The Complainant is Société Française du Radiotéléphone – SFR of Paris, France, represented by Cabinet Vidon - Marques & Juridique PI Dpt, France.
The Respondent is Jean Goudin of Creil, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2011. On July 27, 2011, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On July 28, 2011, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
Further to the registrar verification response confirming English as the language of the registration agreement and due to the fact that the Complaint had been filed in French, on August 1, 2011, the Center sent an email communication to the parties regarding the language of proceedings issue. On August 3, 2011, the Complainant submitted the Complaint translated into English.
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 August 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2011.
The Center appointed Christophe Caron as the sole panelist in this matter on September 21, 2011. 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, Société Française du Radiotéléphone – SFR (often referred to simply as SFR) is an important telecommunication operator in France.
The Complainant uses its numerous trademarks – notably composed of SFR - to designate all its telephony activities.
The Complainant is the owner of multiple trademark registrations around the world, such as:
French trademark SFR ASSISTANCE n° 073509727, filed on 27/06/2007 in international classes 35, 36, 37, 38, 39, 44, 45;
International trademark SFR n° 643842 filed on 02/08/1995 in international classes 9, 35 and 38;
International trademark SFR LE MONDE SANS FIL EST A VOUS n° 635603 filed 27/01/1995 in international classes 9, 35 ans 38;
Community trademark SFR n° 004648309 filed on 22/09/2005 in international classes 9, 38, 41 and 42;
French trademark SFR n° 003071323 filed on 15/12/2000 in international classes 9, 16, 35, 36, 37, 38, 39, 41 and 42.
The term “SFR” is also the Company name, which means “Société Française du Radiotéléphone – SFR”.
The Complainant also developed a presence on the Internet and is the owner of several domain names which contain the terms "sfr" and “assistance”. For example: , , , , , , , , , and .
The disputed domain name was registered on December 30, 2010.
The disputed domain name does not refer to any website.
Moreover, some emails were sent by the Complainant to the Respondent in order to settle the dispute but the Respondent did not reply to these emails. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions and arguments.
The Complainant argues that, because of a partnership, it became the 2nd French telecommunication operator and the 1st European alternative one.
The Complainant argues further that it uses its trademarks – exclusively or notably composed of SFR – essentially in France and in Europe but also has an over world notoriety.
The Complainant argues that it is the owner of the following trademarks:
French trademark SFR ASSISTANCE n° 073509727, filed on 27/06/2007 in international classes 35, 36, 37, 38, 39, 44, 45;
International trademark SFR n° 643842 filed on 02/08/1995 in international classes 9, 35 and 38;
International trademark SFR LE MONDE SANS FIL EST A VOUS n° 635603 filed 27/01/1995 in international classes 9, 35 ans 38;
Community trademark SFR n° 004648309 filed on 22/09/2005 in international classes 9, 38, 41 and 42;
French trademark SFR n° 003071323 filed on 15/12/2000 in international classes 9, 16, 35, 36, 37, 38, 39, 41 and 42.
The Complainant argues that the disputed domain name is confusingly similar to its own numerous prior trademarks SFR, as well to its company name “Société Française du Radiotéléphone – SFR”.
The Complainant further argues that the disputed domain name is also confusingly similar to its domain names because the disputed domain name is composed of the combination of the three distinctive letters “s-f-r” reproduced behind a second descriptive term, i.e. “assistance”.
Furthermore, according to the Complainant, the combination “assistance-sfr”, is identical to the Complainant’s right on its domain names, and on its French trademark SFR ASSISTANCE, which clearly reinforces the confusing similarity between conflicting signs.
The Complainant also argues that the inversion of the terms “assistance” and “sfr” has no impact on the confusing similarity. The Complainant states that the addition of the term “assistance” in the disputed domain name, which is descriptive, leads the public to believe that there exists a link between the Complainant and the Respondent.
In addition, the Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant further argues that the Respondent has registered the disputed domain name in bad faith.
The Complainant further argues that the disputed domain name was probably registered and is being used for disrupting the business of the Complainant. At the time of the registration of the disputed domain name , the Respondent, who lives in France, could not ignore the existence and the notoriety of the company SFR, or its assistance service proposed to its clients notably via the following website: “www.assistance-”.
The Complainant further argues that the Respondent was aware of the Complainant’s existence because the notoriety of the company SFR and of its trademarks is undeniable in France.
Furthermore, the Respondent does not seem to be recognized under the disputed domain name : indeed this address does not refer to any website.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, the Panel shall decide the Complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the failure to submit a Response as the Panel considers applicable (Rules, paragraph 14(b)). A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the owner of multiple trademark registrations for SFR and one French trademark for SFR ASSISTANCE:
French trademark SFR ASSISTANCE n° 073509727, filed on 27/06/2007 in international classes 35, 36, 37, 38, 39, 44, 45;
International trademark SFR n° 643842 filed on 02/08/1995 in international classes 9, 35 and 38;
Community trademark SFR n° 004648309 filed on 22/09/2005 in international classes 9, 38, 41 and 42;
French trademark SFR n° 003071323 filed on 15/12/2000 in international classes 9, 16, 35, 36, 37, 38, 39, 41 and 42.
The disputed domain name reproduces the Complainant’s trademarks. The inversion of the terms “assistance” and “sfr”, in the disputed domain name, has no impact in the confusing similarity.
Furthermore, since “sfr” is included in the disputed domain name, the confusing similarity is accentuated by the notoriety of the trademarks SFR.
The addition of the term “assistance” in the disputed domain name, which is descriptive, may lead the public to believe that the Complainant is the owner of the disputed domain name.
Moreover, it is relevant to indicate that adding a descriptive term to a registered trademark in order to create a domain name is not sufficient to avoid any confusing similarity between the prior trademark and the domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to many registered trademarks in which the Complainant has rights, in particular the French trademark SFR ASSISTANCE n° 073509727. The requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name, as follows:
“(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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel states that the Respondent does not appear to have been commonly known by the disputed domain name, is not a licensee or an agent of the Complainant, nor in any way authorized to use the Complainant’s trademarks.
Furthermore, according to the Registrar’s verification, the disputed domain name was registered on December 12, 2010, after the Complainant’s registration of its trademarks.
The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the disputed domain name. Hence, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, which “in particular but without limitation”, shall be evidence of the registration and use of a domain name in bad faith. These four circumstances, which are framed in the alternative, but are expressly non-exclusive, are:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Firstly, the Panel is of the opinion that the notoriety of the Complainant could not be ignored by the Respondent at the time of the registration of the disputed domain name, since the Respondent seems to be a French person or, at least, lives in France. This circumstance indicates that the Respondent probably acquired the disputed domain name for the purpose of selling, renting or otherwise transferring it to the Complainant or to a competitor for valuable consideration, or for any other illegitimate purposes.
Secondly, the combination of the terms “sfr” and “assistance” in the disputed domain name, may lead Internet users to believe that the website is owned by the Company SFR. It creates a likelihood of confusion with the Complainant’s trademark.
Thirdly, the domain name does not refer to any website. The Panel finds that the passive use of the disputed domain name by the Respondent can in this case be considered as evidence of bad faith.
For all these reasons, it appears that the disputed domain name was registered and is used in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is fulfilled. 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 disputed domain name be transferred to the Complainant.
Christophe Caron
Sole Panelist
Dated: October 5, 2011
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