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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

SURCOUF v. Topsafelistbiz.com

Case No. D2006-1508

 

1. The Parties

The Complainant is SURCOUF, Paris, France, represented by Inlex Conseil, France.

The Respondent is Topsafelistbiz.com, Florida, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <fucksurcouf.com> is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on November 27, 2006, hardcopy of which was received by the Center on November 30, 2006. On November 30, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On November 30, 2006, Wild West Domains, Inc. 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 the Center’s notification of December 4, 2006, that the Complaint was administratively deficient as regards the language of the administrative proceedings, the Complainant filed an amendment to the Complaint in English by email on December 8, 2006, hardcopy of which was received by the Center on December 18, 2006. After receiving a confirmation of mutual jurisdiction from the Complainant on December 20, 2006, 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 December 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2007. The Response was filed with the Center on December 21, 2006.

The Center appointed Brigitte Joppich as the sole panelist in this matter on January 12, 2007. 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.

On January 19, 2007, the Center received by email a supplemental submission from the Complainant (“the Reply”) and informed the Administrative Panel accordingly on the same day.

 

4. Factual Background

The Complainant is a French company created in 1992, doing business in the field of selling computers, computer equipment, computer devices, software and accessories, both on the Internet and offline. The Complainant has stores in several French cities; its largest store is located in Paris with more than 3 million visitors each year on a sales area of 6350 square meters. The Complainant currently employs more than 700 people. The Complainant’s website available at “http://www.sourcouf.com” receives more than 1.5 million visits per month and belongs to the top five French commercial websites.

The Complainant is the registered owner of numerous trademarks, inter alia:

- French trademark No. 92437334 SURCOUF registered on October 2 1992,  in class 9,

- French trademark No. 93492451 SURCOUF registered on November 17, 1993, in classes 16, 38 and 41,

- French trademark No. 003061671 SURCOUF registered on October 31, 2000, in classes 9, 16, 35, 37, 38 and 42,

- French trademark No. 013101111 SURCOUF.COM & device registered on May 18, 2001, in classes 9, 16, 35, 37, 38 and 42,

- French trademark No. 013083484 SURCOUF & device registered on February 19, 2001, in classes 9, 16, 35, 37, 38 and 42,

- European trademark No. 3204971 SURCOUF registered on December 13, 2004, in classes 9, 16, 28, 35, 37, 38, 41 and 42,

- International trademark No. 758905 SURCOUF registered on March 23, 2001, in classes 9, 16, 38 and 41,

- International trademark No. 774675 SURCOUF registered on August 24, 2001, in classes 9, 16, 35, 37, 38 and 42 (the “SURCOUF Marks”).

The Respondent registered the disputed domain name on April 26, 2006.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case:

(i) The domain name is confusingly similar to the SURCOUF Marks as it fully incorporates the word “surcouf”. In support of this allegation the Complainant contends that the disputed domain name is a combination of the SURCOUF Marks and the denigrative term “fuck” and that the mere addition of the pejorative element does not sufficiently distinguish the domain name from the SURCOUF Marks. In addition, the Complainant contends that it is clear that the predominant and distinctive element of the domain name <fucksurcouf.com> is the element SURCOUF, taking into account its visual impact and phonetics in relation to its length and its notoriety.

(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name: The Respondent is neither commonly known by the domain name or a name corresponding to the domain name, nor does it hold any registered or unregistered trademark rights with regard to the term SURCOUF. The Complainant has exclusive rights in the SURCOUF Marks and no license, permission, authorization or consent was granted to the Respondent for the use of SURCOUF in the domain name. The Complainant further argues that the Respondent cannot rely on protection by freedom of speech to justify the domain name registration and use. The entire content of the website has to be taken into account when determining whether or not it is a free speech website, and the Respondent cannot call upon freedom of speech as the website that is linked to the domain name fully incorporates the Complainant’s trademark and device together with commercial links, pornographic images and. defamatory information. Therefore, the Complainant maintains that the alleged protection by freedom of speech is only a disguise.

Moreover, the Complainant asserts that the Respondent cannot rely on the privilege of freedom of speech as the website that is linked to the disputed domain name does not contain any real content and therefore is only a pseudo website

(iii) The Complainant finally contends that the domain name was registered in bad faith as the website that is linked to the domain name is in the French language and directly concerns the Complainant as a retail trader. Therefore, in the opinion of the Complainant, the real owner of the domain name is French and uses an alias to keep its identity secret, thus demonstrating bad faith registration and use. As the SURCOUF Marks are well known in France and to the French public, the Respondent must have been aware of the Complainant’s rights when registering the domain name. Furthermore, the Complainant contends that the domain name was registered and is being used in order to mislead Internet users as the domain name includes the word “Surcouf” and the website is reproducing the mark SURCOUF including its device.

B. Respondent

The Respondent contends that none of the elements specified in the Policy, paragraph 4(a), are given in the present case:

(i) The domain name cannot cause any confusion with the Complainant’s trademarks and is not identical nor confusingly similar to such marks as the website is obviously a protest or parody site referring to the Complainant, a retail trader. According to the Respondent, there is no reasonable way any person could confuse the site “www.fucksurcouf.com” with an official retail site of the Complainant.

(ii) The Respondent further asserts that - even if the domain name was considered to be confusingly similar to the Complainant’s trademarks - it has a legitimate interest under the Policy as it is clear from the content of the website that it is solely a protest site. The Respondent claims that its website is completely non-commercial and has always reflected protest content. The size, number of members and traffic of the website are considered immaterial by the Respondent.

(iii) The Respondent finally denies any bad faith with regard to the registration and use of the domain name as the purpose of the domain name is to protest and to discuss the Complainant as a retail trader. The domain name is neither for sale, nor does it redirect to the Complainant’s competitors, nor is it used commercially. The Respondent claims to be a former poorly treated customer of the Complainant and to have registered the domain name to discuss its experiences as well as to solicit other people’s opinion on the Complainant.

 

6. Discussion and Findings

The first point to be dealt with is the admissibility of the Reply. The Rules do not allow the parties to file supplemental submissions on their own volition and paragraph 12 provides that a Panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence.

Grounds justifying new submissions are above all the existence of new pertinent facts that did not arise until after the complaint was filed. For instance, if the respondent raises objections that could not have been anticipated when the complaint was filed, the panel can give the complainant a right to reply to the submission or may accept complainant’s unsolicited additional submission (see Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 - <fieldofdreams.com>; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim, WIPO Case No. D2003-0921 - <qnx.info>; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 - <goldline.com>).

The Complainant does not rely on any exceptional circumstances necessitating further submissions, nor does the Reply itself disclose any new facts or legal authority not available at the time the Complaint was submitted. Instead, the Complainant appears to have submitted the Reply solely to rebut the assertions contained in the Response. Such a reply is not justified under the Rules. Furthermore, the Panel is able to decide this case on the facts submitted. As a result, the Panel elects not to accept the Reply and has not relied on it in reaching this decision.

Under the Policy, paragraph 4(a), the Complainant must prove that each of the following three elements is present:

(i) the domain name is identical or confusingly similar to the Complainant’s trademark; and

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

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

A. Identical or Confusingly Similar

The disputed domain name fully incorporates the highly distinctive SURCOUF Marks in which the Complainant has exclusive rights.

In the view of the Panel, the mere addition of the common or generic word “fuck” preceding the Complainant’s trademark does not eliminate the similarity between the SURCOUF Marks and the domain name. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words, even if they have a pejorative meaning (cf. Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829 – <drgrandel-online.com>; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 - <4microsoft2000.com>; Koninklijke Philips Electronics N.V v. Selling Domains Best, WIPO Case No. D2002-1041 - <fuckphilips.com>; Bloomberg L. P. v. Secaucus Group, NAF Case No. FA97077 - <michaelbloombergsucks.com>; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 - <wal-martsucks.com>; A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen, WIPO Case No. D2001-0900 - <abercrombieandfilth.com>; Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465 - <berlitzsucks.com>; Wachovia Corporation v. Alton Flanders, WIPO Case No. D2003-0596 - <wachovia-sucks.com> et al; Cabela’s Incorporated v Cupcake Patrol, NAF Case No. FA95080 - <cabelassucks.com>; Direct Line Group Limited v. Purge I.T. Limited, Purge I.T., WIPO Case No. D2000-0583 – <directlinesucks.com>).

Furthermore, it is also well established that the specific top level domain name is not an element of distinctiveness that should be taken into consideration when evaluating the identity and similarity of the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 - <magnumpiering.com> et al; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 – <rollerblade.net>; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374 - <moor-huhn.com>; Teradyne, Inc v. 4Tel Technology, WIPO Case No. D2000-0026 – <4tel.com>).

Therefore the Panel finds that the Complainant has satisfied the requirements of the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable 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; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the service marks at issue.

The Respondent claims to have registered the disputed domain name for use in connection with a protest site, protected by freedom of speech. It asserts that such site is a non-commercial website only and refers to legitimate interests under paragraph 4(c)(iii) of the Policy.

An assessment of whether a use is non-commercial must as a matter of principle take into account all circumstances of a case. A claim of non-commercial use will be defeated if a website includes banner ads, even if only a few ads are present, allowing the domain name holder to receive a financial benefit (see Travis Hill v. Needalife.com, NAF Case No. FA95345 - <mediaenforcer.com>; The New York Times Company v. New York Internet Services, WIPO Case No. D2000-1072 - <newyorktimes.com>; Eddie Bauer, Inc. v. Cole Sales Solutions, Inc., E-Resolution Case No. AF-243 - <eddiebauercamping.com>; Council of American Survey Research Organizations v. The Consumer Information Organization, LLC, aka Pinelands Web Services, WIPO Case No. D2002-0377 - <casro.com>).

The Complainant provided the Panel with printouts dated September 1, 2006, showing that the website available at the disputed domain name included advertisements for third parties’ products. Notwithstanding the Respondent’s assertions to the contrary, the Complainant has therefore demonstrated that the Respondent has placed ads on the website for commercial gain. Therefore the Respondent’s use cannot be protected as a legitimate non-commercial criticism website.

Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy, is also satisfied.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), sets out four illustrative circumstances, which for purposes of the Policy, paragraph 4(a)(iii), shall be evidence of the registration and use of the domain name in bad faith, including

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.

The Respondent has fully incorporated the SURCOUF Marks into the domain name and used the Complainant’s trademarks and device (yellow stars on a red banner) next to advertisements for third parties’ products on its website. Based on this, the Panel finds that the Respondent is trying to divert Internet users to its website for the purpose of earning click-through-revenues. The use and exploitation of a trademark to obtain click-through revenues by diverting Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. L’Orйal, Biotherm, Lancфme Parfums et Beautй & Cie v. Unasi, Inc., WIPO Case No. D2005-0623 - <biothermcosmetics.com> - and others).

As a result, the Panel finds that the Respondent has registered and used the domain name in bad faith under paragraph 4(b)(iv) of the Policy, attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.

In addition, the Respondent claims to have registered the domain name in order to “protest and discuss the retail merchant Surcouf”. Therefore, the Panel concludes that the Respondent registered the domain name <fucksurcouf.com> with full knowledge of the SURCOUF Marks. Since the Respondent has not proven any rights or legitimate interests in the domain name, such registration and use, intentionally incorporating another’s trademark, is in bad faith.

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy, as well.

 

7. Decision

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

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Brigitte Joppich
Sole Panelist

Dated: January 26, 2007