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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SFR v DLI Dale Miller
Case No. D2002-0425
1. The Parties
Complainant is SFR, represented by BIRD&BIRD, Maître Isabelle LEROUX, 6 rue de Caumartin, 75009 Paris, hereinafter "the Complainant".
Respondent is DLI Dale Miller, 575 5th Avenue – 11th Floor New York, NY 10018, United States of America, hereinafter "the Respondent".
2. Domain Name and Registrar
The domain name in dispute is <wwwsfr.com>, hereinafter the "Domain Name".
The registrar for the disputed domain name is Register.com Inc, 575 8th Avenue – 11th Floor, New York, NY 10018, United States of America.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint, received by the WIPO Arbitration and Mediation Center ("the Center") on May 3, 2002. On May 10, 2002, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant.
(b) On May 10, 2002, the Center transmitted a Request for Registrar Verification to the registrar, with the Registrar’s Verification received by the Center May 22, 2002, confirming that the domain name at issue was registered through Register.com Inc.
(c) On May 23, 2002, the Center transmitted Notification of the Complaint and Commencement of the Administrative Proceeding to the Respondent, after having satisfied itself that the Complainant had complied with all formal requirements pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 ("the Policy"), the Rules for the Policy approved by ICANN on October 24, 1999 ("the Rules"), and the Supplemental Rules for the Policy ("the Supplemental Rules").
(d) No Response has been submitted by the Respondent. Accordingly, the Center issued a Notification of Respondent Default on June 21, 2002.
(e) In view of the Complainant’s designation of a single panelist, the Center invited Mr. Peter Nitter to serve as a panelist. Having received his Statement of Acceptance and Declaration of Impartiality and Independence of July 1, 2002, the Center formally appointed him as Sole Panelist. The parties were notified of the Appointment of Administrative Panel on July 1, 2002.
(f) The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.
4. Factual Background
Complainant is a company specialized in mobile telecommunications.
Complainant has presented copies of an international trademark registration of the mark SFR, as well as national trademark registrations of the mark in France, United States of America, Britain and Northern Irland.
Complainant has registered and uses the domain name <sfr.com> for their services.
The Respondent has registered the domain name <wwwsfr.com>.
5. Parties’ Contentions
The Complainant asserts that:
The domain name is confusingly similar to the trademark SFR
The Domain Name consists of the Complainant’s trademark with the adjunction of the three letters www and the gTLD .com.
The addition of the "www" protocol and of the gTLD .com which is required for registration of the domain names, have no distinguishing capacity in the context of domain name and do not alter the value of the trademark represented in the Domain Name. Therefore, the only distinctive element of the domain name concerned is "SFR", which is strictly identical to the Complainant’s trademark, and the use of lower case letter format does not prevent from confusion.
Consequently, because of this identity, there is a high risk of confusion, as a consumer may think that this domain directly refers to the Complainant’s services.
Respondent has no rights or legitimate interests in the Domain Name
There is no license, consent or other right by which the Respondent would have been entitled to register or use the Domain Name incorporating the Complainant’s trademark SFR.
The Complainant has prior rights in that trademark, which precede by many years Respondent’s registration of the Domain Name.
Furthermore, the Respondent has made no use or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Moreover, the trademark SFR is well known throughout France and the world to designate services relating to mobile telecommunications.
Registration and use in bad faith
The obvious bad faith of the Respondent results from the following elements:
a) Respondent has no prior right and no authorization given by the Complainant concerning the SFR trademark. The registration of the Domain Name has not been made with bona fide intention.
b) The notoriety of the trademark SFR. This mark enjoys a great notoriety in France and all over the world, and this demonstrates that Respondent registered the Domain Name knowingly.
c) The Respondent’s intention to create a likelihood of confusion with the Complainant’s trademark. By using the Domain Name the Respondent attempts to create a likelihood of confusion with the Complainant’s marks as to the source or affiliation of the Respondent’s website which is linked to the Domain Name.
There is no doubt that the Respondent’s use and misappropriation of Complainant’s marks is for purely commercial purposes. Indeed, when users go to the Domain Name URL, they are taken to a web page with a link entitled "cliquez ici pour acceder à <www.sfr.com>. When selecting this link, the users are forwarded to the official sfr website front page and immediately after to a second screen web page containing pornographic sites.
The Respondent has obviously registered the Domain Name for the purpose of luring Internet users to the site by causing confusion as to its source and content, so that it could profit when those users click through to the link to sexually explicit web sites.
The omission by the Respondent of a punctuation mark in the Domain Name litigious in order to divert Internet traffic is a case of "typo squatting", and typo squatting constitutes itself an element of bad faith.
Because of the well-known character of the Complainant’s trademarks, the Respondent could not have been unaware of the Complainant’s trademarks and its reputation when the Domain Name was registered. Consequently, the linkage to "adults" websites indicates both desire to tarnish the marks and a desire to profit from an unjustified use of the Domain Name.
The Complainant requests the Administrative Panel issue a decision that the Domain Name be transferred to the Complainant.
The Respondent has not submitted a response, and is thus in default. Respondent has neither made any submissions after the Notification of Respondent Default.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests that a complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the 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 such domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
6.1 Identical or confusingly similar to a trademark or a service mark in which the complainant has rights
Based on the evidence, the Panel finds that the Complainant has rights to the trademark SFR.
The Domain Name at issue is <wwwsfr.com>.
The Panel considers that, as found in several earlier Panel decisions, the suffix .com does not influence on the consideration of similarity.
The Domain Name consists of the three letters "www" and the Complainant’s trademark SFR.
The Panel agrees with the Complainant that the addition of the letters "www", which is an acronym for "world wide web", have no distinguishing capacity. It is not sufficient to give the Domain Name an individual meaning.
On the basis of these considerations, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademarks.
6.2 Rights or legitimate interests in the domain name
The Panel has considered the allegations by the Compliant as to the lack of rights or legitimate interests of the Respondent in respect of the Domain Name.
Respondent is not a representative or licensee of the Complainant, nor has Respondent any other authorization to use the Complainant’s trademarks.
The Panel has visited the web site of the Respondent in order to investigate whether there could be found any evidence as to Respondents rights or legitimacy of interest with regard to the Domain Name. At present the address does not resolve to any active web site, and so the Panel could not find any such evidence.
As a result of default, the Respondent has not contested the allegations put forward by the Complainant. Neither has Respondent presented any evidence of use or preparations to use the Domain Name in connection with a bona fide offering of goods or services.
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
6.3 Registration and use in bad faith
The Panel has considered Complainant’s allegations and evidences with regard to the Respondent’s registration and use of the Domain Name in bad faith.
Complainant has put forward evidence that his trademarks are well known, and the Panel finds that the trademarks of the Complainant in all probability have been known to Respondent when registering the Domain Name.
At the moment there is no web site corresponding to the Domain Name, thus the Respondent does not conduct any legitimate commercial or non-commercial business activity under the Domain Name.
However, Complainant has presented printouts of previous websites corresponding to the Domain Name, showing that the Domain Name has been linked to pornographic sites.
Together with the obvious intention to create a likelihood of confusion by adding "www" to the Complainant’s trademark, this indicates that the Domain Name was registered and used in an attempt to attract Internet users to the Respondent’s sites for commercial gain.
By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the Domain Name in bad faith.
Based on the above discussion, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.
The Panel has found that the Domain Name <wwwsfr.com> is confusingly similar to a trademark held by the Complainant, and that the Respondent has no rights to or legitimate interest in the Domain Name. The Panel further finds that the Domain Name has been registered in bad faith, and that it is being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that the domain name <wwwsfr.com> be transferred to the Complainant.
Peter G. Nitter
Dated: July 15, 2002