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FNAC v. Domain Administrator [2004] GENDND 1176 (28 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FNAC v. Domain Administrator

Case No. D2004-0476

1. The Parties

The Complainant is FNAC of Clichy, France, represented by Inlex Conseil of Paris, France.

The Respondent is Domain Administrator of Mainz, Germany.

2. The Domain Names and Registrar

The disputed domain names <fnac-sexe.com>, <sexe-fnac.com> and <sexefnac.com> are registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2004. On June 30, 2004, the Center transmitted by email to eNom, Inc, a request for registrar verification in connection with the domain names at issue. On July 1, 2004, eNom, Inc. transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain names would remain under Registrar Lock throughout the proceeding. In addition to eNom, Inc.’s partial response, the Center made WHOIS printouts, which showed that the disputed domain names were registered with eNom Inc., and that Respondent, Domain Administrator, was the current registrant of the disputed domain names and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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, and the proceedings commenced on July 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2004.

The Center appointed David Taylor as the sole panelist in this matter on August 24, 2004. 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.

A Procedural Order was issued by the Panel on September 6, 2004, requesting copies of missing documents referred to in the Complaint; a copy of the decision of the Tribunal de Grande Instance de Paris of December 31, 2002, and a copy of the email referred to in the Complaint as having been sent to the Respondent dated May 18, 2004. The Complainant duly provided such documents on September 10, 2004.

4. Factual Background

The Complainant is a French company founded several decades ago. It is in the business of selling books, music, films, electrical goods and computer products both over the Internet and in its shops, in France and elsewhere. It currently has 61 sales outlets in France and 41 in seven other countries (Belgium, Spain, Italy, Portugal, Switzerland, Brazil and Taiwan, Province of China). Last year it had a turnover of 3,812 million Euros (excluding Taiwan, Province of China).

The Complainant has provided evidence of trademark registration concerning the word FNAC, both in France and in various other countries throughout the world, including several registrations designating Germany.

The Respondent has registered the domain names <fnac-sexe.com>, <sexe-fnac.com> and <sexefnac.com>.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain names at issue are identical or confusingly similar to a number of trademarks in which the Complainant has rights.

The extension indicating the gTLD “.com” is irrelevant in determining such similarity, as is the addition of the word “sexe.”

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names. This is illustrated in four ways, namely:

(i) the existence of well-known trademarks and FNAC websites belonging to the Complainant;

(ii) the Respondent has no activity using the name FNAC;

(iii) the Complainant has not licensed or otherwise authorised the Respondent to use the FNAC trademarks, and the word FNAC has no meaning in either French, German or English; and

(iv) the domain names redirect Internet users to a website containing various hyperlinks to pornographic websites, which cannot be considered to be a bona fide offering of goods or services.

(c) The domain names were registered and are being used in bad faith. This is also illustrated in four ways, namely:

(i) the notoriety of the name FNAC, which demonstrates that the Respondent registered the domain names with knowledge of the Complainant’s rights;

(ii) the behaviour of the Respondent as far as the domain names in issue are concerned, i.e. its failure to respond to the Complainant’s letter of April 27, 2004, and its email of May 18, 2004, which is also an indication of the fact that the Respondent’s Whois details may be incorrect;

(iii) the use of the domain names to link to an active pornographic website, which is trademark infringement, indicates that the Respondent is using the Complainant’s trademark to attract Internet users for its own commercial gain by creating a likelihood of confusion, and tarnishes the Complainant’s mark; and

(iv) the Respondent’s previous conduct, in this regard the Complainant cites two WIPO decisions in 2003, where a transfer of a domain name registered by the Respondent was ordered.

The Complainant, therefore, seeks the transfer of the disputed domain names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15 of the Rules states that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In the case of default by a Party, Rule 14 states that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. The Panel will, therefore, have to make its decision on the basis of the factual statements contained in the Complaint and the documents made available by the Complainant to support the contentions.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) that the domain names registered by Respondent are 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 the domain names; and

(iii) that the domain names have been registered and are being used in bad faith.

Taking each of these issues in turn, the Panel decides as follows:

A. Identical or Confusingly Similar

Based on the evidence put forward by the Complainant, the Panel finds that the Complainant has rights in the trademark FNAC.

The disputed domain names registered by the Respondent are <fnac-sexe.com>, <sexe-fnac.com> and <sexefnac.com>.

The Panel considers that, as previously held in several Panel decisions, the gTLD suffix .com is without legal significance and has no effect on the issue of similarity. Furthermore, the Panel agrees with the Complainant that the addition of the word “sexe” is irrelevant and has no effect upon the overall impact of the disputed domain names. The additions lack distinctiveness and are not sufficient to give the disputed domain names an individual meaning, so that a connection between the Complainant and the Respondent would not be presumed.

On the basis of these considerations, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain names (Policy, paragraph 4(a)(ii)). The Policy (paragraph 4(c)) sets out various ways in which a respondent may demonstrate rights or legitimate interests in the domain name, as follows:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(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.”

The Panel has, therefore, considered the evidence put forward by the Complainant. The Panel is of the view that redirecting Internet users to a website containing various hyperlinks to pornographic websites cannot be considered to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above. Pornography services may, in themselves, be bona fide, but not when combined with bad faith registration and use (see paragraph C. below).

In addition, the Complainant has provided evidence that the Respondent owns no trademarks in Germany, the country where it purports to be based, containing the word FNAC, and asserts that it has not licensed or otherwise authorised the Respondent to use its trademarks. The Panel is therefore persuaded that there is no evidence that the Respondent has been commonly known by the disputed domain names, as per paragraph 4(c)(ii) of the policy.

Finally, the Panel is of the opinion that it cannot be said that the Respondent is making a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(iii) of the Policy. The pornographic website is clearly commercial in nature, as the hyperlinks direct the user to sites that require payment to enter, and the notoriety of the Complainant’s mark would suggest that the Respondent is trying to misleadingly divert consumers.

The Complainant has thus presented a clear prima facie showing of the Respondent’s lack of rights or legitimate interests in the domain name. As a result of its default, the Respondent has failed to rebut that showing; the Respondent has not presented any evidence to indicate that it has any rights or legitimate interests in the disputed domain names, or has used or intends to use the disputed domain names in connection with a bona fide offering of goods or services.

The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that, in particular, but without limitation, demonstrate that the Respondent has registered and used the disputed domain names in bad faith.

The evidence establishes that the Respondent has registered the disputed domain names in order to link these to pornographic websites. This practice is not per se conclusive evidence of bad faith, as stated earlier, pornographic services may, in themselves, be bona fide. However, when such practice incorporates the intellectual property of another into the domain name, it becomes illegitimate.

Having considered the evidence put forward by the Complainant, in particular the notoriety of the Complainant’s trademarks, the Panel finds that there is an overwhelming presumption that the Respondent knew of the Complainant’s trademarks and its reputation when registering the disputed domain names and the Panel is of the opinion that the Respondent’s conduct falls squarely under paragraph 4(b)(iv) of the Policy. By using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. Although most Internet users would likely conclude that there is no business relationship or affiliation between the Complainant and the Respondent, the Respondent nevertheless has succeeded in gaining traffic to its website from the disputed domain names.

By registering not just one, but three domain names, each including the trademark FNAC, the Respondent has, in the Panel’s opinion, further demonstrated by its own conduct, that it is acting in bad faith.

An additional factor which the Panel has taken into account is the fact that the Whois information concerning each domain name is somewhat dubious, contradictory and in all likeliness has been intentionally falsified.

The Complainant has also highlighted the fact that the Respondent has previously been subject to UDRP proceedings and held to have registered and used domain names identical to registered trademarks, without a legitimate interest and in bad faith. Though this does not automatically mean that the Respondent should be condemned in this instance, it is a further indication of the Respondent’s state of mind in registering these disputed domain names, particularly as the Respondent has not provided the Panel with any indication of its reasons for registering the disputed domain names.

The Panel, therefore, concludes that the Complainant has succeeded in proving that the disputed domain names have been registered and are being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <fnac-sexe.com>, <sexe-fnac.com> and <sexefnac.com> be transferred to the Complainant.

David Taylor
Sole Panelist

Dated: September 28, 2004