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FNAC v. Abdouni Abdelha [2005] GENDND 1758 (26 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FNAC v. Abdouni Abdelha

Case No. D2005-0968

1. The Parties

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

The Respondent is Abdouni Abdelha, of Amsterdam, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <fnacsav.com> (the “Domain Name”) is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2005. On September 12, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On September 13, 2005, Network Solutions, LLC 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”).

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 September 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2005.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on October 12, 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

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

The Complainant holds a large number of trademarks registered in numerous countries, including the Benelux countries (where Respondent is domiciled), consisting of, or containing, the word FNAC (cf. Exhibits F, G, H to the Complaint).

The Respondent is, according to the registrar Network Solutions LLC, Aboudni Abdelha. On July 24, 2001, Abdouni Abdelha registered the domain name <fnacsav.com>.

Complainant sent a first cease and desist letter requesting the retrocession of the Domain Name by by registered mail to the Respondent on August 30, 2001.

A second cease and desist letter was sent by registered mail on March 7, 2005. This letter was returned with the remark “Refused” on the Post report.

The same letter was additionally sent by email and fax on March 8, 2005, followed by reminders on April 26, 2005, and May 12, 2005. The Respondent never replied.

The Respondent also holds the domain name <savmicro.com>, whereunder it offers computers and accessories in direct competition with some of the Complainant’s products.

5. Parties’ Contentions

A. Complainant

i. Identical or Confusingly Similar

The domain name <fnacsav.com> is similar to the numerous French, European, International and Benelux FNAC trademarks which have been duly registered since 1970. The Respondent copied the trademark FNAC into its domain name and simply added the term “sav” which stands for the French term “service après-vente” (after sales service) and can be considered as a French generic term. “FNAC” has been recognised as a “distinctive word” in several precedent WIPO cases (e.g. FNAC v. SZK.com, WIPO Case No. D2004-0413; FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881). It follows that the suffix “sav” is not a distinctive feature and does not eliminate the likelihood of confusion with the trademark.

ii. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in respect of the Domain Name, as he is neither known, nor has he registered any trademarks, under FNAC, FAC SAV or FNAC SERVICE APRÈS VENTE.

The Respondent has not been licensed or otherwise authorised by the Complainant to use the said trademarks and there is no relationship between the Complainant and the Respondent.

The Respondent used the website <fnacsav.com> to redirect Internet users to his own website “www.savmicro.com“ which is in French. This redirection was suspended just after the second cease and desist letter dated March 2005.

The Respondent’s use of the Domain Name cannot be considered a bona fide offering of goods and services. The Respondent is one of the Complainant’s competitors and must have been aware of the existence of the Complainant’s trademark. The Respondent was therefore making an illegitimate use of the Domain Name, with intent for commercial gain to divert consumers to his own website.

The Respondent registered the Domain Name without any right or legitimate interest and knew that the rights to the trademark belonged to the Complainant.

iii. Registered and Used in Bad Faith

The existence of the Complainant’s well-known trademarks, websites and shops prove the Respondent’s bad faith. One of the Complainant’s websites (www.fnac.be) is even accessible in French and Dutch. The Respondent could not have ignored the existence of the trademarks, shops and websites.

On the “www.fnac.com” website, in the rubric named “Les services FNAC”, the Complainant makes an explicit reference to its “service après-vente” (SAV), mentioning that this kind of service is available in each FNAC shop. The suffix “sav” does create a distinctive word.

The Respondent also diverted Internet users to his own website until March 2005. The Respondent therefore created a likelihood of confusion with respect to the source, sponsorship, affiliation or endorsement of the website. The Respondent did not add a disclaimer or any other information informing consumers that it was not affiliated with the Complainant.

The Domain Name was thus registered primarily for the purpose of disrupting the business of the Complainant and to attract Internet users to a competing website.

However, since the second cease and desist letter was sent to the Respondent by the Complainant in March 2005, the Domain Name has been inactive. This behaviour is normal for cybersquatters. Non-use of a domain name can constitute bad faith. This was acknowledged in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Moreover, the Respondent registered simultaneously to the registration of <fnacsav.com> the domain name <fnacsavonline.com> which contained the same website as <fnacsav.com>. However, after the first cease and desist letter, the Respondent abandoned <fnacsavonline.com>. This is further proof for the Respondent’s lack of legal and legitimate interest in the Domain Name.

B. Respondent

The Respondent did not reply to the Complaint.

6. Discussion and Findings

The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules). In this case, the Panel finds that the Center complied with all formalities and that the Complaint and Notification of Respondent Default were properly notified to the Respondent. The Panel finds that the Respondent had proper notice of this administrative proceeding.

Because the Respondent has defaulted in providing a Response to the Complaint, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (Rules, paragraph 15(a)).

Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that the Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) the Respondent’s 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 Respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Although the Domain Name is not identical to any FNAC trademark, it does entirely incorporate the FNAC trademark, adding the suffix ‘sav’.

The Complainant has submitted valid proof in this procedure that it is the legitimate owner of numerous trademarks consisting of, or containing, the word FNAC (FNAC v. Fizbin Consultants, LLC, WIPO Case No. D2005-0017; FNAC v. Gauthier Raymond; WIPO Case No. D2004-0881; FNAC v. Domain Administrator, WIPO Case No. D2004-0476; FNAC v. SZK.co, WIPO Case No. D2004-0413).

The panel accepts that FNAC is a well-known trademark. The word FNAC has been recognised as distinctive in FNAC v. SZK.co, WIPO Case No. D2004-0413.

The suffix “sav” (service après-vente) is, at least in francophone countries, a generic word. FNAC itself, like most other companies engaged in the business of selling goods, provides after sales services. The word ‘sav’ in the Domain Name exploits the trademark signification of FNAC as an indication of origin, since consumers will understand the website corresponding to the Domain Name to offer for sale the Complainant’s products. The suffix ‘sav’ does not eliminate the likelihood of confusion with the trademark FNAC and the Complainant (see Aventis, Aventis Pharma SA. v. John Smith, WIPO Cases No. D2004-0565 and D2004-0624; Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037).

Therefore, the domain name <fnacsav.com> is held to be confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, the following circumstances can demonstrate that the Respondent has rights to or legitimate interests in a domain name:

(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably made 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or

(iii) the Respondent is 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 overall burden of proof under paragraph 4(c) of the Policy rests with the complainant, which is required to establish that the respondent prima facie lacks any rights to, or legitimate interests in, a domain name. If the respondent fails to answer the claim, the complainant is deemed to have satisfied its burden of proof (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). However, while a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064).

The Complainant contends that the Respondent, as a direct competitor, diverted Internet users from the disputed website to its own website <savmicro.com> and therefore cannot have been making a bona fide offering of its goods and services.

The website corresponding to the Domain Name has been inactive since March 2005. Hence, it is not possible for the Panel to verify the Complainant’s contentions of the use and the purported redirection from <fnacsav.com> to <savmicro.com >. The documents submitted by the Complainant do not contain a printout of the website before its closure. Consequently, the Panel holds that the burden of proof has not been met satisfactorily for accepting the contention of redirection (The Vanguard Group, Inc. v. Lorna Kang WIPO Case No. D2002-1064; Berlitz Investment Corp. v. Stefan Tinculescu WIPO Case No. D2003-0465). The Panel’s rejection is however limited to the assertion of redirection, but does not influence its findings on the actual use of the website (cf. below).

The Respondent’s absence of rights or legitimate interest can be proved otherwise: The Respondent is not known under the trademark FNAC, FNACSAV or FNAC SERVICE APRÈS VENTE and has no registered trademarks under these names. Furthermore, the Complainant neither licensed nor authorised the Respondent in any other way to use the FNAC trademark and there is no relationship between the Complainant and the Respondent.

As stated above, the website corresponding to the Domain Name is no longer active, although the domain registration will not expire until July 24, 2006. It was inactivated after the Complainant’s second cease and desist letter. This indicates that the Respondent itself did not see a legitimate interest in keeping the Domain Name.

The Complainant has not submitted any proof as to the Respondent’s actual use of the website. Nevertheless, it is alleged by the Complainant and sufficiently clear that the Respondent did use the website. The Panel accepts that the Respondent, active in the same business area as the Complainant, was making an illegitimate commercial use of the Domain Name, with intent for commercial gain to misleadingly divert consumers. The Respondent must have been aware of the Complainant’s well-known trademark, all the more as it was offering similar goods to those of the Complainant and was using a French website (<savmicro.com>) itself.

For the reasons set out above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, a domain name has been used and registered in bad faith if:

(i) circumstances indicating that the Respondent has registered and has 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.

The Respondent’s behaviour clearly does not fall under one of the first three circumstances of this provision.

However, the Respondent registered the domain name <fnacsav.com> in order to attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the well-known trademark FNAC. The Respondent must have been aware of the well-known trademark FNAC. By selling computers and accessories it was a direct competitor of the Complainant and profited from its notoriety.

Having concluded in a registration of the domain name in bad faith, the question arises whether it is being used in bad faith. As already mentioned, the website associated with the Domain Name is presently inactive, although the domain registration will not expire until July 24, 2006.

The Panel already held that the website was actually used (cf. lit. B above). Even if this was a case of inactive use, the inactivity of the website associated with the Domain Name would not as such prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Taking the following circumstances into account, the Respondent’s bad faith can also be established despite an inactivity of the website.

The Complainant’s trademark has a strong reputation and is widely known, as evidenced above and in precedent decisions; the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name; and the Panel is incapable of conceiving any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate. The Respondent’s simultaneous registration of the domain name <fnacsavonline.com> with the same content as the website at “www.fnacsav.com” and its abandonment just after the first cease and desist letter is a further indicator of the Respondent’s bad faith and lack of legitimate interest in the Domain Name.

In light of these circumstances, the Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by Respondent.

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 name <fnacsav.com> be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist

Dated: October 26, 2005