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FNAC v. Fizbin Consultants, LLC [2005] GENDND 147 (25 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FNAC v. Fizbin Consultants, LLC

Case No. D2005-0017

1. The Parties

The Complainant is FNAC, C/O Eric Ravy, Clichy France, represented by Inlex Conseil, France.

The Respondent is Fizbin Consultants, LLC, Toluca Lake, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <fnacmusique.com> (the “Domain Name”) is registered with Go Daddy Software Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2005. On January 6, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On January 6, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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”).

3.2 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 January 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2005.

3.3 The Center appointed Matthew S. Harris as the Sole Panelist in this matter on February 15, 2005. 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

4.1 The Complainant is a company incorporated and existing under the laws of France, and has a principal place of business in Clichy, France. The Complainant is the “head office” of a global group commercializing books, videos, CDs and other products.

4.2 The Complainant has a very large number of trademarks in numerous jurisdictions which the Panel has been made aware of. These trademarks include the word FNAC and many others which incorporate in some form or other the terms including FNAC MUSIC, FNAC MUSIK and FNAC MUSICA.

4.3 The Respondent is Fizbin Consultants, LLC and registered the Domain Name on March 18, 2004.

4.4 Through its legal representative, the Complainant sent a cease and desist letter dated April 19, 2004, by recorded post to the Respondent, stating that the Respondent had reserved the Domain Name in bad faith and in infringement of the Complainant’s rights. This letter appears too have been received and signed for on behalf of the Respondent on May 12, 2004.

4.5 The Complainant sent subsequent reminders to the Respondent by email and fax. On June 15, 2005, a representative of the Respondent responded by email from the email address admin@fizbin.com. The representative apologized for his failure to respond earlier to the Complainant’s letter and stated that this was due to the fact that he had been “on vacation”. In a fax to the Complainant later that day, the representative admitted that he held the Domain Name but denied that he had acted in bad faith. In that fax he went on to assert:

“I am very open to discussion of transfers of those domains which I do own to your client care, if you manage to make the request in polite, non accusatory manner. Being francophone myself, and having been raised in French culture, I have grown to regard French people are infinitely more polite, civilized and well-spoken than the American populace. I would have expected the same honesty, ‘politesse’ and more professionalism even from French lawyers, or a French law firm - instead of the far more American direct accusations, and saber rattling. I sincerely hope this was a misunderstanding and that we will be able to resolve the issues at the centre of your mails in a friendly, and amicable manner.

I would suggest that, furthermore, that you make an effort to establish the reason and motive behind my motivation, before proceeding any further. I can assure you your allegations and accusations are entirely incorrect, which is why I find them offensive.”

However, the representative did not volunteer any reasons or “motivation” for the Domain Name’s registration.

4.6 The legal representative of the Complainant responded by email on June 16, 2004, stating it was not their aim to be impolite, but maintaining its position that the Respondent had no legitimate interest in the Domain Name. They offered to reimburse any justified out-of-pocket expenses in return for the transfer of the Domain Name to the Complainant but stated that their clients “do not want to buy back the name”.

4.7 The Respondent did not respond to this email despite further chasing by email on June 23, 2004. The Complainant commenced these proceedings on January 6, 2005.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

5.1 The Complainant refers to paragraph 4(a)(i), of the Policy, and paragraphs 3(b)(viii) and 3(b)(ix)(1) of the Rules. It asserts that the Domain Name is confusingly similar to a number of duly registered trademarks or service marks in which the Complainant has rights. In particular, it asserts that:

(a) “FNAC is the holder of numerous “FNAC” trademarks and FNAC [is] associated with an other term as junior, service, direct … trademarks”;

(b) “a panel already recognized the FNAC Company is ‘very well known and particularly active in the field of music’ in FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881”;

(c) “the Complainant launched in September 2004 a new service and website named FNAC MUSIC … and he owns two French Trademarks ‘FNAC MUSIC’ duly registered” in France; and

(d) “[t]he word music is translated in the domain name in French language but this does not distinguish the domain name from the trademarks FNAC MUSIC.”

5.2 In support of these contentions, the Complainant lists and provides evidence of the registration of numerous trademarks in France and other jurisdictions.

5.3 The Complainant relies upon the decision in the case FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881 as authority for the proposition that “FNAC” is by itself “sufficient to establish the criterion of similarity for purposes of the Policy”.

5.4 The Complainant also relies upon the decision in the cases FNAC v. SZK.com, WIPO Case No. D2004-0413 and The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010, which the Complainant asserts demonstrate that “where a domain name consists of a registered trademark followed by a generic term, the latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark”.

5.5 The Complainant also relies upon the argument that “many panels have held that confusing similarity is established when a domain name wholly incorporates a complainant’s trademark”. It cites in this respect the cases Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.

No rights or legitimate interests

5.6 The Complainant refers to paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules. It asserts that the Respondent has no rights or legitimate interests in the Domain Name. In this respect the Complainant claims that:

(a) “Fizbin Consultants is not known under the FNAC nor FNAC MUSIC mark as he has no registered FNAC or FNAC MUSIC trademark nor any use or filings of a trademark logo”;

(b) “The Complainant has not licensed or otherwise authorized the Respondent to use the FNAC or FNAC MUSIC trademarks and there is no relationship between the Complainant and Fizbin Consultants”;

(c) there has been “no activity of Respondent under the name FNAC” and that “the Respondent name has thus nothing to do with the FNAC term which is a fancy name and has no signification by itself nor in French or in English”;

(d) there has been no use of the Domain Name and “Obviously the Respondent never planned to develop a website”; and

(e) “It is therefore without any right that the Respondent, a francophone person, registered the domain name containing the French translation of one of the words of the mark.”

5.7 In support of these claims the Complainant provides a copy of a trademark search made at “www.saegis.com”, which it is claimed shows that the Respondent owns no trademarks in the word FNAC.

5.8 Further, the Complainant provides evidence of a Google search against the term FNAC MUSIQUE, the results of which do not mention Fizbin Consultants. In the circumstances, it claims that the only use that the Respondent has made of the Domain Name is the “attachment” the “web page of the Registrar” to the Domain Name and asserts that, “[o]bviously the Respondent never planned to develop a website” in conjunction with the Domain Name.

Bad Faith

5.9 The Complainant refers to paragraph 4(a)(iii) and 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules. It asserts that the Domain Name was registered and has been used in bad faith. In particular the Complainant claims that:

(a) “As a francophone which has ‘been raised in French culture’ the Respondent could not ignore the existence of FNAC trademarks, shops and websites”;

(b) “[The Respondent] translated the word music in French language in the domain name he registered”;

(c) “the Respondent registered the domain names knowingly and without carrying out any prior availability search even on Internet”;

(d) “The Respondent intentionally reserved the domain name as soon as he heard from the FNAC MUSIC project in order to tarnish the Complainant and to make money”;

(e) “The disputed domain name is being used in bad faith under the principle of inaction amounting to bad faith use”;

(f) “Excessive conditions [were] required by the Respondent to transfer the domain name”;

(g) “The respondent has clearly registered the domain name primarily for the purpose of making business benefits from the confusion and tried in a second time (sic) to sell it for valuable consideration in excess of his costs.”; and

(h) “A simple search on Internet on FNAC would have revealed the existence and notoriety of the FNAC Group and FNAC MUSIC project.”

5.10 In support of its contentions, the Complainant relies upon the decision in FNAC v. Raymond, WIPO Case No. D2004-0881, a case involving the domain names <fnacmusic.info>, <fnacmusic.net> and <fnacmusic.org>. In this case it was stated, “the Complainant is very well known and particularly active in the field of music, in such an extent that the addition of the word ‘Music’ to the word ‘FNAC’ makes the Respondent’s intentions even more suspect, since it was obvious to him that the Complainant would one day or another be interested in the contested domain names”.

5.11 The Complainant refers to the fact that although its FNAC MUSIC site was not launched until September 2004 it received extensive publicity in March 2004 relation to that launch including on a French language Internet site, and in French magazines and press. Copies of relevant articles are provided. In the circumstances it is claimed that “the fact that the Respondent registered the domain name at the time the FNAC MUSIC project was revealed to the large public can not be considered as a coincidence”.

5.12 The Complainant also provides copies of whois searches showing that the domain names <fnacmusic.com>, <fnac-music.com> and <fnac-musique.com> registered by FNAC prior to the registration of the Domain Name by the Respondent.

5.13 The Complainant further relies upon the decisions in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Beverages and More, Inc. v. Glenn Sober Mgmt., Case No. AF-0092 and Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613.

5.14 The Complainant relies upon the Respondent’s failure to respond to an offer to reimburse justified out-of-pocket expenses incurred as a result of the transfer of the Domain Name, as indication that the Respondent was expecting to obtain much more money for the Domain Name. According to the Complainant, “there is no doubt that the Respondent would have replied to the proposition if an important amount would have been mentioned”.

B. Respondent

5.15 The Respondent did not submit a Response.

6. Discussion and Findings

6.1 The Panel has reviewed the Complaint together with its annexures. In the light of this material, the Panel finds as set out below.

6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel determining the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Details of these proceedings have been served in accordance with the relevant requirements set out in the Rules.

6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(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.

6.4 However, under paragraph 5(e) of the Rules, if a respondent does not submit a response and in the absence of exceptional circumstances, “the Panel shall decide the dispute based upon the Complaint”. Further, under paragraph 14 of the Rules where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.

A. Identical or Confusingly Similar

6.5 Under paragraph 4(a)(i) of the Policy, the Complainant must show that the Domain Name is identical or confusingly similar to a trademark in which it has rights.

6.6 It is necessary that the Complainant has the relevant rights. Amongst the large number of trademark registrations referred to the Panel are the following:

Trademarks registered in France

European Community Trademarks

Trademarks registered in the United States of America

6.7 The Panel finds that the Domain Name is confusing similar to each of these trademarks. So far as each of the FNAC word marks are concerned the Domain Name comprises the trademark together with a generic suffix (albeit in French) which directly relates to the services offered by the Complainant; i.e. music. The Panel agrees with the cases that are cited by the Complainant in this regard to the effect that the addition of such a suffix does not prevent a finding of confusing similarity. A more recent example of this principle is to be found in the Panel’s own decision in Sallie Mae, Inc. v. Chen Huang, WIPO Case No. D2004-0880.

6.8 So far as the Complainant’s French trademark in the name “FNAC MUSIC” is concerned the similarity is arguable even greater. The English word “music” has merely been replaced by its French equivalent.

6.9 In the circumstances, the Panel therefore finds that the Domain Name is confusingly similar to all of the trademarks listed above and the Complainant has made out Paragraph 4(a)(i) of the Policy. It is therefore not necessary to consider any of the other trademarks relied upon by the Complainant.

B. Rights or Legitimate Interests

6.10 Under Paragraph 4(a)(ii) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.

6.11 The Complainant asserts that the Respondent has no rights, or legitimate interest in the name FNAC MUSIQUE, and has put forward extensive evidence of the fact that the Respondent has no trademark rights in that name and does not use the name in the course of its business. The Respondent has not put forward any evidence to the contrary.

6.12 The Panel therefore finds that the Respondent does not have any rights to, or legitimate interests in, the Domain Name. The Complainant has made out Paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

6.13 Paragraph 4(a)(iii) of the Policy requires that the Domain Name was registered by the Respondent and has been used in bad faith.

6.14 A non exclusive list of circumstances that are evidence of registration in bad faith are set out in paragraph 4(b) of the policy. Although the Complainant does not expressly refer to paragraph 4(b)(i), it is clear from the wording of the Complaint that the Complainant alleges bad faith in the form set out in paragraph 4(b)(i) of the Policy. Paragraph 4(b)(i) refers to a situation where:

“… you have acquired a 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 … for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”

6.15 In this case the Panel has little difficulty in coming to the conclusion that the Respondent registered the Domain Name in full knowledge of the Complainant’s use of the names FNAC and FNAC MUSIC. Factors that lead to this conclusion are as follows:

(i) The inherent distinctiveness of the FNAC name;

(ii) The fame of FNAC in the field of music (a fact that has been previously recognised by a UDRP panel in FNAC v Gauthier Raymond, WIPO Case No. D2004-0881), particularly in France;

(iii) The fact that the Respondent, by his own volition, is a francophone and has been “raised in French culture”;

(iv) The Respondent’s addition of a generic suffix to the inherently distinctive FNAC name which is directly associated with the goods and services offered by FNAC;

(v) The publicity obtained in France in the name “FNAC Music” prior to the registration of the Domain Name and the fact that the domain name merely comprised a French translation of that name.

6.16 Given this finding, the question arises why it is that the Respondent registered the Domain Name. The Panel believes that the Complainant in this case has put forward a strong case to the effect that the Respondent registered the Domain Name for the purpose of sale to the Complainant for more than out-of-pocket expenses. The relevant factors here include:

(a) The Respondent’s knowledge of the Complainant’s likely interest in the Domain Name for the reasons described in paragraph 6.15 above;

(b) The fact that the Domain Name was registered just days after the Complainant obtained publicity in France for its new FNAC Music venture. The Panel agrees with the Complainant’s contention that this is unlikely to be mere coincidence;

(c) The assertion of the Respondent’s representative in an email of June 15, 2004, that he was “open to discussions of transfer of [the Domain Name] to your client’s care, if you manage to make the request in a polite, non-accusatory manner”. The Complainant subsequently made such a polite request in its email of June 16, 2004, but also made clear that it was not prepared to pay any more than out-of-pocket expenses. The Respondent, notwithstanding its representative’s earlier assertion, did not respond to that email. The natural and obvious conclusion was that the Respondent was only prepared to enter into “discussions” on the basis that more than out of pocket expenses would be paid; and

(d) The fact that it is difficult to conceive of any plausible, actual or contemplated use of the Domain Name that would not be illegitimate;

6.17 Notwithstanding this strong prima facie case and the Complainant’s unequivocal allegation in the Complaint that this was the Respondent’s purpose in registering the Domain Name, the Respondent has put in no Response.

6.18 The Panel therefore concludes that the Domain Name has been registered and used in bad faith and the Complainant has made out Paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 For all of the foregoing reasons, the Panel concludes that the Complainant has sufficiently proved:

(a) the Domain Name is confusingly similar to the Trademark; and

(b) the Respondent does not have any rights to or legitimate interests in the Domain Name; and

(c) the Domain Name was registered and has been used in bad faith.

7.2 Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <fnacmusique.com> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist

Dated: February 25, 2005