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France Telecom v. Richard J.
Case No. D2006-0807
1. The Parties
The Complainant is France Telecom, Paris, France, represented by Marguerite Bilalian, Paris, France.
The Respondent is Richard J., California, United States
2. The Domain Names and Registrar
The disputed domain names <agencefrancetelecom.com>
and <espaceclientfrancetelecom.com> are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2006. On June 28, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On June 29, 2006, eNom 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 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 July 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2006.
The Center appointed Anders Janson as the sole panelist
in this matter on August 8, 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,
4. Factual Background
The Complainant asserted, and provided evidence in support of, the following facts, which the Panel finds established:
The Complainant is a company incorporated and existing under the laws of France. The Complainant which together with its branches and affiliates constitutes an international telecommunications group has more than 130 million customers worldwide and operates on five continents in more than 220 countries and territories. The Complainant’s key trademark is FRANCE TELECOM and is used to promote most of the products and services the Complainant offers within the field of telecommunication, such as fixed-line telephone, mobile telephone and Internet access.
According to the Complainant the trademark FRANCE TELECOM is under protection throughout the world. As examples of the trademark protection the Complainant has, in the Complaint, put forward a number of registrations:
- French Word trademark FRANCE TELECOM, filed on November 14, 1986, registration number 1379676, in international classes 9 and 38, renewed on November 12, 1996.
- French Word trademark FRANCE TELECOM, filed on May 4, 1987, registration number 1415599, in international classes 9,16, 38 and 42, renewed on April 30, 1997.
- International Word trademark FRANCE TELECOM, filed on September 22, 1987, registration number 519 049, in international classes 9, 16, 35, 38 and 42.
- Word European trademark FRANCE TELECOM, field on January 14, 2002, registration number 002 533 396, in international classes 9, 14, 16, 18, 25, 28, 35, 36, 37, 38, 41 and 42.
- Untied States trademark FRANCE TELECOM, field on June 13, 1995, registration number 1 898 606 in international classes 9, 16 and 38, renewed in 2005.
Furthermore, the Complainant has registered nearly 150 domain names made up of denominations “francetelecom” or “france-telecom”. As examples of these domain the Complainant has, in the Complaint, put forward the following:
- <francetelecom.com>, registered on September 14, 1995;
- <france-telecom.com>, transferred to the Complainant through WIPO decision 2002-0144;
- <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.
The Panel notes that the registration dates of all the trademarks and domain names predates the registrations of the disputed domain names by the Respondent, which was on November 11, 2004.
The Respondent is Richard J. Very little is known of the identity and address of the Respondent. According to the information provided by eNom the Respondent is located in California, United States of America. The stated phone and fax numbers are American.
The disputed domain names are not in use for the time being and are locked by eNom. The Panel however, on the basis of the evidence provided by the Complainant, finds it established that the websites of the disputed domain names until quite recently consisted of websites with sponsored links leading to websites dealing with products and services in the telecommunications field, such as sites offering telephone or Internet access services, proposing competing services to those of the Complainant.
The Respondent is in default and, accordingly, has
not challenged the conclusions of the Complainant.
5. Parties’ Contentions
The Complainant contends that:
- The disputed domain names are confusingly similar to the trademark FRANCE TELECOM in which the Complainant has rights;
- The Respondent has no rights or any legitimate interests in respect of the domain names;
- The domain names were registered and have been used in bad faith; and
- The domain names <agencefrancetelecom.com> and <espaceclientfrancetelecom.com> should be transferred to the Complainant
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain names at issue are <agencefrancetelecom.com> and <espaceclientfrancetelecom.com>. The Panel finds it, based on the evidence put forward by the Complainant, established that FRANCE TELECOM is a registered trademark and that the trademark is both distinctive and famous.
Both the disputed domain names contain the Complainant’s trademark FRANCE TELECOM in its entirety, <agencefrancetelecom.com> with the added suffix “agence” and the generic and functional top level domain name “.com”, <espaceclientfrancetelecom.com> with the added suffix “espaceclient” and the generic and functional top level domain name “.com”.
When determining whether a domain name and a trademark are identical or confusingly similar, the gTLD shall be disregarded. The question is therefore if the addition of the suffixes “agence” and “espaceclient” renders the disputed domain names dissimilar from Complainant’s registered trademarks.
The fact that a domain name wholly incorporates a Complainant’s registered
mark is sufficient to establish identical or confusingly similarity for the
purpose of the Policy, despite the addition of other words to such marks, is
a well-established doctrine, found by numerous Panelists (Oki Data Americas
Inc v. the ASD Inc, WIPO Case No. D2001-0903
and CSC Holdings, Inc. v. Elbridge Gagne, WIPO
Case No. D2003-0273).
The Panel finds that the term FRANCE TELECOM is the distinctive part of both the disputed domain names. The generic term “agence” is the French word for “store” and the generic term “espaceclient” is the French word for “client’s space”. The overall impression that these terms add to the overall impression of the two disputed domain names is very small, even insignificant. There is a clear risk that Internet users assume that the addition of the words “agence” and “espace client” to the word FRANCE TELECOM signifies websites operated by the Complainant. Circumstances strengthening the evidence for a risk of confusion regarding the disputed domain name <agencefrancetelecom.com> are the fact that the Complainant use the word “agence” to designate its stores and edits and operates the website <agence.francetelecom.com> where its telecommunication products and services are presented and commercialized. Circumstances strengthening the evidence for a risk of confusion regarding the disputed domain name <espaceclientfrancetelecom.com> are that the term “espace client” is an expression commonly used to designate a space reserved for the clients of a company. Moreover, “espace client” constitutes the name of one of the web pages of the website <francetelecom.fr>, owned and operated by the Complainant, enabling the clients of the group France Telecom to access, visualize and manage their accounts and invoices etc.
With reference to the discussion above, the Panel finds that the addition of the suffixes “agence” and “espaceclient” does not diminish the similarity between the disputed domain names and the Complainant’s trademark.
The disputed domain names must therefore be considered confusingly similar to the trademark FRANCE TELECOM. The Panel holds that the Complainant has established element (i) of the Policy’s Paragraph 4(a).
B. Rights or Legitimate Interests
The Complainant has asserted that the Complainant has exclusive rights for the trademark FRANCE TELECOM and that no authorization to use FRANCE TELECOM in the disputed domain names has been given to the Respondent, and that the latter as a consequence of this has no rights in the disputed domain names.
The Respondent has not filed a Response in accordance with the Rules, paragraph
5. In those circumstances, when the Respondent does not have an obvious connection
with the disputed domain names, the Panel considers that the mere assertion
from the Complainant that the Respondent has no right or legitimate interest
is enough to shift the burden of proof to the Respondent to demonstrate that
such right and legitimate interest exists (Six Continents, PLC v. Party Night,
Inc., WIPO Case No. D2003-0019).
The Respondent has not demonstrated or argued that he used or prepared to use the disputed domain names in connection with a bona fide offering of goods or services or that any other right or legitimate interest exists. Registration of a domain names in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy. In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain names and has no obvious connection to it. The Complainant has also made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and this has not been rebutted. The Panel therefore holds that the Complainant has established element (ii) of the Policy’s paragraph 4(a).
C. Registered and Used in Bad Faith
Finally, the Panel has to consider if the disputed domain names have been registered and have used in “bad faith”.
Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name.
Paragraph 4(b)(iv) states that a circumstance indicating bad faith is using a domain to intentionally attempt to attract, for commercial gain, Internet users to your web-site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of your website or location or of a product or service on your website or location.
The Complainant has asserted that the Respondent’s registration and prior use of the disputed domain names is undoubtedly made in bad faith with regard to the Complainant’s well-established rights to the well-known trademark FRANCE TELECOM. The Complainant has furthermore asserted that it is obvious that the Respondent has reserved and used the disputed domain names in order to unduly make a profit from the fraudulent use of the fame of the France Telecom company and its trademark FRANCE TELECOM in the field of communications, which characterizes a reservation and a use made in bad faith according to article 4 (a) of the governing Principles.
The Panel has established that the trademark FRANCE TELECOM is well known and recognizable. Internet users searching for telecommunication and Internet services provided and marketed by the Complainant are likely to visit the Respondent’s website.
It is much unlikely that the Respondent by accident registered the disputed domain names, which differs from the Complainant’s trademark only by the addition of the suffixes “agence” and “espaceclient”. This, together with the fact that the suffixes “agence” and “espaceclient”, chosen by the Respondent, also are used by the Complainant within the field of its customer relations is, according to this Panel, an proof of that the registrations of the disputed domain names were made in bad faith.
The Panel finds, with reference to the above-mentioned and the evidence provided by the Complainant, that the Respondent has been using the disputed domain name in bad faith, hence having intentionally attempted to attract, for commercial gain, Internet users to web-sites, by creating a likelihood of confusion with Complainant’s mark as to the source. The fact that the domain names have been deactivated does not cure the prior bad faith use of the disputed domain names.
As has been established above, the only use of the domain names seems to be to market and offer products in direct competition to the Complainant through the creation of confusion with the Complainant and it’s mark.
The Panel therefore concludes that the Complainant has proven that the Respondent
was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.
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 names, <agencefrancetelecom.com> and <espaceclientfrancetelecom.com> are transferred to the Complainant.
Dated: August 22, 2006