The Complainants are FNAC Darty Participations et Services of Ivry-Sur-Seine, France and Establissements Darty et Fils of Bondy, France, represented by Cabinet Santarelli, France.
The Respondent is Paul Romain of London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is Mesh Digital Limited. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2018. On the same day, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On February 5, 2018, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 5, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was March 19, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2018.
The Center appointed James Bridgeman 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 ADR Rules, Paragraph B(5). 4. Factual Background
The Complainants have an international electronics and retail franchise business with 703 stores across the world as of the end of 2017 and had 84.5 million customers in 2016.
On July 18, 2016 the Complainants merged to form the group FNAC DARTY and are the owner of:
- French trademark FNAC DARTY, registration number 4291842, registered on August 4, 2016; and
- International trademark FNAC DARTY registration number 1359337, registered on February 3, 2017.
The Complainants’ agent sent a cease and desist letter to the Respondent on September 14, 2017 asserting its rights in the disputed domain name and demanding the transfer of the disputed domain name. No response was received.
There is no information available about the Respondent except for that given in the Complaint.
The disputed domain name was registered on June 16, 2017, and resolves to a parking page. 5. Parties’ Contentions A. Complainants
The Complainants rely on their rights in the above-referenced trademark and submit that the disputed domain name is confusingly similar to the Complainant’s trademark FNAC DARTY, allege that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name has been registered or used in bad faith.
The Complainants argue that the disputed domain name consists of a reproduction of the entirety of the Complainants’ trademark which it submits has been simply reproduced on the root of the disputed domain name. The Complainants also argue that the “.eu” Top-Level Domain (“TLD”) is not sufficient to create a significant difference between the disputed domain name and the Complainants’ mark. In this regard the Complainants submit that it is generally accepted that “.eu” TLD should not be taken into consideration when making the comparison.
To the Complainants’ knowledge the Respondent has no prior rights in nor does it use the trademarks FNAC, DARTY, or FNAC DARTY and there is no specific website attached to the disputed domain name.
The Complainants allege that the disputed domain name is being used in bad faith because the Complainants have used the FNAC and DARTY trademarks for many years before the disputed domain name was registered and has been using FNAC DARTY in combination since 2016. The Complainants assert that both the FNAC and DARTY trademarks are well-known both separately and in combination because of their extensive use by the Complainants in its retail business.
The Complainants argue that it cannot be believed that the disputed domain name was chosen and registered by pure coincidence. The registration of the disputed domain name is an opportunistic attempt to attract customers via the Complainants’ famous trademark which cannot be considered as a bona fide offering of goods or services.
There is no evidence of genuine legitimate use of the disputed domain name which resolves to a registrar parking page.
The Respondent has not responded to a cease and desist letter to explain its purpose in registering the disputed domain name or to contest the allegations of the Complainants.
The Complainants request the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
In order for the Complaint to succeed, the Complainants must show, in accordance with Article 21(1) of Commission Regulation (EC) No. 874/2004 and Paragraph B11(d)(1) of the ADR Rules, that:
(a) the disputed domain name is identical with or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law;
and either that
(b) the domain name has been registered by the Respondent without rights or legitimate interest in the name; or
(c) the domain name has been registered or is being used in bad faith.
Furthermore Article 22 (10) of Commission Regulation (EC) No. 874/2004 provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty. A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Complainants have provided evidence of their ownership of the abovementioned French registered trademark FNAC DARTY registration number 4291842dated August 4, 2016, which a right is recognized or established by the national law of a Member State of the European Union.
The disputed domain name is identical to the Complainants’ FNAC DARTY trademark. For the purposes of comparison the “.eu” TLD may be ignored in the circumstances of the present case.
The Complainants have therefore succeeded in the first element of the test in Article 21(1) of Commission Regulation (EC) No. 874/2004 and Paragraph B11(d)(1) of the ADR Rules. B. Rights or Legitimate Interests
The Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants are the owner of the identical distinctive trademark FNAC DARTY which is a unique combination of two pre-existing distinctive marks. There is no information available about the Respondent and the disputed domain name does not resolve to any website.
In these circumstances the burden of production must move to the Respondent who has not provided any Response, has not asserted any rights in the disputed domain name and has not given any explanation as to why the disputed domain name was chosen and registered.
As the Respondent has failed to respond or to discharge its burden of production this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainants has therefore succeeded in the second element of the test in Article 21(1) of Commission Regulation (EC) No. 874/2004 and Paragraph B11(d)(1) of the ADR Rules also. C. Registered or Used in Bad Faith
Having decided that the Respondent has no rights or legitimate interests in the disputed domain name it is not necessary to proceed further.
Furthermore Article 22 (10) of Commission Regulation (EC) No. 874/2004 provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty.
However for completeness, having considered the evidence and particularly the strength of the reputation of the Complainants, the distinctive character of the FNAC DARTY mark and brand makes it unlikely that an identical domain name would be chosen by coincidence and the fact that the Respondent has made no attempt to respond to the Complainants’ allegations or demands, this Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in bad faith.
Also in the circumstances of the present case, given the very distinctive character of the disputed domain name as a recently adapted combination of the pre-existing well-known FNAC and DARTY marks and the fact that the disputed domain name does not resolve to any website, this Panel finds on the balance of probabilities the Respondent’s passive holding of the disputed domain name in bad faith is indicative of bad faith use.
This Panel therefore finds that on the balance of probabilities the disputed domain name was registered and is being used in bad faith. 7. Complainants’ Entitlement to Transfer
The Complainants have requested that the disputed domain name be transferred to it. Article 4.2.(b) of Commission Regulation No 874/2004 provides that the Registry may
(b) register domain names in the .eu TLD through any accredited .eu Registrar requested by any:
(i) undertaking having its registered office, central administration or principal place of business within the Community, or
(ii) organisation established within the Community without prejudice to the application of national law, or
(iii) natural person resident within the Community;
As the Complainants are an undertaking having its registered office, central administration or principal place of business within the community, it therefore complies with Article 4.2.(b) of said Regulation 733/2002 and having succeeded in this Complaint is entitled to have the disputed domain name registered in its name. 8. Decision
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name, be transferred to the Complainants.
James Bridgeman
Sole Panelist
Date: April 6, 2018
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