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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Façonnable SAS v. Names4sale
Case No. D2001-1365
1. The Parties
The Complainant is Façonnable SAS, of 107 route de Canta Galet, Nice, France, represented by Arnaud Michel of the law firm Gide Loyrette Nouel, with office at 26 cours Albert 1er, Paris, France.
The Respondent is Names4sale of 20 Lynnwood Road, Redhill, Surrey, RH1 1JS, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name is <facconable.com> .
The Registrar is Tucows, Inc., of 96 Mowat Avenue, Toronto, ON, M6K 3M1, Canada.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center in hardcopy on November 16, 2001, and by e-mail on December 12, 2001. The Complaint was acknowledged on November 23, 2001. The same day registration details were sought from the Registrar. On December 12, 2001, the Registrar confirmed that the disputed domain name is registered in the name of the Respondent at the address mentioned above and that the Policy applies as per section 7 of the Registration Agreement.
On December 14, 2001, the Center satisfied itself that the Complaint complied with all formal requirements (including payment of the prescribed fee) and that day formally dispatched copies of the Complaint by post/courier (with enclosures) to the Respondent at its address as recorded with the Registrar and by e-mail (without attachments). The Center also sent copies of the material by the same methods to the Respondent’s Administrative, Billing and Technical Contacts at the addresses recorded by the Registrar and included with the material dispatched to the Respondent and to those contacts a letter dated December 14, 2001, containing notification of the commencement of this administrative proceeding, with copies (of the Complaint without attachments) to the Complainant, the Registrar and ICANN.
The material that had been sent to the Respondent by courier was delivered to it on December 21, 2001.
The last day specified by the Center for a Response was January 3, 2002. No Response was filed. On January 4, 2002, the Center gave formal notice of the Respondent’s default.
The Complainant elected to have the case decided by a single-member Administrative Panel ("the Panel"). In accordance with Paragraph 6(e) of the Rules, the Center appointed Herman Verbist as Single-Panelist, after he had submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On the same day, the Center transmitted the case file to the Panel and notified the parties of the projected decision date of February 5, 2002.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Center’s assessment concerning the Complaint’s compliance with the formal requirements; the Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint; no Response was filed and the Panel was properly constituted. Therefore the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent.
The language of the proceedings was English, being the language of the Registration Agreement.
4. Factual Background
The Complainant Façonnable SAS, a French corporation, sets out that it is a well-known high-quality garment designer and manufacturer and that it is an independently managed subsidiary of Nordstrom, which is a US specialty retailer.
Façonnable SAS points out that it is the owner of the French trademark "FACONNABLE", registered under n° 1.353.838 on May 7, 1986, regularly renewed since then, and covering the products of the following classes of the international classification: 3, 8, 9, 14, 16, 18, 20, 21, 24, 25, 28 and 34 (Complaint Annex 5) and that this trademark is being used for the cited products and has also been registered in numerous countries throughout the world, notably in the United Kingdom (Complaint Annex 6). The Complainant stresses that through its regular and constant use over the years and the importance of the advertisement realized for its promotion, "Façonnable" has become a notorious trademark (Complaint Annex 7) (Complaint, paragraph 13 on page 6).
The Respondent registered the domain name <facconable.com> with Tucows, Inc.
The Complainant sets out that the home page of the website <facconable.com> showed a presentation of the Façonnable group (in making references to garments, perfumes, French fashion, etc.) and its relations to Nordstrom and that, just below such presentation, the following comment appeared: "This domain name is for sale. If you are interested in acquiring it, please contact us through an e-[…] your offer in US dollars: "firstname.lastname@example.org" (Complaint, paragraph 17 on page 7).
On July 25, 2001, the Complainant’s counsel sent a registered mail and an e-mail to the Respondent at the address of its Administrative and Billing Contact, Mr. Andrew Stehrenberger of 20 Lynnwood Road, Redhill, Surrey, RH1 1JS, United Kingdom with the following content (Complaint Annex 3):
The French company Façonnable SAS is the owner of a French trademark "Façonnable", registered under n° 1.353.838 since 1976. Such trademark has been registered in many countries all over the world.
However, it has been informed that you are the owner of an Internet site whose address is "facconable.com".
This site promotes "Facconable: Nordstrom, facconable, Façconable, nordstrom".
The registration of the domain name in itself is constitutive of an offence to Façonnable’s trademarks rights.
Moreover, the use of an imitation of my client’s trademark together with the name Nordstrom, which is the name of the company that recently acquired Façonnable SAS, are constitutive of an offence to Façonnable’s trademarks rights and to Nordstrom’s company name.
However, the companies Façonnable and Nordstrom would be ready to settle this issue amicably under the following conditions:
- cease, as from the reception of the present, to use the domain name "facconable.com",
- cease, as from the reception of the present, of any use and in any way of the names "Facconable, Façconnable and/or Nordstrom",
- cancellation of the "facconable.com" domain name;
- interdiction to sale such domain name.
Being amicably, this proposal is meant to last for the next seven days. Unless we receive an answer within this deadline, Façonnable and will have no other choice but to seize the WIPO Arbitration and Mediation Center.
Arnaud Michel, Avocat à la Cour"
On August 7, 2001, Mr. Andrew Stehrenberger, to whom Mr. Michel had sent his letter of July 25, 2001, responded on letter head of a company called Stez Media Ltd. of 33-35 Station Road, Redhill, Surrey, RH1 1QH, United Kingdom and answered as Managing Director of that company to Complainant’s counsel’s letter as follows (Complaint Annex 4):
"Dear Mr. Michel,
Re: Faconnable / Facconable.com
Many thanks for your letter dated 25th July.
The words Faconnable and Facconnable are different. If we are not trading or ‘passing off’ your registered French trademark I do not think there is a problem in law.
As a gesture of goodwill, we have temporarily suspended the holding web page that appeared under our domain facconable.com. But there is obviously no way in which you can prevent us, the legal owners of this domain name, from selling it to whomsoever we please – it is our property!
We had intended using this domain name for a project in the near future. However, if we decide to sell the domain name to a third party, we obviously have no control over what the new owners will use the domain for without recourse to law.
If your client would like to purchase the domain name (we could consider offers in the region of GBP Ј 10,000) then your client can own the name and control its usage. Until such time and whilst remaining the legal owners, we will continue to use the domain name or sell it as we shall decide.
The file submitted to the Panel contains no other communications that were exchanged between the parties in this matter.
5. Parties’ Contentions
The Complainant requests the Panel to issue a decision that the domain name <facconable.com> be transferred to the Complainant and it invokes the following legal grounds as a basis for the relief sought:
Identity or confusing similarity
The Complainant asserts that the disputed domain name <facconable.com> is identical or confusingly similar to the Complainant’s trademark Façonnable. "Facconable" almost constitutes a slavish reproduction of the trademark. The only difference consists in the doubling of the letter "c" and the "de-doubling" of the letters "n". This modification is hardly perceptible for the consumers and is likely to create confusion between the trademark "Façonnable" and the domain name (Complaint, paragraph 15 on page 6).
The Complainant contends that the Respondent has no right in respect of the domain name <facconable.com> and has no title to use either the trademark "Façonnable" or an imitation of this trademark (Complaint, paragraph 16 on page 7).
The Complainant holds that the disputed domain name was registered and used in bad faith, thereby pointing out that the registration in bad faith results from several elements:
(i) the renown of the trademark FACONNABLE;
(ii) the name of the registrant: NAMES4SALE; this indicates that the main goal of the site is to resell domain names.
The Complainant asserts that the registration in bad faith is further proven by the use which the Respondent made of the domain name. It alleges that a printout of the website <facconable.com> shows that the Respondent always had intention to trespass on the Complainant’s trademark and goodwill. It thereby points out that the home page of the site <facconable.com> shows a presentation of the FACONNABLE group and its relations to Nordstrom but that the name FACONNABLE has been changed into "Facconable" or "Façconable" and that, moreover, just below such presentation the following comment appears: "This domain name is for sale. If you are interested in acquiring it, please contact us through an e-[…] your offer in US dollars: email@example.com" (Complaint, paragraph 17 on page 7).
B. The Respondent
No Response was filed.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Failure to file a Response, in the absence of exceptional circumstances, permits the Panel to infer that the Respondent does not deny the facts which the Complainant asserts nor the conclusions which the Complainant asserts can be drawn from those facts: Rule 14(b) and see Reuters Limited v. Global Net 2000, Inc. (WIPO Case No. D2000-0441): Hewlett-Packard Company v. Full System S.a.S. (NAF Case No. FA0094637); David G. Cook v. This Domain is For Sale (NAF Case No. FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (NAF Case No. FA0094925).
Identity or confusing similarity
Essential or virtual identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc. (WIPO Case No. D2000-0113), Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (WIPO Case No. D2000-0802) and Nokia Corporation v. Nokiagirls.com a.k.a IBCC (WIPO Case No. D2000-0102).
The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is usually confined to a consideration of the disputed domain name and the trademark: AltaVista Company v. S.M.A., Inc. (WIPO Case No. D2000-0927); Gateway, Inc. v. Pixelera.com, Inc (formerly Gateway Media Productions, Inc.) (WIPO Case No. D2000-0109); America Online Inc. v. Anson Chan (WIPO Case No. D2001-0004) Cimcities, LLC v. John Zuccarini d/b/a Cupcake Patrol (WIPO Case No. D2001-0491) and Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa (WIPO Case No. D2001-0745).
Here, the disputed domain name <facconable.com> is written almost identically as the trademark FACONNABLE, with a different spelling only as regards the "c" and the "n". It does nothing to detract from the immediate association with the Complainant aroused in the public mind by the word FACONNABLE.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s famous registered trademark FACONNABLE. The Complainant has established this element.
The Complainant has not authorized the Respondent to use its trademark nor to register the disputed domain name. The Respondent is not known by the disputed domain name. The Respondent cannot have been unaware of the renown of the FACONNABLE mark when it registered the disputed domain name.
It is thus apparent that the Respondent’s site has been designed to attract Internet users because of the renown of the FACONNABLE mark. The Respondent is trading off the Complainant’s goodwill in so doing and is not offering bona fide services: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and <madonna.com> (WIPO Case No. D2000-0847).
The Panel finds that the Complainant has established this element. The Respondent has no rights or legitimate interest in the disputed domain name.
Bad faith registration and use
A finding of bad faith may be made where the Respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name: SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF Case No. FA0094956). Likewise Marriott International, Inc. v. John Marriot (NAF Case No. FA0094737); 163972 Canada Inc. v. Sandro Ursino (DeC Case No. AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF Case No. FA0095037).
Given the international renown of the FACONNABLE trademark, the Panel finds that the Respondent must have known of the FACONNABLE mark before it registered the domain name.
It is clear from the Respondent's initial communication, and moreover from its above referenced announcement on its website, that the primary purpose of the Respondent in registering the disputed domain names was to sell it to the Complainant for a price greatly exceeding the direct costs of its registration (Complaint Annex 4). This is evidence of both bad faith registration and bad faith use under paragraph 4(b)(i) of the Policy. The Respondent's refusal to settle the case amicably and its threat to sell the name to a third party unless Façonnable made an offer "in the region of GBP Ј10,000" was a clear attempt to drive up the price which the Complainant might be induced to pay.
By intentionally diverting Internet users, for commercial gain, from what they expect to be the Complainant’s site to the Respondent’s competing site at <facconable.com>, the Respondent has allowed those users to infer a relationship between the Complainant and the Respondent that does not exist. This is evidence of both bad faith registration and bad faith use under paragraph 4(b)(iv) of the Policy.
The Complainant has established this element.
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain names <facconable.com> be transferred from the Respondent to the Complainant.
Dated: February 18, 2002