The Complainant is La Française Des Jeux, Boulogne-Billancourt, France, represented by Inlex IP Expertise, France.
The Respondent is Bertil Jonsson, Sjalevad, Sweden.
2. The Domain Names and Registrars
The disputed domain names <francaisdesjeux.com> and
<francaisjeux.com> are registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2008. On October 30, 2008, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed domain names. On October 31, 2008, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 4, 2008 Complainant requested by e-mail the suspension of the proceedings. Accordingly the Center proceeded with the suspension on November 6, 2008.
On December 5, 2008 Complainant requested an extension to the suspension, which was accorded by the Center on the same date. On January 6, 2008 the Center re-instituted the proceedings after a request by Complainant.
On January 7, 2009 the Center informed the Parties that the Complaint was filed in English while the language of the registration agreement concerning the disputed domain name is Swedish. Accordingly, the Center gave the Parties an opportunity to comment on Complainant's language request, Complainant being granted five days from the date of notification and Respondent seven days. Complainant responded on January 8, 2009 with reasons why the language of the proceedings should be English. Since no comments were received from the Respondent by the due date of February 14, 2008, the proceedings went forward on the basis that Respondent had no objection to Complainant's request. Consequently, the Center decided to accept the Complaint as filed in English, accept a response filed either in Swedish or English and appoint a panel familiar with both languages mentioned above, if available.
The Center verified that 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 January 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2009. The Response was filed with the Center on February 1, 2009.
The Center appointed Halvor Manshaus as the sole panelist in this matter on February 16, 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. Factual Background
Complainant is a company which creates, develops and markets lottery and sportsbetting games throughout France and the French overseas departments and territories.
Complainant has registered several trademarks containing the term “La Française Des Jeux” in i.a. France and the European Union and “Française Des Jeux” in France. Complainant has also registered several domain names containing the mentioned terms.
Respondent is an individual residing in Sweden.
The disputed domain names <francaisdesjeux.com> and <francaisjeux.com> were registered by Respondent on October 28, 2007.
On November 20, 2007 Complainant sent a cease and desist letter to the Respondent requesting the transfer of the contested domain names to Complainant.
Respondent provided his answer in an email dated November 26, 2007 suggesting that Complainant offered a “good bid” if it had interest in the domain names.
On January 7, 2008 Respondent sent another e-mail to Complainant informing i.a. that its business was not related to betting lottery or gambling, and that its web based business was not in operation in Europe. Further, Respondent informed that its customers were the worldwide French speaking adult male population. The e-mail also informed that if Complainant had an interest in the disputed domain names it would need to “respond with a business offer rather quickly”, as Respondent was about to launch its website.
5. Parties' Contentions
A. Complainant
Complainant alleges that the disputed domain names are confusingly similar to Complainant's LA FRANCAISE DES JEUX and FRANCAISE DES JEUX trademarks, both visually, phonetically and intellectually.
Complainant further holds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant submits that there is no relationship between Respondent and Complainant, and that Respondent is neither a licensee of Complainant, nor otherwise has obtained authorization to use Complainant's trademark.
According to Complainant, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services.
Complainant further argues that Respondent is not making a noncommercial or fair use of the disputed domain names, without intent for commercial gain. Complainant also holds that Respondent redirects the disputed domain names to a parking site, and that the fact that the websites are not actively used confirms that the registrations of the domain names were done to take advantage of Complainant's reputation.
Complainant holds that Respondent has registered and is using the disputed domain names in bad faith.
According to Complainant, its trademarks have a strong reputation and are widely known in France and also worldwide.
Further according to Complainant's assertions, Respondent is using the disputed domain names in bad faith by using typosquatting to misdirect Internet traffic.
Respondent's offer to sell the disputed domain name to Complainant is also according to Complainant evidence of bad faith.
B. Respondent
Respondent maintains that he is engaged in the business of developing new entertainment concepts, and that the disputed domain names are registered in this connection. Respondent further argues that he did not have knowledge of Complainant's rights to the LA FRANCAISE DES JEUX and FRANCAISE DES JEUX marks, and seems to indicate that the term “francaise des jeux” is generic and that the Complainant's trademark is not widely known outside of France.
The disputed domain names are according to Respondent planned to be used to provide a platform based role play/blog regarding the art of dating, providing evidence to the fact that Respondent has a legitimate interest in using the disputed domain names.
Respondent also points to the fact that he first offered to sell the disputed domain names to Complainant after Complainant had made contact. Further Respondent explains that he is not at present making any use of the domain names for commercial gain, since the domain names are currently connected to a parking website.
Respondent also argues that the proportionality principle contained in Article 5, third paragraph, of the Treaty establishing the European Community (TEC) must be taken into account when deciding the rights to the domain name, as both Complainant and Respondent are domiciled within the European Union.
6. Discussion and Findings
A. Procedural Aspects
Language
The Complaint was filed in the English language, while the Response was filed in Swedish.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties level of comfort with each language, the expenses to be incurred and possibility of delay in the proceedings in the event translations are required and other relevant factors, see also Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679.
In this case the registration agreement for the disputed domain name was made in Swedish. From the communication between the parties and the evidence presented to the Panel, it is apparent that Respondent understands and communicates well in English.
On the other hand, Complainant does not have knowledge of Swedish and has requested the use of the English language. Substantial costs would incur if Complainant was required to submit the case documents in Swedish.
Based on the above and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that (i) English shall be the language of administrative proceeding in this case, and (ii) the Panel has considered Respondent's documents and assertions in Swedish1.
Applicable law
Respondent maintains that the Panel must take into consideration the proportionality principle contained in Article 5, third paragraph, of TEC.
Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: “A panel shall 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.”
This Panel doubts whether Article 5, third paragraph of TEC must be taken into account in the context of these proceedings, particularly so in light of the requirement under the Policy and Rules for fairness (paragraph 10 (b) of the Rules). In any event, this Panel will base its decision on paragraph 4(a) of the Policy.
B. Identical or Confusingly Similar
The domain names at issue are not identical to Complainant's trademarks, and the question is therefore whether there is a confusing similarity between the disputed domain names and Complainant's trademarks.
Previous Panel decisions under the UDRP have concluded that the generic top level domain denominator is irrelevant when determining whether a disputed domain name is confusingly similar to a protected trademark. Thus, the first issue only concerns the part of the disputed domain names which consist of “francaisdesjeux” and
“francaisjeux”.
In relation to the domain name <francaisdesjeux.com>, the only difference between Complainant's trademark FRANCAISE DES JEUX and domain name is the lack of the letter “e”, while the difference between <francaisjeux.com> and the trademark is the lack of the letter “e” as well as the lack of the terms “des”. In relation to the trademark LA FRANCAISE DES JEUX, neither of the disputed domain names contain the term “la”. The Panel considers these differences to be minor.
The Panel finds that the disputed domains names and the trademarks LA FRANCAISE DES JEUX and FRANCAISE DES JEUX both visually and phonetically will appear as similar, and in particular that the domain names at issue are confusingly similar to Complainant's trademark.
C. Rights or Legitimate Interests
Respondent argues that he has rights and legitimate interests in the domain names considering that the disputed domain names are comprised of generic terms. Respondent has explained that he is planning to use the disputed domain names to provide a platform based role play/blog regarding the art of dating.
The Panel notes that Respondent has however not been able to demonstrate that he has made demonstrable preparations to use the domain names in the above mentioned way.
The Panel further notes that, the disputed domain names are currently inactive and connected to a parking website, and consequently not used in connection with a bona fide offering of goods or services, cf. the Policy, paragraph 4(c)(i).
There is no evidence before the Panel that Respondent or its business “has been commonly known by” the disputed domain names, cf. the Policy, paragraph 4(c)(ii).
Similarly, there is no proof that Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain cf. the Policy paragraph 4(c)(iii).
It would appear that Complainant did not grant permission to Respondent to register the disputed domain names, nor did Complainant and Respondent have any sort of commercial or other relationship.
Complainant has in the Panel's view provided convincing evidence to the fact that Complainant's trademarks are widely known throughout the world, and especially in Europe. Considering this, and in view of all the circumstances of this case, the Panel finds Respondent's claim that he has registered the domain names because they comprise of generic terms, not convincing.
On this background, the Panel finds that Complainant has made a prima facie case of Respondent's lack of rights or legitimate interests to the disputed domain names and that Respondent has not demonstrated any of the circumstances that constitute rights to or legitimate interests in the domain names at issue pursuant to the Policy, paragraph 4(c), or that Respondent would have any other rights or legitimate interests in the disputed domain names.
D. Registered and Used in Bad Faith
Respondent asserts that he did not have knowledge of Complainant's rights to the LA FRANCAISE DES JEUX and FRANCAISE DES JEUX trademarks, and that he therefore did not register or use the disputed domain names in bad faith.
As mentioned above, the Panel finds that Complainant's trademarks FRANCAISE DES JEUX and LA FRANCAISE DES JEUX are widely known through out the world, especially in Europe where both Respondent and Complainant are located. Therefore, the Panel does not find Respondent's arguments convincing.
Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806, Nationwide Mutual Insurance Company v. Texas International Property Associates, WIPO Case No. D2008-1411) and under paragraph 2 of the Policy (see paragraph 2), a well-established principle is that when a party registers a domain name, it represents and warrants to the registrar that, to its knowledge, the registration of the domain name will not infringe the rights of any third party.
In the present case the Panel finds that since Complainant's marks are widely known, especially within Europe, it is very unlikely that Respondent, at the time of registration of the domain names, was not aware that it was infringing Complainant's marks.
Furthermore, the Panel notes that an Internet search would have made Complainant's trademark rights known to Respondent.
Prior UDRP decisions have ascertained that passive holding of a domain name may be sufficient to constitute bad faith use. The Panel must however examine all the circumstances of the case to determine whether Respondent is acting in bad faith. The question is whether an assessment of the totality of the case supports a finding of bad faith.
In the present case, the Complainant's trademark is widely known. The Panel notes that Respondent has offered to sell the disputed domain names to Complainant. Further, based on the renown of Complainant's trademarks, the Panel finds that it is more likely than not that Respondent knew of Complainant's trademarks and is seeking to exploit the confusion created by the similarity of those marks and the disputed domain names.
The Panel thus finds that the domain names were registered and are being used in bad faith.
7. 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 names, <francaisdesjeux.com> and <francaisjeux.com> be transferred to the Complainant.
