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Société Française du Radiotéléphone - SFR v. LaPorte Holdings [2005] GENDND 29 (25 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Française du Radiotéléphone - SFR v. LaPorte Holdings

Case No. D2004-0926

1. The Parties

The Complainant is Société Française du Radiotéléphone - SFR of Paris La Défense, France, represented by Cabinet Dreyfus & Associés, of Paris, France.

The Respondent is LaPorte Holdings of Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cegetl.net> is registered with NameKing.com .

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2004. On November 5, 2004, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On November 8, 2004, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 19, 2004. The Center verified that the Complaint, together with the amendment to 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 November 26, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2004.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on January 11, 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, formerly known as Cegetel, is the first private French telecommunications operator, figuring among the top 50 French companies. Due to internal reorganization of the Complainant, Cegetel has taken over its subsidiary SFR, which was specialized in mobile telecommunications, and has changed its company name from Cegetel to “SOCIETE FRANCAISE DE RADIOTELEPHONIE” (“SFR”).

SFR offers a wide range of telecom services both on an individual and corporate basis. SFR is the leading private telecommunications operator in France with 16.8 million customers as of December 31, 2002. In fixed telephony, Cegetel’s “7” service, which allows customers an affordable alternative to former telecom monopolies, had more than 1 million clients at the end of 1999. With 13.9 million customers in 2003, SFR is one of Europe’s major mobile players, and the leading private mobile telephony operator in France. SFR is the owner, among others, of the trademark SFR, which enjoys a great notoriety in France and all over the world.

Among other marks, the Complainant is the owner of the trademark CEGETEL which is protected throughout the world and has a strong reputation especially in France and in Europe. More specifically, the CEGETEL trademark is protected as follows:

- French trademark CEGETEL + logo No. 97693801 of September 1, 1997, in classes 9, 16, 35, 37, 38 and 42;

- International trademark registration CEGETEL + logo No. 726771 of May 27, 1999, in classes 9, 16, 35, 37, 38 and 42;

- CTM trademark registration CEGETEL + logo No. 000834036 of May 25, 1998, in classes 9, 16, 35, 37, 38, and 42;

- CTM trademark registration CEGETEL No. 000427773 of January 17, 1997, in classes 9, 35, 37, 38, and 42;

- CTM trademark registration CEGETEL+ logo No. 000754887 of February 23, 1998, in classes 9, 38, and 42.

Moreover, the Complainant has for several years owned and actively operated the domain names <cegetel.com> and <cegetel.fr> (Annex 6), through which it conducts its telecommunications activity.

The Complainant noticed the registration of the domain name <cegetl.net>, registered on August 30, 2004, in the name of a certain Hiroshiy, Inc. of Curacao. The contested domain name directed Internet users to a search engine proposing inter alia links to telecommunications and phones websites (Annex 3).

The Complainant sent a warning letter by registered mail to the owner of the domain name, but the letter was not delivered since the address listed in the relevant Whois proved to be wrong. Therefore, the Complainant sent its warning letter via e-mail on September 21, 2001, asking the owner of the domain name to amicably transfer the domain name <cegetl.net> (Annex 4). Hiroshiy, Inc. never replied to the Complainant’s warning letter and the Complainant sent a reminder on October 11, 2004, to which the owner of the domain name failed to reply.

On November 5, 2004, the Complainant filed its Complaint against Hiroshiy, Inc.. However, when the Center requested the Registrar to confirm that the domain name <cegetl.net> was indeed registered in the name of Hiroshiy, Inc. the Registrar replied that the domain name’s registrant was LaPorte Holdings. The Complainant therefore amended its Complaint accordingly.

5. Parties’ Contentions

A. Complainant

(a) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The domain name consists of the trademark “Cegetel” with the mere suppression of the last “e”, and the gTLD “.net”. Moreover, it is now well established that the addition of the TLD should not be taken into account when determining whether there is identity between the trademark and the domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), merely because it is necessary for the registration of the domain name itself. Besides, many decisions have already recognized that when a distinctive mark is incorporated in its entirety in a domain name, “it creates sufficient similarity between the mark and the domain name to render it confusingly similar” ( Minnesota Mining and Manufacturing v. JonLR, WIPO Case No. D2001-0428 ).

In a recent case, the Panel considered that the deletion of a letter from the domain name reproducing the Complainant’s trademark is not sufficient to serve as a differentiator between both signs, as it is a mere misspelling of the Complainant’s mark (Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No. D2004-0214).

As a result, it clearly appears that the domain name <cegetl.net> is confusingly similar to the numerous trademarks registered by the Complainant, and implies a high risk of confusion, as a consumer may think that this domain name directly refers to the Complainant’s services.

(b) The Respondent has no rights or legitimate interests in respect of the domain name

The Respondent is not affiliated with the Complainant. SFR has not authorized the Respondent to use and register its trademarks nor to seek the registration of and use of any domain name incorporating said marks.

Furthermore, the Respondent has no prior rights or legitimate interests in the domain name. The Respondent never used the term “Cegetl” before or after SFR began to develop its activities. And, as SFR is famous in France and throughout the world, any attempt to use the name constitutes trademark infringement and is necessarily made in bad faith. When the Respondent registered the domain name, the trademark and trade name had already been existing and been well known for many years.

The Respondent is absolutely not known under the name “Cegetl” or any similar term, and thus can not establish that it has been commonly known by the domain name. In fact, the domain name itself is misleading. As the Complainant’s trademark CEGETEL is famous, the use of said trademark to attract Internet users to a search engine proposing links to other websites also in the field of telecommunication cannot be fair. The use of said marks in a domain name causes a significant level of confusion amongst Internet users and the Respondent is making a profit out of it. As a result, the Complainant is losing goodwill, for example through questions or requests going unanswered. The Respondent is disrupting the Complainant’s business using its trademark to direct Internet users to some other website related to telecommunications. Having regard to the notoriety of the Complainant’s trademark, the domain name is not one which another trader would legitimately choose unless it sought to create an impression of association with the Complainant and/or to disrupt the Complainant’s business or at least to misleadingly divert Internet users from the Complainant to the Respondent.

(c) The domain name was registered and is being used in bad faith

All of the following grounds establish that the domain name in dispute has been registered and is being used in bad faith.

First of all, the Respondent indicated a false address when registering the domain name and it never answered the Complainant’s registered letter. The registration and use in bad faith can be established with circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.

The domain name is attached to a website in the field of marketing, as shown by the affidavit made by a bailiff (Annex 5) and the only plausible explanation for the choice of said domain name is to attract Internet users to promote the Respondent’s business.

Said Internet users would not otherwise have been attracted to the Respondent’s website and a proportion of Internet visitors would be likely to assume that the Respondent must have some affiliation or connection with the Complainant’s business.

Such activity falls within paragraph 4(b)(iv) of the Policy as an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website, by the creation of likelihood of confusion with the Complainant’s mark as to the source of the Respondent’s website (NIHC, Inc. and Nordstrom, Inc. v. John Zuccarini, WIPO Case No. D2001-1260).

Furthermore, there are other factors which, taken in combination, show the use and registration in bad faith.

The domain name is linked to a website offering to Internet users many telecommunications services and products. This element is inclined to tarnish the image of the Complainant as the Internet users could think that the Complainant is offering its subscribers’ list for sale.

Besides, it shall be taken into account that SFR is a famous mark, which has a higher level of protection in intellectual property agreements (article 16(2) and (3) of the TRIPS Agreement).

SFR is the owner of numerous trademarks rights throughout the world. The registration by the Respondent, not followed by any use, tends to create in the public’s mind the impression that SFR owns a domain name without having constructed the website related to it, which would be quite unprofessional. It may lead one to think that the registration of the domain name was designed to tarnish the reputation of the mark, and therefore the Complainant. The domain name was registered in bad faith, if only because said domain name is composed of the Complainant’s trademark from which the last “e” is missing and thus that the Respondent is associated with the Complainant’s trademark SFR. It is inconceivable that the Respondent has chosen to include the invented word “cegetel” in the domain name by accident. Any actual or contemplated use of the domain name by the Respondent would be illegitimate, taking into account the fact that the mark SFR is famous. Furthermore, no intention to use the mark has been expressed. Besides, the fact that the domain name directs to a search engine proposing links to telecommunications websites, which corresponds exactly to the activity of the Complainant, constitutes evidence of registration and use in bad faith. For all theses reasons, it is established that the Respondent has registered and is using the domain name in bad faith.

In accordance with Paragraph 4(i) of the Policy, for the reasons described above, the Complainant requests that the contested domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and should therefore be considered in default. The Panel, in compliance with paragraph 15(a) of the Rules, shall therefore proceed to a decision on the Complaint and shall draw such inferences therefrom as it considers appropriate.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the owner of the CEGETEL mark, registered in France, and in the International and Community registries for goods and services in classes 9, 16, 35, 37, 38 and 42. The Complainant’s marks date back to 1997/1999.

For the purposes of paragraph 4(a)(i) of the Policy and of paragraphs 3(b)(viii) and (b)(ix)(1) of the Rules, a comparison must be made between the Complainant’s mark(s) and the disputed domain name, not taking into consideration the gTLD, which has no distinctive character. Accordingly, in the instant case, a comparison must be made between CEGETEL and “cegetl”, without taking into consideration the gTLD “.net”.

It is apparent that the domain name <cegetl.net> is almost identical to the Complainant’s trademark, but for the omission of the letter “e” between the consonants “t” and “l”, at the end of the Complainant’s mark.

Such deletion is insufficient to distinguish the domain name from the earlier mark, particularly taking into consideration that the Complainant’s mark is a coined term bearing distinctive character, at least as far as its prefix ‘CEGE’ is concerned. The Respondent has reflected the Complainant’s mark in the disputed domain name, but for the letter “e” of the suffix ‘TEL’, which has a low distinctive character since it clearly refers to the telecommunications field, which is the field in which the Complainant operates and the field of application of the Complainant’s mark.

Accordingly, the domain name <cegetl.net> remains visually and phonetically closely similar to the Complainant’s mark despite the deletion of the letter “e” of the suffix ‘TEL’ of the Complainant’s mark.

B. Rights or Legitimate Interests

The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

It is an established principle that the burden of proof lies with the Complainant. However, the burden of proving the absence of the Respondent’s rights or legitimate interests in the domain name according to paragraph 4(a)(ii) of the Policy is a hard task, since proving a negative is always difficult. Accordingly, the Panel estimates, in line with prior decisions, that it is sufficient that the Complainant establishes a prima facie case in order to shift the burden of proof onto the Respondent (Anti Flirt S.A. and Mr. Jaques Amsellem v. WCVC, WIPO Case No. D2000-1553, INTOCAST AG v. LEE DAEYOON, WIPO Case No. D2000-1467; Cellular One Group v. COI Cellular One, Inc., WIPO Case No. D2000-1521).

The Complainant alleged several circumstances which, in the Panel’s view, create sufficient prima facie evidence that justifies an inversion of the burden of proof.

According to the Complaint, the Respondent is not affiliated with the Complainant and is not authorized to use and register the Complainant’s marks, nor to seek the registration of and use of any domain name incorporating said marks. The Complainant has not licensed or otherwise permitted the Respondent to use the domain name or its trademarks.

Moreover, according to the Complaint, the Respondent never used the term “Cegetl” in any way before or after the Complainant began to develop its activities. The Respondent is not known under the name “Cegetl” or any similar term and thus cannot establish that it has been commonly known by the disputed domain name.

In the absence of any statement to the contrary by the Respondent, the Panel considers that the aforesaid allegations correspond to the truth.

Finally, according to the Complaint, the disputed domain name is misleading: in view of the renown of the Complainant’s trademark, the use of the domain name at issue to attract Internet users to a search engine proposing links to other websites also in the field of telecommunications cannot be deemed as a fair use. The Complainant believes that the Respondent is disrupting the Complainant’s business using its trademark to direct Internet users to other websites related to telecommunications. Considering the reputation of the Complainant’s trademark, the domain name is not one which another trader would legitimately choose unless it thought to create an impression of association with the Complainant and/or to disrupt the Complainant’s business or at least to misleadingly divert Internet users from the Complainant to the Respondent.

Although throughout its Complaint, the Complainant asserts that the CEGETEL trademark is renowned, the Panel notes that the Complainant has not proffered sufficient evidence of such a reputation. In the Panel’s view, the mere fact that the Complainant is the leading private telecommunications operator in France is insufficient to establish the reputation of the CEGETEL mark. This is even more so in the absence of any information from Complainant about the extent of use of the CEGETEL mark. The Complainant states that CEGETEL was the Complainant’s former name. However, the Panel could not find in the Complaint any indication as to when the Complainant changed its name to SOCIETE FRANCAISE DE RADIOTELEPHONIE (“SFR”), nor to what extent the mark CEGETEL has been used, or at least what was its extent of use at the time of the registration of the challenged domain name, namely on August 30, 2004. The Panel has reviewed the evidence concerning the Complainant’s use of the CEGETEL mark in the websites corresponding to the domain names <cegetel.com> and <cegetel.fr> and considers that this evidence may serve to prove that the CEGETEL mark is still in use, but that it is insufficient to prove the renown of this mark.

Furthermore, the Panel notes that the Respondent is a United States company based in California. The Complainant itself has stated that the CEGETEL mark “has a strong reputation especially in France and in Europe”, but has not stated that the mark has a strong reputation in the United States.

The Complainant submitted evidence proving the use of the disputed domain name to provide access to a search engine, which contains links to third parties’ websites in the telecommunications and telephone fields. However, this evidence dates back to September 17, 2004, which is almost two months before the filing of the Complaint and the Registrar’s communication that the registrant for <cegetl.net> had changed from Hiroshiy Inc. to LaPorte Holdings. Moreover, September 17, 2004, is only two days after the date of the Whois printout enclosed with the Complaint, showing that <cegetl.net> was registered in the name of Hiroshiy Inc. Therefore, it is likely that the evidence of the use of the disputed domain name submitted with the Complaint proves the former registrant’s use of <cegetl.net> and not the Respondent’s use.

In line with other Panel’s decisions (InfoSpace.com, Inc. v. Hari Prakash, WIPO Case No. D2000-0076; Wild West Domains, Inc. v. Neo Jung, WIPO Case No. D2004-0243), the Panel considers that paragraph 10(a) of the Rules allows it to independently visit the Internet in order to obtain additional information to be used in connection with this default proceeding.

The Panel has thus verified that at the moment the domain name <cegetl.net> does not resolve to any active website. Thus, the use of the domain name has changed. Although there are no clear elements as to when the use of <cegetl.net> has changed, in the absence of any Respondent’s allegation to the contrary, it may be presumed that it changed at the time of the transfer of the domain name from Hiroshiy Inc. to LaPorte Holdings.

Before dismissing the Complainant’s evidence as irrelevant, the Panel has deemed it appropriate to further investigate on the Internet so as to determine whether there may be a connection between Hiroshiy Inc. and LaPorte Holdings. In the positive, the Panel deems that the evidence the Complainant filed should still be taken into account. What raised the Panel’s suspicion is that the domain name was certainly assigned after Hiroshiy Inc. received the Complainant’s cease and desist letter (sent on September 21, 2004), and within days of the filing of the Complaint. Furthermore, neither of the two entities ever replied to the Complainant’s requests and the Respondent did not file any response.

The Panel has thus ascertained that Hiroshiy Inc. was the respondent in many earlier UDRP decisions, most of which ended in the complainants’ favor. The same occurred with LaPorte Holdings. But what is most surprising, is that in some of these earlier cases, Hiroshiy Inc. was the former holder of the disputed domain name, assigned the domain name to LaPorte Holdings shortly before the filing of the complaint. Precisely what happened in the instant case.

Prior Panels have been able to ascertain that Hiroshiy Inc. is in fact the alter ego of an individual called Mr. Henry Chan (also respondent in various UDRP decisions) and that LaPorte Holdings, Inc., is also an alter ego for Hiroshiy Inc./ Henry Chan (Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707; Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No.D2004-0849). In these earlier decisions, the Panels have found that the assignment of the disputed domain name from Hiroshiy Inc. to LaPorte Holdings may well have been made in an effort to conceal the real identity of the registrant and to evade the Policy, and that in reality the holder of the domain name is the same entity: LaPorte Holdings, Inc., alias Hiroshiy, Inc..

Additional evidence of the overlap, or at least strict connection, between LaPorte Holdings and Hiroshiy, Inc. may be drawn from Nokia Corporation v. Horoshiy, Inc., LaPorte Holdings, WIPO Case No. D2004-0851, where the two entities are co-Respondents.

In view of the above and also taking into consideration the fact that the Respondent did not file any reply to the Complaint, the Panel finds that there are reasons to believe that Hiroshiy Inc. and LaPorte Holdings are two faces of the same entity, or at least, that they are strictly connected. Thus, despite the fact that the domain name <cegetl.net> does not currently resolve to an active website, the prior use of the domain name to give access to a search engine providing links to third parties’ websites in the telecommunications field should be taken into consideration for the purposes of issuing a decision in this proceeding.

In the Panel’s view, the use of a third parties’ trademark to provide access to competitors’ websites is a clear indication that the Respondent was aware of the Complainant’s trademark at the time of the registration of the disputed domain name. This conclusion is reinforced by the fact that in Nokia Corporation v. Horoshiy, Inc., LaPorte Holdings, supra, Hiroshiy Inc. and LaPorte Holdings were found to be active in the mobile phone market, which is precisely the market in which the Complainant operates.

Accordingly, the Respondent’s use of the domain name <cegetl.net> cannot be considered a fair and legitimate use of the domain name as required by paragraph 4(c)(iii) of the Policy.

For all the reasons highlighted above, the Panel concludes that the Complainant has created sufficient prima facie evidence that justifies an inversion of the burden of proof. Because the Respondent failed to submit any element in favour of its rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Complainant has established that the Respondent has no rights or interests in the domain name at issue.

C. Registered and Used in Bad Faith

The Panel believes that there are circumstances indicating that the domain name <cegetl.net> was registered and used in bad faith.

As mentioned above, it is most likely that the former holder of the disputed domain name was aware of the Complainant’s mark when it registered the domain name <cegetl.net>. The same should apply to the Respondent, who is Hiroshiy Inc.’s alter ego, or at least is strictly connected to this company.

The Complainant’s mark and the domain name at issue convey distinctive terms that the Respondent/former registrant would hardly have adopted had they not known about the existence of the Complainant and its mark. The fact that the domain name is used to give access to third parties’ websites operating in a field identical to the one in which the Complainant operates is further evidence of such knowledge.

It is therefore most likely that the registration and use of the domain name was made to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

The following additional elements contribute to the conclusion that the domain name was registered and is being used in bad faith:

- the domain name incorporates a common typing mistake (typosquatting);

- the former registrant of the domain name did not provide true contact details at the time of the registration of the domain name;

- the former registrant of the domain name assigned the domain name to the Respondent in an evident attempt to conceal its real identity and act against the Policy (cyberflight);

- the change of use of the domain name (from a website providing links to competitors’ websites to a mere passive holding of the domain name) is a further attempt to evade the Policy. The fact that the domain name does not actually lead to an active website does not prevent the conclusion that the domain name was registered and is being used in bad faith. The reasons are twofold:

- first, as stated, the former use of the domain name must also be ascribed to the Respondent;

- second, in line with prior decisions, the Panel considers that the mere passive holding of a domain name, when the corresponding holder has no legitimate rights in the same, is likely to be aware of the Complainant’s trademark and has attempted to conceal its real identity and to evade the Policy, is evidence of use and registration in bad faith;

- neither Hiroshiy Inc., nor LaPorte Holdings ever replied to the Complainant’s contentions and the Respondent failed to file a response to the Complaint in support of the lawfulness of the registration of the domain name;

- both the former owner of the domain name, Hiroshiy Inc., and the Respondent, LaPorte Holdings separately and jointly, have been found to have illegitimately registered other third parties’ trademarks as domain names.

For all the aforementioned reasons, the Panel concludes that the disputed domain name was registered and is 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 name <cegetl.net> be transferred to the Complainant.

Angelica Lodigiani
Sole Panelist

Dated: January 25, 2005