WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION France Printemps v. Mr. Chris Carter Case No. D2009-0518 1. The Parties
The Complainant is France Printemps of Paris, France, represented by André Bertrand & Associés, SELARL, France.
The Respondent is Mr. Chris Carter of Utah, United States of America (“U.S.”). 2. The Domain Name and Registrar
The disputed domain name is registered with Crazy8D Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2009. On April 22, 2009, the Center transmitted by email to Crazy8D Inc. a request for registrar verification in connection with the disputed domain name. On April 23, 2009, Crazy8D Inc. 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 on April 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2009. On May 19, 2009, the Center sent to the parties a notification of respondent default. An informal response communication from the Respondent was then filed with the Center on May 21, 2009.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on May 27, 2009. 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 a French company, which operates a chain of department stores across France and Europe. The Complainant began operating its department stores under the name “Le Printemps” or “Printemps” over 130 years ago. The Complainant operates at least 21 stores in France alone under the name “Printemps” and claims to have developed a substantial reputation in France.
The Complainant owns a French trademark registration No. 93469236 dated April 22, 1993 and a Community trademark registration No. 001754282 dated July 13, 2000 for the trademark PRINTEMPS. The Complainant also owns and operates a website with the domain name , which was registered on April 22, 1997.
The Respondent resides in the U.S. The Respondent registered the domain name August 31, 2008. At the time the Complaint was filed, the domain name reverted to a website that provided links to websites of various businesses and topics.
The word “Printemps” in French means “Spring”. 5. Parties' Contentions A. Complainant (a) Identical or Confusingly Similar
The Complainant contends that the domain name is confusingly similar to the Complainant's trademark PRINTEMPS, which is the subject of French trademark registration No. 93469236 and Community trademark registration No. 001754282 dated respectively April 22, 1993 and July 13, 2000.
The Complainant contends that the domain name is essentially identical to the trademark PRINTEMPS, except for the deletion of the letter “s” at the end of the word “printemps”. Accordingly, the Complainant contends that the domain name is confusingly similar to the Complainant's trademark. (b) Rights or Legitimate Interests
The Complainant contends that the Respondent cannot demonstrate or establish any right or legitimate interest in the disputed domain name. The Complainant also contends that the Respondent is not making a legitimate or fair use of the domain name, or making any bona fide offering of goods and/or services. The Respondent is a U.S. citizen who is operating a website which provides links to French products and services. (c) Registered and Used in Bad Faith
The Complainant contends that the domain name was registered and is being used in bad faith based on the following factors: (i) the Respondent has registered and used a confusingly similar domain name to attract and direct French Internet users to other French products and services; (ii) the Respondent is using confusingly similar domain name to cause confusion with the Complainant's registered trademark and interfere with the Complainant's business by attracting and diverting internet users to websites of other companies; and (iii) the Respondent has not responded to the Complainant's request to transfer the disputed domain name. B. Respondent
The Respondent submits in his informal response that the word “printemp” is a generic word meaning “spring” in French. The Respondent denies being aware of the Complainant and the Complainant's business. The Respondent contends that the registration of a domain name and then holding that domain name until he/she is ready to develop a website or offer it for re-sale, is recognized as a legitimate business use. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; 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 Panel finds that the Complainant has established rights in the trademark PRINTEMPS by virtue of its French trademark registration No. 93469236 and Community trademark registration no. 001754282.
The Panel also finds that the domain name is confusingly similar to the Complainant's trademark PRINTEMPS. The domain name replicates the Complainant's trademark in its entirety, and the deletion of the letter “s” is not sufficient to distinguish the domain name from the Complainant's trademark.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests and Bad Faith
The Complainant has submitted that the trademark PRINTEMPS is famous, but the Panel notes that the Complaint as filed does not support a finding that the reputation of the Complainant's trademark PRINTEMPS extends to North America. On the evidence before it, the Panel is only able to find that the Complainant's reputation in its trademark is established in France and certain jurisdictions in Europe, where the Complainant operates its PRINTEMPS stores. However, the Respondent is an individual who resides in Utah, in the Western United States of America, and he has denied that he was aware of the Complainant's trademark PRINTEMPS, when he registered the domain name .
There is nothing in the evidence before the Panel that establishes the Respondent was in fact aware that the word “printemps” has significance as a trademark in France and other parts of Europe when he first registered the disputed domain name. The domain name itself and the associated website do not contain or exhibit any indicia of trading on the Complainant's reputation.
In order to establish bad faith, when the Respondent denies knowledge of a mark, the Panel needs to be provided with evidence that puts in doubt the credibility of such a denial. In this matter, the Complainant failed to establish, through probative evidence, that PRINTEMPS is such a famous trademark that it would inevitably have been known to the Respondent. In its Complaint, in the section related to bad faith, the Complainant recites the grounds in the Policy but fails to support those grounds with tangible evidence.
The fact that the Respondent's website was viewed in French by the Complainant's counsel is not compelling evidence against the Respondent in the present case, as the language of the website is apparently adjusted according to the location of the user. For example, when the Panel accesses the website from Canada, its language is English. In any event, there is no specific content on the website which indicates an awareness of, or intent to target the Complainant's name or business.
The only factual evidence filed by the Complainant relates to the history of the department stores, operating under the trade name and trademarks PRINTEMPS and LE PRINTEMPS. That history is set out in one paragraph which is notable for what it fails to disclose. For example, there is no evidence of: (i) the extent or value of annual sales in France or elsewhere, (ii) the number of customers, (iii) the percentage or number of those customers who come from foreign countries (such as the U.S.), (iv) the extent and value of annual advertising or promotions, (v) whether any such advertising reaches the U.S. market, (vi) whether the Complainant's website attracts visitors from the U.S. or (vii) the results of Internet searches for PRINTEMPS. In short, it seems that there were many ways in which the Complainant could conceivably have proven that the PRINTEMPS mark was so well-known that the Respondent must have been aware of it, but the Complaint has not provided that evidence in this proceeding.
The Panel wishes to make it clear that he does not necessarily exclude the possibility that the Respondent may have been aware of the Complainant's PRINTEMPS mark, noting in particular that the wide recognition of the Complainant's department stores and long-standing use of the mark at issue has been acknowledged in at least one prior WIPO decision, being France Printemps v. Reinhard Herrmann,WIPO Case No. D2007-0971. The Panel is also somewhat sceptical of this American-domiciled Respondent's claims in relation to the generic meaning of a domain name which constitutes a rather obvious misspelling of the French term “printemps”. On the other hand must be weighed the fact that the current use of the website at the disputed domain name does not appear to be clearly abusive (for example the website does not prominently include links to direct competitors of the Complainant), and the evidence of claimed fame presented by the Complainant in its Complaint in these proceedings is very limited. The Respondent has not defaulted, and has rather sought to vigorously contest the allegations made in the present Complaint. Ultimately, it is incumbent on a Complainant in a UDRP proceeding, where there is typically only one round of pleadings, to make its case at first instance. This is particularly important when, as in the present case, it turns out that there are critical facts in dispute. The parties are of course free to pursue the matter through the courts should they so choose where the opportunity for cross-examination and production of additional evidence may result in a different outcome.
Accordingly, the Panel finds that the Complainant has failed to establish bad faith on the part of the Respondent when he registered the domain name .
The Panel finds that the Complainant has failed to establish in the present proceedings the third requirement of paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Dated: June 2, 2009
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