Complainant is OTCF, S.A. of Wieliczka, Poland, represented by Merx Patentes y Marcas, S.L.P., Spain.
Respondent is Radji Minatchy of Saint Claude, Guadeloupe, France, represented by Marie-Claude Fournet, France. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with OVH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2018. On May 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 14, 2018, the Registrar transmitted by email to the Center its verification response. On May 18, 2018, the Center notified the Parties in both English and French that the language of the Registration Agreement for the Domain Name was French. On May 21, 2018, Complainant requested for English to be the language of the proceeding, to which Respondent did not reply.
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 Respondent of the Complaint, and the proceedings commenced on May 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2018. On June 15, 2018, the Respondent requested a four days automatic extension, in accordance with paragraph 5(b) of the Rules, to submit a Response which was granted by the Center. The Response was filed with the Center on June 22, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 16, 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
Incorporated in 2003, Complainant describes its business as specializing “in the creation, production and sale of the highest quality sportswear and accessories for consumers and professional athletes, and tourism clothing.” The products offered by Complainant under its brand 4F include “sports jackets and sweatshirts, fleeces, shirts, t-shirts, sport shirts, shorts, sports and trekking shoes, track suits, snow pants and ski jackets, swimwear, softshell clothing, cycling clothing, fitness clothing, thermal underwear, backpacks, travel bags, sports underwear, tents, sleeping bags and travel accessories.”
According to Complainant, it has been using a stylized 4F trademark since 2004, and has used its current stylized 4F mark since 2009. Complainant sells its wares in physical stores, including nearly 200 in Poland, and in the physical stores of 27 European countries through networking arrangements (it does not appear that Complainant operates a physical store in France, Respondent’s country). Complainant has also been selling its 4F goods online since 2009. In 2017, Complainant’s net revenues were estimated at PNL 530,000,000 (at today’s rate, this equals roughly USD 140,000,000).
In 2010, Complainant’s 4F clothing was provided for the Polish national team in the Vancouver Winter Olympics. Complainant’s 4F clothing was also provided for the Polish national team in several Olympiads since 2010.
Complainant holds several trademark registrations for the semi-figurative 4F mark, and has applied for numerous other marks comprised of or including 4F. Three such marks, one registered with WIPO in November 2013 and two registered (one in November 2013 and one in September 2015) with the European Union Intellectual Property Office, are operative in various jurisdictions including France.
Respondent also manufactures and sells clothing. In May 2015, Respondent secured a trademark registration for the semi-figurative mark 4.F with France’s Institut National de la Propriété Industrielle (“INPI”). The INPI mark is for “encres d’imprimerie” (printing inks), which, according to Respondent, is an error.
Respondent’s 4.F mark features a rose in a small pot. The side of the pot bears the characters 4.F and a four-leaf clover. According to Respondent, the characters 4F refer to the four leaves (“quatre feuilles”) of the clover. Respondent’s clothing items bear this stylized trademark.
Respondent registered the Domain Name on December 17, 2015, seven months after acquiring the 4.F INPI trademark registration. The Domain Name resolves to a website featuring Respondent’s clothing items.
There does not appear to have been any correspondence between the Parties prior to the Complaint filed in this proceeding. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established all three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent disputes that Complainant’s stylized 4F mark has any recognition in France, and that, in any event, Respondent duly registered a trademark in France and has a legitimate interest in the Domain Name. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In view of the Panel’s conclusion below that there is insufficient basis in this record to conclude that the Domain Name was registered and used in bad faith, the Panel need not decide this element of Complainant’s claim. B. Rights or Legitimate Interests
In view of the Panel’s conclusion below that there is insufficient basis in this record to conclude that the Domain Name was registered and used in bad faith, the Panel need not decide this element of Complainant’s claim. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
On this record, the Panel concludes that there is insufficient evidence that the Domain Name was registered and is being used in bad faith. Essentially, this appears to be a bona fide trademark dispute, and not a clear case of cybersquatting. Cases like this generally are found to be beyond the scope of the Policy.
The Domain Name and Complainant’s 4F mark are similar in some respects, and distinct in others. The fact that both Parties’ trademarks are semi-figurative adds to the difficulty of determining likely consumer confusion. The Parties’ products, while both related to clothing and apparel, appear to be targeted to different markets, even if there may be some overlap.
Of further significance is the fact that Respondent obtained a French trademark registration for its (semi-figurative) 4.F mark in May 2015, a full seven months before he registered the Domain Name in December 2015. This sequence of events, including the considerable interval, does not match the conduct of the typical cybersquatter. Rather, one would have expected Respondent to register the Domain Name without delay, indeed, even before pursuing the trademark registration.
In addition, while the Internet is of course ubiquitous, none of Complainant’s physical 4F stores is located in France. The Parties also dispute the extent to which their respective marks are known on the Internet, and they offer Google search results, consumer recognition surveys, YouTube videos, and the like in aid of their respective positions. It appears that both Parties enjoy some degree of consumer recognition on the Internet. It also bears noting that neither Party introduced evidence of actual consumer confusion.
Finally, it bears noting that Respondent appears to have actually sold clothing bearing its stylized mark – including the four-leaf clover. Respondent has not, as far as the Panel has been made aware, sold clothing that bears Complainant’s stylized 4F mark.
In sum, the Panel cannot conclude on this record that Respondent more likely than not had Complainant’s mark in mind when registering the Domain Name.
It is entirely conceivable that a tribunal with greater resources at its disposal could find that Respondent’s mark (and the Domain Name) infringe Complainant’s mark, but such a finding would have to be the product of an evidentiary record and an array of legal issues and arguments well beyond the scope of the Policy.
The Complaint fails. D. Language of the Proceeding
In this case, the Complaint was submitted by the Polish Complainant in the English language, and the Response was submitted by the French respondent in French. The registration agreement pursuant to which the Domain Name was registered is in French. The Panel has discretion with regard to the language of the Administrative Panel Decision. Here, the Panel has elected to render the decision in English. This was done out of a sense of fairness to Complainant – the losing Party here. The Panel believes that it is more important for the losing Party to understand fully the reasons for the adverse decision, whereas the Panel presumes from experience that the prevailing Party will be largely content with its success. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: July 24, 2018
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