WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Le Figaro v. WhoisGuard Protected, WhoisGuard, Inc. / Wahyu Karuna, DMR
Case No. DCC2019-0010
1. The Parties
Complainant is Le Figaro, France, represented by GODIN Associés, France.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Wahyu Karuna, DMR, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <lefigarofr.cc> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 22, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 26, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 17, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on October 1, 2019. 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
Complainant is the publisher of the French newspaper LE FIGARO, which was created in 1826. As of 2018, LE FIGARO had a print circulation of 313,514 and a digital circulation of 84,000 worldwide and is one of the oldest newspaper currently distributed in France. Complainant’s company name has been used as a trademark since at least 1856, and registered since 1954. Complainant is the owner of numerous trademarks for LE FIGARO, registered worldwide. In particular, Complainant owns French registration number 1447624 (registered May 11, 1987) and International Registration numbers 319381 and 655549 (registered August 26, 1966 and March 29, 1996, respectively) for the LE FIGARO mark. Complainant also owns numerous domain names that contain its LE FIGARO trademark, including its primary domain name <lefigaro.fr>. Complainant also owns French trademark registration number 3062563 encompassing this domain name, LEFIGARO.FR (registered November 6, 2000).
The disputed domain name <lefigarofr.cc> was registered on 30 March 2019. The disputed domain name resolves to a web page displaying a server error message.
5. Parties’ Contentions
Complainant contends that the disputed domain name is confusingly similar to its LE FIGARO trademarks because the disputed domain name reproduces identically and entirely the LE FIGARO mark, and is confusingly similar to the LEFIGARO.FR trademark owned by Complainant.
Complainant contends that Respondent has no rights or legitimate interests in or to the disputed domain name. According to Complainant, Respondent has never been commonly known by the disputed domain name, has not used or made demonstrable preparations to use the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name. Complainant asserts that it has not licensed to Respondent the right to use the LE FIGARO trademark, and that Respondent is not otherwise authorized to act on Complainant’s behalf.
According to Complainant, Respondent has registered and is using the disputed domain name in bad faith and to benefit from the goodwill and fame associated with Complainant’s LE FIGARO mark. Complainant asserts that Respondent’s bad faith registration and use of the disputed domain name is established by the fact that it purposefully incorporates the well-known LE FIGARO mark, and was registered long after this mark became well known to consumers. According to Complainant, when a domain name is so evidently connected with a complainant, the very use of the domain name by a registrant with no bona fide offering of goods and services suggests bad faith. Complainant asserts that the fact that the disputed domain name is not active does not prevent a finding of bad faith under the doctrine of passive holding.
Accordingly, Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Furthermore, Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, even though Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Here, Complainant has provided evidence that it has rights in the LE FIGARO and LEFIGARO.FR marks through its respective French registrations and International registrations.
With Complainant’s rights in the LE FIGARO and LEFIGARO.FR marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”)) is identical or confusingly similar to Complainant’s marks. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7.
Here, the disputed domain name is nearly identical to Complainant’s LEFIGARO.FR mark, disregarding the country code Top-Level Domain (“ccTLD”) “.cc” and the omission of the dot between “lefigaro” and “fr” in the mark. B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, supra. The disputed domain name also fully incorporates the LE FIGARO mark at the second level. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the LE FIGARO and LEFIGARO.FR marks and in showing that the disputed domain name is identical or confusingly similar to these trademarks.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Here, Complainant has presented evidence showing that Respondent is passively holding the disputed domain name, and as such that the disputed domain name is not being used in connection with a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Complainant has asserted that Respondent has not been licensed or otherwise permitted by Complainant to use the LE FIGARO trademark. Respondent has failed to rebut Complainant’s allegations and evidence, and therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(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.”
Complainant provided ample evidence to show the widespread use and numerous registrations of the LE FIGARO trademark that long predates the registration of the disputed domain name by Respondent. Therefore, Respondent was likely aware of the LE FIGARO trademark when it registered the disputed domain name, or knew or should have known that the disputed domain name was identical or confusingly similar to Complainant’s mark. SeeWIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Although Complainant presented limited evidence to suggest that any of the specific bad faith factors in Policy paragraph 4(b) are present in this case, given the notoriety of Complainant’s LE FIGARO mark, with the mere passive holding of the disputed domain name, and Respondent’s failure to present any countervailing evidence to rebut Complainant’s claims, the Panel can only conclude that the disputed domain name was registered and used in bad faith under paragraph 4(b)(iii) of the Policy. See OVH SAS v. EE, Emre Erim, WIPO Case No. D2012-0330. There is simply no plausible legitimate reason for Respondent to have registered the disputed domain name without any association with or authorization from Complainant. Accordingly, the Panel finds that Complainant succeeds under this 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 name <lefigarofr.cc> be transferred to Complainant.
Brian J. Winterfeldt
Date: October 14, 2019