The First Complainant is NC Numericable of Champ-Sur-Marne, France. The Second Complainant is Société Française du Radiotéléphone - SFR of Paris, France. Both are represented by Fidal, France.
The Respondent is Andre Schneider / Domcollect AG of Zug, Switzerland. 2. The Domain Names and Registrar
The disputed domain names , , , , , and are registered with 1&1 Internet AG (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 13, 2014. On August 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 20, 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 August 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 12, 2014.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on September 18, 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 Complainants in these proceedings are: (1) NC Numericable and (2) Société Française du Radiotéléphone - SFR. Both entities are registered under the law of France and have their principal offices in France.
NC Numericable is a subsidiary of Numericable Group which provides cable broadband services in France, Luxembourg and Portugal. The company offers digital and analog television, Internet and telephone services to homes. It is the leading cable television provider and Internet access provider in (metropolitan) big cities in France.
SFR is the second largest French telecommunications company. It provides services for mobile telephones, landline, Internet, IP television and mobile Internet to consumers and (business) enterprises.
On March 5, 2014, Numericable, backed by its lead shareholder Altice, made an offer to buy SFR from Vivendi. The bid was said to include about 11 billion Euros (USD 15.2 billion) in cash, 3 billion Euros in Numericable's cable assets and a 750 million Euro capital increase by Altice. The merger was completed in June 2014. SFR is now owned by Numericable and French conglomerate Vivendi.
In the course of their business activity, the Complainants have registered in France or internationally nearly 40 trademarks incorporating or containing NUMERICABLE and more than 500 trademarks incorporating or containing SFR. Among them, there are the following trademarks:
- NUMERICABLE - combined trademark registered in France for products and services in classes 9, 16, 35, 37, 38, 41 et 42 under No. 97 700 038 (application filed on October 17, 1997);
- NUMERICABLE HD - international, figurative trademark registered on October 19, 2005 for products and services in classes 9, 16, 35, 38, and 41 under No. 1 064 288 (application filed on April 12, 2005);
- NC NUMERICABLE INTERNET – international, verbal trademark registered on October 12, 2005 for products and services in classes 9,16, 35, 37, 38, 41 et 42 under WIPO No. 884 833;
- SFR - figurative trademark registered in France for products and services in classes 9 and 38 under No. 95 557 847 (application filed on February 7, 1995);
- SFR – international, figurative trademark registered on August 2, 1995 for products and services in classes 9 and 38 under No. 643 842.
To promote and protect their business, the Complainants own a number of domain names, such as:
- , registered on February 11, 1998;
- , registered on March 16, 2007;
- , registered on May 26,1997;
- , registered on July 23, 1996.
The Respondent is a Swiss company, Domcollect AG, which is represented by Mr Andre Schneider. According to information provided by "" the Respondent owns no less than 700,000 domain names. Domcollect AG and Mr Andre Schneider were also involved in eleven UDRP disputes – alone or collectively. All those cases have been ruled against the Respondent.
The disputed domain names , , , and were registered on March 17, 2014 and the disputed domain names and were registered on January 6, 2009. 5. Parties' Contentions A. Complainant
Firstly, the Complainants submit that all the disputed domain names registered by the Respondent are confusingly similar to their trademarks: NUMERICABLE, NC NUMERICABLE INTERNET, NUMERICABLE HD and SFR. The Complainants pay the Panel's attention to the fact that all these trademarks predate the disputed domain names. The Complainants underline that their French and international trademarks are relevant to serve as a legal basis for a claim under the Policy.
The disputed domain names incorporate the NUMERICABLE and/or the SFR trademarks in their entirety or in combination with the other, or with descriptive or generic words such as: "hd" (which stands for "high definition", describing a quality of services offered by the Complainants, on a technical point of view); or "telecom" (which describes the main area of business of the Complainants), or "nc" (which is the common acronym of NumeriCable).
In the Complainants' view, the generic Top Level Domain (gTLD) ".com" has no distinguishing effect and may be disregarded for purposes of the first element. It is well-established that the inclusion of a gTLD does not give any distinctiveness to a domain name (citing Guccio Gucci S.p.A. v. Brendla Hawkins, WIPO Case No. D2013-0603).
The Complainants also note that the merger between Numericable and SFR has been covered by media all over the world during the last months and particularly the days before the Respondent registered the disputed domain names. The Complainants claim that the Respondent used the combination of the trademark NUMERICABLE with the trademark SFR to confuse the Internet users who may believe that the disputed domain names are used by them or with their authorization to provide information about the merger. Numericable and SRF assert that it has been a classic trend in the UDRP for the last 15 years to deal with domain names combining trademarks of companies recently merged.
Secondly, it is the Complainants' case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not currently and has never been known under the name "Numericable" and/or "SFR".
The Complainants have conducted a trademark search in SWISSREG (the online database provided by Swiss Institute For Intellectual Property) with Domcollect AG or Mr. Andre Schneider as applicant, and have noticed that the Respondent does not own any trademark, especially on the names "Numericable" or "SFR". Neither Numericable nor SRF have ever given the Respondent any authorization or permission to use their trademarks. Moreover, they had not even known about the Respondent before the disputed domain names were registered.
Thirdly, the Complainants state that the disputed domain names were registered and are being used in bad faith. Numericable and SFR claim to have a strong reputation in France and several other European countries in the field of Internet services, digital and analog television and telephone services. For this reason, the Respondent should have been aware of the well-known NUMERICABLE and SFR trademarks at the time he applied for registration of the confusingly similar disputed domain names.
The Complainants underline the fact that the Respondent combined the NUMERICABLE and SFR trademarks at the time when the news on a future merger between the companies have been widely spread by the media. In the Complainants' view, the Respondent registered the domain names for the purpose of selling them to the Complainants, or that they were intended to generate commercial gain and create a likelihood of confusion with their trademarks (citing Sanofi-Synthelabo v. Nicki On, WIPO Case No. D2003-0871 and Aventis SA, Aventis Pharma SA. v. Nicki, WIPO Case No. D2003-0899).
Furthermore, the Complainants claim that the Respondent is engaged in a pattern of registering and using domain names that are similar with third party (famous) trademarks as it is illustrated by Clarins v. DomCoIlect AG/ Andre Schneider, WIPO Case No. D2013-1944.
Finally, the Complainants assert that the disputed domain names resolve to qualified pages employing "pay per click" scheme. All the disputed domain names are currently offered for sale by the Respondent for the price exceeding the probable expenses connected with them. In the Complainants' view, all these elements prove that the disputed domain names were registered and are being used in bad faith.Numericable and SFR request the Panel to rule that the disputed domain names shall be transferred to the Complainants. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel has decided to accept the Complaint filed by the Complainants given that the criteria articulated by previous UDRP panels in relation to consolidation are satisfied in the present case.
Paragraph 4(a) of the Policy places a burden on the complainant to prove the presence of three separate elements. The three elements can be summarized as follows:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(b) the respondent has no rights or legitimate interests in the domain name; and
(c) the domain name has been registered and is being used by the respondent in bad faith.
The requested remedy may only be granted if the above criteria are met simultaneously. A. Identical or Confusingly Similar
The Complainants have proven that the disputed domain names , , , , , and are confusingly similar to the NUMERICABLE and SFR trademarks such as:
- NUMERICABLE - combined trademark registered in France for products and services in classes 9, 16, 35, 37, 38, 41 et 42 under No. 97 700 038 (application filed on October 17, 1997);
- NUMERICABLE HD - international, figurative trademark registered on October 19, 2005 for products and services in classes 9, 16, 35, 38, and 41 under No. 1 064 288 (application filed on April 12, 2005);
- NC NUMERICABLE INTERNET – international, verbal trademark registered on October 12, 2005 for products and services in classes 9,16, 35, 37, 38, 41 et 42 under WIPO No. 884 833;
- SFR - figurative trademark registered in France for products and services in classes 9 and 38 under No. 95 557 847 (application filed on February 7,1995);
- SFR – international, figurative trademark registered on August 2, 1995 for products and services in classes 9 and 38 under No. 643 842.
The Panel recognizes that those trademarks constitute a valid basis for the Complainants' claim. It has been widely recognized in applicable jurisprudence that figurative trademarks can be effectively used in UDRP disputes (Marco Aurich v. Johannes Kuehrer, World4You Webservice,WIPO Case No. D2012-1147).
The disputed domain names incorporate the NUMERICABLE and/or the SFR trademarks in their entirety or in combination with the other. The Panel does not find that abbreviations, such as "hd", "telecom" or "nc" to have a distinctive character. It also approves the common view that gTLDs can be disregarded for purposes of the first element..
The Panel therefore finds that the disputed domain names , , , , , and are confusingly similar to the Complainants' trademarks and as a consequence, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names (Celton Manx Limited v. D C, Dragon City, WIPO Case No. D2014-0916). By submitting print screens from the online database provided by Swiss Institute For Intellectual Property, they have shown that the Respondent does not own any trademarks, such as NUMERICABLE and SFR in Switzerland. The Respondent did not reply to the Complainant's contentions and the Panel finds that it does not appear to be known by the Numericable or SFR names. The Panel also accepts the Complainants' statements that they have not authorized the Respondent to act on their behalf.
The disputed domain names resolve to "pay per click" pages and the Panel does not consider such use to be bona fide in the present circumstances.
Therefore, the Panel considers the requirement of paragraph 4(a)(ii) of the Policy fulfilled. C. Registered and Used in Bad Faith
From the evidence submitted before the Panel, it is clear that the Respondent registered and is using the disputed domain names in bad faith.
The Complainants' trademarks are commonly known, not only in France. Moreover, at the time of registration of the disputed domain names, containing both NUMERICABLE and SFR trademarks, the news about the merger of the companies was covered by media from all around the word.
The Panel also recognizes that the Respondent has engaged in a pattern of conduct of registering domain names which bear a resemblance to famous and/or well-known trademarks (Clarins v. DomCoIlect AG/ Andre Schneider,WIPO Case No. D2013-1944). This is evidence of bad faith.
The fact that the disputed domain names resolve to "pay per click" pages only confirms that the Respondent has registered the disputed domain names with the intention to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainants' marks. After having considered the evidence submitted by the Complainants, the Panel is also of the opinion that the Respondent has registered the disputed domain names primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registrations to the Complainants or others, for valuable consideration in excess of the documented "out-of-pocket" costs directly related to the disputed domain names.
The Complaint satisfies the requirement from 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 names , , , , , and be transferred to the First Complainant, as requested in the Complaint.
Piotr Nowaczyk
Sole Panelist
Date: October 2, 2014
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