WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carboatmedia soci�t� par actions simplifi�e v. Foreign Dimension
Case No. D2008-0023
1. The Parties
The Complainant is Carboatmedia soci�t� par actions simplifi�e of La Garenne Colombes, France, represented by Casalonga Avocats, Paris, France.
The Respondent is Foreign Dimension, Hong Kong, SAR of China, represented by MCE Avocats, Lausanne, Switzerland.
2. The Domain Name and Registrar
The disputed 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 January 4, 2008. On January 7, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On that same day, i.e. January 7, 2008, 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. 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 11, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 31, 2008.
On January 30, 2008, the administrative contact of the Respondent, Fr�d�ric Schvartzman, requested an extension of the due date for Response until February 20, 2008, from the Administrative Panel, stating that he was taken by surprise by the Complaint and had to find a lawyer in Europe. The Complainant objected to such an extension on January 31, 2008, claiming violation of the Rules (Fr�d�ric Schvartzman not being the registrant of the disputed domain name but the administrative contact, and the request having been addressed to the Administrative Panel instead of the Center) and stating that there were no exceptional reasons justifying an extension. The Center extended the due date for Response until February 8, 2008 on January 31, 2008, leaving it to the Administrative Panel to further consider the request. The Response was filed with the Center on February 8, 2008.
The Center appointed Brigitte Joppich, William Lobelson and Fran�ois Dessemontet as panelists in this matter on February 21, 2008. 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 paragraph 7 of Rules.
4. Factual Background
The Complainant created the first newspaper for classified advertisements for and by individuals concerning cars and real estate in France in 1969. It started using LA CENTRALE DES PARTICULIERS in 1970 as the title of its newspaper. The mark LA CENTRALE DES PARTICULIERS has been reproduced on the website edited by the Complainant since 1996. The Complainant is a successor in interest of Interpar, la Centrale des Particuliers which filed a trademark application for LA CENTRALE DES PARTICULIERS (word mark) on July 6, 1990 in France in international classes 16, 35, 36, 41 and 42 (registration number 1624078, the “LA CENTRALE DES PARTICULIERS Mark”). The Complainant was formerly named Schibsted Classified France SA, previously called Trader Classified Media France, T France SA, and (originally) Hebdo Mag. Hebdo Mag had first acquired the rights in the LA CENTRALE DES PARTICULIERS mark from Soci�t� Internationale des Publications et d’annonces, which, in turn, had acquired these rights from Interpar, la Centrale des Particuliers. Trader Classified Media France is currently registered as owner of the LA CENTRALE DES PARTICULIERS Mark.
The Complaint is also based on another French trademark LA CENTRALE DES PARTICULIERS (word mark) filed on July 5, 2000 in France (registration number 3038915) in the name of T France SA and various trademarks LA CENTRALE.
The Respondent is a company with registered office in Hong Kong.
The disputed domain name was first registered on January 12, 2000 and is used in connection with a website in French language offering information on various private sales as well as advertisements for third parties’ websites.
5. Parties’ Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name is identical or confusingly similar to the Complainant’s LA CENTRALE DES PARTICULIERS and LA CENTRALE marks as it uses these marks in whole or with regard to their most distinctive elements with the single addition of the gTLD “.com”.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. As the LA CENTRALE DES PARTICULIERS and the LA CENTRALE trademarks are well-known in France, it was not possible for the Respondent to use the domain name in connection with any bona fide offering of goods or services. The Respondent is rather making a non-legitimate, unfair and commercial use of the disputed domain name.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith. With regard to bad faith registration, the Complainant argues that, given the fame and the high reputation of the LA CENTRALE DES PARTICULIERS and the LA CENTRALE trademarks, registration occurred primarily for the purpose of taking advantage of the Complainant’s trademarks. The Complainant further contends that the administrative contact of the Respondent is doing business in France, in French language and aiming at French customers. Moreover, the disputed domain name was registered in order to prevent the Complainant from using its mark in a corresponding domain name. With regard to bad faith use, the Complainant contends that the Respondent registered the domain name to confuse Internet users and to divert these users to the Respondent’s own website (devoted to advertisements for different categories of goods and services) for commercial gain.
B. Respondent
The Respondent contends that none of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name is not identical or confusingly similar to the Complainant’s marks as ownership thereof is unclear and as they are subject to deletion from the trademark register for lack of use. Furthermore, the Respondent contends that there is no risk of confusion between the disputed domain name and the LA CENTRALE trademarks, which are not well-known.
(2) The Respondent has rights or legitimate interests in respect of the disputed domain name as it has been using it for more than five years. The Respondent contends that at the time of registration of the disputed domain name there was no indication that the Complainant was preparing or already started the development of its activities on the Internet under the LA CENTRALE DES PARTICULIERS trademark. Moreover, the Respondent, having its registered office in Hong Kong, had no knowledge of the potential reputation of the Complainant’s marks, which are well-known in a small part of the French territory only.
(3) The Respondent finally contends that the domain name was neither registered nor is being used in bad faith. With regard to bad faith registration, the Respondent contends that at the time of registration of the disputed domain name the Complainant had already replaced its LA CENTRALE DES PARTICULIERS trademark by a stylized shorter trademark LA CENTRALE. None of the Complainant’s trademarks was known outside France where the website at the disputed domain name is also accessible. Moreover, the Respondent left all other top level domain names incorporating the elements of the Complainant’s marks on their second level open to registration by the Complainant, thereby not acting in bad faith. It contends that its intention was only to register a domain name with a conceptual link to the services proposed in several French speaking countries.
6. Discussion and Findings
The first point to be dealt with is the identity of the Respondent. While the concerned registrar, Network Solutions, LLC, confirmed that Foreign Dimension is listed as registrant of the disputed domain name and Fr�d�ric Schvartzman as administrative contact, the legal representative of Foreign Dimension named Fr�d�ric Schvartzman as the Respondent in its request for extension of the due date for Response. However, the same legal representative subsequently named Foreign Dimension as the sole Respondent in its Response. The Administrative Panel therefore proceeds from the assumption that the earlier insertion of Fr�d�ric Schvartzman was a mere typing error and will thus treat Foreign Dimension as the correct and only Respondent for the purposes of this administrative proceeding.
The second point to be dealt with is the admissibility of the Response. The Administrative Panel comes to the conclusion that the extension of the due date for Response until February 8, 2008 by the Center was granted in accordance with the Rules and, on balance, in the interest of due process of law: the request for extension was filed on behalf of Fr�d�ric Schvartzman, it was clearly meant to be for the Respondent, and the extension granted by the Center does not significantly delay the administrative proceeding, while enabling to the Panel to consider both parties’ contentions. Finally, as the Response was indeed filed on February 8, 2008, there is no need to speculate about the justification of an extension beyond that date. The Response has therefore been taken into account by the Panel in finding its administrative decision.
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trademark; 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.
A. Identical or Confusingly Similar
The first issue to be dealt with is whether the Complainant Carboatmedia Soci�t� par actions simplifi�e enjoys rights in the LA CENTRALE DES PARTICULIERS Mark.
The Complainant has provided evidence of various assignments concerning the LA CENTRALE DES PARTICULIERS Mark and the changes of its company name. Considering such documentation (in particular the transfers of the trademarks, all evidenced by excerpts from the trademark register, and the fact that the commercial identification number of the Complainant remained unchanged throughout the various changes of the company name), the Panel is convinced that the Complainant is the owner of the LA CENTRALE DES PARTICULIERS Mark. There is no requirement under the Policy that the Complainant must be registered as owner of the trademark on which it bases its claim for transfer of a domain name.
Furthermore, it is a consensus view among panelists that if a complainant owns a registered trademark it satisfies the threshold requirement of having trademark rights. The question of whether a registered trademark is subject to revocation or deletion for non-use or inherent obstacles to registration is not to be decided under the UDRP as such a finding would be outside its scope (see Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091; AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr.,WIPO Case No. D2005-0485). If it wishes to challenge the Panel’s decision for lack of protection of the Complainant’s marks, the Respondent may file an action according to paragraph 4(k) of the Policy with the court of Mutual Jurisdiction within 10 business days of the notification of this administrative decision together with an action for deletion of such trademarks with the competent French court.
The Panel therefore comes to the conclusion that the Complainant has rights in the LA CENTRALE DES PARTICULIERS Mark and will leave the questions related to the Complainant’s other LA CENTRALE DES PARTICULIERS mark (which was filed after registration of the disputed domain name) and the LA CENTRALE marks aside. The Panel wishes to point out, however, that the majority of the Panel would have been inclined to consider the notion of LA CENTRALE as the distinctive part of the sign LA CENTRALE DES PARTICULIERS and therefore to derive trademark rights from the LA CENTRALE marks as well.
The disputed domain name fully incorporates the Complainant’s distinctive LA CENTRALE DES PARTICULIERS Mark in which the Complainant has exclusive rights.
It is well established that the specific top level domain, in this case “.com”, is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no 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 customers or to tarnish the trademark or service mark at issue.
Even though paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name, the Complainant only has to make a prima facie case to fulfill the requirements of paragraph 4(c) of the Policy. As a result, the burden of proving that the Respondent has rights or legitimate interests in the disputed domain name will shift to the Respondent.
The Complainant has asserted and shown prima facie that the Respondent did not use the domain name in connection with any bona fide offering of goods or services. The Complainant has therefore fulfilled its obligations under paragraph 4(c) of the Policy.
The Respondent clearly has not been commonly known by the disputed domain name and is not making any non-commercial use of the domain name. And the mere presence of a website under the disputed domain name does not per se establish a bona fide offering of goods or services either. The Respondent, domiciled in Hong Kong, has used the domain name in connection with advertising and, more particularly, the publishing of classified ads by and for individuals. The Respondent asserts that a potential reputation of the LA CENTRALE DES PARTICULIERS trademark is limited in its territorial scope to the region of Paris, France. Still, it has made up its domain name of French words, following French grammar rules, and the website at the disputed domain name offers services in French language. Furthermore, the Respondent fails in establishing its own, personal good faith, arguing only objectively that the Complainant could have filed its Complaint earlier, that the concept of “central of ads for individuals” is a good name for an IP address, that there was no evidence of the Complainant’s activities regarding its LA CENTRALE DES PARTICULIERS trademark, and that the scope of the opinion poll presented by the Complainant is rather limited. These statements reveal that the Respondent was most likely aware of the Complainant and its rights when using the disputed domain name but tried to rely on the limited territorial scope of the Complainant’s goodwill. This is not sufficient to establish good faith under the Policy.
Furthermore, it is well established that there is no bona fide offering of goods and services where the use of the disputed domain name for such offering constitutes a trademark infringement (see Serta, Inc. v. Maximum Investment Corporation,WIPO Case No. D2000-0123).
The Panel therefore concludes that the Respondent has failed to make a sufficient showing under paragraph 4(c) of the Policy to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or 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 that 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 circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
As to bad faith registration, the Respondent does not claim that it did not know about the LA CENTRALE DES PARTICULIERS Marks, stating only that the French word mark LA CENTRALE DES PARTICULIERS was not used any longer when the disputed domain name was registered and that it had no particular knowledge of a potential reputation of the trademark LA CENTRALE DES PARTICULIERS. As a result, more likely than not, the Respondent knew of the Complainant’s LA CENTRALE DES PARTICULIERS mark when registering the disputed domain name. This finding is supported by the fact that the LA CENTRALE DES PARTICULIERS Mark is widely known in France, and the services offered by the Respondent at the website under the disputed domain name are aiming at the French market and directly competing with those of the Complainant. The mere fact that the Complainant’s trademark was probably not well-known worldwide at the time the Respondent registered the disputed domain name does not make its act bona fide because it was still free-riding on the Complainant’s goodwill.
Moreover, the Respondent has also used the disputed domain name in bad faith. Screen shots of the Respondent’s web pages under the disputed domain name show that links on the website under the disputed domain name referred the user inter alia to all types of classified advertisements, allowing the Respondent to earn fees and thus capitalize on the goodwill of the Complainant’s trademarks. This behavior qualifies as bad faith under paragraph 4(b)(iv) of the Policy in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 be transferred to the Complainant.
Brigitte Joppich
Presiding Panelist
William Lobelson
Panelist
Fran�ois Dessemontet
Panelist
Dated: March 6, 2008
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