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FUN AND FLY v. Cyril Biscarlet-Maillot [2001] GENDND 921 (10 May 2001)

The Complainant is FUN AND FLY, a French public company, represented by Maître Marianne COMBALDIEU, France.

The Respondent is Mr. Cyril BISCARLET-MAILLOT, located in Versailles, France.

The domain name at issue is <funandfly.com>.

The registrar is Tucows.com, Inc.

The WIPO Arbitration and Mediation Center ( the Center) received the complaint by e-mail on March 14, 2001 and in hard-copy on March 20, 2001.

The Center notified the Complaint formally on March 23, 2001, in French.

The Respondent required a translation into English and on March 27, 2001. The Center confirmed that the proceedings will be conducted in English. The translation has been provided on April 2, 2001.

The Complaint was filed in accordance with the requirements of the Rules and the Supplemental Rules.

Payment has been properly made and the single Panelist agrees with the Center’s assessment concerning the complaint’s compliance with the formal requirements.

The Complaint was properly notified in accordance with the Rules.

The Respondent default has been notified on April 17, 2001.

The single Panelist accepted his appointment and has submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Arbitration and Mediation Center.

The date scheduled for the decision is May 10, 2001.

The complaint is based on :

- the French FUN & FLY trademark n° 1697150 filed on September 25, 1991, in classes 39, 41 and 42 (travel and tourists agency, transportation of persons, renting of vehicles of transport, renting of windsurfers and cycles. Booking in hotels for travellers. Hotel business. Catering. Organisation of sporting training. Organisation of sporting competitions)

- the French FUN & FLY trademark application n° 3085671 filed on February 26, 2001, in class 38, which is still pending.

The Complainant was created on September 20, 1991, by Mr. Michel SAUTEREAU for the organisation of travels and sporting events in the domain of surf, windsurf, kite surf, golf and climbing, it is well-known in its sector of activity.

Mr. Michel SAUTUREAU registered the domain name : <fun-and-fly.com> on September 2, 1997, which is on active status.

On April 5, 2000, the Respondent registered <funandfly.com> which is on active status and which is used for the same activity as <fun-and-fly.com>.

A link between the homepage of the site and the address « info@funandfly.com » is created on the website, whereas the contact address of the Complainant is « info@fun-and-fly.com ».

At the end of January 2001, clients of the Complainant complained about the confusion between the domain name at issue and <fun-and-fly.com>.

<funandfly.com> is presented as the slavish or at least quasi-slavish reproduction of the trademark FUN & FLY, the name FUN & FLY being not only the trademark, but also the corporate, domain and trade name of the Complainant.

The domain name at issue is used to offer the same services than those cited by the trademark.

As a consequence, there is obviously a risk of confusion between the domain name at issue and the trademark.

The Complainant proves its rights on the trademarks and the large use of its trademark and of the name FUN AND FLY, not only as a trademark, but also as a domain, corporate and trade name, before the registration of the domain name at issue, which is counterfeiting his rights.

The Respondent registered the domain name at issue to prevent the Complainant from developing his activity on the internet.

The Complainant contacted Mr. Cyril BISCARLET to invite him to cancel his domain name or to transfer it to him.

The Respondent seemed to agree, but became very evasive.

That is why the Complainant sent him a registered letter on February 16, 2001, to ask him to stop using the domain name and to cancel or transfer it to him, offering to reimburse the expenses.

The Respondent answered to this letter : "First, I was willing to negotiate the transfer of the domain name to your firm but the threatening behaviour of your assistant (I can’t remember his name) has dissuaded me (…). You ask me what are my intentions. Netfuze offered me several times to buy this name and your threats lead me to accept their conditions, which would enable me to put an end to the problem, as far as I am concerned (…)? If you want the domain name in question, it’s time for negociation [sic](…)".

In this answer, he explains that the domain name is used by a licensee, which is called Netfuze, located in the Philippines.

The Respondent is the manager of the French company Antitopia, which creates websites.

The web developer of this company is Mr. Samuel SEMDON, who is also the administrative contact of <netfuze.com> and Netfuze activity is the booking of domain names.

By e-mail dated March 5, 2001, the Respondent offered to sell the domain name at issue for the price of US$ 17, 000, and on March 12, 2001, he sent a contract and a letter from Netfuze agreeing to the cancellation of the license agreement.

The Respondent has not filed any response to the Complaint and the dispute must therefore be determined on the basis of the Complainant’s assertions.

According to the Uniform Domain Name Dispute Resolution Policy (UDRP), the Complainant must prove that (§ 4 a) :

(i) the 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 domain name; and

(iii) the "domain name has been registered and is being used in bad faith".

Paragraph 4 (a) i of the UDRP requires that the "domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights".

The domain name at issue is identical or confusingly similar to the trademark.

The Complainant justifies his previous rights on the trademark and the large use of this trademark n° 1697150 for the same activity as the one run on the internet under the domain name at issue.

The Respondent answers to the transfer proposal of the Complainant do not give any evidence of a previous right or legitimate interest in the domain name.

According to these e-mails and to the fact that he did not respond to the Complaint, the Panel concludes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4 (c) of the UDRP, or of any other circumstances that could demonstrate rights or legitimate interests with respect to the domain name.

The circumstances of the registration of the domain name at issue indicate that the domain name has been registered primarily in order to prevent the Complainant from registering it and to disrupt the Complainant’s business with the purpose of selling the domain name registration to the Complainant for valuable consideration in excess of the costs directly related to the domain name.

The domain name at issue is being used by the Respondent in bad faith since :

- he first accepted the transfer and then informed the Complainant that he had licensed it to Netfuze, just in order to sell it to the Complainant for a higher price,

- the domain name at issue is infringing the trademark and by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to his website, whoever is running this website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation of the website.

The Panel concludes that the domain name has been registered and is being used in bad faith.

For all the foregoing reasons, the Panel decides that the domain name is confusingly identical or similar to the Complainant’s trademark, that the Respondent has no right or legitimate interest in respect of the domain name at issue, and that the domain name at issue has been registered and used in bad faith.

As a consequence, the remedy requested by the Complainant is granted and the domain name <funandfly.com> shall be transferred to the Complainant.

Alain Bensoussan
Sole Panelist

Dated: May 10, 2001