Société du Figaro S.A. v. Michael Ehrhardt / Mike Hard
Case No. D2015-0094
1. The Parties The Complainant is Société du Figaro S.A. of Paris, France, represented by Nameshield, France.
The Respondent is Michael Ehrhardt of Korat, Thailand and of Bremerhaven, Germany / Mike Hard, of California, the United States of America.
2. The Domain Names and Registrar The disputed domain names and (the “Domain Names”) are registered with One.com A/S (the “Registrar”).
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2015. On January 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 22, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 29, 2015, the Center received the Amended Complaint.
The Center verified that the Complaint together with the Amended 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 January 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2015. The Center received several emails from the Respondent before and after the commencement of Administrative Proceeding.
The Center appointed Dawn Osborne as the sole panelist in this matter on February 26, 2015. 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 Complainant is the owner of the registered trade mark LE FIGARO for, inter alia, publications in the USA and Europe. The newspaper was founded in 1826. The Complainant has also registered FIGARO in the trade mark clearing house for new gTLDs.
The Domain Names were registered in 2015 in the new gTLD “.paris”. The site attached to the Domain Names offers the Domain Names for sale with a list of other domain names.
5. Parties’ Contentions A. Complainant The Complainant has been since 1953 the owner of registered trade marks, including those covering the USA and Europe for LE FIGARO for publications.
Paris is a geographical area where the Complainant is domiciled and develops its activity. As such the addition of the new gTLD “.paris” does not change the fact that the Domain Names are identical to the Complainant’s trade mark for the purposes of the Policy or the impression that the Domain Names are connected to the Complainant.
The Complainant also owns the trade mark FIGARO which is registered in the trade mark clearing house. Thus the Respondent was aware of the Complainant’s trade mark at the moment of registration of the Domain Names.
The Respondent is not affiliated with the Complainant nor authorized by it in any way. It does not appear to have any rights or trade marks in LE FIGARO. The Respondent has no rights or legitimate interests in the Domain Names.
The Domain Names have been registered for the sole purpose of being sold. The Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting or otherwise transferring the Domain Names to the Complainant who is the owner of the corresponding trade mark or to its competitor for valuable consideration in excess of documented out of pocket costs. As such the Domain Names have been registered and are being used in bad faith.
B. Respondent The Respondent did not provide a formal Response, however the contents of his emails can be summarized as follows:
There are lots of towns all over the globe with the name “Paris”. It is a generic term.
“Le Figaro” is a generic term meaning the curb. There are many people or businesses called “Le Figaro”. It is registered in domain names for sale all over the world.
The Respondent has submitted some material showing “Figaro” is a character in an opera.
The Respondent cannot accept the situation and draws attention to the story of the domain name in the USA. The Domain Names are legitimately registered. To have a trade mark does not mean anyone has a monopoly in domain names across the world. Trade mark claims require a likelihood of confusion.
6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that:
The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
The Respondent has no rights or legitimate interests in respect of the Domain Names; and
The Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Domain Names and consist solely of the Complainant’s mark LE FIGARO, and the gTLD “.paris”, save that in the case of a hyphen has been inserted between “le” and “figaro”.
“.paris” is a new gTLD intended for use by residents, institutions and businesses in Paris, France. The city of Paris in France is where the Complainant’s newspaper is based.
The use of the new .gTLD “.paris” ordinarily indicating Paris, France where the Complainant is based adds to the likelihood of confusion with the Complainant’s trade mark.
As such and are both confusingly similar to the Complainant’s LE FIGARO registered trade mark for the purposes of the Policy. As such the Complainant has satisfied the first limb of the Policy with respect to both Domain Names.
B. Rights or Legitimate Interests
The Respondent does not appear to have any trade marks associated with the name LE FIGARO. There is no evidence that he is commonly known by this name (as the respondent was in the case, see supra) and he does not have any consent from the Complainant to use this trade mark. He does not appear to have used the Domain Names for any bona fide offering of services of his own.
Currently, there is a holding page attached to the Domain Names saying that the Domain Names are for sale along with a list of other mainly generic domain names.
The Respondent argues that “Le Figaro” is generic. He points out that “le figaro” means the curb and has submitted materials showing “Figaro” is a character in an opera. He points out by submission of materials that there are cities called Paris in the United States. However, the website at the Domain Names does not refer in any way to the alleged generic meaning of “the curb”, “Figaro” as a character in an opera, and does not contain links to subjects to such meanings. Furthermore, the Respondent does not explain why he has registered the Domain Names in these regards or any other regard. He has provided no actual evidence to support how he intends to use the Domain Names and, indeed does not say specifically what his intentions are with regard to the Domain Names. He does not specifically deny allegations made by the Complainant in the Complaint, but simply points out possible generic uses.
Given the contents of the holding page offering the Domain Names for sale, the Panel finds the Respondent’s intentions were to sell the Domain Names for profit. It is perfectly legitimate to sell generic domain names for profit, however, given the famous nature of the Complainant’s newspaper and the fact that it is based in Paris and the lack of evidence regarding usage in the generic ways the Respondent asserts is possible, the Panel holds that to the vast majority of Internet users the Domain Names would indicate the Complainant or its business and would not be considered generic.
The Respondent does not deny any knowledge of the Complainant and its rights or comment on the value of the Domain Names that might be attributable to the Complainant’s rights.
Accordingly, the Panel finds the Respondent does not have any rights or legitimate interests in the Domain Names.
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“circumstances indicating that the Respondent 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 [its] documented out-of-pocket costs directly related to the domain name;” (see paragraph 4(b)(i) of the Policy)
The material attached to the Domain Names indicates that the Domain Names are for sale. The Respondent has given no satisfactory reason why it has a legitimate interest in Domain Names comprising the famous trade mark LE FIGARO belonging to the Complainant in conjunction with the new gTLD “.paris” indicating the city where the Complainant is based. Nor has the Respondent given any evidence of any real intention to use the Domain Names in relation to curbs, opera characters or cities called Paris across the world. The only real evidence is that the Domain Names were offered for sale for profit and the Panel holds, as recorded above, that the majority of Internet users would strongly and possibly exclusively associate the Domain Names with the Complainant and its famous newspaper and, as such, any sum received for those names would be likely inflated by that significance.
The Respondent does not deny that he is or was aware of the Complainant and its rights, has not specifically denied the allegations in the Complaint and has not provided any evidence of intended generic use of the Domain Names not related to the Complainant.
Accordingly, the Panel finds on the balance of probabilities that the Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the owner of the trademark LE FIGARO or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name;”. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(i) of the Policy.
7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names and be transferred to the Complainant.