WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FNAC Darty Participations et Services v. Renato Cardoso, Texto Sentido, CCCP SU Lda.
Case No. D2017-1347
1. The Parties
The Complainant is FNAC Darty Participations et Services of Ivry-Sur-Seine, France, represented by Cabinet Santarelli, France.
The Respondent is Renato Cardoso, Texto Sentido, CCCP SU Lda. of Porto, Portugal, self-represented.
2. The Domain Names and Registrar
The disputed domain names <fnac.place>, <fnac.space> and <fnac.world> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2017. On July 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date 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 July 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2017. The Response was filed in Portuguese with the Center on August 6, 2017.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 15, 2017. 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 large French retail chain selling cultural and electronic products under the brand FNAC. The Complainant was founded in 1954.
The Complainant owns a number of international trademark registrations for the FNAC brand, as well as trademark registrations in France and in the European Union, since at least 1977. The Complainant owns, e.g., the International Registration No. 434515, registered on September 28, 1977.
The Complainant also owns numerous domain names containing the term “fnac”, including <fnac.fr> and <fnac.com>, respectively registered in 1995 and 1997.
The Respondent registered the disputed domain names <fnac.place>, <fnac.space> and <fnac.world> on June 5, 2017.
The Panel accessed the disputed domain names on August 20, 2017, when they were all linked to webpages containing pay-per-click advertising.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The disputed domain names are confusingly similar to the trademarks in which the Complainant has rights. The disputed domain names are comprised of (i) the word “fnac” which is the entire reproduction of the Complainant’s trademark FNAC; and (ii) the extensions “.place”, “.space” and “.world”. According to past UDRP decisions, an extension in a domain name is irrelevant to appreciate a potential risk of confusion and, in any case, it is insufficient to create a difference and avoid a risk of confusion with the prior rights. Due to the fact that the trademark FNAC is well-known, the disputed domain names are bound to create a likelihood of confusion as to the origin and possible affiliation of the disputed domain names to the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names. To the Complainant’s knowledge, the Respondent has no activity under the name FNAC and has neither prior rights on the denomination FNAC as a trademark, nor legitimate interests on the disputed domain names. There is no specific trademark attached to the disputed domain names, which are being redirected to parking pages for commercial purposes. The Respondent has no trademark rights in France for the FNAC trademark. The Complainant has not licensed or otherwise authorized the Respondent to use the FNAC trademark, and there is no relationship between the Complainant and the Respondent. The Respondent has intentionally registered the disputed domain names for the purpose of offering them for sale.
(iii) The disputed domain names were registered and are being used in bad faith. The disputed domain names previously resolved to parking pages containing words and expressions in French language, providing links to third party websites relating to the Complainant’s core business. The Respondent was aware of the Complainant’s well known trademark FNAC when he registered the disputed domain names. The disputed domain names have been offered for sale for EUR 900, a valuable consideration in excess of documented out-of-pocket costs. The Complainant presumes that the Respondent obtains a financial gain every time an Internet user access its websites and activates any of the sponsored links, evidencing the registration and use of the disputed domain names in bad faith.
The Respondent makes the following contentions:
(i) The Respondent is a small Portuguese start-up, with minimum starting capital now fully applied in the acquisition of domain names for reselling purposes. Thus, the Respondent cannot afford an attorney to represent him within the current proceedings and is in clear disadvantage when compared to the Complainant. Also, the Respondent’s knowledge of English language is good for current daily circumstances, but not enough to proceed with a defense in such delicate matter, without the risk of not being able to properly defend his rights. Therefore, the Respondent presents his defense in Portuguese language, the only language in which he is fully capable to state a logic and effective argumentation.
(ii) Having all the means and structure to do so, the Complainant failed to previously protect its own brand suitably in due time. Worldwide trademarks are conveniently protected on the Internet by registering the correspondent domain names within the numerous generic Top-Level Domain (“gTLDs”) extensions. Nonetheless, there are currently hundreds of “fnac” domain names available for sale online. By not registering these domain names, the Complainant suggests that (a) the brand protection is not a priority for it; (b) it is not putting in practice a proper domain name shielding strategy; (c) it does not know how to properly protect its trademarks; (d) it has realized that the word “fnac” presents other meanings online; and (e) it prefers to react, not having a proactive approach to protect its trademarks on the Internet. Anyway, if the Complainant could have registered the disputed domain names, why it did not?
(iii) The Respondent had no intent to incorporate the Complainant’s name or trademark, even because he has not registered “fnac” in several other extensions that are more directly connected to the Complainant’s business, such as “.art”, “.audio”, “.band”, “.cafe”, “.camera”, “.careers”, etc. If the Respondent’s intent was to obtain revenue from a pay-per-click scheme it would have picked one of these more attractable extensions and not generic words such as “place”, “space” and “world”.
(iv) The Respondent’s portfolio of domain names demonstrates its ethical posture. The Respondent registers domain names corresponding to generic terms as an investment for future sales, on the basis of commercial tendencies.
(v) The term “fnac” is also the acronym for “Fine Needle Aspiration Cytology”, an alternative medicine technique related to acupuncture and very effective to treat several diseases. The Respondent’s intention in registering the disputed domain names was solely and exclusively to be presented to the market as signifiers of Fine Needle Aspiration Cytology (“FNAC”).
(vi) The Respondent has obtained absolutely no profit of any kind from the disputed domain names. The redirection to pay-per-click advertising in French language and presenting links related to the Complainant’s business was set automatically by a third party, as a result of hosting the disputed domain names at “www.sedo.com” website. Immediately after being contacted by the Complainant’s attorney the Respondent manually changed the advertising keywords related to the disputed domain names in order to reflect the correct “fnac” meaning.
(vii) The Complainant’s trademark is not currently registered worldwide, neither cover all the 45 Nice trademark registration classes. Therefore, it is possible to have other companies operating under the same trademark for different products or services, especially in the Eastern world (main market for Fine Needle Aspiration Cytology - FNAC).
(viii) The EUR 900 requested by the Respondent to transfer the disputed domain names to the Complainant is a reasonable amount that reflects a 50% discount on the regular reselling price.
(ix) The Respondent had no bad faith whatsoever registering the disputed domain names.
6. Language of Proceedings
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceedings shall be the language of the registration agreement. The language of the registration agreement for the disputed domain names is English.
Although the Response was partially submitted in Portuguese, the Respondent could apparently understand the Complaint as filed in English and did not formally request Portuguese to be the language of the proceedings.
Therefore, while the Panel determines that English shall be the language of this administrative proceeding, the Response in Portuguese is admitted.
7. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain names, the Complainant shall prove the following three elements:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has 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. Identical or Confusingly Similar
The Panel has no doubt that “FNAC” is a term directly connected with the Complainant’s retail activities.
Exhibit E to the Complaint shows several international trademark registrations for FNAC owned by the Complainant, as well as trademark registrations in France and in the European Union.
The trademark FNAC is wholly encompassed within the disputed domain names.
The disputed domain names differ from the Complainant’s trademark basically by the addition of gTLDs corresponding to the generic terms “place”, “space” and “world”.
Previous UDRP decisions have found that descriptive additions do not distinguish a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is also already well established that the addition of gTLD extensions is usually irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds the disputed domain names to be confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
The Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain names.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and, therefore, the burden of production shifts to the Respondent to provide evidence of such rights or legitimate interests.
The Respondent states that “fnac” is also the acronym for “Fine Needle Aspiration Cytology” and that the registration of the disputed domain names was made for a future reselling considering this specific meaning. The Respondent also alleges that after being notified by the Complainant he manually changed the pay-per-click advertising terms in order to reflect this specific meaning.
However, the Panel is not convinced that the Respondent’s use of the disputed domain names amounts to any rights or legitimate interests in it.
There is no evidence that the Respondent has any activity connected to “Fine Needle Aspiration Cytology”.
The Panel notes that FNAC is a well-known trademark directly connected with the Complainant’s retail activities in several countries, including in Portugal, where the Respondent is established. Therefore, the Respondent could not plausibly ignore it when he registered the disputed domain names.
Furthermore, before receiving a cease-and-desist email from the Complainant, the websites under the disputed domain names presented advertising links directly related to the Complainant’s activities. Even today the disputed domain names sometimes present advertisings containing the term “Fnac billetterie”, among several acupuncture links.
As already stated in previous UDRP decisions, rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant. (see, The British Broadcasting Corporation v. Jaime Renteria, supra; and Drexel University v. David Brouda, WIPO Case D2001 0067).
The Panel finds, on the balance of probabilities and also taking into account the findings under the third element below, that the Respondent’s allegation that he registered the disputed domain names with the term “Fine Needle Aspiration Cytology” in mind is merely a pretext. (See Tinder, Incorporated v. Ghassan Hedhli, Betsy Adams, Alison Britsson, Peter North, Alonzo Fredy, WIPO Case No. D2017-0154).
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain names, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Finally, paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
When the disputed domain names were registered by the Respondent (in 2017) the trademark FNAC was already well known and directly connected to the Complainant’s retail activities, including in Portugal, where the Respondent is located.
The disputed domain names encompass the trademark FNAC together with generic extensions that may suggest references to the Complainant’s stores (“place”, “space” and “world”).
Therefore, the Panel concludes that it is not feasible that the Respondent was not aware of the Complainant’s trademark when he registered the disputed domain names, and that the registration of the disputed domain names was not a mere coincidence.
Actually, the Panel is convinced that the registration and use of the Complainant’s trademark FNAC together with generic and descriptive terms such as “place”, “space” and “world” indicate that the Respondent intentionally attempted to attract Internet users to his websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his websites, for commercial gain.
Furthermore, the request of an amount that exceeds the out-of-pocket costs of registering the disputed domain names in order to transfer them to the Complainant, as well as the adoption of a pay-per-click scheme which at least in the past included links directly related to the Complainant completes the assertion of bad faith registration and use in the present case.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain names were registered and are being used in bad faith, satisfying the third element of the Policy.
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 <fnac.place>, <fnac.space> and <fnac.world> be transferred to the Complainant.
Date: August 29, 2017