WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ville de Paris v. “V”
Case No. D2008-0056
1. The Parties
The Complainant is Ville de Paris, Paris, France, represented by Nataf Fajgenbaum & Associ�s, France.
The Respondent is “V”, Gran Canar, Spain.
2. The Domain Name and Registrar
The disputed domain name is registered with eNom.
3. Procedural History
The Complaint (naming as Respondent “Villede ”, M. Garcia) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2008. On January 16, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On January 16, 2008, eNom transmitted by email to the Center its verification response confirming that the “V” 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2008.
The Center appointed Luca Barbero as the sole panelist in this matter on February 20, 2008. 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 the local and regional Authority Ville de PARIS and the administrative capital of the French territory.
The Complainant is the owner of the French trademark VILLE DE PARIS No. 1 755 063 registered on December 24, 1991 and duly renewed on December 19, 2001 in classes 01 to 42 and specifically for “radio broadcasting”, communications “by telegrams”, “by telephone”, “telewriting”, “message sending” and “transmission of telegrams” in class 38 relative to “telecommunications”.
The Complainant is furthermore the owner of the domain name .
The disputed domain name was first created (according to the Whois) on September 26, 2000 .
5. Parties’ Contentions
A. Complainant
The Complainant indicates that Ville de Paris is to be considered as a public body established for the specific purpose of meeting needs in the general interest and not having an industrial or commercial character; in particular the Complainant is in charge of many missions of public-utilities notably in the fields of communication and information about activities available in the city of Paris.
The Complainant informs the panel that a cease and desist letter was sent to the Respondent on January 9, 2007 and a subsequent reminder on April 23, 2007. The Respondent did not reply.
The Complainant states that the disputed domain name is identical to trademark in which Complainant has rights as it reproduces the well-known trademark VILLE DE PARIS.
The Complainant also asserts that the trademark VILLE DE PARIS is a well known trademark as defined by the Article 6bis of Paris Convention for the Protection of Industrial Property.
The Complainant emphasizes that the well known character of the trademark VILLE DE PARIS is strongly established, specifically regarding tourism, cultural sight-seeing and gastronomic catering.
The Complainant underlines that the name of a local and regional Authority such as Ville de Paris is only reserved to local and regional Authority according to the Article R.20-44-43 II of the French Code of Post and Electronic Communications.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the domain name is not used. Therefore the Complainant concludes that the domain name is passively held and that such use does not constitute a bona fide offering of goods or services nor a legitimate non-commercial or fair use.
As to the circumstances evidencing bad faith the Complainant indicates that the trademark VILLE DE PARIS is a well-known sign. The Complainant asserts that Panels have repeatedly held that the mere holding of a domain name may constitute a “use”. The Complainant emphasizes that the Panels consider the concept of a domain name being used in bad faith is not limited to positive action; rather, inaction is within the concept.
The Complainant emphasizes that Internet users browsing the domain name identical to Complainant’s trademark expecting to find the Complainant, are immediately linked to a website not belonging to the Complainant.
The Complainant contends that using the words “ville de paris” and particularly in French, as a gTLD domain name, has been “organized to link the website for the French internet users interested in Ville de PARIS, which would request from their internet browser the City of Paris as known as the administrative capital of FRANCE and a local authority”.
Therefore, the Complainant holds the view that the Respondent cannot deny that the registration and the use of the domain name simply refers to Ville de Paris.
Furthermore, the Complainant informs the Panel that the Respondent has been subject of similar proceedings relative to abusive domain names registration such as: Cortefiel, S.A. v. Miguel Garc�a Quintas,WIPO Case No. D2000-0140; Cortefiel, S.A. v. Javier Garc�a Quintas,WIPO Case No. D2000-0141; and Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226; Recoletos Compa��a Editorial, S.A. v. R,WIPO Case No. D2000-1765; FC Bayern M�nchen e.V v. Miguel Garcia, WIPO Case No. D2000-1773; Port Aventura, S.A. v. Miguel Garc�a Quintas, WIPO Case No. D2000-0751; Don Algodon H, S.A. v. Miguel Garc�a Quintas, WIPO Case No. D2000-1042; Audi AG v. Asociaci�n Usuarios De Internet y Miguel Garc�a Quintas, WIPO Case No. D2001-0204; Metrovacesa, S.A. v. Metrovacesa.Com (M. Garc�a), Case No. D2001-0511; Yves Saint Laurent v. Javier Garcia,WIPO Case No. D2001-0911; Eresm�s Interactiva, S.A. y Alehop Internet, S.L. v. A/M. Garc�a, WIPO Case No. D2001-0949; Gestevisi�n Telecinco, S.A. v. D. Javier Garc�a Quintas,WIPO Case No. D2002-0137; Antena 3 de Televisi�n S.A. c/ D. Javier Garc�a Quintas,WIPO Case No. D2002-0537; Viajes El Corte Ingl�s, S.A. v. Javier Garc�a Quintas,WIPO Case No. D2002-0598; , , and Excmo. Ayuntamiento de Las Palmas de Gran Canaria vs. Miguel Garc�a Quintas, WIPO Case No. D2002-0833; Valencia Club de F�tbol, S.A.D. v. Miguel Garc�a, WIPO Case No. D2004-0009; Banco Zaragozano, S.A. v. Don Miguel Garc�a Quintas,WIPO Case No. 2004-0050; Mundial S.A. Produtos de Consumo v. Movie Name Company S. L./Miguel Garc�a Quintas, WIPO Case No. D2005-0950.
The Complainant considers that the Respondent could not possibly ignore the existence of the VILLE DE PARIS trademark, also in light of the precedence decisions, the Respondent was certainly in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of the French trademark VILLE DE PARIS No. 1 755 063 registered on December 24, 1991 and duly renewed on December 19, 2001 in classes 01 to 42.
The Panel finds that the disputed domain name is therefore identical to the trademark owned by the Complainant.
In comparing the Complainant’s mark to the Domain Name with reference to it should be taken into account the well established principle that the suffixes, including the generic top level domains, may be excluded from consideration as being merely a functional component of the domain name. As held in Rollerblade, Inc. v. McCrady,WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”, and in Chevy Chase Bank, F.S.B. v. Peter Ojo,WIPO Case No. D2000-1770 “the accused domain name is legally identical to Complainant’s trade name CHEVY CHASE BANK”.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) that it intends to make 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.
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, it is sufficient that the Complainant shows prima facie case in order to shift the burden of proof on the Respondent. If a respondent fails to demonstrate rights and legitimate interests in the domain name in accordance with paragraph 4(c) of the Policy or on any other basis, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (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, Met America Mortgage Bankers v. Whois ID Theft Protection, NAF Case No. 852581).
By not submitting a Response in this case, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
Indeed there is no relation, disclosed to the Panel or otherwise apparent, between the Respondent and the Complainant. The Respondent is apparently not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademarks and name under any circumstance and to sell Complainant’s products.
Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the domain name in connection with a bona fide offering of goods or services or intends to make a legitimate, non-commercial or fair use of the domain name.
The Panel also shares the view held in Aracruz Celulose S/A v. CM Banco de Servicos SC Ltda WIPO Case No. D2001-1178 where the Panel stated that “Probably a company located in the City of Aracruz could have sound arguments that it would have rights or legitimate interests in the Domain Name, but the Respondent is not located there, the Complainant, by the way, does have operations in the city of Aracruz, as well as in many other cities). Simply having the potential of making future sales of real estate in the city of Aracruz and surrounding areas is not enough to create any right nor any legitimate interest for the Respondent; finally, the Respondent has not shown evidence that it has accrued any good-will at all to the “aracruz” name in relation to the real estate business.”
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or 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 that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration the Panel notes that in light of the well-known character of the Complainant’s trademark, the Respondent was very likely aware of the Complainant’s trademark.
As in Gateway, Inc. v. Lorna Kang WIPO Case No. D2003-0257, this Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks. See also Veuve Cliquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O’Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050; and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions WIPO Case No. D2003-0103.
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that knowledge of Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226 which was, by the way, rendered against a respondent with an address identical to the named Respondent in this case)1.
The Panel finds paragraph 4(b)(ii) applicable in this case since the Respondent has in the Panel’s view registered the domain name in order to prevent the Complainant from using the mark. Furthermore, the Respondent appears to have engaged in a pattern of such conduct since it has also apparently registered other domain names incorporating registered trademarks that have been subject of more than twenty proceedings under the Policy.
The Panel concurs with the views expressed in Manheim Auctions Inc. v. Whois ID Theft Protection WIPO Case No. D2006-1044 and Carte Blanche Greetings Limited v. metoyou,WIPO Case No. D2004-0946, where the panel stated that “it is clear that the Respondent is heavily involved in cybersquatting activities in relation to many domain names relating to well known names and trademarks. Such behavior corresponds to a pattern to register domain names identical to, or confusingly similar with, famous names and trademarks. This constitutes bad faith registration pursuant to Paragraph 4(b)(ii) of the Policy.”
With reference to the issue of the non use of the domain name by Respondent, the Panel finds that in the circumstances of this case the “passive holding” further justifies an inference of bad faith, particularly in light of the well known character of the Complainant’s trademark. As also established in a number of prior cases the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but can in appropriate circumstances also encompass passive holding; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
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.
Luca Barbero
Sole Panelist
Dated: March 5, 2008
1 According to the Whois database, the registrant of the disputed domain name is “V”, with an address at ‘Apartado de Correos, Playa del Ingles, Gran Canar, 35100, Spain’. This has been confirmed by the Registrar.
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