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French Connection Limited v. Frederique Taillefer [2005] GENDND 381 (16 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

French Connection Limited v. Frederique Taillefer

Case No. D2005-0255

1. The Parties

The Complainant is French Connection Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Duane Morris LLP, San Francisco, California, United States of America.

The Respondent is Frederique Taillefer, San Diego, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <frenchconnectiononline.com> is registered with Abacus America Inc. d/b/a Names4Ever.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2005. On March 10, 2005, the Center transmitted by email to Abacus America Inc. d/b/a Names4Ever a request for registrar verification in connection with the domain name at issue. On March 15, 2005, Abacus America Inc. d/b/a Names4Ever 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.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant submitted an amendment to the Complaint by email dated March 18, 2005, nominating the names and details of its requested arbitrators for the three-member Administrative Panel. 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 March 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 7, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2005.

The Center appointed John Swinson, Peter G. Nitter and Lynda M. Braun as panelists in this matter on April 29, 2005. The Panel finds that it was properly constituted. Each member of 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.

The language of the proceeding is English.

4. Factual Background

The Complainant is French Connection Limited, a corporation with its principal place of business located in London, United Kingdom of Great Britain and Northern Ireland. The Complainant has numerous retail stores in the United States of America and the European Union, which sell a wide range of French Connection branded products.

The Complainant currently operates twenty-five stores across the United States, with additional store openings proposed in 2005. Its first store in the United States of America was opened in Soho New York in August 1983. The Complainant also sells its product through 1,020 third-party owned, multi-brand retail stores in the United States of America.

The Complainant is the holder of over sixty international trademark registrations for the “FRENCH CONNECTION” mark, or marks incorporating “FRENCH CONNECTION”, including in the United States of America, Europe, Australia, Africa and Asia. The Complainant is the holder of United States trademark registrations for the mark “FRENCH CONNECTION” with the Certificates of Registration listed below, as evidenced by the Certificates of Registration annexed to the Complainant’s Complaint.

In addition, the Complainant has a website at “www.frenchconnection.com” through which it promotes its products and store locations and provides company information. The Complainant also operates an e-commerce service in the United States of America selling French Connection clothing and accessories via the website at “www.fcusbuymail.com”.

The disputed domain name was registered by the Respondent on March 12, 2004. The Complainant’s counsel attempted to contact the Respondent seeking to resolve the dispute regarding the disputed domain name, including on September 7, 2004, September 21, 2004, November 9, 2004 and November 30, 2004, as evidenced by the copies of correspondence annexed to the Complainant’s Complaint.

When the Panel attempted to view the website at the disputed domain name in May 2005, the Panel was returned a message that the URL could not be found.

5. Parties’ Contentions

A. Complainant

The Complainant relies on the factual background set out in section 4 (“Factual Background”) above.

The Complainant also contends that the disputed domain name is identical or at least confusingly similar to mark “FRENCH CONNECTION” as registered and used by the Complainant, as the disputed domain name fully incorporates the Complainant’s mark and adds the generic term “online” and the generic top level domain “.com”. Internet users are likely to mistakenly assume that the Respondent’s disputed domain name is associated with the Complainant.

In addition, the Complainant contends that the Respondent:

(a) has no right or legitimate interest in the disputed domain name for reasons including, there is no evidence to show that the Respondent is commonly known by the disputed domain name nor any evidence to show that prior to this dispute the Respondent was using the disputed domain name in connection with a bona fide offering of goods and services, or making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain. Furthermore, the Respondent has never acquired, authorisation from the Complainant to use the Complainant’s “FRENCH CONNECTION” mark; and

(b) registered and used the disputed domain name in bad faith as the Respondent intentionally attempted to attract, for commercial gain, Internet users to a 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 that website or location or of a product or service on that website or location.

B. Respondent

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

6. Discussion and Findings

In order to qualify for a remedy, the Complainant must make out the three elements set out in paragraph 4(a) of the Policy, namely:

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

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

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

The onus of proving these elements is on the Complainant.

A. Identical or Confusingly Similar

There are two elements that a Complainant must establish under paragraph 4(a)(i) of the Policy – that the Complainant has rights in a trademark or a service mark, and that the disputed domain name is identical or confusingly similar to the mark.

The Panel finds that the Complainant has established that it has valid registered rights in the “FRENCH CONNECTION” mark (including in the United States of America). The Panel also considers that the Complainant has provided strong evidence of extensive international use of that mark and consequential goodwill in the mark.

The only two differences between the disputed domain name and the Complainant’s “FRENCH CONNECTION” mark are the addition of the word “online” and the addition of the top level domain “.com” suffix.

It is well established that the addition of the suffix “.com” is an irrelevant distinction that does not change the likelihood for confusion. See Microsoft Corporation v. Amit Mehrotra WIPO Case No. D2000-0053 and InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075.

“Online” is a generic word which is commonly used in domain names in connection with e-commerce Internet websites through which corporations promote and sell their products and services. The use of such a generic word does not serve to distinguish the Respondent’s website from the Complainant’s “FRENCH CONNECTION” mark sufficiently to avoid the disputed domain name being confusingly similar to the Complainant’s mark.

Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The Complainant contends that the Respondent has no legitimate interest in the use of the disputed domain name.

Paragraph 4(c) of the Policy sets out three elements, any of which shall demonstrate the Respondent’s legitimate rights in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The Respondent had the opportunity to respond and present evidence in support of the elements in paragraph 4(c) of the Policy. The Respondent chose not to do so and has not filed any response in this proceeding establishing any circumstances that could demonstrate any rights or legitimate interest to the disputed domain name.

The Complainant is not entitled to relief simply by default, however the Panel can and does draw evidentiary inferences from the failure to respond. See Royal Bank of Canada v. D3M Domain Sales (eResolution Case No. AF-0147).

The Complainant has provided evidence of the extensive use and registration to protect its “FRENCH CONNECTION” mark. The Panel has no reason to doubt the Complainant’s assertion that it has never authorised the Respondent to use the Complainant’s mark “FRENCH CONNECTION”.

The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain name as there is no evidence that the Respondent has used, made preparations to use, or has any intention of using the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate, non-commercial or fair use of the disputed domain name.

For these reasons the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied by the Complainant.

C. Registered and Used in Bad Faith

The Complainant has shown evidence that its mark “FRENCH CONNECTION” is used widely in many countries, including the Respondent’s country of residence, and has been used in the United States for more than two decades prior to the Respondent registering the disputed domain name.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if found to be present by a Panel, shall be evidence of registration and use of a domain name in bad faith.

In this case the Panel finds that the Respondent has registered and used the domain name in an intentional 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. By registering the disputed domain name, the Respondent draws on the established reputation of the Complainant to attract Internet users to its website. See Nokia Corporation v. Nokiagirls.com aka IBCC, WIPO Case No. D2000-0102.

The Respondent did not respond to any of the attempts by the Complainant to resolve this dispute informally, and appears to have taken down the website at the disputed domain name upon being notified of the Complainant’s formal complaint on March 18, 2005. The Panel considers this further evidence supporting the claim of registration and use of the disputed domain name in bad faith by the Respondent.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy is also satisfied.

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, <frenchconnectiononline.com> be transferred to the Complainant.

John Swinson Presiding Panelist
Peter G. Nitter Panelist	Lynda M. Braun Panelist

Dated: May 16, 2005