WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

FNAC v. Gauthier Raymond

Case No. D2004-0881

1. The Parties

The Complainant is FNAC, a public limited company whose principal place of business is at Clichy, France, represented by Inlex Conseil of Paris, France.

The Respondent is an individual named Gauthier Raymond of Montreal, Canada.

2. The Domain Names and Registrar

The disputed domain names <fnacmusic.info>, <fnacmusic.net> and <fnacmusic.org> are registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on October 22, 2004, and in hardcopy on October 26, 2004. Previously to that last date, on October 25, 2004, the Center had transmitted by e-mail to eNom a request for Registrar verification in connection with the domain names at issue. The Registrar’s reply had been received on the same day and had shown that the registrant’s identity (i.e. Gauthier Raymond) did not correspond to the one submitted by the Complainant (i.e. Michael Parks). As a consequence, the Center sent to the Complainant on October 29, 2004 the Complaint Deficiency Notification in accordance with Paragraphs 4(b) of the Rules and 5(a) of the Supplemental Rules. At this stage it has to be noted that the Center acted indeed within the five (5) calendar day limit imposed to it by Paragraph 5(a) of the Supplemental Rules, since the necessary hard copy (see Paragraph 3(b) of the Rules) of the Complaint reached the Center only on October 26, 2004, as mentioned above. The Complainant, too, largely met the 5-day deadline, having in mind the weekend of the end of October, since it provided the Center with its amendment to the complaint (i.e. the addition of Gauthier Raymond as Respondent) on November 3, 2004, by e-mail, its hardcopy reaching the Center the very next day. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), as well as of 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 by this commenced the administrative proceedings on November 5, 2004 (Paragraph 4(c) of the Rules). Five days later, on November 10, 2004, the Center received an e-mail by the director of legal affairs of a corporation having its headquarters at the exact address indicated in eNom’s registry for Gauthier Raymond, by which the said director clearly stated that this person is completely unknown to their company. After this, no communication whatsoever reached the Center on the Respondent’s part within the deadline of twenty (20) days from the date of commencement of the administrative proceedings according to Paragraph 5(a) of the Rules. Consequently, the Center proceeded, after having notified the Respondent of his default on November 26, 2004, to appoint the Administrative Panel on December 6, 2004, in accordance with Paragraph 7(c) of the Supplemental Rules. Christos A. Theodoulou was appointed as the sole panelist and he was provided with the case file. 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 selling books, videos, CDs and other products under the trademark “FNAC”.

The Complainant has provided evidence of a large number of trademark registrations consisting of or incorporating the name “FNAC” in many countries, including home registrations in France and registrations in the United States and in Canada. The Complainant is also the owner of “FNAC” trademarks within the European Union (Community Trademarks), as well as of some international trademarks filed with the WIPO according to the Madrid System. The Complainant is also the owner in France and in the EU of several “FNAC MUSIC” trademarks, and two domain names, <fnac.com> and <fnacmusic.com>. Internet users have the possibility to purchase their favorite songs through these two websites.

The Respondent, according to the evidence provided by the Complainant, used for some time in the past the domain names at issue to redirect internet users on Kazaa website, a company considered to be a pirate of online music exchanges. The Respondent had registered the contested domain names with eNom on March 15, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to its trademarks, that the Respondent has no legitimate interests or rights in the disputed domain names, and that the Respondent registered and is using the disputed domain names in bad faith by either directing internet users to another website operating in the same field of music, taking advantage of the Complainant’s notoriety in this field, or merely having registered in his name the disputed domain names with the purpose to sell them to the Complainant at a later stage.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

First of all, the Panel would like to discuss the situation created by the impossibility to trace the exact identity of the Respondent. As shown by the Complainant in its submissions, both “Michael Parks” and “Gauthier Raymond” could not be physically traced, since their addresses do not correspond to reality and/or these people are simply not situated at the given addresses. Moreover, apart from the fact that the above-mentioned names seem to be fictitious, the switch from the first to the second happened during the brief interval between the filing of the Complaint and the Registrar’s answer to the Center verification addressed to him. This is a classic case of “cyberflying”, a clear attempt to avoid jurisdiction and should be condemned, since it violates Paragraph 8(a) of the Policy [see e.g. Disney Enterprises, Inc. v. John Zuccarini,Cupcake City and Cupcake Petrol (WIPO Case No. D2001-0489); British SkyBroadcasting Group plc v. Mr. Pablo Merino and Sky Services S.A. (WIPO Case No. D2004-131); Kirkbi AG v. Company Require/Karlina Konggidinata and Pool.com, Inc. (WIPO Case No. D2004-0359); Asset Marketing Systems, LLC v. Smart BuyCorporation, Chan Organization, Mitchell de la Cruz, Gongju Jung et. al. (WIPO Case No. D2004-0492)]. In any case, it should not constitute an obstacle for the Panel to decide on the essence of the present case, that is whether the domain names at issue should or not be transferred to the Complainant. What is more, this Panel does not lose of sight that notwithstanding the owner change, the e-mail address of the Respondent remained the same. “Michael Parks” or “Gauthier Raymond” makes to this Panel no difference whatsoever.

Before engaging itself into the usual threefold discussion of Paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are obvious: since the Complainant has the burden of proof, according to Paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must provethat each of these three elements are present”), the Panel may not just grant the Complainant’s request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy [see Européenne de Traitement de l’Information v. Horoshiy, Inc. (WIPO Case No. D2004-0706)].

The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of Paragraph 4(a) of the Policy.

A. The contested domain names are identical or confusingly similar to trademarks, in which the Complainant has rights.

As mentioned before, the Complainant has presented extensive evidence of trademark registrations for “FNAC” in France, Canada and the United States of America, as well as of Community and International Trademarks. “FNAC MUSIC” trademarks are also registered in France, Canada and the EU and the Complainant is the owner of websites “www.fnac.com” and “www.fnacmusic.com”. Therefore, it is obvious that the Complainant has rights in a large number of trademarks and that the contested domain names are not only confusingly similar, but also identical to some of these. Any contrary argumentation based on the addition of the word “music” to the word “FNAC” should be rejected, since the Complainant owns several “FNAC MUSIC” trademarks, but even for the sake of discussion this argumentation may not be held, since the contested domain names wholly incorporate the registered and owned by the Complainant word “FNAC” and this is by itself sufficient to establish the criterion of similarity for purposes of the Policy [see e.g. Eauto, L.L.C. v. Eauto Parts (WIPO Case No. D2000-0096); Komatsu Ltd. v. RKWeb Ltd. (WIPO Case No. D2000-0995)]. What is more, the Complainant is, as shown earlier, very well known and particularly active in the field of music, in such an extent that the addition of the word “Music” to the word “FNAC” makes the Respondent’s intentions even more suspect, since it was obvious to him that the Complainant would one day or another be interested in the contested domain names.

This Panel therefore finds that the Complainant has satisfied its burden of proof on this point and holds that the disputed domain names are confusingly similar to the Complainant’s trademarks.

B. The Respondent has no rights or legitimate interests in the contested domain names.

Under Paragraph 4(c) of the Policy any of the following circumstances, if found by the Panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s rights to and legitimate interest in a domain name:

I. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute: in this case, the Respondent seems to be merely holding the disputed domain names without any activity whatsoever under the name “FNAC” nor any trademark rights on that name.

II. An indication that the registrant has been commonly known by the disputed domain name, even if it has acquired no trademark rights: there is no such indication from the record.

III. Legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue: as shown by the Complainant in its submissions, the Respondent had first used the disputed domain names to redirect internet users on Kazaa website, where the latter could exchange musical files online for free; this could harm the Complainant seriously, since it is engaged by contract to Majors, artists and assigns not to act in this way, and without any doubt tarnishes FNAC and its trademark. At a later stage, the disputed domain names were put for sale by the Respondent, according to the evidence produced by the Complainant; this is a clear indication for an intent for commercial gain, which surely excludes the possibility of legitimate non-commercial use.

In view of the above, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. The Respondent registered and used the contested domain names in bad faith.

Paragraph 4(b) of the Policy provides for some circumstances that, if found by the Panel to be present, constitute evidence of the registration and use of a domain name in bad faith. The first circumstance provided for is an indication of registration of a domain name with the primary purpose of selling the said registration to the Complainant who is the owner of a similar trademark. The evidence presented shows that the Respondent was well aware of the notoriety of the Complainant’s trademarks. Moreover, the Respondent registered the disputed domain names shortly after the FNAC MUSIC project was revealed to the public in March 2004.

All this, together with the passive holding of the domain names at issue, the continuous providing of false and misleading information inter alia in connection with their registration, and the absence of evidence in rebuttal (see Paragraph 14(b) of the Rules:”…the Panel shall draw such inferences therefrom as it considers appropriate.”) clearly support the thesis for the Respondent’s bad faith. It is to be noted that although some of these elements do not directly fall within the scope of Paragraph 4(b) of the Policy, the Panel has nevertheless evaluated them, since the said paragraph clearly states that the four circumstances provided for do not constitute an exhaustive list of circumstances. (“…in particular but without limitation…”).

However, it is the opinion of this Panel that the Complainant has failed to prove to its satisfaction Paragraphs 4(b) (iii) and (iv) of the Policy because it has neither managed to show that the Respondent is its competitor nor that he attempted to attract, forcommercial gain, internet users to any website, respectively.

In any case, one of the circumstances, if found to be proved, being sufficient as evidence of bad faith, the Panel finds that this condition has been fulfilled and holds that the Respondent registered and used the disputed domain names in bad faith.

7. Decision

The Complainant has successfully proved that the contested domain names are identical or confusingly similar to several trademarks in which it has rights, that the Respondent has no rights or legitimate interests in the contested domain names and that the Respondent registered and used the contested domain names in bad faith.

Consequently, and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names at issue, <fnacmusic.info>, <fnacmusic.org> and <fnacmusic.net>, be transferred to the Complainant.

Christos A. Theodoulou
Sole Panelist

Dated: December 15, 2004