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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fortuneo v. Johann Guinebert
Case No. D2001-0781
1. The Parties
Complainant is FORTUNEO, SA, with an address at 26, avenue des Champs Elysées 75008 Paris, France.
Respondent is Johann Guinebert of 24, avenue Charles de Gaulle, 05200 Embrun, France.
2. The Domain Name and Registrar
The domain name at issue is <fortunéo.com> (hereinafter referred to as the Domain Name).
The Registrar of the Domain Name is Network Solutions Inc., (hereinafter referred to as the Registrar).
3. Procedural History
On June 13, 2001, Complainant filed a complaint, drafted in the French language, with the WIPO Arbitration and Mediation Center (hereinafter referred to as the Center). The Complaint was received via e-mail on June 13, 2001. The hardcopy of the Complaint was received on June 15, 2001.
On June 14, 2001, Acknowledgement of Receipt by the Center was sent to the Complainant. On June 20, 2001, the Center sent the Request for Registrar Verification.
On June 20, 2001, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Name registrant and confirmed that:
- a copy of the Complaint was sent to it by the Complainant;
- it is the current Registrar of the Domain Name registration;
- the Respondent is the current registrant of the Domain Name registration;
- the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Policy) applies to the Domain Name.
On June 21, 2001, the Center informed the Complainant that, pursuant to Rules, Paragraph 11, in the absence of an agreement between the parties, the language of the administrative proceeding shall be the language of the registration agreement, i.e. English.
On July 2, 2001, the Complainant transmitted by fax and e-mail a formal request to the Center to conduct the proceedings in French.
Following Complainant’s request to have the proceedings conducted in French, the Center wrote to the Respondent requiring that he provide the Center with an agreement to the effect that the proceedings be in French.
On July 3, 2001, the Center received an e-mail from the Respondent requesting that English be the language of the proceedings. The Center then proceeded to contact, via e-mail, the Complainant to ask that the Complaint be translated into English within the next five days.
On July 4, 2001, Complainant filed a Complaint, drafted in the English language, with the Center. The Complaint was received via e-mail on July 4, 2001. The hardcopy of the Complaint was received on July 9, 2001.
The Center proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Rules) and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the WIPO Rules), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on July 10, 2001.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
On July 10, 2001, the Center informed the Respondent of the commencement of the proceedings and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a response to the Center being on July 29, 2001.
In a letter dated August 1, 2001, the Center informed the Respondent that it was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.
On August 22, 2001, the Center issued a Notification of Appointment of Administrative Panel and Projected Decision Date to the parties.
The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since it was formally appointed.
The Panel is obliged to issue a decision on or prior to September 5, 2001.
4. Factual Background
The following uncontradicted and unchallenged facts appear from the Complaint, documents submitted with the Complaint in support thereof as well as verifications conducted by the Panel:
Complainant owns the trademark, FORTUNEO used by the Complainant in association with the offering of various financial and corporate consulting services.
Complainant operates its official Internet web site at <fortuneo.com>. Consumers can access information about Complainant's products and services, and even book appointments on-line via the web site.
Pursuant to a WHOIS search conducted by the Panel, it seems that the Domain Name <fortunéo.com>, was registered by the Respondent on May 9, 2001;
Pursuant to Annex D of the Complaint, it seems that, on May 17, 2001, the Domain Name was put up for sale on the web site <ibazar.com> at the price of 200 000 French Francs some eight days after Respondent registered it.
Furthermore, upon further investigation on a "proprio motu" basis, conducted by the Panel, it seems that that the Domain Name presently directs internet users to an inactive web site.
5. Parties’ Contentions
Contentions of the Complainant with respect to its trademark rights
Complainant alleges that the mark on which its Complaint is based is FORTUNEO and is registered at the "Institut National de la Propriété Industrielle" (INPI) with a filing date of November 18, 1999, with respect to products and services for classes 35, 36, 38, and 42; said registration is attached as annex C of the Complaint.
Contentions of the Complainant with respect to the Identity or Confusing Similarity between the Domain Name and its Trademarks
The Complainant alleges that the Domain Name <fortunéo.com> constitutes a slavish reproduction of the denominative mark FORTUNEO and that such act shall give rise to confusion. Moreover, the adding of an accent (é) and of the ". com" suffix, being that the pronunciation stays the same, does not give the Domain Name, a characteristic distinction.
Contentions of the Complainant with respect to the Absence of Rights or Legitimate Interests of the Respondent
The Complainant alleges that the Respondent, considering the prior registration of the mark FORTUNEO, has no rights or legitimate interests in respect of the Domain Name <fortunéo.com>. The Domain Name cannot be linked neither to his respective patronymic name, nor to any economic activity, which may be well known with the Domain Name <fortunéo.com>.
Contentions of the Complainant with respect to the Registration and Use of the Domain Name in Bad Faith
In addition, the Complainant alleges that the Domain Name is presumed to be registered in bad faith since:
- On the one hand, the Respondent, Mr. Johann Guinebert, has attempted to sell the domain name <fortunéo.com> on the web site <ibazar.com> at the price of 200 000 French Francs (sic) only eight days only after he bought the Domain Name. That’s for valuable consideration in excess of the domain name Registrant’s out-of-pocket costs directly related to the domain name, but also, he has described the Domain Name like "le fameux site de bourse en ligne, mais avec un accent" (" the famous web site of broker in line, but with an accent"); said description attached as annex D of the Complaint.
- On the other hand, the Respondent prevents the owner of the trademark or service mark FORTUNEO from using fully the mark in a corresponding domain name. In addition, the Complainant alleges that the Respondent has engaged in a pattern of such conduct (selling domain names with nothing different other than accents), on the web site <ibazar.com> with the pseudonym Sergentcolo; offer of other domain name found at annex E of the Complaint.
The Respondent has failed to file a timely response with the Center even though he requested the complaint to be translated from French into English.
6. Discussion and Findings
Pursuant to the ICANN Policy, the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent upon the Complainant to cumulatively show:
(i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights; and
(ii) that the Respondent has no rights or legitimate interests in the Domain Name; and
(iii) that the Domain Name was registered and is being used in bad faith.
These three elements are considered below.
(i) Identity or Confusing Similarity between the Domain Name and Complainant's trademark
The Panel has reviewed the documentary evidence provided by the Complainant regarding its rights in the trademark FORTUNEO and finds that the Complainant has satisfactorily shown that it owns such rights.
With respect to the confusing similarity between Complainant's trademark and Respondent's Domain Name, it is the Panel’s opinion that the Domain Name registered by the Respondent is almost identical to the Complainant’s trademark and confusingly similar to it.
In this case, the Panel is of the opinion that the second-level part of the Domain Name, is almost identical to the Complainant’s trademark FORTUNEO, if not identical. The only disparity between the two terms being the fact that in the Domain Name, the Respondent replaced the "e" in the Complainant's "Fortuneo" trademark by an "é". The Panel finds that the disputed Domain Name is likely to attract customers of the Complainant seeking to access the Complainant’s services or information relating thereto; this fact alone is sufficient to conclude that the Domain Name is confusingly similar to Complainant's FORTUNEO trademark.
The Panel is also of the opinion that there is evidence submitted by the Complainant, which demonstrates that the Respondent admits that the Domain Name is at least, confusingly similar to the Complainant's trademark FORTUNEO. In annex D of the Complaint, the Complainant has provided a printout of the Respondent's attempt to sell the Domain Name. On that web page printout, the Domain Name is described as "Fortunéo - the famous web site of the on-line broker, but with an accent".
Pursuant to the above mentioned reasons as well as the fact there has been no explanation or evidence offered by the Respondent to establish the contrary. The Panel is therefore of the opinion that the Complainant has met the burden of proof as established by Paragraph 4(a)(i) of the ICANN Policy.
(ii) Rights or Legitimate Interests in the Domain Name by Respondent
Paragraph 4(c) provides a non exhaustive list of examples of circumstances, which can demonstrate the existence of rights or legitimate interests in a Domain Name: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
In the present dispute, the Complainant has introduced unchallenged evidence that it owns rights in the trademark FORTUNEO and that the Domain Name is or was, at a certain point in time, offered for auction on the internet.
In this case, there is no evidence that would allow the Panel to conclude that some circumstances enumerated at Paragraph 4(c) of the ICANN Policy apply to Respondent's situation, as the Complainant rightly asserts.
By demonstrating its rights in its trademarks, by establishing the confusing similarity between the trademark and the Domain Name and by taking into account Respondent's failure to respond to the Complaint, the Complainant has established, prima facie, that the Respondent has no rights or legitimate interests in the Domain Name.
While no direct conclusion can be drawn from a failure by Respondent to provide explanation, in some circumstances, a negative inference can be drawn from the lack of justification by the Respondent, especially when direct evidence, such as the present use of the Domain Name, points in the direction of an absence of rights or legitimate interest.
In this case, as was the case in SSL International v. Mark Freeman, WIPO Case No. D2000-1080 and Altavista Company v. Grandtotal Finances Ltd. et al., WIPO Case No. D2000-0848, the Panel finds it appropriate in this regard to draw an adverse inference from the Respondent’s failure to reply to the Complaint and detail any legitimate rights or interests it might have had in the Domain Name of the type defined in Paragraph 4(c) of the ICANN Policy.
For these reasons, the Panel concludes that, on balance of probabilities, the complainant has discharged its burden to show that the Respondent has no rights or legitimate interests in the Domain Name.
(iii) Bad faith in Registration and Use of the Domain Name by the Respondent
Pursuant to Paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in bad faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, demonstrate evidence of the registration and use of a Domain Name in bad faith.
(a) As to Registration in Bad Faith
Paragraph 2 of the ICANN Policy provides that, when someone registers a Domain Name, he represents and warrants to the registrar, notably, that, to his knowledge, the registration of the Domain Name will not infringe upon or otherwise violate the rights of any third party. The same paragraph also provides that it is incumbent upon the person registering the Domain Name to determine whether the said registration infringes or violates someone else's rights.
In the present case, the Panel finds that, since the Respondent, while making his attempt to market the Domain Name, in order to sell it, stated that the Domain Name <fortunéo.com>, "was like the famous web site of the on-line broker, but with an accent". This demonstrates that it is unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, he was not already aware that he was knowledgeable of the Complainant's trademark rights.
Moreover, the Panel is of the opinion that the evidence clearly establishes that the Respondent registered the Domain Name with the primary purpose of selling the Domain Name to make a profit based on the fact it is confusingly similar to a trademark. The Respondent currently lists the minimum bid for the Domain Name at 300 000 FF; a price well in excess of Respondent’s costs related to obtaining the Domain Name. This alone demonstrates the Respondent’s bad faith registration of the Domain Name.
(b) As to Use in Bad Faith
With respect to bad faith in the use of the Domain Name, the Panel is of the view that the primary intent of the Respondent was an attempt to appropriate the goodwill of the Complainant and to cause confusion amongst anyone who learned of the Domain Name into believing that this Domain Name, its proprietor or any potential web site, were associated with the Complainant, and to redirect traffic intended for the Complainant for his own purposes.
The Panel is also of the opinion that the passive holding of the Domain Name since its registration (no use other than putting it up for auction) in question, combined with the lack of explanation or evidence provided by the Respondent to demonstrate the good faith registration or usage of this Domain Name, all infer bad faith, pursuant to the 4(a)(iii) of the ICANN policy on the part of the Respondent. (See Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Furthermore, the Panel is of the opinion that the Domain Name is so obviously connected with the Complainant’s trademark and its services that their very use by someone with no connection with the Complainant suggests "opportunistic bad faith" (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net WIPO Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
The Panel finds that the above-mentioned behaviour, in accordance with Paragraph 4(b) of the ICANN Policy, constitutes evidence of bad faith in the registration and use of the Domain Name.
For the foregoing reasons, the Panel finds that:
- The Domain Name registered by the Respondent is confusingly similar to the trademark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Domain Name; and
- The Domain Name has been registered and is being used by the Respondent in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel therefore orders the Registrar to transfer the Domain Name: <fortunéo.com> to the Complainant.
Jacques A. Léger, Q.C.
Dated: September 5, 2001