The Complainant is Ville de Paris of Paris, France, represented by DBK - Société d’avocats, France.
The Respondent is Jilali Tasry, TSDW of Osny, France. 2. The Domain Name and Registrar
The disputed domain name is 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 23, 2016. On August 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2016.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on September 30, 2016. 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, Ville de Paris (the city of Paris), is the body established under French law to administer the capital city of France.
At various locations within the city of Paris limits, the Complainant started in 2007, in cooperation with the advertising company J.C. Decaux, a popular self-service of cycle rentals, known as VELIB’, and in 2011, in cooperation with the Bolloré company, a popular self-service of electric car rentals, known as AUTOLIB’.
The Complainant is the owner of inter alia the trademarks VELIB’ and AUTOLIB’ (“the Marks”), respectively registered in the first place with the French Trademark Office Institut National de la Propriété Industrielle, on February 19, 2007 under No. 3482225 and on February 25, 2008 under No. 11541356.
The Complainant is also the registrant of the domain name, whereas the domain name has been registered by the company which operates the AUTOLIB’ service.
The disputed domain name was registered on February 16, 2016 and is used for offering rentals of cars equipped as those used in driving schools. 5. Parties’ Contentions A. Complainant
(i) The Complainant submits that the disputed domain name is confusingly similar to the Marks, in which the Complainant has rights, insofar as the disputed domain name, , contains the characteristic element of the Marks, i.e., “LIB”. The Complainant also asserts that the disputed domain name uses the term “auto” which is very close to the term “permis” (referring in French to the driving license) because both of these terms refer to the field of cars and transport.
(ii) In addition, the Complainant relies on a decision of the Institut National de la Propriété Industrielle which has purportedly validated an opposition of the Commune de Paris to the registration by a third party of PERMILIB.COM as a French trademark, on the basis of a Community trademark registered by the opposing party.
(iii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends that it never authorized the Respondent to register and use any domain name similar to the Marks and that the Respondent is not commonly known by the disputed domain name. The Complainant asserts that the Respondent does not make a legitimate noncommercial or a fair use of the disputed domain name.
(iv) The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Marks are famous and that the Respondent was well aware of the Marks when registering the disputed domain name, and did so to free-ride on the Marks’ reputation.
(v) The Complainant also submits that the website to which the disputed domain name resolves is clearly inspired, both in its use of the blue and white colors and by displaying the Eiffel Tower on its home page, by the website to which the domain name resolves, and that this bad faith use is compounded by the Respondent’s decision to sell the disputed domain name.
(vi) The Complainant requests that the disputed domain name be transferred to it. B. Respondent
Apart from the undated letter in French from the Respondent replying to a letter in French of the Complainant of March 1, 2016 (exhibit 11 of the Complainant), which the Complainant asserts in the Complaint to be of March 21, 2016, the Respondent did not submit a formal response to the Complainant’s contentions.
In this letter, the Respondent indicated that it expected to receive within 15 days a financial offer from the Complainant for the sale of the disputed domain name, “before the website starts its commercial activity”.
After the Notification of Panel appointment, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Complaint was filed in English and the Registrar confirmed that the language of the Registration Agreement of the disputed domain name is English. The Panel determines that pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English. 6.2. Requirements of Paragraph 4(a) of the Policy
In comparing the Marks with the disputed domain name, , it is evident that the disputed domain name neither incorporates the letters “ve” (suggestive of “vélo”, meaning “cycle” in French) nor the term “auto” (abbreviation of “automobile” in French) present in the Marks, but merely the suffix “lib” (without the Marks’ final apostrophe), followed by the generic Top-Level Domain (“gTLD”) “.net”.
It is well established that the gTLD “.net” (or any other gTLD) does not generally affect the assessment of a domain name for the purpose of determining identity or confusing similarity. See Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri,WIPO Case No. D2002-0760.
As to the element “permis” (meaning “permit” or “license” in French) in the disputed domain name, the Panel observes that the correlation between “permis” in the disputed domain name and “ve” in the VELIB’ Mark or “auto” in the AUTOLIB’ Mark may not be immediately obvious to those unfamiliar with the Complainant. The Panel understands that “permis” is more closely related to the Respondent’s activities (namely auto rental for those seeking to obtain their “permis” or driver’s license) than to the Complainant’s Marks.
There is nevertheless some degree of commonality between the Marks and the disputed domain name insofar as the suffix “lib” is concerned.
The Complaint and exhibits 4 and 10 of the Complaint indicate that the “lib” element is intended as an abbreviation of “liberty”. The Panel notes that “lib” may in that respect also be suggestive of “libre-service” (self-service in French) and that the expressions “velib” and “autolib” seem to be broadly used in the media as synonyms for rental services not only in Paris, where the Complainant offers such services, but also in other locations.
The Panel must ultimately decide whether the disputed domain name is confusingly similar to the Marks, or to one of them, notably with regard to the “lib” element, also present in the Marks.
This Panel finds that the issue of confusingly similarity in this case is not as clear as in most cases. On the one hand the Panel notes the fame of the Complainant’s Marks VELIB’ and AUTOLIB’. On the other hand, the Complainant appears not to have produced any evidence to support the implicit contentions that it has rights in the “lib” element as such, or that the “lib” element is identified with the Complainant (e.g. in the sense of being either the predominant portion of the Marks, or as something of a “house mark”) to such an extent as to confuse Internet users into believing that the website to which the disputed domain name resolves is connected with or licensed by the Complainant.
In the Panel’s view, the use of “lib” in the disputed domain name just as likely refers to the suggestive nature of the expression “lib” as short for “libre-service” than the Complainant’s Marks. The Panel also notes that the website at the disputed domain name, on first appearance, seems to offer car rental services to clients preparing to obtain a driving license (“permis”in French), under the name “Permis Lib”. Therefore, the use of the term “permis”, closely related to the Respondent’s activities, seems to be the dominant component of the disputed domain name, in this case.
Consequently, the Panel finds that the disputed domain name is not confusingly similar to any of the Marks, within the meaning of the Policy.
Thus, the Complainant has not satisfied the requirement of paragraph 4(a)(i) of the Policy.
Due to its finding on the first element of the Policy, the Panel needs not to make a finding on the second and third elements of the Policy.
Nevertheless, the Panel notes that the website at the disputed domain name on first appearance seems to offer car rental services, specifically of cars equipped as those used in driving schools, under the name “Permis Lib”. Furthermore, the Complainant alleges that the website under the disputed domain name is “clearly inspired” by the Complainant’s website at “www.”. However, in reviewing the evidence provided by the Complainant, the Panel finds that the two websites are not clearly similar. The Panel notes that the Respondent seems rather to be offering services that focus on drivers’ education and obtaining relevant permits. As such, based on the current record, the Panel finds that the Complainant has not established that the Respondent would be targeting the Complainant and its car rental services within the meaning of paragraph 4(b)(iv) of the Policy.
More importantly, the Panel notes that the purpose of the Policy is to address clear cases of cybersquatting. The Panel finds this indeed not to be such a case. Any questions relating to national trademark law or unfair competition which may be relevant questions between the Parties are matters outside the scope of the Policy. In that regard, the Parties may, should they wish to, take any such issues to competent national jurisdiction. 7. Decision
For the foregoing reasons, the Complaint is denied.
Louis-Bernard Buchman
Sole Panelist
Date: October 14, 2016
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