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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ville De Paris V. Whois Privacy Services/Comar Ltd.
Case No. D2009-1255
1. The Parties
The Complainant is Ville De Paris (the City of Paris), France, represented by Nataf Fajgenbaum & Associés, France.
The Respondent is Whois Privacy Services/Comar Ltd. of Saint Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <wifi-paris.com> is registered with DomReg Ltd. d/b/a LIBRIS.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 23, 2009. On September 24, 2009, the Center transmitted by email to DomReg Ltd. d/b/a LIBRIS.com a request for registrar verification in connection with the disputed domain name. On September 25, 2009, DomReg Ltd. d/b/a LIBRIS.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 2, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center also informed the Complainant that the language of the registration agreement for the disputed domain name was Russian. On October 6, 2009, the Complainant filed an amendment to the Complaint and a request for the language of this proceeding to be English. 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 October 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on November 10, 2009. The Respondent likewise submitted no response to the Complainant`s request for English to be the language of this proceeding.
The Center appointed Natasha Lisman as the sole panelist in this matter on November 18, 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.
4. Language of the Proceeding
Pursuant to Rule 11(A) and based on the circumstances and considerations recited in the Complainant`s unopposed request to change the language of this proceeding to English, the Panel hereby grants the request.
5. Factual Background
The Complainant, Ville de Paris (the City of Paris), is a legal public municipal entity in charge of the capital city of France. Among its many public functions is communication of information about services available in the City, including communication services for Internet users. Those services include free wireless Internet access through numerous terminals located in various sites around the city of Paris.
On June 2, 2004, the Complainant registered a French trademark incorporating the word "Paris" for numerous products and services, including telecommunications. As depicted on the trademark certificate from Institut National de la Proprieté Industrielle attached to the Complaint, the Complainant`s trademark is a mixed design-word mark consisting of a fanciful graphic image and the word "Paris" in capital letters superimposed across the center of the image.
On July 15, 2008, the Complainant sent a letter to the Respondent advising it that its domain name <wifi-paris.com> was an infringement of the Complainant`s rights and demanding that the Respondent cease "any use of the name "PARIS"". The Respondent never replied.
The information supplied by the Registrar shows that the disputed domain name was registered on June 21, 2005. According to the Complainant, as of September 9, 2009, the web site at http:www.wifi-paris.com was inactive and resolved to the following message: "Name error: the domain name does not exist."
6. Parties` Contentions
The Complainant alleges that (1) it has prior rights in its "semi-figurative" trademark, and that the domain name <wifi-paris.com> is confusingly similar to that prior PARIS AND DESIGN trademark because it incorporates the term "Paris"; (2) the Respondent`s failure to make any actual use of the disputed domain name is prima facie evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (3) the Respondent`s non-use of the disputed domain name, combined with the Complainant`s well-known use of "Paris" in connection with its free Wi-Fi program, as well as the Respondent`s record of abusive registrations of domain names, as established in other UDRP cases, support the inference that the Respondent registered and has used the disputed domain name in bad faith, and in particular, for the purpose of deliberately preventing the Complainant from reflecting its mark in a corresponding domain name. Based on these contentions, the Complainant requests that the domain name <wifi-paris.com> be transferred to the Complainant and that the Provider be ordered to publish the full decision and the date of its implementation on a publicly accessible web site.
The Respondent neither replied to the Complainant`s contentions nor submitted any contentions of its own.
7. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, to justify the transfer of the domain name, the Complainant must prove each of the following elements:
(i) That the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That Respondent has registered and is using the domain name in bad faith.
Under paragraph 15(a) of the Rules, the Panel must "decide a Complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable."
A. Identical or Confusingly Similar
The Complainant`s position that the domain name <wifi-paris.com> is confusingly similar to a trademark in which the Complainant has rights is predicated on equating the word "paris" in the disputed domain name with the word "Paris" in its registered PARIS AND DESIGN trademark. However, this predicate does not support the conclusion that the Complainant implicitly draws from it, namely that it has rights in the word "Paris" as such.
First, the Complainant has not registered a trademark in the word "Paris" simpliciter and it is in this Panel`s view doubtful that it could do so, or claim an exclusive right to use that geographic term. See, e.g., Empresa Municipal PromociГіn Madrid S.A. v. Easylink Services Corporation,
WIPO Case No. D2002-1110; Land Sachsen-Anhalt v. Skander Bouhaouala,
WIPO Case No. D2002-0273; City of Lake Worth v. John C. Becker, Inc.,
WIPO Case No. D2003-0576. The Panel also notes that the Complainant is far from having a monopoly on registered marks incorporating the word "Paris": using "Paris" as the search term in the trademark data base of Institut National de la Proprieté Industrielle yields 7,9228 responses, including such French and European Community trademarks as PARIS SECRETS, DJAZZ PARIS, VIVRE PARIS, and MIMA PARIS, to name just a few. Similarly, the Internet abounds with domain names and business names incorporating the word "Paris", such as "www.paris-live.com" or "www.parisguide.com".
Second, the Panel finds that, as used in the Complainant`s PARIS AND DESIGN trademark, the word "Paris" is so closely intertwined with the graphic image within the mark that the word element on its own does not suffice as a separable, distinctive, or dominant element of the trademark for the purpose of the Policy Such use of a geographic term in combination with such additional design elements does not in the Panel`s view suffice to create protectable rights in such geographic term alone under the Policy. See, e.g., Empresa Municipal PromociГіn Madrid, supra (registered trademarks for PROMOCION MADRID and MADRID CIUDAD 2002 did not create trademark rights in "Madrid" standing alone); Chambre de Commerce et d`Industrie de Rouen v. Marcel Stenzel,
WIPO Case No. D2001-0348 (June 18, 2001) (registered trademark for C.C.I. ROUEN E.S.C. ROUEN L`ESPRIT DE CONQUETE did not create trademark rights in "Rouen"); Brisbane City Council v. Joyce Russ Advertising Pty Ltd.,
WIPO Case No. D2001-0069 (May 14, 2001) (finding the distinguishing feature of registered trademark BRISBANE CITY WORKS to be the conjunction of "works" with "Brisbane city" and not "Brisbane City" by itself). The Complainant also appears not to have produced any evidence that it has promoted or marketed its WiFi services in Paris under or by reference to the PARIS AND DESIGN (such that, for example, the word "Paris" could conceivably be said to have acquired secondary meaning for the purpose of the Policy in connection with an offering of "WiFi" services), and the single element of commonality between the PARIS AND DESIGN mark and the disputed domain name is the word "Paris". In any event, putting aside the question of requisite rights for the purpose of the Policy, it seems highly unlikely to this Panel that such similarity alone would be sufficient to support a finding of confusing similarity between the disputed domain name and the particular mark relied upon in these proceedings.
In sum, the Panel concludes that the Complainant has not satisfied its burden under the first element of the Policy.
B. Rights or Legitimate Interests
In view of the Panel`s conclusion as to the first element of the Policy, it is not necessary to decide whether the Respondent has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
For the same reason, it is also not necessary to decide whether the Respondent registered the disputed domain name, or used it, in bad faith.
For all the foregoing reasons, the Complaint is denied.
Dated: December 1, 2009