WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FNAC SA v. Laticinios Itaruma Ind. e Com. Ltda
Case No. D2015-2038
1. The Parties
The Complainant is FNAC SA of Ivry-sur-Seine, France, represented by Cabinet Santarelli, France.
The Respondent is Laticinios Itaruma Ind. e Com. Ltda of Cacu, Brazil, represented by The Trademark Company, PLLC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <fnac.blackfriday> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 10, 2015. On November 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2015. The Response was filed with the Center on December 4, 2015.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 15, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a French corporation registered under the corporate name FNAC. It commercializes books, videos, computers, CDs and provides cultural services including organization of musical shows, sale of concert tickets, computer services (hot line, after-sales services), and travel services.
The Complainant's online products and services are offered in local stores and through the websites "www.fnac.com" and "www.fnactickets.com" which are very active websites used by FNAC. The Complainant is located in France and has several retail shops throughout the world, including in Belgium, Brazil, France, Morocco, Portugal and Spain.
The Complainant holds numerous FNAC trademark registrations registered all over the world since at least April 5, 1977, including trademarks registered in the Respondent's jurisdiction (Brazil).
The Respondent states to be a dairy manufacturer based in Brazil.
The disputed domain name designated a parking website of links offering notably the sale of concert tickets, which is the main core business of the Complainant (the website under the disputed domain name displayed, e.g., a link to the website "billeterie Tickemaster" available at "www.tcketmaster.fr"). Currently the website under the disputed domain name is inactive.
The disputed domain name was registered on July 16, 2015.
5. Parties' Contentions
A. Complainant
The Complainant states that the disputed domain name consist of the expression "fnac" which is the reproduction of the entirety of the trademark FNAC of the Complainant with the addition of the extension ".blackfriday" which is a new generic Top-Level Domain ("gTLD") extension.
The Complainant considers that the disputed domain name is identical or at least confusingly similar to the trademarks and prior rights belonging to the Complainant over FNAC.
According to the Complainant, the lack of rights or legitimate interests of the Respondent on the disputed domain name results from the following reasons:
- Existence of trademarks belonging to the Complainant for FNAC;
- No legitimate activity and no rights of the Respondent under the name "fnac";
- The Respondent has no activity under the name "fnac" and has neither rights on the disputed domain name as a trademark nor legitimate interests to the disputed domain name;
- To date, there is no specific website attached to the disputed domain name;
- Initially the disputed domain name redirected to a parking page with links offering services directly in competition with the Complainant's core business. The Complainant states that by diverting traffic to third parties' websites and by using paid link advertisements, the Respondent is using the Complainant's trademarks and domain names for its own commercial purposes: this use therefore demonstrates the Respondent's lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name.
- The Respondent has no trademark rights in France or in Brazil for FNAC according to a trademark search conducted on the databases available from the French and Brazilian Trademark Offices.
Finally, the Complainant states that the disputed domain name was registered and is being used in bad faith.
Complainant states the following:
- FNAC is the business name of the Complainant and corresponds to its main trademark and domain name which is operated worldwide, and especially in Brazil, the original country of the Respondent;
- The reservation of the disputed domain name by the Respondent is an opportunistic attempt to attract customers via the Complainant's famous trademarks which cannot be considered as a bona fide offering goods or services;
- The disputed domain name initially offered links in the French language, and redirected to French websites offering different products and services which are directly competitive with products and services proposed by the Complainant. Such links could lead Internet users into believing that the websites are either maintained by the Complainant or by a third party who is linked with the Complainant;
- The Complainant assumes that the Respondent obtained a financial gain every time an Internet user accessed its websites and activated any of the sponsored links. According to paragraph 4(b)(iv) of the Policy, this circumstance is an evidence of the registration and use of the disputed domain name in bad faith;
- Even though the disputed domain name is redirected to an inactive website, for the time being, the sole registration of a domain name without legitimate use is a proof that the disputed domain name has been registered in bad faith.
The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent states to be a dairy manufacturer based in Brazil.
The Respondent argues that it registered the disputed domain name <fnac.blackfriday> on July 16, 2015 for use in connection with the Respondent's dairy manufacturing business which was established in Brazil over sixteen years ago.
The Respondent states that its native language is Portuguese, which is the official language of Brazil. As such, the Respondent argues that the "f" used in the disputed domain name was included to reference the term "manufacture" or "fabricação" and the term "nac" was selected as reference to the word "national" or "nacional".
The Respondent also states that it had no knowledge of the Complainant's business or trademark rights at the time of registration of the disputed domain name.
According to the Respondent, the Complainant has demonstrated the existence of neither registered nor common law rights in its family of FNAC marks for use in connection with dairy manufacturing services or dairy related products in Brazil or any other country predating the Respondent's registration of the disputed domain name.
With respect to legitimate interests, the Respondent asserts that it reserved the disputed domain name for legitimate business purposes namely, "to promote and market the Respondent's new line of mozzarella cheese which will be available to consumers in the Brazilian marketplace".
With respect to bad faith registration and use, the Respondent states that there is no evidence to support that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of several trademark registrations for FNAC registered all around the world, including in the Respondent's jurisdiction.
The Complainant's trademark FNAC is entirely reproduced in the disputed domain name. The sole difference between the disputed domain name and the Complainant's trademarks is the addition of the ".blackfriday" extension.
It is the view of the Panel that the combination of the terms "fnac" and "blackfriday" in the disputed domain name would enhance confusion in Internet users since "blackfriday" is a term used for the offer of promotional sales during the shopping season1 and the Complainant FNAC stores are closely linked to that term.
The Respondent argues that the Complainant does not have a registered trademark or common law rights in connection with dairy manufacturing services or dairy related products in Brazil or any other country predating the Respondent's registration of the disputed domain name.
The Panel notes that the Policy does not require the trademarks of the Complainant to be protected in the Respondent's jurisdiction or in a specific class of products or services.
The Panel therefore finds that the disputed domain name is confusingly similar to the registered trademarks in which the Complainant has rights. Thus, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
This Panel is satisfied that the Respondent does not appear to have been commonly known by the disputed domain name, it is not a licensee or an agent of the Complainant, nor in any way authorized to use the Complainant's FNAC trademarks.
The position of the Respondent is that the Respondent's native language is Portuguese, which is the official language of Brazil. As such, the Respondent alleges in its Response that the "f" used in the disputed domain name was included to reference the term "manufacture" or "fabricação" and the term "nac" was selected as a reference to the word "national" or "nacional".
According to the Panel, such statement is not credible. The disputed domain name <fnac.blackfriday> can hardly evoke a product manufactured locally or nationally and instead it makes clear reference to the Complainant's business and its trademarks. The Respondent has also offered no evidence that the Respondent's intention when registering the disputed domain name was to "promote and market the Respondent's new line of mozzarella cheese which will be available to consumers in the Brazilian marketplace". Just a bare assertion of rights or legitimate interests is not sufficient and the Respondent needs to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests to overcome the Complainant's prima facie case. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Furthermore, according to the Registrar's verification, the disputed domain name was registered in July 2015, long after the Complainant's registration of its trademarks. The Respondent cannot claim to intend to use the term "fnac", without being aware of the Complainant's rights to it, because the disputed domain name initially redirected to French websites offering different products and services which are directly competitive with products and services offered by the Complainant.
Thus, the Panel concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
Hence, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which "in particular but without limitation", shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative, but are expressly non-exclusive, are:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Complainant's trademark has a strong reputation and is widely known (see FNAC v. Abdouni Abdelha, WIPO Case No. D2005-0968). It is thus difficult to conceive that the Respondent registered or used the disputed domain name for a genuine purpose without knowledge of the Complainant.
It is the view of the Panel that the combination of the Complainant's trademark FNAC and the extension ".blackfriday" in the disputed domain name makes it difficult to conceive any plausible, actual or contemplated use of the disputed domain name that would not be illegitimate.
The Respondent was obviously aware of the Complainant's established rights in the FNAC trademarks when it registered the disputed domain name on July 16, 2015. FNAC is a widely known trademark and operates in Brazil, both online and offline, in addition of having several registered trademarks in Brazil long before the Respondent's registration of the disputed domain name.
In its Complaint, the Complainant argued that the disputed domain name initially offered links in French language, and redirected to French websites offering different products and services which are directly competitive with products and services offered by the Complainant. According to the Complaint, such links could lead Internet users into believing that the websites are either maintained by the Complainant or by a third party who is linked with the Complainant. The Respondent's claim that it chose the disputed domain name because it is an acronym for the terms "manufacture" or "fabricação" and "national" or "nacional" is not believable by the Panel. The Panel agrees that the Respondent registered the disputed domain name in order to attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's widely known trademark FNAC.
Moreover, the current inactivity of the website associated with the disputed domain name would not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Taking all the circumstances mentioned above into account, the Respondent's bad faith can also be established despite the current inactivity of the website associated with the disputed domain name.
Thus the Panel finds that the disputed domain name <fnac.blackfriday> was registered and is being used in bad faith.
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 disputed domain name, <fnac.blackfriday>, be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: December 30, 2015
1 See "https://en.wikipedia.org/wiki/Black_Friday" (shopping)