The Complainant is Adakim - Eurl, Meynes, France, represented by Cabinet Verniau, France.
The Respondent is Linea Networks, Courbevoie, France, represented by ACTINNOVA, Bosnia and Herzegovina.
2. The Domain Name and Registrar
The disputed domain name <footmercato.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2008. On June 23, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On June 24, 2008, 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.
On June 27, 2008, the Center notified the Complainant of Complaint Deficiency, listing a number of deficiencies in the Complaint. One of those deficiencies related to the language of the Complaint, which was not the language of the registration agreement. The Complaint was filed in French, although the language of the registration agreement was English. On July 3, 2008, the Complainant sent its request to proceed in French, providing the reasons as to why it should be proceeded in French.
The Center verified that the Complaint together with the amendment 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 in French, and the proceedings commenced on July 9, 2008.
On July 17, 2008, the Center received an email communication from the Respondent’s representative requesting the translation of the Complaint in English. The Center therefore requested that the Complainant provide a translation of the Complaint into English.
The Complainant sent the Complaint translated into English on July 22, 2008.
In accordance with the Rules, paragraph 5(a) and for the reasons stated above, the due date for Response was extended to August 8, 2008. The Response was filed with the Center on July 31, 2008.
The Center appointed Stéphane Lemarchand as the sole panelist in this matter on August 12, 2008. 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 a French company whose main activity is the operation of the Internet website available at “www.footmercato.net”, providing football news, and notably on the transfer of players between clubs.
The Complainant registered the domain name <footmercato.net> on July 9, 2004.
The Complainant is also the owner of a French trademark FOOT MERCATO, registered under n° 06 3 468 473 on December 7, 2006, in class 38.
The Respondent is a company specialized in developing software solutions. The Respondent launched an Internet website specialized on football news on March 20, 2002.
Among other domain names, the Respondent registered the domain name at issue, <footmercato.com>, on August 21, 2003.
This domain name <footmercato.com> was put up for sale on June 12, 2008, for 10,000 euros.
5. Parties’ Contentions
A. Complainant
As mentioned above, the Complainant is the owner of the domain name <footmercato.net> and of a French trademark FOOT MERCATO.
The Complainant contends that the disputed domain name is identical or confusingly similar to its French trademark, and therefore would present an obvious risk of confusion with its trademark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the domain name <footmercato.com>, as it has not entered into any trademark license agreement and is not the holder of any FOOTMERCATO trademark.
According to the Complainant, the disputed domain name is used to direct Internet users to a website named “Football Mercato”, which has an activity similar to that of the Complainant.
The Respondent’s website is shown under the name “FOOTBALL MERCATO”, which is also the corporate name of the Complainant. According to the Complainant, the Respondent does not own any trademark right in the mark FOOTBALL MERCATO.
According to the Complaint, the domain name was registered and is being used in bad faith, as it is used to manage an activity similar to that of the Complainant. The Respondent seeks to attract Internet surfers and secure financial gain resulting from the website traffic under the Complainant’s trademark FOOTBALL MERCATO, its popularity and the commerce resulting from the advertising space on the website by creating confusion with the website, trademark and business of the Complainant.
The Complainant says that by using a similar domain name which directs to a website with the same activity, the Respondent creates a risk of confusion with the Complainant’s website which is an act of unfair competition.
In addition, the Complainant asserts that the disputed domain name was registered by the Respondent exclusively for speculative reasons, as it was put up for sale on June 12, 2008 for 10,000 euros.
The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent registered the disputed domain name on August 21, 2003, whereas the Complainant’s domain name was only registered on July 9, 2004.
The Respondent points out that the Complainant’s trademark FOOT MERCATO was registered more than 3 years after the registration of the disputed domain name registration.
The Respondent also points out that it filed a trademark application in Bosnia Herzegovina for the mark FOOTBALL MERCATO on April 4, 2004, that is to say more than 3 months before the Complainant’s domain name registration and 30 months before the filing of the Complainant’s French trademark application.
The Respondent contends that the words “foot”, “football” and “mercato” are well-known and common words in various countries speaking different languages. The Respondent asserts that the Complainant’s trademark would have become customary in almost every language and cannot be an exclusive trademark.
The Respondent’s website is available in different languages, and its generic domain name cannot be associated with the Complainant’s trademark protection limited to France. In addition, the Respondent asserts that the Complainant’s website covers only the French marketplace, whereas the Respondent’s website targets a much wider audience. In light of the above, the Respondent denies the Complainant’s assertion that Internet users accessing the disputed domain name <footmercato.com> would believe that they had at the Complainant’s website.
According to the Respondent, many users type “foot” instead of “football” as it is shorter, and when a visitor types “www.footmercato.com” in the address bar of the browser, he is redirected to “www.footballmercato.com”. If the Respondent had aimed to create confusion with the average consumer, states the Respondent, it would have kept <footmercato.com> in the address bar of the browser.
The Respondent denies the finding of the Complainant according to which the Respondent’s behavior would be unfair competition, specifying that this is market competition.
The Respondent asserts that it has rights and legitimate interests in respect of the disputed domain name, registered 11 months before the Complainant registered its domain name.
The Respondent points out that the website available at “www.footmercato.com” is a multilingual site accessible in ten languages, and existed long before the Complainant’s website. The Respondent thus never aimed at making the content of “www.footmercato.com” similar to the content of the Complainant’s French website.
The disputed domain name is in use and does not point to an empty website, and the Respondent never offered to sell the domain name to any company or individual, nor to the Complainant or any of the Complainant’s competitors. According to the Respondent, the Complainant misinterpreted the offer for sale of the domain name, which cannot be described as fraudulent or speculative in the case at issue.
The Respondent says that since it registered its domain name and launched its website prior to the launch of the Complainant’s website and the registration of the Complainant’s domain name, it could not infringe the Complainant’s rights nor act in bad faith.
The Respondent asks the Panel to make a finding of reverse domain name hijacking, pursuant to paragraph 15(e) of the Rules.
The Respondent indeed notices that its domain name was registered 11 months prior to the Complainant’s domain name registration. In addition, different press articles in printed media and websites have been published about the Respondent’s website before the launch of the Complainant’s site.
The Respondent asserts that it has never registered any domain name with a ccTLD, always targeting worldwide audience with different languages offered on its site, which is a clear proof of fair registration and use of all its domain names.
The Respondent contends that the Complainant is harassing the Respondent in a calculated effort to unfairly deprive him of a domain name that it has owned and used for nearly 5 years.
In order to prove the Complainant’s harassment, the Respondent says that the Spanish version of its website operates from the beginning at the domain name <futbolmercado.com>, registered on December 5, 2003. The Complainant registered the domain name <futbolmercado.es> on May 13, 2007, that is to say more than 3,5 years after the Respondent registered its gTLD domain name with the same name “futbolmercado”.
The Respondent claims that the Complaint has been brought in bad faith and that it includes false allegations. The Respondent thus requests the Panel to make a finding pursuant to paragraph 15(e) of the Rules.
6. Discussion and Findings
The Panel proceeds to render its decision in English pursuant to paragraph 11 of the Rules.
Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested;
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the domain name; and
(iii) that the Respondent has registered the domain name and is using them in bad faith.
A. Identical or Confusingly Similar
There is no discussion on this point. The domain name is identical or confusingly similar to the Complainant’s trademark in which the Complainant has had rights since December 7, 2006.
B. Rights or Legitimate Interests
The domain name was registered on August 2003, well before the Complainant made its application to register the French trademark on which it relies. The Complainant was only incorporated in November 2005, more than 2 years after the disputed domain name’s registration.
The Respondent states that it has used the disputed domain name for more than 5 years, and that it never directed to an empty webpage. The supporting exhibits provided by the Respondent, which are different press articles in printed media and websites published about the Respondent’s website before the launch of the Complainant’s website, evidence that it was in use since the domain name was registered.
Therefore, it appears that the Respondent, before any notice of the Complaint filed by the Complainant, has used the domain name <footmercato.com> in connection with a bona fide offering of goods or services, which demonstrates the Respondent’s rights or legitimate interests in respect of the disputed domain name.
In light of the above, the Complainant failed to prove that the Respondent does not have rights or legitimate interests in the domain name <footmercato.com>.
C. Registered and Used in Bad Faith
Here, there is no dispute about the relevant chronology. The Complainant registered the domain name <footmercato.net> on July 9, 2004 and filed the French trademark FOOT MERCATO on December 7, 2006. The Respondent, however, registered the disputed domain name more than 11 months prior to the registration of the Complainant’s domain name and more than 3 years prior to the filing of the Complainant’s trademark.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by, among other things, evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
The Panel is unable to determine from the Complaint which, if any, of the above factor(s) that the Complainant is relying upon for its assertion of bad faith.
With respect to Paragraph 4(b)(i) of the Policy, given the evidence of record, the Panel finds it impossible to conclude that, having registered the disputed domain name 11 months prior to the date on which the Complainant registered its own domain name <footmercato.net>, the Respondent could have registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring it the Complainant. As a result, the Panel does not find bad faith under Paragraph 4(b)(i) of the Policy.
With respect to Paragraph 4(b)(ii) of the Policy, there is nothing in the record to indicate that the Respondent has engaged in a “pattern” of inappropriate domain name registrations. As a result, the Panel does not to find bad faith under Paragraph 4(b)(ii) of the Policy.
With respect to Paragraph 4(b)(iii) of the Policy, the Panel finds it impossible to conclude that, having registered the disputed domain name prior to the date on which the Complainant began conducting business under the name FOOT MERCATO, the Respondent could have registered the disputed domain name primarily for the purpose of disrupting the business of Complainant. The Complainant indeed did not even exist at the date of the disputed domain name registration. As a result, the Panel does not find bad faith under Paragraph 4(b)(iii) of the Policy.
With respect to Paragraph 4(b)(iv) of the Policy, the Panel finds it impossible to conclude that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website given that (1) the Respondent launched its website prior to the incorporation of the Complainant, and consequently prior to the registration of any rights claimed by the Complainant and (2) the Respondent proves that its website was used for an activity that is similar to the Complainant’s, prior to the launch of the Complainant’s own website. As a result, the Panel does not find bad faith under Paragraph 4(b)(iv) of the Policy.
While bad faith can be found even in the absence of the above factors, the Panel does not see it anywhere in this case. If anything, the Respondent’s registration and use of the disputed domain name for more than 2 years prior to the existence of the Complainant and Complainant’s rights, is evidence of the Respondent’s good faith registration and use of the disputed domain name.
In light of the above, it is clear that Respondent did not register the disputed domain name in bad faith with the intent of profiting from any goodwill inherent in the Complainant’s trademark or interfering with the Complainant’s use of its trademark.
7. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is defined under paragraph 15(e) of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel finds that the Complainant did not demonstrate that the disputed domain name was registered by the Respondent in bad faith, notably as it was registered prior to the registration of the Complainant’s domain name <footmercato.net> and trademark.
The Panel finds that the use of the disputed domain name by the Respondent cannot, considering the evidence of bona fide use for the last five years, constitute bad faith.
Finally, the Panel finds that the fact that the Complainant registered the domain name <futbolmercado.es> on May 13, 2007, whereas the Respondent’s Spanish version of its website operated from the beginning at the website “www.futbolmercado.com”, and was registered on December 5, 2003, that is to say more than 3,5 years prior to the date that the Respondent registered its domain name <footmercato.com>, demonstrates the bad faith of the Complainant.
However, the Panel finds it surprising that the Respondent put for sale the disputed domain name on June 12, 2008, that is to say 8 days prior to the filing of the Complaint, and did not give any explanation on the reasons of this act.
The Panel thus considers that the Respondent’s claim of Reverse Domain Name Hijacking is unpersuasive, as it does not establish that the Complaint was brought in bad faith.
8. Decision
For all the foregoing reasons, the Complaint is denied.
Stéphane Lemarchand Sole Panelist
Date: September 5, 2008
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