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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

France Telecom v. Domaincar

Case No. D2006-0179

 

1. The Parties

The Complainant is France Telecom, Paris, France, represented by an external representative, France.

The Respondent is Domaincar, Panama, Panama.

 

2. The Domain Name and Registrar

The disputed domain name <francetelekom.com> is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2006. On the same day, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the domain name at issue. On February 14 and 28, 2006, DSTR Acquisition VII, LLC d/b/a Dotregistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 1, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 22, 2006.

The Center appointed Philippe Gilliйron as the sole panelist in this matter on March 28, 2006. 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

The Complainant is a major actor in the field of telecommunications.

Its core trademark, FRANCE TELECOM, is protected in several countries and includes the following registrations:

- French word trademark FRANCE TELECOM, filed on November 14, 1986, and registered under N° 1379676 in classes 9 and 38, duly renewed on November 12, 1996;

- French word trademark FRANCE TELECOM, filed on May 4, 1987, and registered under N° 1415599 in classes 9, 16, 38 and 42, duly renewed on April 30, 1997;

- International word trademark FRANCE TELECOM, filed on September 22, 1987, and registered under N° 519 049 in international classes 9, 16, 35, 38 and 42 in the following countries: Algeria, Armenia, Austria, Belarus, Benelux, Bulgaria, Democratic People’s Republic of Korea, Germany, Egypt, Hungary, Italy, Kyrgyzstan, Kazakhstan, Liechtenstein, Monaco, Mongolia, Morocco, Republic of Moldova, the former Yugoslav Republic of Macedonia, Poland, Portugal, Romania, Russian Federation, San-Marino, Spain, Serbia and Montenegro, Sudan, Switzerland, Tajikistan, Tunisia, Uzbekistan, Viet Nam and;

- Community trademark FRANCE TELECOM, filed on January 14, 2002, and registered under N° 002533396 in international classes 9, 14, 16, 18, 25, 28, 35, 36, 37, 38, 41 and 42.

The Complainant also owns numerous domain names, including:

- <francetelecom.com> registered on September 14, 1995;

- <france-telecom.com> whose transfer for the benefit of France Telecom was ordered on April 22, 2002, in France Telecom SA v. France Telecom Users Group, WIPO Case No. D2002-0144;

- <francetelecom.net> registered on February 10, 1998;

- <francetelecom.org> registered on February 10, 1998;

- <francetelecom.info> registered on July 30, 2001;

- <francetelecom.biz> registered on November 19, 2001.

On June 29, 2004, UNASI, Inc. registered <francetelekom.com>.

On October 24, 2005, the Complainant sent a cease and desist letter to UNASI, Inc. and requested it to transfer the disputed domain name in its favor. The letter could not be delivered and was sent in return to the Complainant.

Today, <francetelekom.com> is owned by the Respondent, whose contact details are identical to the ones provided by UNASI, Inc.

 

5. Parties’ Contentions

A. Complainant

1) Identical of Confusingly Similar

The Complainant first asserts that the domain name is confusingly similar to its FRANCE TELECOM trademarks. The mere distinction between the two resides in the usage of the letter “K” instead of a “C”, which is clearly insufficient to exclude a likelihood of confusion. The domain name and the trademarks are pronounced in an identical way. “Telekom” is the direct German translation of “Telecom”, and most internet users who do not speak French are likely to misspell the word and type “telekom” instead of “telecom”.

2) Rights or Legitimate Interests

The Respondent has never been authorized by the Complainant to make use of its trademarks. The absence of any reply from the Respondent to the notice that was sent by the Complainant on October 24, 2005, confirms that the Respondent has no right or legitimate interest in the domain name.

3) Registered and Used in Bad Faith

The Complainant alleges that the Respondent’s bad faith results from the following circumstances:

- The Respondent did not reply to the cease and desist letter that was sent to it by the Complainant;

- The Respondent would apparently have reserved <francetelekom.com> under a false identity;

- The Respondent was aware of the existence of the Complainant when it reserved the domain name;

- The domain name refers to a webpage with no content as such but with mere “sponsored links” that would be the result of an affiliation of the Respondent to the service “Google Adsense for domains”. This service makes it possible to capitalize on a domain name by redirecting the traffic to this domain name towards Web sites whose domain names offer commercial link with the domain name thus exploited.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

A. Procedural Issue

As pointed out by the Complainant, the domain name was originally registered by UNASI, Inc. before being transferred to the Respondent. This transfer does however not raise any concern.

While paragraph 4(a)(iii) of the Policy requires that “the domain name has been registered and is being used in bad faith”, the “registration” requirement should not be construed too narrowly. When a domain name is transferred to a new entity, the issue is to know whether that particular entity acquired the domain name in bad faith. In other words, bad faith has to be appraised at the time of the transfer instead of the registration.

B. Identical or Confusingly Similar

According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Though not identical, there is no doubt that <francetelekom.com> is confusingly similar to the Complainant’s trademarks.

First, the gTLD is a technically necessary element of a domain name, which should not be considered as relevant in appraising the likelihood of confusion between a trademark and a domain name (Tengizchevroil v. Hardinvestments Limited, WIPO Case No. D2002-0061; Joe David Graedon v. Modern Limited. – Cayman Web Development, WIPO Case No. D2003-0640; Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493). As such, the mere addition of the gTLD “.com” does not exclude the likelihood of confusion.

Second, the domain name at dispute falls into the category of typosquatting, i.e., the use of misspelling famous trademarks so as to direct users who would make a typographical error to another website other than the one of the right holder (Reuters Limited. v. Global Net 2000, Inc., WIPO Case No. D2000-0441). As stated in Reuters, a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive. Such is the case with <francetelekom.com>.

Accordingly, the Panel finds that the Policy, paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(b)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name.

In Do The Hustle LLC v. Tropic Web, WIPO Case No. D2000-0624, the Panel stated: “Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.”

In this case, the Respondent does not bring any evidence that would demonstrate any legitimate interest or right in the domain name as it did not file a Response. More specifically, the Respondent does not demonstrate that:

(i) before any notice to it of the dispute, it used or made preparations to use the domain names or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) it is commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Considering the fame of the Complainant, this Panel finds it hard to conceive that someone living in Panama would unconsciously register a domain name that is almost identical to the Complainant’s trademarks. Consequently, it is the Panel’s opinion that the Respondent most likely had knowledge of the Complainant’s trademarks when it registered the domain name. Its choice for such a domain name cannot be explained but as a misappropriation of the Complainant’s trademarks. As stated in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, “use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy”.

For this reason, the Panel agrees with the Complainant’s contentions and considers Policy, paragraph 4(a)(ii) to be fulfilled.

C. Registered and Used in Bad Faith

For a Complaint to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).

To have registered the domain name in bad faith, the Respondent must have been aware of the existence of the Complainant.

From the outset, it is worth mentioning that the registration of a domain name obviously connected with well-known trademarks by someone without any connection to these trademarks suggests opportunistic bad faith (Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

In the present case, the Complainant alleges that “With well over 130 million customers throughout the world to be found on the five continents (220 countries or territories), the FRANCE TELECOM group is a major actor in the field of telecommunications with an international scope and fame”. However, the Complainant does not submit any evidence that would demonstrate that its trademarks are either registered or used or well-known in Panama. The international trademark to which the Complainant refers is not registered in Panama, and the only indication of trademark registrations in Panama relates to a mention in the letter that was sent on October 24, 2005, by the Complainant to the Respondent. The Panel is however unable to appraise the accuracy of these assertions without any trademark registration certificates. While the holding of a trademark in the Respondent’s country is not required, the Complainant has to demonstrate Respondent’s bad faith, and thus its knowledge of the Complainant’s trademarks.

While regretful, this negligence does not lead to a dismissal of the Complaint. As stated previously, even though the Complainant would not carry any activity in Panama under the trademark FRANCE TELECOM, this Panel finds it hard to believe that someone living in Panama would have registered the domain name at dispute by chance, without any knowledge of the Complainant.

This assumption is confirmed by several facts:

First, paragraph 4(b)(iv) of the Policy provides for a finding of bad faith where “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Respondent does not provide any services that would justify the registration of <francetelekom.com> other than its intent to attract Internet users to its locations by relying on their confusion with the trademarks of the Complainant, and to take advantage of internet users typing an incorrect address.

Second, the Respondent’s domain name points to websites which are a mere collection of links to other websites. While the Complainant’s evidence regarding a possible affiliation of the Respondent to Google Adsense cannot be taken into consideration as they were only submitted in French in a proceedings conducted in English, they are not decisive. Panels have already stated that such websites are a vehicle for generating revenues, since every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections (Deutsche Telekom AG v. WWW Enterprises, Inc., WIPO Case No. D2004-1078). By using this domain name, the Respondent therefore has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademarks. Policy, paragraph 4 (b)(iv) is therefore satisfied.

The Panel finds that Policy, paragraph 4(a)(iii), has been satisfied.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <francetelekom.com> be transferred to the Complainant.


Philippe Gilliйron
Sole Panelist

Date: April 4, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0179.html

 

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