WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION S.N.C. Jesta Fontainebleau v. Po Ser Case No. D2009-1394 1. The Parties
The Complainant is S.N.C. Jesta Fontainebleau of Cannes, France, represented by Scott D. Miller, Canada.
The Respondent is Po Ser of Shanghai, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2009. On October 20, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 21, 2009, the Registrar 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 October 27, 2009.
On November 12, 2009, the Center noted that the registrant was changed to Dezider Banga. The Center sent an email to the Registrar on the same day requesting a clarification. On November 13, 2009, the Registrar explained this was the result of “a technical glitch in the system” regarding the status of the Domain Name and confirmed that the WhoIs record had been restored to its original form as verified to the Center on October 21, 2009.
In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 17, 2009.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 20, 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.
On November 23, 2009, the Complainant submitted a supplemental filing to the Center. The Panel did not find it necessary to consider this submission in reaching its decision. 4. Factual Background
The unchallenged evidence of the Complainant, which the Panel is prepared to treat as fact for the purposes of this decision is as follows:
1. The Complainant has since February 2006 operated a hotel complex in Cannes, France under and by reference to the name “Palais Stephanie”.
2. The Complainant promotes and conducts its online business through a website connected to the Domain Name, , which it registered on September 21, 2007.
3. The Domain Name was registered on September 9, 2009 and is connected to a webpage featuring hyperlinks to sites appearing under headings including “Hotels in France”, “France Vacations”, “Five Star Hotels” and “Hotel Reservation” among others. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its “Palais Stephanie” name in respect of which it has common law trade mark rights.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name is very similar to the name of the hotel complex operated by the Complainant, differing as it does by a letter or two at the end of the name, a distinction which makes no difference to either the pronunciation of the name or its overall appearance. The Panel finds it confusingly similar.
The issue is as to whether or not the Complainant can be said to have trade mark rights in the name of its hotel complex. The Complainant has no registered trade mark rights, so the question is as to whether or not it has unregistered common law trade mark rights or their equivalent for the purpose of the UDRP.
The word “Uniform” in the name of the UDRP is primarily a reference to uniformity across the gTLDs. At a minimum, implicit in the introduction and scope of the UDRP is its global application. The Panel takes the view that the Policy needs to be applied as uniformly as possible across the globe, particularly when dealing with a domain name in one of the gTLDs (which can be obtained and accessed around the world, irrespective of jurisdiction). Were it otherwise, on an issue such as this complainants from many civil law jurisdictions would in certain scenarios be at a disadvantage when compared to their counterparts from common law jurisdictions and those civil law jurisdictions, such as Germany, which make special statutory provision for unregistered trade mark rights.
Secondly, for the purpose of assessing what might constitute an equivalent to a common law trade mark right, it is important to understand what a common law trade mark is. In this context it is a name or sign, the use of which (or a confusingly similar variant of which) a person can restrain by way of a passing off action. For the purposes of a passing off action the plaintiff needs to be able to prove that (a) it has a reputation and goodwill in respect of the name or sign in question, (b) the defendant is using it or a confusingly similar variant of it to cause deception in the marketplace and (c) the plaintiff is suffering or is likely to suffer consequential damage.
In other words, in a common law jurisdiction, if a third party set up in competition with the Complainant under the same or a confusingly similar name, the Complainant could succeed in a passing off action and stop the activity complained of if it were able to establish those three elements.
Given the global nature of the domain name system and the international nature of much of the world's trading activity, it is entirely possible that a complainant that is physically located in a particular civil law jurisdiction could nonetheless establish common law trademark rights outside that jurisdiction by virtue of its international (including on-line) operations. Indeed, in this case, the Panel has been invited to conduct a Google search using the name of the Complainant's hotel complex, Palais Stephanie, and from the results of that search, supported by the fact that the Complainant's website has an English language version, the Panel would have thought that there was scope for the Complainant to have made out an argument on those lines. However, it did not do so and has not produced any evidence to enable the Panel to make any such finding, so the Panel turns to the jurisdiction in which the Complainant is physically located, which is France.
In a civil law jurisdiction such as France, the Panel believes that the Complainant could achieve a result comparable to that available under an action for passing off by way of an unfair competition action, provided of course that it could prove a reputation and goodwill in respect of the name, the deceptive activity of the defendant and the likelihood of damage. In other words, albeit by way of a somewhat different route, the Complainant's rights in respect of its name are potentially no different from those of a trader in a common law jurisdiction.
It is on that basis that this Panel is prepared to hold that the Complainant has rights in respect of the name, “Palais Stephanie”, for the purposes of paragraph 4(a)(i) of the Policy provided that it can satisfy the Panel that the three elements necessary for a passing off action are present.
In fact, the Complainant has put only limited evidence before the Panel in this regard. However, the Complainant has invited the Panel to conduct a Google search of the name “Palais Stephanie”. The Panel has done so and all the references on the first page of results are references to the Complainant's hotel complex. It is clear to the Panel that that name is best known for the name of the Complaint's hotel complex, which by all accounts has a significant reputation. Moreover, the fact that the Respondent's website features so many hyperlinks to the Complainant's competitors in Cannes suggests that the name is generally well-known as the name of the Complainant's hotel complex.
That deception of Internet users and damage to the Complainant is likely to result from the Respondent's use of the Domain Name is clear to the Panel from the matters set out in D below.
The Panel also takes into account the fact that the Respondent has not challenged the Complainant's evidence or its claim to unregistered trade mark rights.
Taking all the above into account, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent contends that none of the examples of what shall constitute rights or legitimate interest for this purpose as set out in paragraph 4(c) of the Policy is applicable.
It appears to the Panel that the only one of those examples, which could be applicable, is that to be found in paragraph 4(c)(i) of the Policy, which reads:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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;”
The evidence before the Panel is that the Domain Name is connected to a parking page featuring advertising links through which the Respondent is earning Pay-Per-Click (“PPC”) revenue. This evidence is not challenged. It appears therefore that the Domain Name is being used for the purpose of offering advertising/directory services, the most prominent of them being services relating to hotels and vacations in France (including Cannes).
The issue is as to whether or not the Respondent's service offering by way of the Domain Name is “a bona fide offering of services.” For the reasons set out in the following section, the Panel concludes that the Respondent's service offering is not a bona fide service offering. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
The Complainant set up in business in France under the “Palais Stephanie” name in February 2006. The name, comprising a combination of the words/names “Palais” and “Stephanie”, is not a common name. On the face of it, it is a distinctive name. The Complainant's business involves services supplied in relation to its Palais Stephanie hotel complex in Cannes, France.
In September 2009, the Respondent, resident in China, registers the Domain Name, a very similar name to the name of the Complainant's hotel complex, and connects it to a webpage providing hyperlinks to websites offering hotel and related services in France, including hotel services of the Complainant's competitors in Cannes, the Complainant's home city.
The inevitable inference is that the Respondent registered the Domain Name knowing it to be a confusingly similar name to the name of the Complainant's hotel complex for the purpose of deriving PPC revenue. A not insignificant proportion of that revenue will be derived from Internet users, hoping to reach the Complainant, visiting the Respondent's site in error. The allegation is made out clearly in the Complaint and, in the view of the Panel, the evidence and the surrounding circumstances support that allegation. The Respondent does not challenge the allegation.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(iv) and 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.
Tony Willoughby
Sole Panelist
Dated: November 21, 2009
Full & Egal Universal Law Academy