Fun and Fly v. Cyril Biscarlet-Maillot

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

FUN AND

FLY v. Cyril Biscarlet-Maillot

Case No.

D2001-0367

1. The Parties

The Complainant is

FUN AND FLY, a French public company, represented by Maître Marianne

COMBALDIEU, France.

The Respondent is Mr.

Cyril BISCARLET-MAILLOT, located in Versailles, France.

2. The Domain Name

and the Registrar

The domain name at

issue is <funandfly.com>.

The registrar is Tucows.com,

Inc.

3. Procedural History

The WIPO Arbitration

and Mediation Center ( the Center) received the complaint by e-mail on March

14, 2001 and in hard-copy on March 20, 2001.

The Center notified

the Complaint formally on March 23, 2001, in French.

The Respondent required

a translation into English and on March 27, 2001. The Center confirmed that

the proceedings will be conducted in English. The translation has been provided

on April 2, 2001.

The Complaint was filed

in accordance with the requirements of the Rules and the Supplemental Rules.

Payment has been properly

made and the single Panelist agrees with the Center’s assessment concerning

the complaint’s compliance with the formal requirements.

The Complaint was properly

notified in accordance with the Rules.

The Respondent default

has been notified on April 17, 2001.

The single Panelist

accepted his appointment and has submitted a Statement of Acceptance and

Declaration of Impartiality and Independence to the WIPO Arbitration and

Mediation Center.

The date scheduled

for the decision is May 10, 2001.

4. Factual Background

The complaint is based

on :

- the French

FUN & FLY trademark n° 1697150 filed on September 25, 1991, in

classes 39, 41 and 42 (travel and tourists agency, transportation

of persons, renting of vehicles of transport, renting of windsurfers

and cycles. Booking in hotels for travellers. Hotel business. Catering.

Organisation of sporting training. Organisation of sporting competitions)

- the French FUN &

FLY trademark application n° 3085671 filed on February

26, 2001, in class 38, which is still pending.

The Complainant was created

on September 20, 1991, by Mr. Michel SAUTEREAU for the organisation of travels

and sporting events in the domain of surf, windsurf, kite surf, golf and climbing,

it is well-known in its sector of activity.

Mr. Michel SAUTUREAU

registered the domain name : <fun-and-fly.com> on September 2, 1997,

which is on active status.

On April 5, 2000, the

Respondent registered <funandfly.com> which is on active status and

which is used for the same activity as <fun-and-fly.com>.

A link between the homepage

of the site and the address « info@funandfly.com » is created on the website,

whereas the contact address of the Complainant is « info@fun-and-fly.com ».

At the end of January

2001, clients of the Complainant complained about the confusion between

the domain name at issue and <fun-and-fly.com>.

5. Parties’ Contentions

A. Complainant

5.1 The Domain

Name is Identical or Confusingly Similar to the Trademark

<funandfly.com>

is presented as the slavish or at least quasi-slavish reproduction of the

trademark FUN & FLY, the name FUN & FLY being not only the trademark,

but also the corporate, domain and trade name of the Complainant.

The domain name at

issue is used to offer the same services than those cited by the trademark.

As a consequence, there

is obviously a risk of confusion between the domain name at issue and the

trademark.

5.2 The Respondent

Has No Rights or Legitimate Interests With Respect of the Domain Name

The Complainant proves

its rights on the trademarks and the large use of its trademark and of the

name FUN AND FLY, not only as a trademark, but also as a domain, corporate

and trade name, before the registration of the domain name at issue, which

is counterfeiting his rights.

5.3 The Domain

Name Has Been Registered and Is Being Used in Bad Faith

The Respondent registered

the domain name at issue to prevent the Complainant from developing his

activity on the internet.

The Complainant contacted

Mr. Cyril BISCARLET to invite him to cancel his domain name or to transfer

it to him.

The Respondent seemed

to agree, but became very evasive.

That is why the Complainant

sent him a registered letter on February 16, 2001, to ask him to stop using

the domain name and to cancel or transfer it to him, offering to reimburse

the expenses.

The Respondent answered

to this letter : "First, I was willing to negotiate the transfer of

the domain name to your firm but the threatening behaviour of your assistant

(I can’t remember his name) has dissuaded me (…). You ask me what are my

intentions. Netfuze offered me several times to buy this name and your threats

lead me to accept their conditions, which would enable me to put an end

to the problem, as far as I am concerned (…)? If you want the domain name

in question, it’s time for negociation [sic](…)".

In this answer, he

explains that the domain name is used by a licensee, which is called Netfuze,

located in the Philippines.

The Respondent is the

manager of the French company Antitopia, which creates websites.

The web developer of

this company is Mr. Samuel SEMDON, who is also the administrative contact

of <netfuze.com> and Netfuze activity is the booking of domain names.

By e-mail dated March

5, 2001, the Respondent offered to sell the domain name at issue for the

price of US$ 17, 000, and on March 12, 2001, he sent a contract and a letter

from Netfuze agreeing to the cancellation of the license agreement.

B. Respondent

The Respondent has

not filed any response to the Complaint and the dispute must therefore be

determined on the basis of the Complainant’s assertions.

6. Discussions And

Findings

According to the Uniform

Domain Name Dispute Resolution Policy (UDRP), the Complainant must prove

that (§ 4 a) :

(i) the domain

name is identical or confusingly similar to a trademark or service mark

in which the Complainant has rights; and

(ii) the Respondent

has " no rights or legitimate interests in respect of the domain

name; and

(iii) the "domain

name has been registered and is being used in bad faith".

6.1.1.To the question :

the domain name is identical or confusingly similar to the trademark

Paragraph 4 (a) i of

the UDRP requires that the "domain name is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights".

The domain name at

issue is identical or confusingly similar to the trademark.

6.2.1. To the

question : the Respondent has no rights or legitimate interests with respect

of the domain name

The Complainant justifies

his previous rights on the trademark and the large use of this trademark

n° 1697150 for the same activity as the one run on the internet under the

domain name at issue.

The Respondent answers

to the transfer proposal of the Complainant do not give any evidence of

a previous right or legitimate interest in the domain name.

According to these

e-mails and to the fact that he did not respond to the Complaint, the Panel

concludes that the Respondent has not provided evidence of circumstances

of the type specified in paragraph 4 (c) of the UDRP, or of any other circumstances

that could demonstrate rights or legitimate interests with respect to the

domain name.

6.3.1. To the question

: the domain name has been registered and is being used in bad faith

The circumstances of

the registration of the domain name at issue indicate that the domain name

has been registered primarily in order to prevent the Complainant from registering

it and to disrupt the Complainant’s business with the purpose of selling

the domain name registration to the Complainant for valuable consideration

in excess of the costs directly related to the domain name.

The domain name at

issue is being used by the Respondent in bad faith since :

- he first

accepted the transfer and then informed the Complainant that he had

licensed it to Netfuze, just in order to sell it to the Complainant

for a higher price,

- the domain

name at issue is infringing the trademark and by using the domain

name, the Respondent has intentionally attempted to attract, for commercial

gain, internet users to his website, whoever is running this website,

by creating a likelihood of confusion with the Complainant’s trademark

as to the source, sponsorship, affiliation of the website.

The Panel concludes

that the domain name has been registered and is being used in bad faith.

7. Decision

For all the foregoing

reasons, the Panel decides that the domain name is confusingly identical

or similar to the Complainant’s trademark, that the Respondent has no right

or legitimate interest in respect of the domain name at issue, and that

the domain name at issue has been registered and used in bad faith.

As a consequence, the

remedy requested by the Complainant is granted and the domain name <funandfly.com>

shall be transferred to the Complainant.

Alain Bensoussan

Sole Panelist

Dated: May

10, 2001