France-Telecom S.A. v. France TELECOM Users Group

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

France Telecom SA v. France Telecom Users Group

Case No. D2002-0144

1. The Parties

The Complainant is France Telecom, a French Company, located at 6, Place

d'Alleray, 75015 Paris, France. The Complainant’s authorized representative

is Marie –Christine Deluc, 7 rue Auber, 75009 Paris, France.

The Respondent, current owner of the domain name at issue, is France Telecom

Users Group, Mini Parc du Verger, 91150 Les Ulis, France. The Respondent

has taken no part in the proceeding, nor a lawyer or other agent represents

him.

2. The Domain Name and Registrar

The dispute concerns the domain name <france-telecom.com>. The Registrar

with which the domain name is registered is Network Solutions Inc, 505 Huntmar

Drive, Herndon, Virginia 20170, United States Of America.

3. Procedural History

A Complaint was filed with the WIPO Arbitration and Mediation Center (the

Center) on February 13 and 26, 2002, respectively in electronic format

and in hardcopy.

On February 21, 2002, the acknowledgement of receipt of the Complaint was

sent.

On February 25, 2002 a request for Registrar verification was sent. The

answer to that request was received from Networks Solutions Inc, on February 26, 2002.

On March 5, 2002, the Notification of the Complaint took place and the

administrative proceeding began.

The Respondent should have sent his response before March 25, 2002

but the Center did not receive any response within this time limit.

On March 27, 2002, the notification of Respondent Default was sent by e-mail.

The notification of the appointment of the sole Panelist to both parties

took place on April 10, 2002, and submitted a Statement of Acceptance

and Declaration of Impartiality and Independence. The same day, the sole

Panelist received from the Center the copy of the file by e-mail. The hardcopy

of the file was received on April 12, 2002.

This dispute is within the scope of the Policy and the Administrative Panel

has jurisdiction to decide the dispute. The registration agreement pursuant

to which the domain name was registered incorporates the Policy. The domain

name was registered on April 8, 1996.

As the language of the domain name registration agreement is the English

language and as the Complainant has filed its complaint in English, the

proceeding will be conducted in English, pursuant to paragraph 11 (a) of

the Rules.

The decision is issued within the time limit fixed by April 24, 2002.

4. Factual Background

The following facts have not been contested:

(a)The Complainant has rights in several French, American and International

trademarks and namely on the following ones :

-The French word trademark "FRANCE TELECOM" n° 1 379

676 dated November 14, 1986, properly renewed on November 12, 1996,

covering classes 09 and 38;

-The French word trademark "FRANCE TELECOM" n° 1 415

599 dated May 4, 1987 properly renewed on April 30, 1997,

covering classes 09, 16, 38 and 42;

-The International word trademark "FRANCE TELECOM"

n° 619 049 dated September 22, 1987, covering classes 09,

16, 38 and 42;

-The American word trademark "FRANCE TELECOM" n° 1

898 606 dated June 13, 1995, covering classes 09, 16, 38

and 42of the International Classification and classes 21, 26, 38 and

104 of the American Classification;

(b)The Respondent registered on April 8, 1996, the domain

name: <france-telecom.com>.

5. Parties’ Contentions

(a)Complainant

Complainant states in its own words:

The contested domain name is identical to the trademarks of the Complainant.

This reproduction may be confusing, all the more considering that the domain

name holder is called France Telecom Users Group.

The Complainant points out that, France Telecom trademarks, which is also

its corporate and trade name are, both internationally and nationally, and

immediately refer to France's telecommunication.

Furthermore, the Complainant owns over thirty domain names with the words

France and Telecom.

The Respondent has no right or legitimate interest in respect of the domain

name litigious.

The domain name has been registered and used in bad faith. The site accessible

with the domain name subject to the complaint leads to a site belonging

to France Telecom and thus is useless for the Respondent.

The Complainant adds finally that no company named France Telecom Users

Group has been found.

Consequently, the Complainant concludes that the domain name litigious

was registered exclusively with the intention of impeding the Complainant's

ownership of it.

(b)Respondent

The Respondent did not file any Response to the Complaint and was notified

of his default on March 27, 2002 without any later reaction.

6. Discussion and Findings

Paragraph 15 (a) of the Rules instructs the Panel as to the principles

the Panel 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 seems applicable".

Paragraph 4(a) of the Policy states that, for a complaint to be granted,

the Complainant must prove each of the following:

(i)that the domain name registered by the Respondent is identical

or confusingly similar to the trademarks or service marks in which

the Complainant has rights; and,

(ii)that the Respondent has no rights or no legitimate interests

in respect of the domain name; and,

(iii)that the domain name has been registered and used in bad

faith.

1. Identity or similarity

The prior trademarks of the Complainant "FRANCE TELECOM" are identical

to the domain name <france-telecom.com>. The addition of a hyphen between

France and telecom and the addition of the gTLD ".com" would not affect the

attractive power of the word France Telecom. Indeed, they do not confer to the

whole a new meaning involving the absence of risk of confusion with the trademarks

France Telecom.

The registration of the domain name at issue could be considered as an infringement

of the trademarks belonging to the Complainant.

Thus, the domain name <france-telecom.com> generates confusion with the

trademarks of the Complainant.

2. Rights or legitimate interests of the Respondent in respect of the domain

name

The Registrant of the domain name at issue has not filed any Response to the

Complaint and then has not alleged any facts or elements to justify prior rights

or legitimate interests in the said domain name.

The Complainant does not appear to have licensed or otherwise authorized the

Respondent to use its trademarks or to apply any domain name incorporating the

trademarks. Therefore, prior to any notice of this dispute, the Respondent had

not used the domain name in connection with any bona fide offering of goods

or services within the meaning of Paragraph 4(c)(i) of the Policy.

By not submitting a Response, the Respondent has failed to demonstrate that

he has rights or legitimate interest in the domain name.

Thus, the Panel concludes that the Respondent had no rights or legitimate interests,

within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy to register

a domain name consisting of the well known trademark of a third party.

3. Registration and use in bad faith

The Policy (paragraph 4(b)), indicates that certain circumstances may, "in

particular but without limitation", be evidence of bad faith.

The bad faith of the Respondent is established by the following elements:

-The Respondent has never answered to the cease-and-desist letters sent by

the Complainant;

-The Respondent seems to have registered the litigious domain name under a

false identity;

-The France Telecom company and its trademarks are well-known thus the Respondent

could not ignore the existence of the France Telecom company and of its well-known

trademarks. ;

-The Respondent has never used the domain name concerned. The absence of development

of any website using the domain name in dispute or the absence of any other

good faith use of the domain name are elements of the bad faith of the Respondent.

Indeed, according to previous decisions, the notion of "use in bad faith" must

not be limited to positive actions and the passive holding in relation to a

domain name can constitute also another ground of use of a domain name in bad

faith (WIPO Cases No. D 2000-0055, D2000-0098)

Thus, the Panel concludes that the domain name was registered and is being

used in bad faith.

7. Decision

The Panel decides based on its finding that the Respondent in default has engaged

in abusive registration of the domain name <france-telecom.com> for the

foregoing reasons:

(a)that the domain name registered by the Respondent is identical to the trademarks

in which the Complainant has rights;

(b)that the Respondent has no rights or legitimate interests in respect of

the domain name; and

(c)that the Respondent’s domain name has been registered and is being used

in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that

the domain name <france-telecom.com> be transferred to the Complainant

France Telecom SA.

Isabelle LEROUX

Sole Panelist

Dated: April 22, 2002