WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Université Paris Descartes v. PrivacyP / Rachid HADJI Case No. D2010-0912 1. The Parties
The Complainant is Université Paris Descartes of Paris, France, represented by SCP August & Debouzy, France.
The Respondent is PrivacyP / Rachid HADJI of Paris, France. 2. The Domain Name and Registrar
The disputed domain name was registered with A (I) Pvt Ltd, Mumbai, India, on July 22, 2008. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2010. On June 3, 2010, the Center transmitted by email to A (I) Pvt Ltd. a request for registrar verification in connection with the disputed domain name. On June 14, 2010, A (I) Pvt Ltd transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 14, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on June 18, 2010. The Center verified that the Amended 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 June 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2010. The Respondent submitted an e-mail communication including its reply to the Complainant's allegations on July 13, 2010. The Panel accepts to take in consideration this late response.
The Center appointed Christophe Caron as the sole panelist on this matter on July 20, 2010. 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 the French university René Descartes, otherwise known as “Paris Descartes”. Boasting a total number of students of over 33,000, its academic standards are set very high, and its wide array of courses, is as demanding as it is challenging.
One of the ways for the university Paris Descartes to promote itself as an institution is to be active through conferences, research, and it has also filed a trademark with its own name, amongst other things. On April 8, 2008, the Complainant filed the trademark PARIS DESCARTES under the number 3569352 – in classes 35, 41 and 42 – and now enjoys intellectual property rights over it.
Apart from being the owner of a trademark, the Complainant has also registered the domain name . This domain name was registered on January 22, 2007 and it resolves to a website which displays the various courses provided by the university, as well as a range of information about growing international, the faculty's research potential and its openings to professional life.
The university Paris Descartes, to make sure its name is not being used in any inappropriate way, has thus decided to act upon the Respondent's activities. Indeed, the latter registered the domain name on July 22, 2008 and, as a former student disappointed with his grades, started operating a website where he took on to dislike the university, its ethics and its teaching altogether.
The disturbing similarity between the two domain names, according to the Complainant, brought the university Paris Descartes to submit a UDRP complaint and to start an administrative proceeding on June 3, 2010. The Complaint was filed against PrivacyP, and through this entity, Rachid Hadji. The Complainant requests the Administrative Panel appointed in this proceeding to transfer the disputed domain name to the Complainant. 5. Parties' Contentions A. Complainant
The Complainant submits that: (1) the domain name is identical to the Complainant's mark in which Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
(1) The Complainant considers that the domain name is identical to its French trademark PARIS DESCARTES n° 3569352. The Complainant also puts forward that the domain name is all too similar to its own domain name since only the top-level “.com” can differentiate it from used to host its website. All the more so when the Respondent's domain name may catch any emails mistakenly sent to @, making the odds that Complainant's right to secrecy of correspondence are going to be violated way too high.
(2) The Complainant submits that it is critically assessed by the Respondent. So be it, but only so long as the criticisms are expressed in respect of paragraph 4(c)(iii) of the Policy that protects the trademark PARIS DESCARTES. That is, so long as the Respondent's registered domain name doesn't tarnish Complainant's mark and doesn't divert traffic.
The Complainant submits that the Respondent's website with the disputed domain name does both. Indeed, the accusations of being inter alia “racist and corrupted” the Respondent draws against the university are severe and poorly grounded. The Complainant submits that it is common practice to have a paper marked by several examiners, and anyhow, the papers are anonymous.
Even if the critics voiced by the Respondent were such as to comply with paragraph 4(c)(iii) of the Policy, the domain name shouldn't divert the Internet traffic, which it does.
For all of the above reasons, the Complainant argues that the Respondent cannot claim that the disputed domain name is being used for a legitimate purpose.
(3) According to the Complainant, the Respondent also registered and used the domain name in bad faith. The purpose that underlined the registration was not to obtain a web presence but to prevent the Complainant from acquiring the very domain name. Another reason was to tarnish the university's reputation, as is demonstrated by Annexes to the Complaint.
The Complainant believes that two additional elements demonstrate the Respondent's bad faith: the fact that he concealed his identity and the fact that he did not take any measures to give the domain name back after he had made his point.
The Complainant requests the Administrative Panel appointed in this proceeding to transfer the disputed domain name to the Complainant. B. Respondent
The Respondent asserts (1) that the domain name, even if it is identical, does not create confusion; (2) he has rights and/or legitimate interests in respect of the domain name; (3) the domain name has been registered and has been used in good faith.
(1) The Respondent concedes that the domain name is identical to the Complainant's trademark. But he explains that he had no knowledge of the existence of the trademark when he registered the domain name.
Furthermore, the Respondent asserts that, the graphic chart and the content of his website are different from the university's. According to the Respondent, he used the domain name for a reasonable purpose without creating confusion to the visitor.
(2) The Respondent explains he has a legitimate interest in the domain name: he created it not to sell it and make profit out of it, but to pass on a message.
He also states that this domain name was only meant to be yet another illustration of discrimination, a discrimination that took the form of a falsification in his case. This is, to his mind, a legitimate goal.
(3) Finally, the Respondent insists that he acted in good faith.
The Respondent claims he did not create this domain name to cause damage to the Complainant.
Along with these statements, the Respondent also assures that he did not register nor use the domain name in bad faith since the purpose was to convey information about discrimination at the University Paris Descartes and only exclusively so. He puts it to the Panel that he had no intention whatsoever to tarnish the Complainant's image.
Furthermore, the activities he carried out are not in the same field as that of the university, so that he cannot be said to have acted in bad faith.
In the Respondent's opinion, the Complainant tries to mislead the Panel. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to obtain a finding that the domain name of the Respondent be transferred to the Complainant or be cancelled:
(i) the domain name is 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 name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant proves it has intellectual property rights in the trademark No. 3569352 PARIS DESCARTES which is, consequently, protected.
The Panel finds that the Complainant's trademark PARIS DESCARTES and the Respondent's domain name may be considered as identical. Applying the similarity test, the suffix “.com” which merely indicates the gTLD in which the domain name is registered, may be disregarded in this context.
The Panel further finds that in view of the high degree of recognition of the name “Paris Descartes” as identifier of the Complainant, it is difficult to imagine any use of that term which would not automatically be associated, in the mind of the students and teaching body, with the Complainant. 1
Accordingly, the Panel considers that the domain name is identical to a trademark to which the Complainant has rights. B. Rights or Legitimate Interests
PARIS DESCARTES is a mark in which the Complainant has protected rights, and the Complainant submits it has not authorized the Respondent to use it.
The Respondent has failed to prove to this Panel that he has rights to the name “Paris Descartes”.
The Respondent claims that he intended to use the disputed domain name to criticize the Complainant. It could be accepted that, in principle, it is legitimate to operate a domain name for the purposes of genuine non-commercial criticism of a trademark owner. However, the Panel subscribes that this right does not extend to occupying a domain name identical to a sign identifying a trademark owner.2 Furthermore, even though the Policy allows criticism in certain circumstances, it is not permitted in this Panel's view to abuse that right of criticism. In the circumstances of this case, the Panel considers that the Respondent has failed to demonstrate rights or legitimate interests to use the domain name .
Accordingly, the test of paragraph 4(a)(ii) of the Policy has been met and the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name at issue. C. Registered and Used in Bad Faith
For a complainant to succeed, not only has the domain name to be registered in bad faith, but also to be used in bad faith.
This Panel finds that the Complainant has established this element in view of the Panel's findings above. The Panel notes additionally that the Respondent hid behind a privacy service while registering the disputed domain name. This has in some circumstances been considered as additional proof of bad faith by previous UDRP panels. The Panel notes that the Respondent is a former student of the Complainant. Taking into consideration these elements, the Respondent's claim that he ignored the Complainant had rights to the trademark PARIS DESCARTES is unconvincing, because he was, of course, aware of the existence of the Complainant's rights.
This Panel finds that the use of this particular domain name, being as it is identical to the Complainant's trademark, shows no less bad faith than its registration. The Respondent has been willingly distracting Internet users from the Complainant's website to his website. The information that was laid out on the Respondent's website and the seemingly admitted purpose to tarnish the university's image may have been harmful for the Complainant. Indeed, it may also have had the potential to discourage some students from applying to Paris Descartes.
The Respondent submits that “[h]e is using [the website] for the purpose of putting informations on what is happening at the university Paris Descartes.” The Panel finds that the content of the website at the disputed domain name does not reflect a proportionate response to any events that may or may not have occurred between the parties. Rather the Panel finds that the Respondent has put himself in a position of retaliation. Any claims of discrimination should be filed in appropriate national jurisdictions and the Panel notes that such claims fall outside the scope of UDRP proceedings and are thus not for the Panel to take into account. And by strictly assessing the third element of the UDRP, it can in this Panel's view be said that the Respondent not only showed bad faith in registering the domain name, but also in using it.
Therefore, this Panel accordingly finds that the test of paragraph 4(a)(iii) of the Policy has been met. 7. Decision
According to the paragraphs 4(a) of the Policy and 15 of the Rules, the Panel finds that:
The domain name is identical to the trademark on which the Complainant has rights.
The Respondent has no rights or legitimate interests in the domain name .
The Respondent registered and uses the domain name in bad faith.
Consequently, the Panel orders the domain name to be transferred to the Complainant.
Christophe Caron
Sole Panelist
Dated: August 3, 2010
1 The Panel notes that the Complainant goes on to prove it is the owner of the domain name . There is unmistakably a similarity between the Complainant's domain name and the Respondent's one. The only difference is the gTLD which does not amount to avoiding the similarity or confusion. The common gTLD “.com” increases the risk of confusion. The Panel further notes that this may create a problem for an administrative service in relation to electronic communications.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.4, and the decisions cited therein.
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