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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Surcouf v. Shen Kaixin

Case No. D2009-0407

1. The Parties

The Complainant is Surcouf of Paris, France represented by Inlex IP Expertise of France.

The Respondent is Shen Kaixin of Shangai, People`s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <surcouf.net> is registered with UdomainName.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 27, 2009. On March 30, 2009, the Center transmitted by email to UdomainName.com LLC a request for registrar verification in connection with the disputed domain name.

On March 31, 2009, UdomainName.com LLC transmitted by email to the Center its verification response confirming that:

(a) it is the Registrar of the disputed domain name;

(b) the Respondent is listed as the registrant;

(c) the contact details as listed in the Complaint are correct;

(d) the language of the registration agreement is English;

(e) it became the registrar of the domain name on November 3, 1998.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 8, 2009.

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" or "UDRP"), 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 April 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2009. The Response was filed with the Center on May 5, 2009.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on May 12, 2009. 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.

Following receipt of the Response, the Complainant sought permission to submit a reply. The request did not identify what it was proposed to address in the reply or other factors relevant to the Panel`s discretion to admit or exclude a reply. Accordingly, the Panel issued Procedural Order No. 1 allowing the Complainant 48 hours to submit the proposed reply, without prejudice to the Panel`s right to rule on the admissibility or otherwise of any reply actually submitted or what other procedural steps should be taken.

The Complainant submitted a reply with annexures by email on May 29, 2009 (the "Reply"). The Respondent has not requested an opportunity to deal with any matters arising from the Reply.

4. Factual Background

The Complainant is a French company founded in 1992. It retails a vast array of computers, software, videos, telephones and other electronic products and accessories from five retail outlets in France, including two in Paris, and from an online or website store. It has over 700 employees, including 80 dedicated to its website. Its main store in Paris receives more than three million visitors each year and has a retails sales area of 6350 square metres. The Complainant`s website receives more than 1.5 million visitors a month and there are 80,000 members of the associated online "forum".

The Complainant has registered a large number of trademarks based on SURCOUF. These include:

(a) Trademark No 92437334, SURCOUF, registered in France in 1992 in International Class 9;

(b) Trademark No 93492451, SURCOUF, registered in France in 1993 in International Classes 16, 38 and 41; and

(c) 17 other trademarks for SURCOUF registered in various countries or the EU in a wide range of classes between 2000 and 2003.

The Complainant has also registered a number of domain names including "surcouf.com".

The disputed domain name was originally registered in 1998 by one Xiaijie Yu, whose address was the same address as the present respondent`s. Information submitted in the Reply indicates that Xiaijie Yu was still the registrant in June 2008. The record does not disclose when the Respondent became the registrant.

The Respondent is avowedly in the business of buying, parking and selling domain names.

The disputed domain name resolves to a fairly generic type of search page/portal under the heading <surcouf.net> "Just what you`re looking for".

5. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:

(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 the domain name; and

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

Before considering each of these factors in turn, it is necessary to rule on the admissibility of the Complainant`s Reply to the Respondent`s Response.

The Panel notes that the Reply itself is short – four pages; although there are several pages of attachments. In substance, the Reply addresses justifications advanced in the Response and seeks to defend the Complainant against an allegation of reverse domain name hijacking made in the Response. In this sense, the Reply succinctly addresses matters which arise directly from the Response and which could not reasonably have been anticipated or were not appropriate to address. The Respondent has not opposed the admission of the Reply into the record. Accordingly, the Panel admits the Reply into the record.

As noted above, the Respondent has not requested an opportunity to respond to any matters.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights in a sign and, if so, is the disputed domain name identical or confusingly similar to that mark?

The large number of SURCOUF trademarks on which the Complainant relies has been mentioned in section 4 above. Although strictly not relevant to this inquiry, at least SURCOUF trademarks No.92437334 and No.93492451 were registered before the domain name itself was registered. All of the trademarks referred to in section 4 above were registered before the present Respondent became the registrant of the disputed domain name.

The Complainant also relies on the "great notoriety" of its trademark "in France". In view of the conclusion already reached it is not strictly necessary to reach a conclusion about this claim in this context. It may be relevant, however, under paragraphs 4(b)(ii) and 4(b)(iii) of the Policy. Given the volume of visitors to the Complainant`s principal store and its website, the Panel is prepared to infer that the Complainant`s trademark is very well-known in France.

The disputed domain name differs from the registered trademarks identified above only by the addition of the gTLD, ".net". It is well established, however, that the gTLD being a functional requirement of the domain name system can be disregarded for the purposes of this inquiry. See for example Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc., WIPO Case No. D2001-0252; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493.

Accordingly, the Panel finds that the disputed domain name is identical to the trademarks proved by the Complainant.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) of the Policy sets out three non-exhaustive examples of rights or legitimate interests for the purposes of the Policy. They are:

"(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience the Panel refers only to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview"), paragraph 2.1. The burden of proof, nonetheless, always remains on the Complainant.

The Complainant states that it has not authorized the Respondent to register the disputed domain name. The disputed domain name is not derived from the Respondent`s own name. Further, the Complainant has provided evidence of trademark searches which reveal that the Respondent does not have any registered trademarks in France, China, the EU or at the International Bureau for, or containing, SURCOUF. This is sufficient to raise a prima facie case against the Respondent.

The Respondent does not contest any of these matters. Rather, the Respondent denies any knowledge of the Complainant or its trademarks and contends that the registration and use of the disputed domain name as part of his business of buying, parking and selling domain names is perfectly legitimate given that the domain name is comprised of a common French surname or is otherwise a common term.

In support of his claim that the word "Surcouf" is a common French surname, the Respondent refers to http://en.wikipedia.org/wiki/Surcouf. The page at this URL, however, refers to only two persons with the surname: one Robert Surcouf, a privateer, and a Jacques Surcouf, a French entomologist. The Respondent also identifies a number of websites which use "surcouf" to demonstrate that it is a term in common usage:

- "www.lesurcouf.net"

- "www.residencesurcouf.com"

- "www.surcoufhotel.com"

- "www.pcbysurcouf.com"

The first three websites are for hotels; two in Mauritius (one of which is closed to the public) and the third in St Malo, France where the privateer listed in the Wikipedia article resided. The fourth website relates to the Complainant`s business.

These very few references fall a long way short of showing that the word "surcouf" is anything approaching a common French surname or otherwise a common or descriptive term. Indeed, Internet dictionary/translation services do not reveal any meaning for "surcouf" or "couf".

The Panel accepts that registration of a domain name with a view to "parking" it for re-sale or to generate pay-per-click (PPC) revenues (even as a holding position before resale) is not illegitimate per se. Whether or not there is a right or legitimate interest falls to be determined in context and, in particular, from a consideration of the domain name in question and any rights that the registrant may have or otherwise. Thus, there would usually be no grounds for complainant if a respondent registered a wholly descriptive term and used it solely in connection with what it describes. An example might be a registration of <hotel.com> which was being used as a search portal for hotels and related services.

The situation is different, however, where the disputed domain name has, or appears to have, been registered for its trademark significance and the "parking" is, or appears to be, intended to take advantage of that trademark significance. In such cases, Panels have repeatedly found that the registrant does not have rights or legitimate interests in the domain name sufficient for the purposes of paragraph 4(b)(ii) of the Policy. See e.g. Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Owens Corning v. NA, WIPO Case No. D2007-1143.

In the Response, the Respondent states that he sees the domain name as depicted at "http://startseek.com/temp/sourcouf.net.gif". He characterizes the resulting website as "obviously autooptimised to Hotels which is not in any way similar to [the C]omplainant`s business."

The file which displays when the URL above is entered into a browser presents a banner <surcouf.net> "Just what you`re looking for" and a section headed "Sponsored Links" and two less prominent panels headed "Related searches".

The first three "links" under "Sponsored Links" are indeed for hotels; the fourth is "Las Vegas Lcd Tv Repair" and the fifth "SearsВ® Televisons". Televisions are products which the Complainant also offers for sale. (The word "links" is placed in quotes as, at this URL, they are not "live"; they do not resolve to active webpages.)

The first, vertically arranged "Related Searches" panel lists "Ordinateur Portable, Tv Lcd, Las Vegas Hotels, Cell Phone, Cell Phone Ringtone, Car Insurance Quote, Prepaid Cell Phone, Bank Foreclosure, New York City Hotel, New Orleans Hotel". The second, horizontal panel lists the same "links" down to and including "Prepaid Cell Phone". Thus, the first, second, fourth, fifth and sixth "Related Searches" are wholly unrelated to "Hotels" and are for products which the Complainant sells.

It is also notable that the URL displays a page with a dropdown box showing the word "English", but at least "Ordinateur Portable" is the French term for "laptop".

The Complainant has submitted materials in the Complaint (Annex L) and the Reply (pages 3 and 4 of the Annexure) which show pages from the website to which the disputed domain name resolves listing search results for:

- Depannage Informatique

- Pc Ldlc-pro Final Cut

- Matériel Informtique

- Offres Pc Portables

- Tribord

and

- Ordinateur Portable

- Gps

- Logiciel Retouche Photo

- Surcouf

- La Route Des Épices

- Mp3

- Hotel Surcouf

- Vidéo Projecteur

- Ordi Portable

Most of these are links to commercial website selling products of the kind that the Complainant sells. Further, the links directed customers to stores which are in competition with the Complainant.

In these circumstances, the Respondent`s claim that it has "parked" the domain name to refer to "hotels" is incomplete and, having regard to the use of the French language even on pages headed "English" quite misleading. Moreover, as the Complainant contends, the name "Surcouf" has no logical connection to these products other than through its use as a badge of origin to identify the provenance of the Complainant`s goods and services. Accordingly, the Panel cannot give conclusive weight to the Respondent`s denial of any knowledge of the Complainant or its trademarks. Rather, the objective circumstances point to adoption of the disputed domain name and its exploitation because of its trademark significance. Such use does not qualify as bona fide use within the interpretation of paragraph 4(b)(ii) or 4(c) of the Policy.

Therefore, in line with the Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Owens Corning v. NA, WIPO Case No. D2007-1143 and similar cases, the Panel finds that the Respondent has not rebutted the prima facie case established by the Complainant and, accordingly, the Complainant has established on the record in this proceeding that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:

"(b) Evidence of Registration and Use in Bad Faith. For the purposes of paragraph 4(a)(iii), 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 you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."

Acquisition of a domain name licence by way of transfer or assignment is treated under the Policy as a new registration: see Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609 and Alpine Entertainment Group, Inc. v. Walter Alvarez WIPO Case No. D2007-1082. See also in paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.

Thus, the relevant time to make this assessment is at some point after June 2008 when the record shows that the disputed domain name was transferred from one Xiaijie Yu to the present Respondent. The record does not permit the date to be ascertained more precisely.

As discussed above, the Respondent avowedly registered the disputed domain name for the purpose of monetizing it; ultimately, by selling it and, until then, by parking it and using it to generate revenue through PPC traffic.

It follows from the rejection of the Respondent`s claim to have a right or legitimate interest because the objective factors point to the Respondent`s conduct being motivated by a desire to exploit the trademark significance of the disputed domain name, that the Panel finds that the disputed domain name was registered and is being used in bad faith. This would appear to fall directly within the terms of paragraph 4(c)(iv) above.

D. Reverse domain name hijacking

In view of the conclusions reached above, the Respondent`s claim for a finding of reverse domain name hijacking must fail.

The Panel should note, in addition, that it totally rejects the Respondent`s argument that the choice of bringing a proceeding under the Policy instead of negotiating to buy the disputed domain name from the Respondent could be sufficient in itself to found a claim of reverse domain name hijacking.

6. 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 name <surcouf.net> be transferred to the Complainant.

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Warwick A. Rothnie
Sole Panelist

Dated: June 2, 2009