WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Societe Francaise Du Radiotelephone - SFR v. Morel David Case No. D2009-1563 1. The Parties
The Complainant is Societe Francaise Du Radiotelephone – SFR of Paris, France, represented by Cabinet Vidon - Marques & Juridique PI Dpt, France.
The Respondent is Morel David of Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2009. On November 23, 2009, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On November 23, 2009, Tucows 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 December 1, 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 December 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 28, 2009.
The Center appointed Torsten Bettinger as the sole panelist in this matter on December 29, 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 global telecommunications operator serving more than 20 millions of mobile clients, more than 4 millions of home clients and 169.000 companies and maintaining GSM/GPRS services for almost 99% of the French population and an optic fibers network of 50.000 km.
The Complainant owns the numerous trademarks for SFR worldwide, including the following (the “SFR Marks”):
- International registration no. 643842 SFR, filed on August 2, 1995;
- Community registration no. 004648309 SFR, filed on September 9, 2005; and
- French registration no. 003071323 SFR, filed on December 15, 2000.
The trademarks mainly cover software and telecommunications and business services.
Furthermore, the Complainant is registered owner of several domain names, inter alia , , , and .
The disputed domain name was first registered on November 9, 2009 and is being used in connection with a copy of the Complainant's official website in order to acquire sensitive information (user names, passwords and credit card details) from the Complainant's customers (“phishing”). 5. Parties' Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain name is confusingly similar to the SFR Marks and the Complainant's name as it is composed of the distinctive letters SFR, which are well-known in France. The Complainant further submits that the addition of the term “protection” does not have any consequence on the likelihood of confusion as it is merely descriptive.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because he has no trademark rights in the name “SFR” and Complainant has not consented in the use of its SFR Marks by the Respondent.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that the disputed domain name was registered and is being used in connection with phishing activities and therefore disrupting the Complainant's business. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates the SFR Marks, which are inter alia used in connection with business and telecommunications services.
The fact that the word “protection” is added to the SFR Marks does not eliminate the similarity between trademarks and the disputed domain name, as “protection” is a descriptive component of the disputed domain name. In numerous cases, it has been held that a domain name that wholly incorporated a complainant's registered mark may be sufficient to establish confusing similarity for purposes of the Policy despite the addition of descriptive words to such marks.
It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Panel thus finds that the domain name is confusingly similar to the SFR Marks in which the Complainant has exclusive rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.
The Complainant asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain name because he has no trademark rights in the name “SFR” and is neither allowed by the Complainant to use the SFR Marks nor its company name.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
The Panel is also convinced that the Respondent registered and used the domain name in bad faith.
The Respondent has used the disputed domain name in connection with a copy of the Complainant's website for phishing activities. This is clear evidence that the Respondent was perfectly aware of the existence of the Complainant when registering the disputed domain name and therefore registered the disputed domain name in bad faith.
With regard to bad faith use, the Respondent used the disputed domain name in connection with phishing activities, i.e. Internet fraud that aims to steal valuable information such as credit card numbers, user Ids, passwords, etc. by providing a fake website that is similar to that of a legitimate organization. It is well established that such use of a domain name is an indication of bad faith use under paragraph 4(b)(iv) of the Policy (See The Boots Company, PLC v. The programmer adviser,WIPO Case No. D2009-1383; Grupo Financiero Inbursa, S.A. de C.V. v. inbuirsa,WIPO Case No. D2006-0614; Halifax plc v. Sontaja Sunducl,WIPO Case No. D2004-0237; Finter Bank Zürich v. N/A, Charles Osabor,WIPO Case No. D2005-0871; CareerBuilder, LLC v. Stephen Baker,WIPO Case No. D2005-0251; Australia and New Zealand Banking Group Limited v. Bashar Ltd,WIPO Case No. D2007-0031; Confédération Nationale du Crédit Mutuel v. Daniel Delcore,WIPO Case No. DLC2009-0001).
The Respondent's default in this proceeding reinforces an inference of bad faith. If the Respondent had arguments that he acquired the domain name in good faith, and had good faith bases for using the domain name, he should have asserted them.
The Panel therefore concludes that also the requirement of paragraph 4(a)(iii) of the Policy has been met. 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.
Torsten Bettinger
Sole Panelist
Dated: January 11, 2010
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