showing that the Respondents have no rights of legitimate interests in the disputed domain names under paragraph 4(a)(ii) of the Policy.
The Complainant noticed that the Respondents are not currently and have never been known under the name "Numericable".
The Complainant asserts that the Respondents are not in anyway related to its business, and do not carry out any business with it. Furthermore, the Complainant has never given any authorization or permission to the Respondents to register or to use the dispute domain names. The Panel finds that the Complainant has established its prima facie case, and the burden shifts to the Respondents to come forward with evidence demonstrating their rights or legitimate interests in respect of disputed domain names under paragraph 4(c) of the Policy. However, the Respondents have not submitted a response.
Accordingly the Panel finds that the Complainant has satisfied its burden under second element of the Policy that the Respondents have no rights or legitimate interests in respect of the disputed domain names. See Hermes International, SCA v. cui zhenhua, WIPO Case No. D2010-1743.
E. Registered and Used in Bad Faith
The Complainant has previously demonstrated the strong reputation and the leading position of its trademark NUMERICABLE in France and several other European countries. Under past UDRP decisions (see, for example, WIPO Case No. D2001-0020), it is deemed that the registration was made in bad faith if the notoriety of a complainant's trademark is such that a "prima facie presumption is raised that the Respondents registered the domain names for the purpose of selling it to Complainant, or that it was intended to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with the Complainant's mark".
Furthermore, the fact that the Respondents combined the two trademarks NUMERICABLE and SFR just after the news on a future merger between the Complainant and Vivendi's SFR mobile telecommunications affiliate were widely covered in the media in February 2014 is additional evidence of bad faith. See Sanofi-Synthelabo v. Nicki On, WIPO Case No. D2003-0871.
The Panel further notes a pattern of similar conduct by "James Park" or "JSP" of Anyang, Republic of Korea registering domain names that combine trademarks of two merged entities just after their public announcements in Simbec-Orion Group Limited, Simbec Research Limited, Orion Clinical Services Limited v. James Park, supra; Coyle Hamilton Ltd., Willis Ltd. v. James Park, WIPO Case No. D2004-0747; and Sopra Group and Steria v. JSP, WIPO Case No. D2014-0673. Noting that the Respondent James has signed his emails as "Park" in communications between the Parties, the Panel infers the Respondent James as the same respondent in above cases and finds further evidence of bad faith in the pattern of conduct displayed by the Respondents.
The Respondents further intentionally misdirect Internet users searching for information about the Complainant or its services, or the recent acquisition of SFR. The Panel finds that the Respondents also have registered the disputed domain names for the purpose of selling them to the Complainant. The emails written by the Respondents demanded USD 1,000/1,100 for sale of the disputed domain names to the Complainant. This is evidence of bad faith. See Sopra Group and Steria v. JSP, supra.
As a consequence, the Panel finds that the disputed domain names were registered and used in bad faith by the Respondents.
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 <numericablesfr.com> and <sfrnumericable.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: October 28, 2014