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Arbitration and Mediation Center
Cegetel , Société Française du Radiotéléphone-SFR v. Casper Blue.com Inc.
Case No. D2003-0786
1. The Parties
The Complainants are Cegetel S.A. and Société Française du Radiotéléphone-SFR, S.A., Tour Séquoia, 1, Place Carpeaux, 92915 Paris La Defense, France, represented by Cabinet Ores, France.
The Respondent is Casper Blue.com Inc., 16/F, Tower 2, Ever Gain Plaza, 88 Container Port Rd., Kwai Chung, N.T. 00852, Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <sfr7.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2003. On October 7, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On October 7, Go Daddy Software 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 October 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2003. The Respondent did not submit any response but for a single mail addressed to the Center on October 14 generating an exchange of mails between the Parties until October 31st which did not anyway lead to an amicable settlement of the matter. Accordingly, the Center notified the Respondent’s default on November 4, 2003.
The Center appointed Luca Barbero as the Sole Panelist in this matter on November 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
The Complaint is based inter alia on the trademark registration for "SFR, le choix des internationaux," Community Trademark n°001880061, filed on September 19, 2001, in classes 9, 16, 35, 36, 38, 41 and 42; "SFR" and "SFR, le monde sans fil est à vous" International Trademarks n°0643842 and 0635603 in classes 9, 35 and 38.
The domain name <sfr7.com> was registered by the Respondent on June 23, 2003.
5. Parties’ Contentions
Cegetel, one of the Complainants, is the first private telecommunications operator in France with a strong market position in the area of telecommunication. In fixed telephony, Cegetel’s "7" service, which allows customers an affordable alternative to former telecom monopolies, had more than 1 million clients at the end of 1999, SFR, the other complainant is a subsidiary of Cegetel, specialized in mobile telecommunications. With 13 millions customers in 2002, SFR is one of Europe’s major mobile players, and the leading private mobile telephony operator in France.
The Complainants are proprietors of numerous trademark registrations; the trademark "SFR" is registered by one of the Complainants throughout the world providing the Panel with documents attesting the registration for the CTM, International Registration and national trademarks e.g. in France and United Kingdom.
Thus, the Complainants’ trademarks enjoy a great notoriety in France and all over the world. The Complainants have noticed the registration of the domain name <sfr7.com> and inform the Panel that a warning letter was sent by registered letter, on September 5, 2003, (providing the Panel with a copy a letter date July 18, and via two e-mails, dated September 5 and 8, 2003, (copies also provided), to the Respondent, asking him to transfer amicably the domain name <sfr7.com> based on their trademarks rights. The registered letter was returned by the post on September 22, 2003, with the mention "unknown addressee."
Similarly, the e-mails could not be delivered to their destination, and were returned to the sender with the mention: "Name service error for casper-blue.com: Host not found."
The Complainants point out that, to date, the domain name <sfr7.com> does not resolve to a website or any other on-line presence while the Complainants own and operate actively the domain names <sfr.fr> and <sfr.com>, through which they conduct their commercial activity mainly in the field of fix and mobile telecommunications. The panel is also informed that the ccTLD "le7.fr," has been registered by Cegetel on February 15, 2001, and actually redirects visitors to the main Internet website of Cegetel.
The Complainants highlight that the domain name <sfr7.com> consists in the trademark "SFR" with the mere adjunction of the number "7," which is the trademark of the other Complainant, and the generic suffix ".com." As a result the domain name <sfr7.com> is a combination of two protected trademarks owned respectively by the subsidiary and the holding company and the adjunction of the number "7" does not exclude any risk of confusion with the trademark.
According to the Complainants, furthermore, the combination of the number "7" and the sign "sfr" which are both registered trademarks of the Complainants, indicates the aim of the Respondent to confuse the Internet users.
With reference to the issue of the rights and legitimate interests, the Complainants underline that the Respondent is not affiliated with the Complainants in any way nor was granted any license, consent or other right by which the Respondent could have been entitled to use the domain name in dispute. Furthermore, the Respondent has shown no effort to use the domain name in connection with a bona fide offering of goods or services nor is apparently known by the domain name.
In the Complainants’ view, the lack of any exploitation of the domain name since its registration on June 27, 2003, can not lead to think the Respondent is making any legitimate non-commercial or fair use of the domain name. Rather, according to the Complainants, may constitute an evidence of the Respondent’s bad faith.
Furthermore, the Respondent did not answer the registered letter sent by the Complainants in order to find an amicable settlement. The registered letter and the emails were returned with the mention "unknown addressee." According to the Complainants, this fact could lead to think that the Respondent did not provide a true and correct postal and e-mail address when registering the domain name and the domain name registered the litigious domain name under a false identity, being therefore in breach of its registration agreement.
The Complainants state that the fact that the various trademarks owned by the Complainants are well-known throughout the world makes it obvious the Respondent knew about the Complainants’ marks and that he registered the domain name at issue in bad faith. Moreover, the Respondent added the number "7" to the trademark "SFR," and the exact combination of these two trademarks is also an evidence of the Respondent’s bad faith since the number "7" is used by Cegetel to operate its telecommunications services.
Furthermore, the Complainants emphasize that the Respondent does not conduct any legitimate commercial or non commercial activity indicating the passive holding as ground of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted 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:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Domain name Identical or Confusingly Similar
The Complainants have provided evidence of ownership inter alia of the trademark registration for "SFR, le choix des internationaux," Community Trademark n°001880061, filed on September 19, 2001, in classes 9, 16, 35, 36, 38, 41 and 42; "SFR" and "SFR, le monde sans fil est à vous" International Trademarks n°0643842 and 0635603 in classes 9, 35 and 38 owned by Société Française du Radiotéléphone-SFR and, in the name of the other complainant, "Le 7" (semi-figurative), French trademark n°97707217, filed on November 28, 1997, in classes 9, 16, 35, 36, 37, 38, 39, 41 and 42 and "Le 7 automatique," French trademark n°99830073, filed on December 15, 1999, in classes 9, 16, 35, 36, 37, 38, 39, 41 and 42.
The domain name <sfr7.com> is therefore confusingly similar, as the suffix
".com" is irrelevant since it is merely instrumental to the use in
Internet, to the Complainants’ trademarks. The Panel acknowledges that it was
already held that a domain name which is a combination of two trademarks does
not make the policy inapplicable, see Saab Automobile AB et al. v. Joakim
Nordberg (WIPO Case D2000-1761). The
Panel also accepts that when a distinctive mark is incorporated in its entirety
in a domain name, it creates sufficient similarity between the mark and the
domain name to render it confusingly similar as per Minnesota Mining and
Manufacturing v. JonLR (WIPO Case D2001-0428).
The Policy does not expressly address the issue of the presentation by joint Complainants of a single procedure requiring the transfer of a domain name, but the Panel deems that it should be allowed provided that all of the joint Complainants are related owners of trademark rights identical or confusingly similar to the domain name. However, the Panel finds that, should the contested domain name be identical, incorporating entirely or in any way be more confusingly similar to the trademarks of one of the joint Complainants, the domain name should be transferred to such joint Complainant solely.
In the present case, should the Complaint be based exclusively on the figurative trademarks "le 7" or "le 7 automatique" in the name of Cegetel the Panel could not have decided that the domain name is identical or confusingly similar to the trademarks in which Cegetel has rights, even though the combination of the two trademarks owned by related companies is an aspect which is undoubtedly relevant for the assessment of bad faith.
In view of the above, the Panel finds that the Complainants, according to paragraph 4(a)(i) of the ICANN Policy, have proved that the Domain Name is confusingly similar to the trademark of one of the Complainants.
6.2. Rights and Legitimate Interest
The Complainants must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy that :
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
There is no relation, disclosed to the Panel, between the Respondent and the Complainants and Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use Complainants’ trademark and name under any circumstance.
The Panel acknowledges that the Center has received and duly forwarded to the Complainants a mail sent by Mr. Yoshitaka Koyama who, allegedly acting on behalf of the domain name holder, has declared on October 14, 2003, that the domain name <sfr7.com> was the "initials of a Japanese word" and that there was " no intention to infringe on intellectual property rights" concluding with the statement "I abandon the ownership of this domain independently. There is no will to which I dispute with you."
The Complainants did not transmit to the Center copy of the correspondence addressed to Mr. Yoshitaka Koyama on October 14 pursuant to such communication. The Panel has received only the copy of the Complainants’ mail dated October 14 addressed to the Center to confirm that Mr. Yoshitaka Koyama was asked to transfer amicably the domain name, reserving further communication as to a possible suspension of the procedure, should the transfer be actually started. The Panel was provided with a copy of the second mail of the Complainants dated October 31, advising the Center that since Mr. Yoshitaka Koyama has not adhered to the request and did not reply to the mentioned correspondence addressed to him on October 14, the UDRP procedure should have been continued.
The Panel notes that by not submitting a formal Response and by not having further substantiated, even if only via email, the statements of Mr. Yoshitaka Koyama reported above, the Respondent has failed to invoke any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain name.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain name, according to paragraph 4(a)(ii) of the ICANN Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a) (iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
In light of the fact that none of the above circumstances was proven to be
plainly present in the present procedure, pursuant to the interpretation of
the ICANN’s Uniform domain name Dispute Resolution Policy in cases of passive
holding of the domain name first provided in Telstra Corporation Limited
v. Nuclear Marshmallows, (WIPO Case No.
D2000-0003) and in a number of following decisions such as Ingersoll-Rand
v. Frank Gully, d/b/a Advcomren, (WIPO
Case No. D2000-0021); Compaq Computer Corp. v. Boris Beric, (WIPO
Case No. D2000-0042); Guerlain, S.A. v. Peikang, (WIPO
Case No. D2000-0055); Revlon Consumer Products Corporation v. Yoram Yosef
aka Joe Goldman (WIPO Case No. D2000-0468),
the Panel has taken into consideration also the following particular circumstances
for the assessment of bad faith.
The Panel notes that the Respondent has failed to duly respond to the Complaint at issue and has therefore not provided the Panel with any convincing evidence, but the mere statement that the domain name was corresponding to the "initials of a Japanese word," of any actual or contemplated good faith use of the domain name.
The registration of a domain name which is exactly coinciding to the combination of the two trademarks owned by the Complainants, two related companies one of which is well known in many countries, is a circumstance evidencing the Respondent’s bad faith in the registration and use of the domain name.
Furthermore, the Panel remarks that the data supplied by the Respondent in the WHOIS records as administrative contact which does not coincide with the person that has contacted the Center referring to the Complaint on behalf of the Respondent, can also be considered an indication that the Respondent has provided false information for the instant registration in order to conceal the true identity. The Panel finds that such a behavior, also in light of the other conducts of the Respondent that has refused to reply to the cease and desist letters and to file a response to the Complaint, is to be considered an additional circumstance evidencing bad faith.
As already stated in numerous decisions the use of false contact information
in Respondent’s initial registration application is evidence that Respondent
registered in bad faith see e.g. Royal Bank of Scotland Group v. Stealth
Commerce (WIPO Case No. D2002-0155);
Home Director, Inc. v. Home Director (WIPO
Case No. D2000-0111).
Moreover, providing false contact information violates paragraph 2 of the Policy, which requires a registrant to represent that the statements it "made in [its] Registration Agreement are complete and accurate"; maintaining false contact information in the WHOIS records - which can easily be updated at any time - after registration constitutes bad faith use of the domain name because it prevents a putative Complainant from identifying the registrant and investigating the legitimacy of the registration. For example, permitting registrants to mask their identity makes it difficult for trademark owners to determine whether the registrant "registered the domain name primarily for the purpose of disrupting the business of a competitor," Policy paragraph 4(b)(iii), or whether the registrant "engaged in a pattern" of registering domain names "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name," Policy paragraph 4(b)(ii). Under the U.S. Anticybersquatting Consumer Protection Act, moreover, "provision of material and misleading false contact information when applying for the registration of the domain name" is itself evidence of bad faith. 15 U.S.C. 1125(d)(1)(B)(VII)."
In view of the above, the Panel finds that the Respondent registered and used the domain name in bad faith, according to paragraph 4(a)(iii) of the ICANN Policy.
In light of the foregoing, the Panel determines that the domain name registered
by the Respondent is confusingly similar to the trademark of Société
Française du Radiotéléphone-SFR S.A. one of the Complainants
in the present procedure, that the Respondent has no rights or legitimate interests
in respect of the domain name and that the domain name has been registered and
used in bad faith.
Accordingly, the Panel decides that the registration of the domain name <sfr7.com> be transferred to the Société Française du Radiotéléphone-SFR S.A., one of the Complainants herein.
Dated: December 5, 2003