WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Future France v. Name Administration Inc. (BVI) Case No. D2008-1422 1. The Parties
The Complainant is Future France of Levallois Perret, France, represented by SCP DMS AVOCATS, France.
The Respondent is Name Administration Inc. (BVI) of Grand Cayman, Cayman Islands B.W.I. Saint Kitts and Nevis, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, Ph.d., Esq., United States of America. 2. The Domain Names and Registrar
The disputed domain names, and , are registered with Domain Name Sales Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2008. On September 19, 2008, the Center transmitted by email to Domain Name Sales Corp. a request for registrar verification in connection with the disputed domain names. On September 19, 2008, Domain Name Sales Corp. 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” or “UDRP”), 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 September 26, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2008. The Response was filed with the Center October 16, 2008.
On October 30, 2008, the Complainant filed with the Center a Supplemental Complaint. After reviewing the Complaint and the Response, the Panel decided not to request or to consider supplemental filings by either party in this proceeding per its discretion in paragraph 10 of the Rules.
The Center appointed Dennis A. Foster, Christophe Caron and Tony Willoughby as panelists in this matter on November 17, 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 Rules, paragraph 7. 4. Factual Background
The Complainant, a French company, publishes two magazines, “Joystick” and “PC Jeux”, which are sold primarily throughout France and, to a lesser extent, in other neighboring countries as well. The Complainant owns French trademark registrations for JOYSTICK (Registration No. 92408539; March 4, 1992), PC JEUX, LE MAGAZINE DES JEUX SUR PC (Registration No. 96612906; April 5, 1996) and PC JEUX (Registration No. 063430986; May 19, 2006). The Complainant's predecessor owned the registration for the disputed domain name , but that registration expired in December 2006.
The Respondent is a company that acquires domain names for the purpose of creating websites that link Internet users to third party advertisers and their websites. The Respondent owns the disputed domain names and , whose dates of initial registration are December 15, 1995 and February 23, 1999, respectively. Respondent bought the former name in January 2007 and the latter during 2005. Both disputed domain names host websites that link Internet users to third party websites, with the Respondent being paid fees on a per-click basis for this linkage. 5. Parties' Contentions A. Complainant
The Complainant is a French company that publishes two magazines, “Joystick” and “PC Jeux”, which are distributed throughout France and in several other countries. The magazines were first published in 1989 and 1997, respectively. Widely read, the magazines have readership rates of 749,000 and 1,318,000 in France, respectively, making the Complainant the market leader in that country for computer game magazines.
The Complainant has French trademark registrations for both marks, JOYSTICK and PC JEUX. The Complainant also owns several domain names that incorporate the words “joystick” and “pcjeux”.
The disputed domain names, and are identical to the Complainant's trademarks.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. There is no legal or contractual relationship between the parties, the Respondent is not a licensee of the Complainant, and the Complainant has not granted the Respondent any permission or consent to use the trademarks referred to above.
The Respondent is not commonly known by and does not operate under either of the disputed domain names. The Respondent fails to make a bona fide use of the names, as they are employed by the Respondent to derive revenue from merely hosting links to third party websites. Such activity by the Respondent also fails to constitute noncommercial or fair use of the disputed domain names.
The disputed domain names were registered and are being used in bad faith. By using the names to host links to third party websites that offer goods and services in areas corresponding to the Complainant's products, the Respondent is attempting to confuse Internet users into believing that this linkage is endorsed by the Complainant. The act of leaving the disputed domain names with a domain parking service, as has been done by the Respondent, is evidence of bad faith. Moreover, the Respondent's use of the French language in a portion of the Respondent's website at the disputed domain name, , is further evidence of the attempt to deceive consumers, who are seeking to access the Complainant's websites. B. Respondent
This case is a magazine title case, where a complainant claims exclusive rights to use otherwise generic terms by virtue of their use as magazine titles. “Joystick” and “PC Jeux” are generic terms for, respectively, a computer game control device and, in French, personal computer games. The recognition of limited trademark rights for such generic titles serves a legitimate purpose in distinguishing magazines, but should not be invoked with respect to other spheres of commerce.
The Complainant's marks are stylized, and thus the disputed domain names are not identical or confusingly similar to those marks. Furthermore, the marks are merely generic terms which confer rights on the Complainant only in the field of magazine publication, not Internet use.
The Respondent should not be held to possess constructive knowledge of the Complainant's trademark rights because the French trademark authority does not facilitate general Internet access to its registrations.
The Respondent is using the disputed domain names in their generic sense to advertise goods and services relevant to computer games. Anyone may use the terms “joystick” and “PC jeux” and many entities have for purposes outside of the business of magazine publication.
Collecting advertising fees for use of website links provided at a domain name, such as the disputed domain names in this case, is a bona fide use of such a name with respect to Policy considerations. The Respondent is well known for its use of generic domain names in this legitimate manner.
The Complainant's predecessor let its ownership of the disputed domain name, , lapse years ago, creating the inference the name had been intentionally abandoned.
The Respondent acquired the disputed domain name, , for the sum of 62,250 USD at an auction of expired and abandoned domain names held on January 22, 2007. The Respondent purchased the disputed domain name as part of a portfolio of names in 2005, prior to the Complainant's registration of its PC JEUX trademark in 2006. The Respondent's intent was to use both domain names according to their clear primary meanings, not to violate in bad faith anyone's trademark rights in those names. 6. Discussion and Findings
Pursuant to Policy paragraphs 4(a)(i) (iii), the Complainant will prevail in this proceeding and gain transfer of the disputed domain names and if the Complainant can prove that:
- The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- The disputed domain names were registered and are being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Complainant has presented the Panel with clear evidence, as conceded by the Respondent, that the Complainant has valid French trademark registrations for the marks JOYSTICK and PC JEUX (Annexes 5 and 7, respectively). The Panel concludes that this showing establishes the Complainant's rights in those marks for the purposes of paragraph 4(a)(i) of the Policy. See RH-Interactive Jobfinance v. Mooburi Services, NAF Case No. FA137041 (“Complainant has established that it has rights in the JOBFINANCE mark through the French trademark registration.”); and Société d'encouragement à l'élevage du Cheval Français (SECF) v. Bazak Telecom and Yanai Arfi, NAF Case No. FA152462.
The disputed domain name, , replicates the Complainant's JOYSTICK mark exactly except for the addition of the gTLD, “.com”. The disputed domain name, , replicates the Complainant's mark PC JEUX except for the omission of the space between the terms “PC” and “JEUX” and the addition of the same gTLD. The Panel finds that these minor differences fail to prevent the disputed domain names from being confusingly similar, if not identical, to the Complainant's marks. See Diesel v. LMN a/k/a L. M. Nordell, NAF Case No. FA804924 (finding to be identical to the VIN DIESEL mark); and Pomellato S.p.A v. Tonetti,WIPO Case No. D2000-0493 (finding to be identical to the POMELLATO mark because “…the addition of the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant, since use of a gTLD is required…”).
Furthermore, the Panel concludes that the Respondent's argument that the Complainant's marks differ from the disputed domain names because the marks bear elements of stylization not duplicated in the names is of no moment. Domain names are not structured to provide for any degree of stylization, but are purely textual by necessity. In this case, the degree of stylization is slight no graphical or pictorial elements and the textual elements of both marks (i.e., “joystick” and “PC Jeux”) are clearly dominant. See Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; and Dreamstar Cash S.L. v. Brad Klarkson,WIPO Case No. D2007-1943 (“Of course a domain name can only consist of an alphanumeric string, and cannot incorporate figurative, or device elements of a complainant's trademark.”).
Consequently, the Panel determines that the Complainant has satisfied its burden to prove that the disputed domain names are identical or confusingly similar to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant's irrefutable evidence of trademark rights and its unequivocal assertion that it has not granted the Respondent any license or permission to use those rights constitute a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. As a result, it is incumbent upon the Respondent to come forward with evidence to convince the Panel that the Respondent does possess those rights or legitimate interests. See for example G.D Searle v. Martin Marketing, NAF Case No. FA118277; and AOL LLC v. Jordan Gerberg, NAF Case No. FA780200 (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”)
In its rebuttal to said prima facie case, the Respondent does not attempt to invoke either Policy paragraph 4(c)(ii), that Respondent is commonly known by the disputed domain names, or paragraph 4(c)(iii), that Respondent is engaged in a legitimate noncommercial or fair use of the names. Rather, the Respondent contends that it is using the disputed domain names per their simple generic meanings to provide Internet users with a bona fide offering of goods or services as allowed under paragraph 4(c)(i) of the Policy.
The Respondent asserts that it is in the business of registering domain names in order to provide Internet users with links to third party websites which may furnish goods or services to those users. This linkage constitutes a business because the Respondent receives small fees from third parties on a per-click basis. The Respondent argues that this is precisely the legitimate use to which the disputed domain names are being currently employed.
The Panel does concede that the use of the domain names as described above may well be a legitimate activity. However in this case, the Panel sides with many previous UDRP panels that have concluded that this activity, in and of itself, is not “a bona fide offering of goods or services” in compliance with the requirements of paragraph 4(c)(i). See for example Computer Doctor Franchise Systems, Inc. v. The Computer Doctor, NAF Case No. FA95396; and State Farm Mutual Automobile Insurance Company v. David Haan, NAF Case No. FA948470 (“Respondent is not offering any good or service of its own and is presumably collecting pay-per-click referral fees from the third-party links on its website...Thus, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy [paragraph] 4(c)(i)”)
Therefore, the Panel finds that the Complainant has sustained it burden to show that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
This part of the Panel's decision, concerning the domain name, is by a majority.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. Obviously, bad faith registration is a question of intent. In the case of the disputed domain name , the Respondent claims to have bought it at an auction of abandoned domain names. Furthermore, the Respondent's research showed that the name was abandoned by a predecessor of the Complainant. There is no assertion by the Complainant that this abandonment was in error or in any way inadvertent. In these circumstances, the Panel believes that the Complainant cannot sustain a contention that the Respondent bought (or indeed registered) this disputed domain name in bad faith.
A trademark owner would not typically abandon a domain name corresponding to its mark, and then claim that a subsequent purchaser acted in bad faith by acquiring that name. This is particularly true when the name is a generic word like “joystick.” The Panel concludes that it appears likely that the Respondent reasonably determined that the disputed domain name, , composed of a simple English language term, was available for use on a generic basis in a lawful manner (see the discussion of the Respondent's business in the section above), and as it does not appear that the Respondent decided to obtain revenues illegitimately through baiting Internet users based on confusion with the Complainant's trademark which (from the evidence of record) is hardly world famous. Ergo, as the burden of proof lies with the Complainant, the Panel must favor the Respondent's position in this instance.
As for the disputed domain name , the Panel notes that the Complainant's mark, PC JEUX, was registered with the French trademark office in 2006, after the Respondent acquired the name in 2005. Generally, UDRP panels have found that registration of a trademark by a complainant after the registration of the domain name at issue precludes a finding of bad faith registration. See Geopack v. Name Administration, Inc. (BVI),WIPO Case No. D2006-1590; and John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074.
In this case, the Complainant claims that the Respondent should have been on notice of the Complainant's rights in the mark due to the Complainant's French registration in 1996 of an alternate trademark, “PC JEUX, LE MAGAZINE DES JEUX SUR PC”. However, that trademark includes far more than the simple term, “PC Jeux”, and it is unclear to the Panel that someone especially a non-French language speaker, as is the Respondent would assume that the first term, by itself, is a protected trademark. Certainly, the Complainant could conceivably submit evidence that the term had achieved protection as a trademark, through long and continuous use, but such use and protection would be likely limited to France and perhaps some neighboring countries. In short, the Panel does not believe that this trademark registration or any limited unregistered rights would or should have necessarily provided the Respondent with knowledge of the Complainant's rights in the term “PC Jeux”.
Again, PC JEUX, can be considered a generic term. The Complainant goes to great length in explaining that under a proper translation, “PC Jeux” is not French for “PC games” in English, i.e., “PC games” is correctly translated as “Jeux pour PC.” However, the Complainant cannot deny that “PC” is an acronym for the common English language term, “personal computer,” and that “jeux” is commonly translated from French into English as “games”. “Jeu” or “jeux” is intelligible in many languages, certainly English, as in “jeu/jeux de mots” or “faites vos jeux”.
Thus, the Panel refuses to find it unreasonable for the Respondent to view the term “PC jeux” as a combination of common or generic English and French terms meaning roughly “personal computer games” in French. Moreover, the Panel does not view the Respondent's use of French on the Respondent's website connected to this disputed domain name as evidence of bad faith, since it would be reasonable to use the French language in connection with a domain name that is at least partly French. Given these considerations, the Panel finds it reasonable to believe that the Respondent intended to use the disputed domain name, , relative to its rough generic meaning as opposed to capitalizing on any value created by the Complainant's trademark or to disrupt the Complainant's business. Thus, the Panel cannot conclude that the Respondent has acted in bad faith in acquiring the disputed domain name . See CNR Music B.V. v. High Performance Networks, Inc.,WIPO Case No. D2005-1116 (“The registration of the [disputed] domain name appears to have been aimed at exploiting the ability of the word itself to attract Internet users, and not aimed at taking advantage of the Complainant's reputation or trademark.”); and New Pig Corporation v. Adam Dicker, NAF Case No. FA843597.
Accordingly, a majority of the Panel rules that the Complainant has failed to establish that the disputed domain names were registered and are being used in bad faith.
Panelist Mr. Christophe Caron does not agree that the Complainant has failed to establish that one of the disputed domain name was registered and is being used in bad faith. 7. Decision A. Majority Finding
For all the foregoing reasons, a majority of the Panel orders that the Complaint is denied.
Dennis A. Foster
Presiding Panelist
Tony Willoughby
Panelist
Christophe Caron
Panelist (Dissenting)
Dated: December 8, 2008 DISSENTING OPINION
Opinion dissenting only from the finding of registration and use in bad faith of the domain name.
I agree with my co-panelists that the Complaint, concerning the domain name , should be denied. I also agree that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the disputed domain name . But I would not however make a finding about the registration and the use in good faith of the domain name .
I believe that the registration of the domain name has been made in bad faith. In fact, the expression “pcjeux” is protected by several valid well known trademarks in France. Since the bad faith registration is a question of intent, the Respondent, who is a non-French language speaker, obviously decided to choose, as a domain name, an expression well known in France, in the field of video games, in order to create a website hosting links to third party websites.
Furthermore, “pcjeux” is a distinctive expression in the French language because the distinctiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form. And the syntactically unusual juxtaposition of the “pc” and “jeux” is not a familiar expression in the French language (but “jeuxpc” or “jeux pour pc” would be such a familiar expression).
From that point of view, the word combination in question may be viewed as an abnormal way of referring to the goods or of representing their essential characteristics in common parlance.
In conclusion, I believe that the registration, by the English-speaking Respondent of the French language domain name , which is not a familiar expression in the French language but is identical to a well-known trademark in France, has been made in bad faith.
I also believe that the use of the domain name has also been made in bad faith. The Respondent uses the domain name only to host links to third party websites that offer goods and services in areas corresponding to the Complainant's products and he derives revenues from that activity. The Panel itself, in the present decision, “sides with many previous UDRP panels that have concluded that this activity, in and of itself, is not a bona fide offering of goods or services”. And I believe that the Respondent intended to confuse French Internet users, who know that the expression “pcjeux” is well known in France, because he hosts especially French links on his website. The Respondent intended to capitalize on the value created by the Complainant's well known trademarks in order to derive revenue from merely hosting French language links to third party websites. And the French Internet users are victims of that bad faith behavior.
In conclusion, I believe that the use and the registration of the domain name have been made in Bad Faith.
Christophe Caron
Panelist (Dissenting)
Full & Egal Universal Law Academy