The Complainant is Fédération Française de Judo et Disciplines Associées of Paris, France, represented by Cabinet Biaggi-Benelli, France.
The Respondent is Paul Estrada of Mexico City, Mexico. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2014. On February 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2014, 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 February 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2014
The Center appointed Gabriela Kennedy as the sole panelist in this matter on March 25, 2014. 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 non-profit sports organization founded on December 5, 1946, and was granted the status of a public interest organization under French Decree dated August 2, 1991. The Complainant promotes and regulates the practices of judo, jujitsu, kendo and other associated disciplines. The Complainant is the owner of the FFJUDO & device trade mark registered on December 24, 2009 in France.
The Respondent registered the Disputed Domain Name on December 2, 2013. 5. Parties’ Contentions A. Complainant
The Complainant’s submissions can be summarized as follows:
(a) The Disputed Domain Name is identical to the word element of the Complainant’s French FFJUDO & device trade mark that was registered by the Complainant on December 24, 2009. The generic top level domain name extension “.info” is insignificant.
(b) The Respondent holds no registered trade mark in France that is identical to the Disputed Domain Name.
(c) The Respondent registered the Disputed Domain Name after the Complainant first registered it’s FFJUDO & device trade mark.
(d) The Complainant has not granted a licence to the Respondent to use its trade mark, domain name or any other distinctive mark.
(e) There is no relationship between the parties that the Respondent could legitimately put forward to claim the right to register and use the Disputed Domain Name.
(f) The purpose of the website to which the Disputed Domain Name resolves was to allegedly give full information on what the Complainant “is really up to”. There is long-standing case law that shows that the right to criticize does not entail the right to register and use a domain name that is identical or confusingly similar to a trade mark. Therefore, the Respondent cannot claim to have a legitimate interest in using the Disputed Domain Name.
(g) The Disputed Domain Name was registered several years after the Complainant had registered its FFJUDO & device trade mark, and well after the Complainant first commenced its activities.
(h) The Respondent should have performed a search before registering the Disputed Domain Name to see if anyone else had prior rights to it. Either way, it is clear from the contents of the website to which the Disputed Domain Name resolves, that the Respondent was aware of the Complainant’s existence since the purpose of the website was to “supply full information on what the French Judo Federation is really up to”, and when users click on the “contact” tab located on the website, it displays the Complainant’s contact information.
(i) The Respondent's objective was to denigrate the Complainant by publishing articles on the website that the Disputed Domain Name resolves, which could constitute defamatory accusations, e.g, one of the articles was entitled “FFJDA: a federation of thugs”. The use of a domain name for the purposes of criticism is use in bad faith when denigration is committed.
(j) The Respondent is using the Disputed Domain Name for commercial gain since the website makes a “call for donations”. 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 is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
Although the Respondent has failed to submit a Response, this does not automatically result in a decision in favor of the Complainants, but it may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000‑0403). A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the FFJUDO & device mark, based on its French trade mark registration.
The Disputed Domain Name incorporates the word element of the Complainant’s FFJUDO & device mark in its entirety. It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic top-level domain extension, in this case “.info”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd., WIPO Case No. D2006‑0762).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's registered mark, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Once the Complainant establishes a prima facie case in respect of the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name, the Respondent then bears the burden of proving otherwise, failing which, paragraph 4(a)(ii) of the Policy shall be deemed to have been satisfied (see Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“the WIPO Overview”), Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
The Panel accepts that the Respondent is not a licensee nor is it associated in anyway with the Complainant that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s FFJUDO & device mark. The Respondent has also provided no evidence to demonstrate that it has become commonly known by the Disputed Domain Name. The Panel is therefore of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. However, since no Response was filed by the Respondent, the Panel will determine whether or not the Respondent has any rights in the Disputed Domain Name based on the reasonable inferences that can be drawn from the Complainant’s evidence.
As alleged by the Complainant, the Disputed Domain Name is used for the purposes of criticizing the Complainant. In circumstances where a domain name that is identical or confusingly similar to a mark is being used for genuine noncommercial free speech, then there are two main views, which are set out in Paragraph 2.4 of the WIPO Overview.
The first view is that a respondent has no right to use a domain name that is identical or confusingly similar to a complainant’s trade mark for the purposes of criticism of the complainant. This is particularly the case if the respondent is solely using the complainant’s mark as the domain name with no other words or additions, (i.e, ) since this may be understood by Internet users as impersonating the trade mark owner (“View One”). The second view is that the respondent’s use of a domain name as a criticism website may give rise to a legitimate interest provided that such use is fair and noncommercial (“View Two”). View Two is generally adopted where there is a connection with the United States (“US”), e.g, the criticism site and the parties are based in the US. The Panel notes however that there have been some non-US cases which have adopted View Two, and conversely there have been some US cases that have rejected View Two. The Panel believes that, it is desirable to have a uniform implementation of the Policy.
The Panel prefers to adopt the approach set out in Coast Hotels Ltd v. Bill Lewis and UNITE HERE,WIPO Case No. D2009-1295 citing paragraph 15(a) of the Rules, which provided that each complaint should be decided on the “basis of the statements and documents submitted and in accordance with the Policy, these Rules and any principles of law that it deems applicable”, and whilst freedom of expression as conferred by principles of international law should be protected, this is subject to the condition that the respondent must not use the domain name to otherwise contravene the Policy.
In the present case, according to the Complainant's evidence, the Disputed Domain Name allegedly resolves to a website (“Website”) that at the time of the filing included some articles about the Complainant that shed a negative light on the Complainant. The question is whether or not such use by the Respondent constitutes a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. The Panel notes the following:
(a) The Disputed Domain Name is identical to the word element of the Complainant’s mark (i.e, ), with no additional word or term that may identify itself as resolving to a Website that is purely dedicated as a criticism website. This may mislead Internet users into believing that the Disputed Domain Name is associated with the Complainant and/or will resolve to the official website of the Complainant.
(b) Further, the Website asks Internet users to make “donations” and provides a means of payment. The Respondent therefore appears to be trying to make a commercial gain from Internet users that visit the Website.
(c) Lastly, based on the evidence provided by the Complainant, it does not appear readily apparent from the contents of the Website that the Website and Disputed Domain Name are not associated with the Complainant and/or that it is intended as a criticism website (i.e, any suggestion that language on the website that purports to show what the Complainant “is really up to” seems to be pretextual at most).
As a result, the Panel finds that the Respondent cannot be said to be making a bona fide offering of goods or services, nor a legitimate noncommercial fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. Instead, the Respondent appears to be using the Disputed Domain Name, which adopts the word element of the Complainant's trade mark in its entirety, to mislead Internet users into believing that the Website and Disputed Domain Name is associated with the Complainant, and thereby to divert Internet traffic to the Website for commercial gain, i.e, to solicit “donations”. By the time Internet users reach the Website, they have already been exposed to the misrepresentation inherent in the Disputed Domain Name, i.e, that the Disputed Domain Name is associated or authorized by the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
A criticism website or a website that contains derogatory comments or information about a complainant does not in itself constitute bad faith. The circumstances of each case need to be considered. In this case, the Disputed Domain Name is identical to the word element of the Complainant’s FFJUDO & device mark, and contains no other element or term that may distinguish it from the Complainant’s mark or which may designate it as resolving to a criticism website. This may confuse users into believing that the Disputed Domain Name and resulting Website are operated by the Complainant. The Respondent also lists the Complainant’s contact details under the “contact” tab located on the Website, which may further mislead Internet users into believing that the Website is operated by or associated with the Complainant. This also acts as evidence to show that the Respondent was likely aware of the Complainant at the time of registration.
As stated in Banque Cantonale de Genève v. Primatex Group S.A.,WIPO Case No. D2001-0477: “By deliberately using Complainant’s trademark as a designation for its protest site without, at the same time, adding a component identifying the true nature of the website, Respondent created a likelihood of confusion with Complainant.”
In addition, the Website encourages users to make a “donation” and provides a means for payment. The Respondent therefore appears to be trying to make a commercial gain by confusing Internet users who are searching for the Complainant’s website into believing that the Disputed Domain Name is associated with Complainant, and thereby redirecting them to the Website and soliciting donations from them. Further, as mentioned above, since it does not appear readily apparent from the contents of the Website that the Website and Disputed Domain Name are not associated with the Complainant and/or that it is intended as a criticism website, users may unintentionally “donate” money to the Respondent via the Website, with the actual intent of donating or making contributions to the Complainant.
By choosing to register the Disputed Domain Name, which solely contains the word element of the Complainant’s FFJUDO & device mark (and contains no other element that may distinguish it from the Complainant’s mark or which may designate it as resolving to a criticism website), the Respondent appears to have intentionally attempted to attract Internet users to the Website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Website, in order to make a commercial gain, i.e, to solicit donations.
In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Gabriela Kennedy
Sole Panelist
Date: April 8, 2014
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