The Complainant is SARL CM, Paris, France, represented by Cabinet Dreyfus &
Associés, Paris, France.
The Respondent is Ignazio Aronica, Catania, Italy.
2. The Domain Name and Registrar
The disputed domain name <cafedeflore.com> is registered with OnlineNic,
Inc. d/b/a China-Channel.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration
and Mediation Center (the “Center”) on November 3, 2006. On November
6, 2006, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the domain name at issue. On November 8, 2006,
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
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 November 15, 2006. In accordance with the Rules, paragraph
5(a), the due date for Response was December 5, 2006. The Respondent did not
submit any response. The Center accordingly notified the Respondent’s
default on December 14, 2006.
The Center appointed Richard G. Lyon as the sole panelist
in this matter on December 20, 2006. The Panel finds that it was properly constituted
and has jurisdiction over this proceeding. 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
Complainant, a French société anonyme, is the proprietor
of a café in the Saint-Germain des Pres district in Paris, France. This cafe
has been in business for over a century. According to the Complaint and the
Panel’s research of publicly available materials, Café de Flore has been
favored by artists and intellectuals for much of its history. Complainant has
registered trademarks for CAFÉ DE FLORE in France, the European Union, Japan,
the United States of America, Lebanon, and Morocco, and has filed this mark
with the World Intellectual Property Organization under the Madrid Convention.
Because of the Respondent’s default, little
is known about him other than the fact that he registered
the disputed domain name in March 2003. The disputed domain name resolves to
“www.cafedeflore.it”, at which a website in the Italian language
describes and advertises a bar and restaurant called Café de Flore at the Villa
de Flore, in Catania, Italy.
On July 31, 2006, Complainant’s
counsel wrote to Respondent at the address listed in the registration for the
disputed domain name, asserting that the Respondent’s domain names (both
the disputed domain name and <cafedeflore.it>) infringed Complainant’s
trademarks and requesting an amicable transfer of these domain names to the
Complainant, but making clear that absent an agreement the Complainant would
take appropriate legal action. This letter was duly delivered but Respondent
did not reply to it.
5. Parties’ Contentions
A. Complainant
Complainant contends as
follows:
Rights in a mark. Complainant
has rights in CAFÉ DE FLORE by virtue of its numerous trademark registrations
and continuous use in commerce since 1887. The disputed domain name is identical
to this mark, except for the addition of the generic top-level domain.
No rights or legitimate
interest. Complainant has never authorized Respondent’s use of its mark;
Respondent is not affiliated with Complainant in any way; and, to quote from
the Complaint, “Respondent is not making any legitimate non-commercial
or fair use of the domain name, as the domain name in dispute is so identical
to the famous trademarks of the Complainant, the Respondent could not reasonably
pretend it was intending to develop a legitimate activity.”
Bad faith. Because of the
renown of Complainant’s marks, “it seems obvious that Respondent
knew or must have known” of Complainant’s mark when he registered
the disputed domain name. Because of this, Respondent is trading off the renown
of Complainant’s mark. The fact that Respondent, like Complainant, operates
a bar and restaurant exacerbates the confusion that is likely to occur as a
result of Respondent’s use of Complainant’s name. This “may
ruin the Complainant’s reputation, by attracting internet users to a web
page that does not correspond to what they were looking for.” Respondent’s
failure to reply to Complainant’s cease-and-desist letter is further evidence
of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
The Complainant must prove the elements set out in paragraph 4(a) of the Policy.
These elements are as follows:
(i) Respondent’s Domain Name is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect to the Domain
Name; and
(iii) Respondent’s Domain Name has been registered and is being used
in bad faith.
The Complainant bears the burden of proof on each of these elements. Respondent’s
default does not automatically result in judgment for the Complainant and does
not constitute an admission of any pleaded matter. See “WIPO
Overview of WIPO Panel Views on Selected UDRP Questions” (“Overview”),
paragraph
4.6.
A. Identical or Confusingly Similar
Complainant has established
this element of the Policy. It holds many registered trademarks for the phrase
CAFÉ DE FLORE and has used the name in commerce for many years. The addition
of a top-level domain (.com) does not obviate the identity of the disputed domain
name with Complainant’s mark.
B. Rights or Legitimate
Interests; Registered and Used in Bad Faith
As is often the case, much
of the resolution of these two paragraphs of the Policy turns on the same analysis
by the Panel. If Respondent’s use is legitimate, there is likely no bad
faith; if not, bad faith in both registration and use may normally
be inferred.
Because of the difficulties
of proving a negative, the accepted approach to resolving paragraph 4(a)(ii)
of the Policy is that if the Complainant makes out a prima facie showing
that the Respondent lacks rights or legitimate interests in the disputed domain
name, the burden of persuasion shifts to the Respondent to establish rights
or legitimacy. Overview,
paragraph
2.1.
The case that Complainant has pleaded in its Complaint, if established by competent
proof, would make out such a prima facie showing. Complainant has not
licensed or otherwise authorized Respondent to use its mark; Respondent’s
use of the disputed domain name is commercial; Respondent is using the disputed
domain name to advertise services in the international trademark class for which
Complainant holds its mark; and Respondent “must have known” of
Complainant’s mark because of the fame that mark and the Complainant’s
café which uses that mark have achieved.
Panels under the Policy have generally not adopted the doctrine of constructive
notice from trademark law, and the few exceptions are cases in which the Panel
has applied United States law. See Overview, paragraph 3.4. Here both parties
are located and operate their businesses in Europe. The Panel sees no basis
for presuming Respondent’s knowledge of Complainant’s marks solely
by virtue of their registration.
Complainant describes its marks as “famous” and indeed its café
has a noted reputationoutside Paris. Complainant, however, uses its
marks for a single café, in one city that is several hundred miles from Respondent’s
café and in a country with a different native language. While Respondent uses
the disputed domain name for the same services as Complainant, they are not
competitors in the sense that a prospective customer chooses one or the other;
a tourist is not likely to visit Catania instead of Paris simply because of
these cafes. Stated differently, a sale by Respondent is not a sale lost by
Complainant.
Complainant offers no proof of confusion by any of its customers or by a disgruntled
Internet user who sought information about Complainant’s café but found
herself at Respondent’s website,1
and no proof of the tarnishment of its marks pleaded in the Complaint by virtue
of Respondent’s website or café. Complainant asks the Panel to infer confusion
and tarnishment solely by virtue of its ownership of a mark it claims is famous.
This may not be the end
of the Panel’s inquiry. Given the limited nature of proceedings under
the Policy, with no discovery and cross-examination, in many instances it may
be impossible to determine a respondent’s motives for the registered domain
name at issue, whether or not the respondent was aware of the Complainant’s
mark when he registered his domain name. As the Panel stated in Brooke Bollea,
a.k.a. Brooke Hogan v. Robert McGowan, WIPO
Case No. D2004-0383, “Panelists’ inferring factual or legal
conclusions from complainants’ unsupported allegations coupled with no
response are occasionally necessary (and appropriate), because matters involving
a respondent’s motive, intent, purpose, and other subjective factors determinative
under Paragraphs 4(a)(ii) and 4(a)(iii) will not always be susceptible of direct
proof, at least without the discovery and cross-examination that are unavailable
to a complainant or a panelist in proceedings under the Policy. A complainant
must often prove such matters with a prima facie showing that, when unchallenged,
a panelist can accept.”
Furthermore, a line of
decisions under the Policy suggests that in certain circumstances a person registering
a disputed domain name has some duty to investigate the accuracy of his undertaking
in his registration agreement that, so far as he knows, the disputed domain
name does not tread upon another’s trademark rights. E.g.,Hexion
Specialty Chemicals GmbH v. Pacific Webs Pty Ltd., WIPO
Case No. D2005-1272; World Savings Bank, FSB and Golden West Financial
Corporation v. Netcorp, Claim Number: FA0502000414921 (NAF 2004). It could
at least be argued that when the domain name at issue is not completely
generic or descriptive, as is the case here,2the
registrant’s duty includes some investigation of whether the chosen word
or phrase is someone else’s registered mark. Had Respondent in this proceeding
done so, he presumably would have discovered Complainant’s registered
European Community mark.
Most of these cases, however,
dealt with obvious cybersquatting and included factual circumstances, not present
here, that led strongly to the conclusion that the disputed domain name was
chosen specifically because of the preexisting mark or in “willful blindness”
of it.3
In this proceeding, there is no direct competition, no imitation,4
no obvious attempt to trade off the mark owner’s
name, no attempt to sell the disputed domain name to the mark owner or anyone
else, no diversion to a pornography site or other site unrelated to the mark
at issue, no pattern of registering multiple domain names without regard to
third party trademark rights, no indication that Respondent has been a party
to any other proceeding under the Policy in respect to any domain name, and
use for a legitimate business 5—in
summary, much less from which the Panel may infer intentional cybersquatting
or even that Respondent in fact knew of Complainant’s marks. There is
only the allegation of Complainant’s counsel that the CAFÉ DE FLORE mark
is famous. The sparse evidence in the record, including the internet pages accessed
by the Panel, includes facts from which an inference of actual legitimate use
is possible.6
There is also a Villa De Flore, suggesting that the restaurant took its name
from the villa. On the record in this proceeding the Panel concludes that the
Complainant has not established Respondent’s lack of legitimate interest
in the disputed domain name or bad faith in registration.
Two additional reasons
support this holding. First, the Panel believes that
in a close case significant doubt should be resolved in favor of the Respondent.
It is Complainant, after all, that bears the burden or proof in a Policy proceeding.
Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO
Case No. D2006-0551; Interstate National Dealer Services, Inc. v. Selwyn
Colley, WIPO Case No. D2003-0934;
Rug Doctor, L.P. v. Barry Bourdage, WIPO
Case No. DTV2003-0002. Second, and more importantly, the Policy was adopted
to address a limited class of cases, involving outright cybersquatting. When
there is doubt about whether that has occurred, issues between the parties are
better suited for resolution in national courts,
which may review a full record and determine credibility in accordance with
applicable law. Respondent’s business is easily identifiable and easily
found, should Complainant resort to further legal action.
E.g., eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr.
Brian Simpson, Mr. Ron Davis, WIPO Case
No. D2004-0552.
7. Decision
For the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Dated: December 29, 2006
1 The Panel's limited research
indicated that Internet users are not likely so to be confused, as a Google®
search of "café de flore" yielded many hits about Complainant's café
but none in the first 50 hits about Respondent's. Respondent's café is described
in the sixty-ninth hit, after hits describing cafes of the same name in Los
Gatos, California and Saratoga, New York, United States of America.
2 The word "flore"
is not a noun or other word in the Italian language, although it is in French.
4 The parties' logos
are different and Respondent's café-bar, as illustrated on its website, is not
an imitation of Complainant's. For example, Respondent describes its establishment
as including an American bar; there is nothing remotely American about Café
De Flore in Paris.
5 In fact, only one
of these indicia (trading off Complainant's fame) is even alleged, and that
allegation depends on whether Complainant's mark is famous.
6 This opinion, of
course, deals only with issues under the Uniform Dispute Resolution Policy,
not French or Italian trademark law. Nothing in the Panel's opinion is binding
in a subsequent legal proceeding between the parties. In an infringement action,
the legal standards are different, the procedural rules are different, and each
party is entitled to discovery and cross-examination. The Panel expresses no
opinion on whether Respondent's use of the name Café
De Flore constitutes trademark infringement.
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