The Complainant is Commune de Lyon of Lyon, France, represented by Cabinet Germain & Maureau, France.
The Respondent is Yanai Arfi, Tropictel of Aventura, Florida, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with Gandi SAS (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2018. On February 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2018, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Policy, 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 February 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 23, 2018. 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 administrative authority for the city of Lyon in France.
The city of Lyon was founded some 2,000 years ago by the Romans. The city itself and surrounding environs have a population in excess of 2,000,000 people. The central town area is registered as a UNESCO World Heritage Site. Amongst other things, it is the location of Paul Bocuse’s famous restaurant. According to the Complaint, the city of Lyon is the third-most visited tourist destination in France.
Amongst other things, it provides information and services via a website to which resolves the domain name .
The Complainant also has four registered trademarks in France; the earliest of which is French Trademark No. 3135797 for VILLE DE LYON which is registered in respect of a very wide range of goods and services in all 45 International Classes. This trademark was registered from December 7, 2001. The Complainant’s other registered trademarks are figurative marks featuring the words VILLE DE LYON and a lion rampant. They were all registered after Trademark No. 3135797.
The Respondent studied advertising at a college or university in the city of Lyon between 1980 and 1982.
According to the WhoIs record, the disputed domain name was first registered on November 17, 2000. According to the Registrar, the Respondent first became the registered holder on November 16, 2013. However, that appears to be the date when the Registrar first became the registrar for the disputed domain name. The Complainant does not contest registration of the disputed domain name in the Respondent’s name in 2000.
The disputed domain name resolves to a website at . The website is in French. It appears to be a social networking site where a large number of (mostly) ladies are apparently available to be contacted. So far as the Panel can ascertain, the people being proposed for contact are not, or certainly not mostly, based in the city of Lyon. 5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly notified to the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Accordingly, paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant is based in France and the website to which the disputed domain name resolves is in French. However, the language of the registration agreement for the disputed domain name is in English and is the default language of the proceeding unless the parties agree otherwise or there is some other good reason: see paragraph 11 of the Rules and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5. In addition, the Panel notes that the address provided by the Respondent is in the United States of America and the Complainant has submitted social media materials showing the Respondent using English. Accordingly, it does not appear that the Respondent would be disadvantaged by the use of English. There is no good reason to depart, therefore, from the default rule. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks referred to in Section 4 above.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks: see WIPO Overview 3.0, section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the generic Top-Level Domain (“gTLD”) “.com”, the disputed domain name consists solely of the Complainant’s Trademark No 3135797. The Panel finds therefore that the disputed domain name is identical to this trademark. The Respondent’s position is no better in relation to the figurative versions of the Complainant’s trademark: WIPO Overview 3.0, section 1.10. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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 in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant states that it has not licensed or authorised the Respondent to use its trademark. There is no other association between the Complainant and the Respondent apart from his studies in the city between 1980 and 1982. The disputed domain name is not derived from the Respondent’s name or any name of the various entities which the Complainant has been able to identify the Respondent having worked at or for.
While the Respondent is using the disputed domain name to redirect to the social media site , that site does not appear to have anything to do with the city of Lyon, although presumably some of its members may be located there. As the Panel noted in section 4 above, however, none of the people being proposed for contact were obviously from Lyon. As the site is a general social networking site and does not appear to have anything but a purely incidental connection with the city of Lyon, there is no descriptive or geographical explanation for the use of the expression “ville de Lyon” to direct traffic to it. This appears to distinguish the present case for the considerations under Article 6.1(b) of the European Trademarks Directive that were operative in City of Hamana v. Paragon International Projects Limited,WIPO Case No. D2001-0001. The use being made of the disputed domain name by the Respondent, therefore, does not constitute a good faith offering of goods or services under the Policy.
In these circumstances, the Panel finds that the Complainant has established the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The disputed domain name was registered about 13 months before the Complainant registered its earliest trademark. When the Respondent registered the disputed domain name, however, he was very well aware of the Complainant and the significance of the city of Lyon (“Ville de Lyon” in French) as a tourist and commercial destination, at the least from living there between 1980 and 1982. Moreover, as noted above, the Respondent is not using the disputed domain name in any way that appears to reflect its descriptive or geographical significance. Rather, he is using it to redirect people to a social media website operating in the French language and apparently being used by people in France and surrounding Francophone regions. Having regard to these matters and in the absence of a credible challenge to the Complainant’s claims that it was using and promoting itself as the Ville de Lyon in the period before it secured its trademark registration, the Panel considers this case falls within the class of cases which constitute an exception to the usual rule regarding registration of a domain name before the complainant acquired its registered trademark rights (but where the Respondent is clearly targeting the Complainant’s rights): WIPO Overview 3.0, section 3.8.2.
The Panel finds therefore that the Complainant has established on the record in this case that the Respondent registered and is using the disputed domain name in bad faith contrary to the Policy. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: April 4, 2018
Full & Egal Universal Law Academy