WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Du Figaro S.A. v. Cut Company
Case No. DTV2013-0007
1. The Parties
The Complainant is Société Du Figaro S.A. of Paris, France, represented by Nameshield, France.
The Respondent is Cut Company of Krefeld, Germany.
2. The Domain Name and Registrar
The disputed domain name <figaro.tv> is registered with Cronon AG Berlin, Niederlassung Regensburg (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2013. On November 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2013, 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 language of the Registration Agreement being German, the Center sent an email communication to the Complainant on November 18, 2013, requesting the Complainant to provide at least one of the following:
1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) submit the Complaint translated into German; or
3) submit a request for English to be the language of the administrative proceedings. Such request shall include arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in English.
The Complainant confirmed by email dated the same day, that it wanted English to be the language of proceedings. The Respondent did not provide any comments.
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 Respondent of the Complaint in both German and English, and the proceedings commenced on November 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2013.
The Center appointed Daniel Kraus as the sole panelist in this matter on January 8, 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.
On January 29, 2014, the Panel issued Administrative Procedural Order No. 1 noting, inter alia, that:
- The Respondent is Cut Company of Krefeld, Germany;
- The owner – and seemingly only economic actor - of said company was Mr. […] Blumtritt.
- According to the documents filed by the Complainant, Mr. Blumtritt passed away on June 28, 2013.
- It does not appear from the file how the succession was organized;
- A cease and desist letter was sent in October 2013, after the presumed death of Mr. Blumtritt;
- The Complaint was filed on November 8, 2013, also after the presumed death of Mr. Blumtritt;
- Neither the cease and desist letter, nor the Complaint received an answer;
- According to paragraph 3 (b)(v) of the Rules, the Complainant must “Provide the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint as described in Paragraph 2(a)”.
In view of the above:
- The Panel ordered the Complainant to provide the Panel with information regarding the Respondent, in particular the names of the successors of the Respondent or of its owner, Mr. Blumttrit, within 14 working days from the date of the Order;
- Taking into account the fact that “Figaro” not only refers to the trademark of the Complainant, but also to a well-known name, the Panel also requested the Complainant, within same deadline, to inform the Panel if it wished to contact the successors of the Respondent in order to settle the dispute, or whether it preferred that the Panel issue a decision.
The Complainant answered the following day, without providing any further information as to the succession of the Respondent and restating its position. The Complainant further added that prior to “the Respondent's death”, on January 15, 2013 the Complainant offered the Respondent the amount of “$800” to recover the disputed domain name and that the Respondent provided no response to this offer.
4. Factual Background
The Complainant is a newspaper of French press founded in 1826.
The Complainant owns several trademarks including the distinctive wording “Figaro”.
The Complainant also owns many domain names including this wording.
The disputed domain name <figaro.tv> has been registered on January 13, 2009.
The Respondent seems to be a sole-man company who operated a hairdresser business in Krefeld, Germany. It is not known to the Panel whether the company still exists, as its owner, Mr. Blumtritt, seems to have passed away on June 28, 2013.
As at the date of this decision, the disputed domain dame does not resolve to an active website (the "Website"). There is no evidence in the record of any use of the disputed domain name by the Respondent.
5. Parties’ Contentions
The Complainant states that the disputed domain name <figaro.tv> is identical to its trademarks and branded goods FIGARO.
The Complainant owns the trademark FIGARO since 1966.
The Complainant states that the disputed domain name <figaro.tv> is identical to its trademark FIGARO. The disputed domain name contains in its entirety, and without addition, the Complainant’s registered trademark FIGARO.
The Complainant contends the addition of the ccTLD “.tv” is not sufficient to escape the finding that the domain name is confusingly similar to the trademarks and does not change the overall impression of the designation as being connected to a trademark of the Complainant. So, the disputed domain name is identical to the Complainant’s trademark.
The Complainant further states that the Respondent is not affiliated with it nor authorized by it in any way. The Complainant does not carry out any activity for, nor has any business with the Respondent.
The Complainant also states that the Respondent has no right, as it has no trademark or commercial name in relation to the domain name. Further, the Respondent is not known as “Figaro”. The Respondent (i.e. Cut Company, [ … ] Blumtritt) is only known as a hairdresser.
Moreover, the Complainant asserts that the Respondent has no legitimate interest in the disputed domain name. The Website related to the disputed domain name is inactive and resolves no information about the purpose of this registration and is to be considered as a passive holding.
Accordingly, according to the Complainant, the Respondent has no rights or legitimate interests to the disputed domain name.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith adding that the Respondent has not replied to the cease-and-desist letter.
Finally, the Complainant asserts that the Respondent holds the disputed domain name only in order to disturb the Complainant’s business, preventing the Complainant to develop its business.
On these bases, the Complainant concludes that the Respondent has registered and is using the disputed domain name in bad faith.
For all these reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent, which seems to be a sole proprietorship, did not reply to the Complainant’s contentions. According to evidence filed by the Complainant itself, the person seeming to be its main actor, Mr. Blumtritt, passed away on June 28, 2013, well before the Complaint was filed.
6. Discussion and Findings
A. Preliminary decision regarding language
The language of the Registration Agreement between the Respondent and the Registrar of the disputed domain name is German, according to information obtained by the Center from the Registrar. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, once appointed.
In the present case, the Complainant was provided with three alternatives. By email dated November 18, 2013, the Complainant requested the proceedings to take place in English. Given the special circumstances of this case, the expedited nature of UDRP proceedings and the fact that the Complaint is ultimately denied, the Panel is prepared to accept the Complainant’s request to proceed in English.
B. General remarks
As to the “default” of the Respondent
According to paragraph 14 of the Rules,
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
In the present case, exceptional circumstances appear to have arisen: The person seeming to be Respondent’s sole proprietor, Mr. Blumtritt, presumably passed away on June 28, 2013, well before the Complaint was filed, according to evidence filed by the Complainant itself. It is not clear to the Panel how the succession of Cut Company has been organized, nor whether the email contact address of the Respondent provided with the Registrar is still applicable. As no bouncing back has been observed, the Panel assumes that it is still valid, even though the inbox may not be checked on a regular basis or may possibly not even be checked at all. A procedural order has been issued to the Complainant, providing it with 14 working days to clarify the legal situation of the Respondent, to try and establish contact with its successors, and possibly to find a mutual satisfactory solution. This possibility has not been taken advantage of by the Complainant.
Despite the special circumstances of the case, the Panel has decided to issue its decision. The Panel does not draw any particular inferences from the default of the Respondent, other than his presumed death.
As to the burden of proof:
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
C. Identical or Confusingly Similar
The test for identity or confusing similarity under the paragraph 4(a)(i) of the Policy is limited in scope to a direct comparison between any of the Complainant’s marks and the textual string which comprises the disputed domain name. In this case, the Complainant has demonstrated a registered trademark right in several international trademarks with the word “Figaro”, including the trademark FIGARO, in classes 14, 18 and 25.
The Panel concludes that the Complainant owns registered trademark rights in the designation FIGARO.
The disputed domain name incorporates the FIGARO trademark in its entirety and in terms of both visual and oral characteristics, is an identical reproduction of the Complainant's trademark.
The Panel accordingly finds that the disputed domain dame is identical to the FIGARO mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.
D. Rights or Legitimate Interests; Registered and Used in Bad Faith
Under the paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In accordance with the paragraph 4(c) of the Policy, the Respondent can demonstrate its rights or legitimate interests if:
(i) before any notice of the dispute to it, its use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection of the 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 trademark or service mark rights; or
(iii) the Respondent is making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) ("WIPO Overview 2.0") states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent to come forward with evidence that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent is not in any way related to the Complainant and is not on any other basis licensed or authorized to use its FIGARO mark. Further, the Complainant submits that the Respondent is not known by the name “Figaro” and has no need to use this name.
However, and for the above mentioned reasons relating to the apparent death of its sole-proprietor, the Respondent has not filed an answer. It has hence not had the possibility of demonstrating its rights or legitimate interests. Nevertheless, the Panel considers that the indications of the file and special characteristics of the name “Figaro” allow the Panel to analyze the second element of the Policy, as follows: according to the Panel, "Figaro" is a recognized male name in the Italian language which refers in particular to the world-famous Mozart Opera, “Nozze di Figaro”. Given that various panels have acknowledged that complainants cannot, in certain circumstances, assert exclusive rights under the UDRP in fairly short, non-fanciful names in respect of unrelated fields of business (see Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654, in respect of the name "Tammy"; Gail Guarulhos Indústria e Comércio Ltda. v. Kevin Watson, WIPO Case No. D2006-0655, in respect of the name "Gail"; Sallie Mae, Inc. v. Michele Dinoia, WIPO Case No. D2004-0648, in respect of the name "Sallie"; and Deanna S.p.A. v. Worldwide Media Inc., WIPO Case No. D2003-0964, in respect of the name "Deanna"), on the current record the Panel is not persuaded by the Complainant’s contentions that the Respondent does not (or in this case, did not) have rights or legitimate interests in the disputed domain name. The situation may have been different if there had been evidence in the case record that the Respondent’s intention was to use the disputed domain name for a news or information website, in which case rights or legitimate interests in the disputed domain name could not have arisen. As indicated previously there is no evidence in the case record as to any actual use of the disputed domain name and the Panel is therefore unable to find that the Respondent was targeting the Complainant.
For obvious reasons linked with the apparent death of the owner of the Respondent, no indications have been brought to the knowledge of the Panel as regards preparations to use the disputed domain name in connection with a bona fide offering of services. The disputed domain name is currently inoperable so that the Panel is unable to establish the intentions of the Respondent as to the Website.
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the disputed domain name in bad faith.
For the Complainant to succeed in this claim, it must satisfy the Panel that the Respondent knew or was likely to have known of the Complainant's FIGARO trade mark at time of registering the disputed domain name. Although the Complainant has provided some evidence of the reputation of its FIGARO mark, the Panel notes that the evidence does not suggest that such reputation is not limited to French speaking countries and regions.
The Complainant further argues that the Respondent has not replied to the cease-and-desist letter. It has already been explained above why this was probably the case, and the absence of a reply does not convince the Panel of the bad faith of the Respondent. As to the absence of a reply to the Complainant’s email of January 15, 2013, the Panel does not find that this evidences bad faith on the part of the Respondent. Furthermore, the Panel is of the opinion that the Complainant should have undertaken more efforts to identify and contact the successors of the Respondent, before filing the Complaint. Additionally, the Complainant has not used the opportunity provided to it by Procedural Order No 1.
In light of this, and also considering the absence of any evidence that the Respondent has targeted the Complainant in any way through the registration and/or use of either the disputed domain name or the Website, the Panel is unable to find that the Respondent registered and used the disputed domain name in bad faith.
As regards passive holding, previous panels have indeed held that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. In such instances the panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. From the circumstances of the present case, and for the reasons explained above, the Panel is also of the view that the passive holding of the disputed domain name by the Respondent has not been proven by the Complainant to be in bad faith. Moreover, no further indications of bad faith appear to be present (such as concealment of the Respondent’s identity or the like). No elements have been brought to the cognition of the Panel by the Complainant in that respect. And the mere fact of holding passively a domain name does not, in the circumstances of the present case, amount to bad faith use.
Finally, no conclusion can be inferred from the absence of answers to the cease and desist letter sent after the Mr. Blumtritt presumably died and to the Complaint. Again, this has to be explained by the fact that the Respondent’s sole-proprietor has apparently died.
The Panel accordingly finds that the Complainant has failed to discharge the burden of proving that the Respondent registered and used the disputed domain name in bad faith, and paragraph 4(a)(iii) of the Policy has not been satisfied.
In any event, the Panel notes that the disputed domain name was set to expire in January 2014. Should the disputed domain name become available for registration, the Complainant may wish to contact the Registrar in this regard.
For the foregoing reasons, the Complaint is denied.
Date: February 2, 2014