WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION FNAC SA v. Sinclare Vabalon, BHG Case No. D2009-1031 1. The Parties
The Complainant is FNAC SA of France, represented by INLEX IP of France.
The Respondent is Sinclare Vabalon BHG of Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrars
The disputed domain names and are registered with Basic Fusion, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2009. On July 31, 2009, the Center transmitted by email to Basic Fusion, Inc. a request for registrar verification in connection with the disputed domain names. On August 1, 2009 Basic Fusion, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 5, 2009. 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” 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 August 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 27, 2009.
The Center appointed Pierre Olivier Kobel as the sole panelist in this matter on September 1, 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 disputed domain names were registered on January 30, 2008 (), and June 26, 2008 ().
The Complainant is a French corporation registered under the corporate name FNAC. The Complainant holds numerous FNAC verbal and semi-figurative trademarks registered all over the world, including verbal and semi-figurative FNAC Community Trademarks and a semi-figurative FNAC.COM Community Trademark.
The Complainant also holds trademarks composed of FNAC with another term, such as FNAC MUSIC, FNAC FOTO, FNAC TELECOMMUNICATIONS, etc. or several terms such as AFFAIRES DE FNAC, CERTIFIE NON CONFORME FNAC.COM, etc.
The Complainant has registered numerous domain names, combining the FNAC trademark with descriptive terms, such as , , , etc. Among these, it registered on November 25, 2004, and on May 22, 2006.
The Complainant does not hold any trademark embodying the word “spectacle” or including words such as “monaco” or “live”. 5. Parties' Contentions A. Complainant
The Complainant claims that the disputed domain names are similar to its FNAC trademarks and its company name.
More specifically, the Complainant contends that is similar to its FNAC registered trademark because the suffix “spectacle” is descriptive, meaning show or performance in French. The Complainant points out to the fact that it is very similar to the domain name the Complainant registered prior to the Respondent.
By the same token, the Complainant contends that the domain name has no distinctiveness and therefore does not differentiate itself from the trademark FNAC. Although it recognizes that the term “fnac” within does not stick out as well as in the other disputed domain name, the added terms are, in its opinion, descriptive and devoid of any distinctive character.
According to the Complainant, the Respondent does not have any rights in any FNAC trademark and therefore is not a legitimate user of the disputed domain names. The Complainant contends that FNAC is widely-known internationally and does not have any meaning in French or English. FNAC is therefore distinctive of the Complainant only. The Complainant submits copies of web pages referred to by the disputed domain names, showing links to various commercial web sites offering items and services for sale, including glasses, cameras and computers. The Complainant contends that part of these items are directly competing with its own products and offerings, and concludes that the Respondent does not have any rights or legitimate interests in the disputed domain names.
The Complainant finally contends that FNAC is a famous trademark, targeted and used on purpose by the Respondent who has been found several times guilty of abusive domain name registration in the past (cf. Société Nationale des Chemins de Fer Français v. Sinclare Vabalon, BHG, WIPO Case No. D2008-1613: Nutri/System IPHC, Inc. v. Sinclare Vabalon, WIPO Case No. D2008-0288; AirTran Holdings Inc. v. Sinclare Vabalon, BHG,WIPO Case No. D2008-1165). Therefore, the Respondent should be found to have acted in bad faith when registering and using the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel has verified that the Center communicated the Complaint to the contact details for the Respondent confirmed by the Registrar, as requested by paragraph 2(a) of the Rules. As a result, the Panel is satisfied that the Center has taken all required measures to bring the Complaint to the attention of the Respondent and to allow same to respond as provided in paragraph 5 of the Rules.
Since the Respondent failed to respond within the set time-limits, the Respondent is in default under paragraph 14 of the Rules. Paragraph 14 of the Rules provides that the Panel shall proceed to a decision on the complaint. It shall base its decision on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable. In particular, the Panel shall be entitled to draw such inferences from the Respondent's default as it considers appropriate (paragraph 14(b) of the Rules).
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain names are identical or confusingly similar to a 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 names; and
(iii) the domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the FNAC trademark belonging to the Complainant. It is well settled under the UDRP that the mere addition of descriptive terms is insufficient to avoid a finding of confusing similarity (Caterpillar Inc. v. Roam the Planet Ltd.,WIPO Case No. D2000-0275; Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002.
That principle has been applied in situations where the disputed domain name starts with the trademark claimed by the complainant (Deutsche Lufthansa AG v. George Aby, WIPO Case No. D2009-0071; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363) or ends with the trademark (Bayer Aktiengesellschaft v. Henrik Monssen,WIPO Case No. D2003-0275). It has also been used in situations where a trademark had been inserted between descriptive terms, such as in or , , etc. (Google Inc. v. Thilak Raj, Net Jobs,WIPO Case No. D2009-0033; National Collegiate Athletic Association and March Madness Athletic Association, LLC v. Cyberoad Corporation,WIPO Case No. D2000-1378) or (Sanofi-aventis v. Adam Sanders, WIPO Case No. D2009-0171).
The rationale for that type of analysis is to be found in the fact that the condition set forth by paragraph 4(a) of the UDRP to resolve cybersquatting issues does not refer to a likelihood of confusion test. Indeed, paragraph 4(a)(i) of the Policy refers to situations where a domain name is “confusingly similar” to a trademark. Only 4(b)(iv) refers to a likelihood of confusion. The language contained in paragraph 4(a)(i) must therefore be interpreted in a manner consistent with the purpose of the Policy which is to fight “cybersquatting”, in an international environment. As a result, the Policy should not be subject to the variations of imported domestic concepts of law, such as the likelihood of confusion, because the whole UDRP procedure is not well-suited to the difficult factual issues presented by a conventional source confusion analysis (Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499; Bellsouth Intellectual Property Corporation v. Alvaro Collazo, WIPO Case No. D2004-0572; Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649, Pfizer Inc. v. BargainN, WIPO Case No. D2005-0299; F.Hoffmann-La-Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Verridian Plc v. Nadine Leech, WIPO Case No. D2008-1539).
The proposed test under paragraph 4(a)(i) of the Policy is therefore a simple comparison of the trademark and the string of words in the disputed domain name. Despite variations corresponding perhaps to the background and legal tradition of the experts, the test has become increasingly literal in practice, with a finding of confusing similarity seemingly every time that the trademark is used, in its entirety in the disputed domain name, and in association with other descriptive terms (see the examples above).
The European Court of Justice case-law in relation to Article 5(2) of the First Directive 89/104/EEC on the approximation of trademark law (now replaced by Directive 2008/95/EEC), goes in the same direction in relation to reputable trademarks. Acts of unfair competition such as free-riding on a reputable trademark are subject to a similarity test and not a more stringent likelihood of confusion test (See Case C-487/07, L'Oreal and Others of June 18, 2009, para 36 et seq.). As a result the mere reference to such a trademark may be held illicit under the law of the Member States.
Applying that simple comparison test in relation to a reputable trademark such as FNAC, the Panel finds that the disputed domain name is also confusingly similar to the trademark of the Complainant.
Therefore, both disputed domain names are confusingly similar to the FNAC trademark belonging to the Complainant. B. Rights or Legitimate Interests
Because of his default, the Respondent did not allege any rights or legitimate interests in the disputed domain name. The Complainant has stated and the Panel has no reason to doubt that it never authorised the Respondent to use its trademark in any way.
Although FNAC has a historic meaning - it actually was the acronym for “Fédération Nationale d'Achat des Cadres” - it does not have a meaning as a word of the current language. To the best knowledge of the Panel, FNAC does not have a meaning in French, English or any other Indo-European language. As a result, it can only be distinctive of the Complainant.
The Panel is satisfied that the Complainant provided evidence showing that its trademark for FNAC had been registered very widely in the world and is probably widely-known in many countries.
One therefore cannot imagine that the Respondent has chosen the disputed domain names for reasons other than seeking an impression of association with the Complainant.
The Panel is therefore satisfied that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. In the absence of contrary evidence on the record of this proceeding and in the absence of allegation by the Respondent showing one of the three circumstances described in paragraph 4(c) of the Policy, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirements of paragraph 4a(ii) of the Policy are satisfied. C. Registered and Used in Bad Faith
The Panel finds that Respondent intentionally registered and used the trademark of the Complainant in the disputed domain names for the purpose of attracting, for commercial gain, Internet users to various web site locations, by creating a likelihood of confusion with FNAC.
As explained, FNAC does not have any meaning in itself. It is distinctive of the Complainant only and widely-known in Europe where the Respondent is based and perhaps in other countries of the world. The disputed domain names lead to other web pages selling various goods and items, including products such as cameras and computers, competing with those offered by the Complainant. The aim of the Respondent is therefore commercial in nature. The Complainant sells as well entry tickets to various performances, concerts, shows and theatre plays. These activities are described in the disputed domain names. Last but not least, the previous history of the Respondent in relation to cybersquatting activities only confirms that analysis.
Therefore, in the absence of answer by the Respondent, the Panel finds that the Complainant has established that the Respondent registered and used the disputed domain names in bad faith pursuant to paragraph 4(b)(iv) 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 names and be transferred to the Complainant.
Pierre Olivier Kobel
Sole Panelist
Dated: September 9, 2009
Full & Egal Universal Law Academy