WIPO Case Where Looked Into Merit (3)

8/8/2019 WIPO Case Where Looked Into Merit (3)

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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Socit Franaise du Radiotlphone-SFR v. Karen

Case No. D2004-0386

1. The Parties

The Complainant is Socit Franaise du Radiotlphone-SFR, Paris La Defense, France,represented by Cabinet Dreyfus & Associs, France.

The Respondent is Karen, Brentwood, United Kingdom of Great Britain and NorthernIreland.

2. The Domain Name and Registrar

The disputed domain name is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center)on May 26, 2004. On May 27, 2004, the Center transmitted by email to NetworkSolutions, LLC a request for registrar verification in connection with the domain name atissue. On May 28, 2004, Network Solutions, LLC transmitted by email to the Center itsverification response confirming that the Respondent is listed as the registrant andproviding the contact details for the administrative, billing, and technical contact. In
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response to a notification by the Center that the Complaint was administratively deficient,the Complainant filed an amendment to the Complaint on June 8, 2004. The Centerverified on June 14, 2004 that the Complaint together with the amendment to theComplaint satisfied the formal requirements of the Uniform Domain Name DisputeResolution Policy (the Policy), the Rules for Uniform Domain Name Dispute

Resolution Policy (the Rules), and the WIPO Supplemental Rules for Uniform DomainName Dispute Resolution Policy (the Supplemental Rules).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified theRespondent of the Complaint, and the proceedings commenced on June 14, 2004. Inaccordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2004.The Respondent did not submit any response. Accordingly, the Center notified theRespondents default on July 5, 2004.

The Center appointed Mladen Vukmir as the sole Panelist in this matter on July 8, 2004.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 theCenter to ensure compliance with the Rules, paragraph 7.

4. Factual Background

SFR, formerly known as Cegetel, is the first private French telecommunications operator,which figures among the top 50 French companies. Due to internal reorganization of thecompany, Cegetel has taken over its subsidiary SFR, which was specialized in mobiletelecommunications, and has changed its company name from Cegetel to SOCIETE

FRANCAISE DE RADIOTELEPHONIE (SFR).SFR offers a wide range of telecom services both on an individual and corporate basis.SFR is the leading private telecommunications operator in France with 16.8 millioncustomers at December 31, 2002. SFR has a strong market position in the area oftelecommunication. With 13, 9 million customers in 2003, SFR is one of Europes majormobile players, and the leading private mobile telephony operator in France. SFR is theowner, among others, of the trademark SFR.

The Complainant provided various registration certificates in the USA, Germany and theEuropean Union for all three marks (Annex 5). Between others, the following are some of

the trademarks applicable:(i) SFR, LE CHOIX DES INTERNATIONAUX, CTM, trademark n001880061, filedSeptember 19, 2001, cl. 9, 16, 35, 36, 38, 41 and 42 ;

(ii) SFR and SFR, LE MONDE SANS FIL EST A VOUS International Trademarksn643.842 and 635.603, cl. 9, 35 and 38;


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(iii) SFR and SFR, LE MONDE SANS FIL EST A VOUS, UK and Northern IrelandTrade marks, n2029359 and 2009123, cl. 9 and 38 ;

(iv) More than 200 French trade marks including the mark SFR, covering mainly goodsand services in classes 9, 35, 38, 41 and 42, among which:

- ESPACE SFR, French trademark n95594616, filed on October 14, 1995, cl. 9, 35,37, 38, and 42.

- LACCS SFR, French trademark n97694859, filed on September 9, 1997, cl. 9, 16,35, 36, 37, 38, 39, 41 and 42.

The Complainant has noticed that the domain name has been registered. AWHOIS database search revealed that said domain name was registered by theRespondent. The Complainant sent a warning letter via registered mail and e-mail, datedOctober 30, 2003, to the Respondent, requesting the amicable transfer of the domain

name (Annex 3).The Respondent replied by mail on November 11, 2003, arguing that it has been thevictim of a credit card fraud and it has no intention of using the domain name nor has access to do so. As the Respondent appeared as administrativecontact, the Complainant requested its help to organize the transfer amicably. But theRespondent notified the Complainant that it contacted the registration unit to ask for thedissociation of the domain name from its name, request which received no answer(Annex 4). The Respondent still appears as administrative contact on the WHOISdatabase (Annex 1). The Respondents apparent inability to independently transfer thedomain name resulted in Complainants initiating of these proceedings.

5. Jurisdictional Basis

The dispute is within the scope of the Policy and the Panel has jurisdiction to decide thedispute. The Registrars registration agreement incorporates the Policy. The domain namewas registered on September 12, 2003.

The Complainant avers that each of the requirements of Paragraph 4(a) of the Policy hasbeen satisfied and the Respondents are therefore required to submit to mandatory

administrative proceeding.

6. Parties Contentions

A. Complainant


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The Complainant claims that the domain name should be transferred to itbecause (a) the domain name is identical or confusingly similar to trademarks or servicemarks in which the Complainant has rights; (b) the Respondent has no rights or legitimateinterests in respect of the domain name; and (c) the domain name was registered and isbeing used in bad faith.

(a) The domain name is identical or confusingly similar to trademarks or service

marks in which the Complainant has rights; (Policy, paragraph 4(a)(i), Rules,

paragraphs 3(b)(viii), (b)(ix)(1))

SFR is the owner of numerous trademarks rights throughout the world, including GreatBritain. In particular, SFR is the owner of several international trademarks andregistrations having a specification of goods and services mainly in the field of fixed andmobile telecommunications. Some of the pertinent registered trademarks are listed abovein this decision. All of the cited device trademarks feature prominently the letters SFR asthe dominant segment of the trademarks.

The Complainants analysis shows that the domain name entirelyreproduces the SFR marks with the mere addition of the descriptive term tv, usually anabbreviation for television, and the repetition of the letter s, which creates nodistinction in itself. Moreover, SFR proposes an online television service entirely devotedto mobile telecommunications, and the generic word tv added by the Respondentsuggests a television service, leading the public to think that the domain name in disputewill resolve to a website related to SFRs official website and services, speciallydedicated to television. Furthermore, the generic suffix .com is not distinctive andcertainly not subject to protection in itself. It is already established that the fact that adomain name wholly includes a Complainants mark is sufficient to establish confusing

similarity, despite the addition of generic words. This has been held by numerous priorPanelists:Nokia Corporationv.Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102,EAuto, L.L.C. v. EAutoParts , WIPO Case No. D2000-0096 (Annex 6).

(b) The Respondent has no rights or legitimate interests in respect of the domain

name; (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Complainant alleges that the Respondent is not affiliated with the Complainant inany way. The Complainant has not authorized the Respondent to use and register itstrademarks and service marks, or to register any domain name incorporating said marks.The Complainant has not granted any license or otherwise permitted the Respondent touse its trademark or to apply for any domain name incorporating the said mark.

The Respondent has no rights or legitimate interests in the domain name. The Respondenthas never used the term SFR in any way before or after the Complainant developed itsservices in the field of fixed and mobile telecommunications. And, as SFR is famousthroughout the world and also in UK, any attempt to use the name is made in bad faithwhen the Respondent registered the domain names, in September 12, 2003, SFR had
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already been existing for years. The Respondent is absolutely not known under the nameSFR or any similar term.

Finally, the Respondent is not making any legitimate non-commercial or fair use of thedomain names. There is no active website linked to the domain name (Annex 7), which

demonstrates that the domain names owner just prevents the Complainant fromregistering said domain name.

(c) The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Respondent knew or must have known the existence of SFR at the time it registeredthe domain name in dispute. The Respondent did not claim otherwise.

The Respondent alleged in the correspondence which preceded this proceeding that it was

victim of computer fraud and that it did not want to register the domain name at all. TheRespondent, however, did not in transferring the domain name, because it allegedly didnot have sufficient access to the domain name registration technical procedures.

The fact that there is no active website linked to the disputed domain name is anotherelement to show that the Respondent does not use said domain name in good faith(Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No D2000-0003; Annex8). Bad faith can also result from inaction in relation to the domain name, in certaincircumstances and it does appear to be so in the present case.

SFR is the owner of numerous trademarks rights throughout the world, including in Great

Britain. The registration by the Respondent, not followed by any use, tends to create inthe publics mind the impression that SFR owns a domain name without havingconstructed the website related to it, which would be quite unprofessional byComplainants standards. Accordingly, the Complainant thinks that the registration of thedomain name was designed to tarnish the reputation of the mark, and therefore theComplainant.

The domain name was registered in bad faith, if only because said domain name iscomposed of the Complainants trademark to which are added the letters tvs and thusthat the Respondent is associated with the Complainants trademark SFR. TheComplainant concludes, that it is inconceivable that the Respondent has chosen to include

the invented word, i.e. the abbreviation SFR in the domain name by accident. Any actualor contemplated use of the domain name by the Respondent would be illegitimate, takinginto account the fact that the trademark SFR is registered, and might even have achievedfamous status in certain markets. Furthermore, no intention to use the mark has beenexpressed.

B. Respondent
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The Respondent did informally contact the Complainant and the Center. In its emails toComplainants representative of November 11, 2003, and to the Center of June 16, 2004,agreed that the domain name in question should be transferred to the Complainant.

In addition, the Respondents representative requested WIPO or the Panelist in its email

of June 16, 2004, to refrain from publishing the name and the address of the Respondentas indicated in the Registrar Database, albeit without elaborating either on factual or legalbasis regarding this point. All the correspondence referred hereto actually preceded theappointment of the Panelist and no formal Response was ever filed by the Respondent inthe proceedings.

7. Discussion and Findings

An interesting and not entirely infrequent issue arises in this case. What should the

Panelist do when the Respondent does not contradict the Complainants contentions andagrees to its request to transfer the domain name? Should it just take the Complainantsarguments as proven without any consideration or should it go into the merits andconsider whether all requirements have been cumulatively fulfilled for a transfer of adomain name to be effected? Past WIPO cases have taken both approaches. The formerview has been taken in decisions such asDesotec N.V. v. Jacobi Carbons AB,WIPOCase No. D2000-1398, Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620,Juventus F.C. S.p.a. v. Sergio BraganaWIPO Case No. D2000-1466, andDeutsche Bank AG v. Carl Sieger, WIPO Case No. D2000-0984. In the cases The Stateof the Netherlands v. Goldnames Inc.,WIPO Case No. D2001-0520andEurobet UKLimited v. Grand Slam Co,WIPO Case No. D2003-0745 the Panels took the view that

even though the Respondent agreed to transfer the domain name, there was still anecessity to make substantive findings. What should be the test to determine whichapproach to take? In Panels view one should take into account whether (i) theRespondents consent was authentic and obviously expressed its true will and intentionindicating expressly and unconditionally that the domain name should be transferred, (ii)the Respondent is without doubt the true registrant, and (iii), there are no othercircumstances which may give rise to a reasonable doubt as to the true intention of any ofthe parties involved.

Considering the above, in this case the Panel concludes that not all the above tests havebeen satisfied because (i) the Respondent seems not to be the true owner and registrant ofthe domain name, (ii) the matter involves alleged credit card and/or computer fraudwhich the Panel shall not look into details for the purpose of this decision as they fall outof the scope of the UDRP. Consequently, this Panel considers its duty to make findingson the following issues before reaching a final decision and the Panel shall now turn toexamine each one of them separately.

A. Identical or Confusingly Similar
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The Panel is convinced that the domain name is identical or confusingly similar to theComplainants registered trademarks.

The Complainant argued that (i) domain name reproduces entirely the SFRtrademark; (ii) the sfr is accompanied by a descriptive term tv, usual abbreviation for

television, and the letter s, which creates no distinction in itself; (iii) the term tvadds to the confusion because SFR offers a service of television online entirely devotedto the universe of mobile telecommunication and it is reasonable to expect that the publicwould be lead to think that the domain name in dispute will direct to a website related toSFRs official website and services, specially dedicated to television; (iv) the genericsuffix .com is not distinctive and certainly not subject to protection as itself. TheComplainant goes on to cite cases where the fact that a domain name wholly includes aComplainants mark was considered sufficient to establish confusing similarity, despitethe addition of generic words (Nokia Corporationv. Nokiagirls.com a.k.a. IBCC,WIPOCase No. D2000-0102 andEAuto,L.L.C. v. EAuto Parts, WIPO Case No. 2000-0096).

B. Rights or Legitimate Interests

The Panel concludes that the Respondent had no rights or legitimate interests in using thedomain name in question.

The Complainant stated that the Respondent is not affiliated with the Complainant in anyway. The Complainant further submitted that it has not authorized the Respondent to useand register its trademarks and service marks, or to seek the registration of any domainname incorporating said marks. The Complainant also has not granted any license orotherwise permitted the Respondent to use its trademark or to apply for any domain nameincorporating the concerned mark.

Furthermore, the Complainant argued that the Respondent has no prior rights orlegitimate interest in the domain name. The Respondent has never used the term SFRin any way before or after the Complainant developed its services in the field of fixed andmobile telecommunications. When the Respondent registered the domain name, inSeptember 12, 2003, SFR had already been existing for years.

The Complainant stated that the Respondent is not known under the name SFR or anysimilar term.

Finally, the Complainant contended that the Respondent is not making any legitimate

non-commercial or fair use of the domain name. There is no active website linked to thedomain name, which demonstrates that the domain name owner just prevents theComplainant from registering said domain name.

Again, in the absence of the Response, the Panel can assume that none of the abovearguments have been denied by the Respondent and therefore concludes that theRespondent had no rights or legitimate interests to use the disputed domain name.
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C. Registered and Used in Bad Faith

The Panel finally concludes that the Respondent has registered and used the domainname in bad faith.

The Complainant argued that the Respondent knew or must have known of the existenceof SFR at the time it registered the domain name in dispute. The Respondent neveralleged to the contrary.

The Complainant stated that the fact that there is no active website linked to the disputeddomain names is another element to show that the Respondent does not use said domainnames in good faith (see Telstra Corporation Ltd v. NuclearMarshmallows,WIPO CaseNo. D2000-0003, also Sanrio Company, Ltd. And Sanrio,Inc. v. Neric Lau, WIPO CaseNo. D2002-0172).

The Complainant further stated that the SFR is owner of numerous trademarks rights

including in Great Britain. The registration by the Respondent, not followed by any use,tends to create in the publics mind the impression that SFR owns a domain name withouthaving constructed the website related to it, which would be quite unprofessional. It maylead to think that the registration of the domain name was designed to tarnish thereputation of the mark, and therefore the Complainant.

In addition to the above, the Respondent itself in its email of June 16, 2004, confirmedthat the domain name had been registered and used by an unknown person and thereforeimplicitly agreed that it had been registered and used in bad faith.

The Respondent offered no counter arguments to the Complainants submissions and the

Panel holds the Complainants contentions as true and proved and hence concludes thatthe Respondent had registered and used the disputed domain name in bad faith.

D. Publishing the personal details

Finally, the Panel turns to the Respondents representative request that the name and theaddress of the Respondent be kept confidential and not publicized once this decision isissued or otherwise made publicly available.

The Policy in paragraph 4(j), second sentence, provides that All decisions under thisPolicy will be published in full over the Internet, except when an Administrative Panel

determines in an exceptional case to redact portions of its decision. The Panel thereforehas power to decide in exceptional case to keep portions of its decision away from thepublic.

Before reaching any decision to this effect this Panel will have to consider the following.

Firstly, the first name and the possibly true address of the Respondent have already beenmade public and are currently publicly available on WHOIS database, related to the
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domain name in question. There is no family name stated and only a string of capitalletters in parenthesis is added to the first name. Secondly, the Panels duty whendelivering the decision, is to state the full name and address available on the Registrarsrecords so as to avoid any possible confusion in the enforcement of the decision. Thirdly,in this particular case the name of the Respondent has not been displayed on WHOIS

records in full and the work email address has been left out as well. However, it may bepossible to track down the Respondent personally by its address, provided it is indeed thecorrect Respondents address.

On the other hand, this Panel sees no detriment in view of the outcome and enforcementof this decision if the Respondents address is not made public on the official WIPOwebsite.

Moreover, the Panel finds that the ever increasing role reserved for privacy protection inthe EU plays a subtle role in this particular case. Although this concept falls outside thescope of the UDRP, it does have an impact between the two parties who are both of EU

origin. Therefore, the Panel will accept that the somewhat confounding, althoughunproven, circumstances of the Respondents situation in conjunction with the privacyprotection provisions might constitute an exceptional casein the sense of the Policyparagraph 4(j).

Thus, on balance, the Panel considers this argument as reasonably convincing and willadvise the Center to keep blank the Respondents street address and postal code spot inSection1 of this decision when publicizing the decision. The Panel holds that the firstname and the country of the Respondent cannot in any meaningful way reveal the identityof the Respondent.

8. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 ofthe Rules, the Panel orders that the domain name, be transferred to theComplainant.

Mladen VukmirSole Panelist

Dated: July 22, 2004

Documents

WIPO Case Where Looked Into Merit (3)