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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

NRJ Group S.A. & N.R.J. S.A. v. Colombani Raphaël

Case No. D2002-1161

 

1. The Parties

The Complainants are NRJ Group S.A. & N.R.J. S.A., 22 rue Boileau, Paris, France, represented by Vaïsse & Associés of France.

The Respondent is Colombani Raphaël, of Carouge, Switzerland.

 

2. The Domain Names and Registrars

The disputed domain names are

<hotnrj.com>
<hotnrj.net>
<hotnrj.org>
<sexnrj.com>
<sexnrj.net>
<sexnrj.org>

The domain names <hotnrj.com>, <sexnrj.com> & <sexnrj.net> are registered with Gandi SARL, Paris, France and the remaining with eNom, WA, USA.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 20, 2002. On December 24, 2002, the Center transmitted by email to Gandi SARL and eNom a request for registrar verification in connection with the domain names at issue. On December 26, 2002, and January 3, 2003, respectively Gandi SARL and eNom 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.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 17, 2003. Also, the Complaint had been filed in French, but since at least some of the domain names were registered on the basis of an English registration agreement, and since the Respondent requested the proceedings to be in English, an English version was sent to the Center on January 17, 2003.

The Center verified that the Complaint together with the amendment to 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 January 22, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2003. Having received no Response the Center issued a Notification of Respondent default on February 13, 2003. However, the Respondent filed a Response with the Center on February 14, 2003. It follows from the Rules, paragraph 10 (b) that each party shall be given a fair opportunity to present its case. The Panel has decided to accept the late filing of the Response and will thus take this into consideration when deciding the case.

The Center appointed Knud Wallberg as the Sole Panelist in this matter on March 11, 2003. 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

Complainants operates a radio station managed and operated mainly in France, broadcasting music, and whose main target audience is an audience gathering people from 11 to 49 years old. The Complainants also provide a large range of information and services related or unrelated to its activities which can be obtained through its website "www.nrj.fr." These services through Complainants’ website provide inter alia music news, cinema news, interviews and concerts on a webtv, services re entertainment and games. Also, the Complainants conduct activities on the web and in the field of data communication under the name NRJ.

The Complainant is the holder of several registrations of the trademark "NRJ," such as French trademark "NRJ" registered in France on June 17, 1982, under the number 1.206.811 for goods and services in classes 9 and 38 (said registration having been renewed on May 27, 1992); the "NRJ" registered in France on April 14, 1982, under n° 626.655 and registered under n° 1.201.464 in class 38; the trademark "NRJ" registered in France on January 5, 1997, under n° 97702960 in classes 9, 12, 14, 15, 16, 25, 30, 32, 35, 38 and 41 and the trademark "NRJ" registered in France on January 30, 1996, under n° 96608198 in class 38.

NRJ GROUP is the current owner of the above mentioned trademarks, as shown by the notices of registration at INPI of June 29, 2000, and September 13, 2000, related to the transfer of ownership of said trademarks to the SONOPAR Group and to the change of name of the latter into NRJ GROUP.

The Complainant is also the holder of the Swiss trademark "NRJ" registered under n° 412.826 by NRJ SA on May 16, 1994, in classes 35, 38, 39, 41 and 42 and the international semi-figurative trademark "NRJ" registered on August 7, 1985, notably for Switzerland, for a twenty year period, in classes 9, 16, 25, 28 and 38, under n°497.129 by WIPO, of which NRJ Group is the current owner.

In addition, directly or through other entities of the NRJ GROUP, the Complainants are the holders of a certain number of other domain names derived from the NRJ trademark, such as <nrj.net>, <nrj.org>, <mynrj.com>, <nrjgroup.com>, <nrjdirect.com> and <nrjlink.com>.

In addition, in the French-speaking part of Switzerland (i.e. region called "Suisse Romande"), where the Respondent has his residence, the Complainants, through the intermediary of a local subsidiary, REGIE NETWORKS LEMAN, are the holders of the <nrj.ch> Swiss domain name, at the address of which is managed and operated an information and services site connected to the local radio NRJ, well known in this region of French-speaking Switzerland where inter alia NRJ sponsors concerts and shows, as mentioned in the local press.

 

5. Parties’ Contentions

A. Complainant

The following is taken from the Complaint:

The contested domain names are all confusingly similar to the trademark "NRJ" in which the Complainants have rights.

The only differences are the adding on one hand, of the generic and/or descriptive terms "sex" and "hot," and on the other hand, of the suffixes "com" and "net."

Nevertheless, those differences do not give to the domain names a new distinctive nature to the terms as a whole which could dissociate it from the trademark NRJ. Indeed, thanks to its originality constituted by the arbitrary nature of its form (set of three consonants), the trademark "nrj" owns a strong distinctive power and does not lose its individuality. The adding of the suffixes "com" and "net" is not determining.

In other words, the "nrj" trademark is not fused together with the new set of words so composed by the Respondent. The well known name "NRJ" is the attractive and dominating element of the domain name, whereas the terms "sex" and "hot" respectively are generic and/or descriptive terms which do not confer any new meaning to the terms as a whole, which would avoid any risk of confusion with the trademark NRJ, but, on the contrary, create in the mind of the public an obvious association with the NRJ trademark. Reference is made to several decisions under the UDRP such as WIPO Case No. D2002-0001 Nokia Corporation v. Nick Holmes t/a Etype Media, Case No. D2001-1188 Yahoo ! Inc. V/ <Yahoosexy.com>, <Yahosssexy.net>, <yahoo.com>, Case No. D2002-0437 V & S Vin & Spirit AB v. Canal Prod Ltd, regarding the domain names <absolut-sexe.com>, <absolut-sexo.com> and <absolut-x.com>, and Case No. D2002-0926 V&S Vin & Spirit AB v. Giovanni Pastore, regarding the domain names <absolut-porno-star.com>, <absolut-sesso-immagin.com> and <absolut-video-hard.com> where the transfer of the domain name has been ordered in favor of the Complainant, holder of the "Absolut" trademark, for well known spirits.

Consequently, it must be considered that said domain names are so similar to the trademark held and operated by the Complainants, that they create a confusion therewith.

1. The Respondent has no rights or legitimate interests in respect of the domain names

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

Complainants have not licensed or otherwise authorized the Respondent to use their trademark "NRJ" of which they are the owners, and there is no relationship between the Complainants and the Respondent.

In addition, the notorious nature of the trademark "NRJ," both national of international, and the success of the French and international radio station broadcasted notably in French-speaking Switzerland, by the Complainants under the name "NRJ" clearly show that the choice made by the registrant of the domain names at dispute, who is residing in French-speaking Switzerland, cannot be grounded on a particular interest which would be his own.

It must also be noted that more than seven months after their registration, the domain names at dispute had not been used.

When one selects the web addresses: "sexnrj.com," "sexnrj.net," ""sexnrj.com," one is directed to the "www.gandi.net" website, belonging to the GANDI company, where the domain names have been registered and not to a specific website for activities of registrant.

In addition, it is again and above all underlined that concerning the three other domain names at issue, i.e. <sexnrj.org>, <hotnrj.net> and <hotnrj.org>, they have been registered by the Respondent at the end of August, beginning of September 2002, after reception by him of the pre-Complaint letter of the Complainants, which had been sent to him in order to have him renounce to the first three above mentioned registrations.

Now, these additional registrations of domain names are certainly not more justified by intent of the Respondent for legitimate operations. On the contrary, it is a provocative move made by the Respondent towards the Complainants; Respondent took great care in having recourse to a non-European registrar eNom Inc., located in the United States, far from France, country of the head office of the Complainants.

The Respondent thus organized the fact that the addresses <hotnrj.org> and <sexnrj.org> would redirect to the <hotnrj.net> address, giving access to no website for bona fide offering of goods and services legitimately operated, but only to a page which is under construction and where he viciously inserted what should be his picture in a provocative position, associated with the terms "Fuck Energy," which quite explicitly, shows the sole intent of the Respondent to deride and harm the Complainants and tarnish their trademark

Therefore, the Respondent cannot show any legitimate right or interest in the registration, and then in the use of the domain names at issue.

In accordance with the case-law of the Administrative commissions of WIPO, the second requirement referred to in the Policy is obviously also met.

2. The domain names were registered and are being used in bad faith

It is clear that the Respondent is in bad faith.

The radio station "nrj" is a French radio station, famous not only in France, but also in Europe, more particularly in the French-speaking part of Switzerland, where the Respondent is residing, and where such radio station is broadcasting since 1988.

Thus, as an individual person residing in French speaking Switzerland, the Respondent could not ignore the existence and the notoriety of "NRJ" when he registered the domain names at issue, and he could not ignore that the registration – and use - of the domain names at issue, while he had no legitimate right or interest on the terms "NRJ," would create a confusion in the mind of the public with the activities of the Complainants and consequently would violate their rights.

This is all the more obvious for the three registrations made by the Respondent at the end of August, beginning of September 2002, after reception by him of the pre-Complaint letter sent to him by the Complainants on June 25, 2002, by electronic mail, of which he was necessarily aware before August 2, 2002, day on which he answered thereto while the pre-Complaint letter was clearly explaining the situation at stake.

The bad faith of the Respondent is even less questionable (challengeable) since the "nrj" term is not common and results from a pure original creation, but also since, in a first stage, the Respondent did not hesitate to register several domain names usurping the "nrj" trademark, and he reiterated by registering other domain names, in a second stage and showing clearly his sole intent to provoke the Complainants and to harm their legitimate rights and interests.

The choice of the contested domain names are not likely to correspond to an identification which could have been the identification of the Respondent, and not corresponding to a bona fide offering of good or services, it can only be analyzed as an illegitimate intent of counterfeiting, parasitism and denigration to the prejudice of the Complainants.

Indeed, the nature of the generic and/or descriptive terms added to the name NRJ confers to the registrations at issue a pornographic connotation which is detrimental to the image of the NRJ trademark and to the reputation of the NRJ Group.

Finally, the fact the domain names at issue do not correspond to a serious use by the Respondent does absolutely change nothing to the bad faith nature of the steps taken by the Respondent. On the contrary, numerous decisions under the UDRP have confirmed that the fact that the domain name is not used by the Respondent is showing his bad faith. (WIPO Case No. D2000-0003 of February 18, 2000, Telstra Corporation Ltd v. Nuclear Marshmallows, referred to in the WIPO Case No. D2002-0037 Télévision Française, TF1 Entreprises, TF1 VIDEO c. Christophe Delesalle).

In addition, the fact that the Respondent has no legitimate activity through the addresses corresponding to the domain names at issue is not relevant, indeed should he decide tomorrow to really use the website and to be referenced, it would be sufficient to create a confusion through the Internet system or when people visit the website.

And even if, inasmuch as the "sex" and "hot" terms have a sexual connotation, the Respondent was entering into an activity linked with sex, pornography, this would be in bad faith since the use of the name NRJ for the domain names at issue would manifestly be seriously detrimental to the trademark of the Complainants.

Consequently, the Respondent has no understandable reason for having registered the domain names at issue, which have no specific useful meaning for the Respondent, except for attracting the public by using the term "NRJ" and thus harming the Complainants, which constitute acts of counterfeiting, parasitism and denigration committed by the latter referring to the trademark of the Complainants in the domain names at issue.

According to the Case-law under the UDRP mentioned above, such an illegitimate registration of domain names has to be punished, since it sufficiently characterizes the bad faith of the registrant, even though the Respondent is not a competitor of the Complainants.

In addition, in these proceedings, it should be ruled similarly to the holding in a decision rendered in WIPO Case No. DTV2002-0006, in a case related to the domain name <europe2.tv> which can be compared with this case, since the name Europe 2 is the name of a French radio as famous as the NRJ radio station. Indeed, in said decision it has been duly considered that the Respondent could not ignore the Complainant’s rights on the trademark "Europe 2" when he registered the domain name, and also the risk of confusion thus created with this trademark, and it has been found that the Respondent could not bring any evidence of any legitimate interest to register this domain name.

Consequently, in accordance with paragraph 4 (b) (ii) of the Policy, it has to be considered that the Respondent obviously engaged in a pattern of conduct characterizing the registration and the use in bad faith of the domain names at issue and thus, the third requirement referred to in the Policy, is obviously met.

B. Respondent

The following is taken from the Response:

The domain names are not identical or confusingly similar to the French radio nrj.

The domain names <hotnrj> and <sexnrj> simply use the English acronym of the word "energy." In the mind of a non-French speaker, nrj is an acronym and does not mean "French Radio."

In addition the term "hot" and "sex" are English words and the extension used are ".com" ".net" and ".org" (the French one is ".fr").

The use of this acronym is very common and a quick Internet search demonstrates that many domain names include the three letter n, r and j. As an example you may find very easily the following:

http://pc-nrj.hypermart.net
http://nrjworld.free.fr/
http://www.nrj.nl/
http://www.nrjconsulting.co.uk/
http://www.nrj1004.wo.to/
http://www.nrj-sa.com/
http://www.nrj.fm.futuresite.register.com/
http://www.nrj.ca/
http://nrjsolar.cjb.net/
http://www.nrjct.com/home.htm
http://www.nrj-rugby.de
http://www.nrjdesign.com
http://www.nrj-international.fr

As the domain names listed above "hotnrj" and "sexnrj" are legitimate and have not been registered in bad faith.

And whether the UDRP is about the regulation of domain names, not web pages. Respondent draws attention to the fact that his website is a bit more advanced than other ones (i.e. "www.vaisse-avocat.com").

 

6. Discussion and Findings

According to Paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

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

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

A. Identical or Confusingly Similar

The Complainant’s mark NRJ is registered and has been used inter alia in France and in the country of residence of the Respondent, Switzerland. In addition the mark must be considered to be a well-known mark at least in France, which has not been rebutted by the Respondent.

The contested domain names contain the letters NRJ in full as the last part of the domain name. To this part is added the descriptive prefixes "hot-" and "sex-" and the gTLD suffix. Under these circumstances the domain names must be considered to be confusingly similar to the trademark NRJ in which the Complainant has rights. See in particular WIPO Case No. D2000-0102 where the domain name <nokiagirls.com> was found confusingly similar to the NOKIA trademark and several subsequent decisions including WIPO Case No. D2003-0050 <clubferrari.com> et al.

The prerequisites in the Policy, Paragraph 4(a)(i) are therefore fulfilled.

B. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.

Further, the Respondent has not demonstrated that he has any prior rights in the domain names and no evidence has been put before the Panel that shows that Respondent was commonly known by the domain names before that time.

Respondent claims that NRJ is a common abbreviation for ENERGY. The Respondent has, however, not provided any evidence to this effect such as copies of dictionaries or other types of evidence. The referral to other domain names and websites, which encompasses or make use of the letters NRJ is not in itself proof of this. These domain names may well be registered and used for quite other reasons than the possible reference to the word ENERGY.

Even if it was true that NRJ can be construed as an acronym for ENERGY or ENERGIE the Panel finds it appropriate to point out that words, acronyms or abbreviations that carry a meaning can function as trademarks as long as they are not descriptive of the goods and services for which the mark applies. On the other hand, such words can also be used in their generic sense, and such use will not be considered as infringing any trademark rights in the word. The exceptions to this effect, that the various trademark laws contain, does however not permit the possible fair user to use the said words as a "business identifier," i.e. as a sign that is used to identify the users activities. In view of the Panel, a domain name that is used as a name for a corresponding website is to be regarded as a "business identifier."

The present content of the website found at "www.hotnrj.net," to which the other domain names point, and which has been put up after the filing of the Complaint does not show that Respondent has any plausible reason to register and use the domain names.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove registration and use of the domain name in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.

Complainant’s mark NRJ is registered and used inter alia in France and Switzerland. And the Panel is satisfied that it has been proven that the mark is well-known.

Respondent has not disputed that he knew of the existence of Complainants’ rights when he registered the contested domain names, which is particularly clear as to the domain names <sexnrj.org>, <hotnrj.net> and <hotnrj.org>, which are all registered after Respondent was approached by Complainants concerning the other then existing domain names.

All the disputed domain names now point to the website "www.hotnrj.net," which is presently active by way of a very simple page that gives the impression that it was put up in connection to these proceedings, as the website was passive at the time of the filing of the Complaint.

The behavior of Respondent when registering 6 (six) domain names incorporating Complainants’ mark, three of which were filed after the initial contact between the parties, is very close to what must be conceived as a pattern of conduct. Respondent has not provided the Panel with any plausible explanation as to why the contested domain names were registered.

Weighing all the factors and considerations, the Panel finds that the preconditions set forth in Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy are also met.

 

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 names <hotnrj.com>, <hotnrj.net>, <hotnrj.org>, <sexnrj.com>, <sexnrj.net> and <sexnrj.org> be transferred to the Complainants.

 

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Knud Wallberg
Sole Panelist

Date: March 25, 2003