WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SARL CM v. Ignazio Aronica

Case No. D2006-1402

1. The Parties

The Complainant is SARL CM, Paris, France, represented by Cabinet Dreyfus & Associés, Paris, France.

The Respondent is Ignazio Aronica, Catania, Italy.

2. The Domain Name and Registrar

The disputed domain name <cafedeflore.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2006. On November 6, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On November 8, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint 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, and the proceedings commenced on November 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2006. The Respondent did not submit any response. The Center accordingly notified the Respondent’s default on December 14, 2006.

The Center appointed Richard G. Lyon as the sole panelist in this matter on December 20, 2006. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. 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, a French société anonyme, is the proprietor of a café in the Saint-Germain des Pres district in Paris, France. This cafe has been in business for over a century. According to the Complaint and the Panel’s research of publicly available materials, Café de Flore has been favored by artists and intellectuals for much of its history. Complainant has registered trademarks for CAFÉ DE FLORE in France, the European Union, Japan, the United States of America, Lebanon, and Morocco, and has filed this mark with the World Intellectual Property Organization under the Madrid Convention.

Because of the Respondent’s default, little is known about him other than the fact that he registered the disputed domain name in March 2003. The disputed domain name resolves to “www.cafedeflore.it”, at which a website in the Italian language describes and advertises a bar and restaurant called Café de Flore at the Villa de Flore, in Catania, Italy.

On July 31, 2006, Complainant’s counsel wrote to Respondent at the address listed in the registration for the disputed domain name, asserting that the Respondent’s domain names (both the disputed domain name and <cafedeflore.it>) infringed Complainant’s trademarks and requesting an amicable transfer of these domain names to the Complainant, but making clear that absent an agreement the Complainant would take appropriate legal action. This letter was duly delivered but Respondent did not reply to it.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

Rights in a mark. Complainant has rights in CAFÉ DE FLORE by virtue of its numerous trademark registrations and continuous use in commerce since 1887. The disputed domain name is identical to this mark, except for the addition of the generic top-level domain.

No rights or legitimate interest. Complainant has never authorized Respondent’s use of its mark; Respondent is not affiliated with Complainant in any way; and, to quote from the Complaint, “Respondent is not making any legitimate non-commercial or fair use of the domain name, as the domain name in dispute is so identical to the famous trademarks of the Complainant, the Respondent could not reasonably pretend it was intending to develop a legitimate activity.”

Bad faith. Because of the renown of Complainant’s marks, “it seems obvious that Respondent knew or must have known” of Complainant’s mark when he registered the disputed domain name. Because of this, Respondent is trading off the renown of Complainant’s mark. The fact that Respondent, like Complainant, operates a bar and restaurant exacerbates the confusion that is likely to occur as a result of Respondent’s use of Complainant’s name. This “may ruin the Complainant’s reputation, by attracting internet users to a web page that does not correspond to what they were looking for.” Respondent’s failure to reply to Complainant’s cease-and-desist letter is further evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

The Complainant must prove the elements set out in paragraph 4(a) of the Policy. These elements are as follows:

(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect to the Domain Name; and

(iii) Respondent’s Domain Name has been registered and is being used in bad faith.

The Complainant bears the burden of proof on each of these elements. Respondent’s default does not automatically result in judgment for the Complainant and does not constitute an admission of any pleaded matter. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” (“Overview”), paragraph 4.6.

A. Identical or Confusingly Similar

Complainant has established this element of the Policy. It holds many registered trademarks for the phrase CAFÉ DE FLORE and has used the name in commerce for many years. The addition of a top-level domain (.com) does not obviate the identity of the disputed domain name with Complainant’s mark.

B. Rights or Legitimate Interests; Registered and Used in Bad Faith

As is often the case, much of the resolution of these two paragraphs of the Policy turns on the same analysis by the Panel. If Respondent’s use is legitimate, there is likely no bad faith; if not, bad faith in both registration and use may normally be inferred.

Because of the difficulties of proving a negative, the accepted approach to resolving paragraph 4(a)(ii) of the Policy is that if the Complainant makes out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of persuasion shifts to the Respondent to establish rights or legitimacy. Overview, paragraph 2.1.

The case that Complainant has pleaded in its Complaint, if established by competent proof, would make out such a prima facie showing. Complainant has not licensed or otherwise authorized Respondent to use its mark; Respondent’s use of the disputed domain name is commercial; Respondent is using the disputed domain name to advertise services in the international trademark class for which Complainant holds its mark; and Respondent “must have known” of Complainant’s mark because of the fame that mark and the Complainant’s café which uses that mark have achieved.

Panels under the Policy have generally not adopted the doctrine of constructive notice from trademark law, and the few exceptions are cases in which the Panel has applied United States law. See Overview, paragraph 3.4. Here both parties are located and operate their businesses in Europe. The Panel sees no basis for presuming Respondent’s knowledge of Complainant’s marks solely by virtue of their registration.

Complainant describes its marks as “famous” and indeed its café has a noted reputation outside Paris. Complainant, however, uses its marks for a single café, in one city that is several hundred miles from Respondent’s café and in a country with a different native language. While Respondent uses the disputed domain name for the same services as Complainant, they are not competitors in the sense that a prospective customer chooses one or the other; a tourist is not likely to visit Catania instead of Paris simply because of these cafes. Stated differently, a sale by Respondent is not a sale lost by Complainant.

Complainant offers no proof of confusion by any of its customers or by a disgruntled Internet user who sought information about Complainant’s café but found herself at Respondent’s website,¹ and no proof of the tarnishment of its marks pleaded in the Complaint by virtue of Respondent’s website or café. Complainant asks the Panel to infer confusion and tarnishment solely by virtue of its ownership of a mark it claims is famous.

This may not be the end of the Panel’s inquiry. Given the limited nature of proceedings under the Policy, with no discovery and cross-examination, in many instances it may be impossible to determine a respondent’s motives for the registered domain name at issue, whether or not the respondent was aware of the Complainant’s mark when he registered his domain name. As the Panel stated in Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383, “Panelists’ inferring factual or legal conclusions from complainants’ unsupported allegations coupled with no response are occasionally necessary (and appropriate), because matters involving a respondent’s motive, intent, purpose, and other subjective factors determinative under Paragraphs 4(a)(ii) and 4(a)(iii) will not always be susceptible of direct proof, at least without the discovery and cross-examination that are unavailable to a complainant or a panelist in proceedings under the Policy. A complainant must often prove such matters with a prima facie showing that, when unchallenged, a panelist can accept.”

Furthermore, a line of decisions under the Policy suggests that in certain circumstances a person registering a disputed domain name has some duty to investigate the accuracy of his undertaking in his registration agreement that, so far as he knows, the disputed domain name does not tread upon another’s trademark rights. E.g., Hexion Specialty Chemicals GmbH v. Pacific Webs Pty Ltd., WIPO Case No. D2005-1272; World Savings Bank, FSB and Golden West Financial Corporation v. Netcorp, Claim Number: FA0502000414921 (NAF 2004). It could at least be argued that when the domain name at issue is not completely generic or descriptive, as is the case here,²the registrant’s duty includes some investigation of whether the chosen word or phrase is someone else’s registered mark. Had Respondent in this proceeding done so, he presumably would have discovered Complainant’s registered European Community mark.

Most of these cases, however, dealt with obvious cybersquatting and included factual circumstances, not present here, that led strongly to the conclusion that the disputed domain name was chosen specifically because of the preexisting mark or in “willful blindness” of it.³ In this proceeding, there is no direct competition, no imitation,⁴ no obvious attempt to trade off the mark owner’s name, no attempt to sell the disputed domain name to the mark owner or anyone else, no diversion to a pornography site or other site unrelated to the mark at issue, no pattern of registering multiple domain names without regard to third party trademark rights, no indication that Respondent has been a party to any other proceeding under the Policy in respect to any domain name, and use for a legitimate business ⁵—in summary, much less from which the Panel may infer intentional cybersquatting or even that Respondent in fact knew of Complainant’s marks. There is only the allegation of Complainant’s counsel that the CAFÉ DE FLORE mark is famous. The sparse evidence in the record, including the internet pages accessed by the Panel, includes facts from which an inference of actual legitimate use is possible.⁶ There is also a Villa De Flore, suggesting that the restaurant took its name from the villa. On the record in this proceeding the Panel concludes that the Complainant has not established Respondent’s lack of legitimate interest in the disputed domain name or bad faith in registration.

Two additional reasons support this holding. First, the Panel believes that in a close case significant doubt should be resolved in favor of the Respondent. It is Complainant, after all, that bears the burden or proof in a Policy proceeding. Chivas USA Enterprises, LLC, et al. v. Cesar Carbajal, WIPO Case No. D2006-0551; Interstate National Dealer Services, Inc. v. Selwyn Colley, WIPO Case No. D2003-0934; Rug Doctor, L.P. v. Barry Bourdage, WIPO Case No. DTV2003-0002. Second, and more importantly, the Policy was adopted to address a limited class of cases, involving outright cybersquatting. When there is doubt about whether that has occurred, issues between the parties are better suited for resolution in national courts, which may review a full record and determine credibility in accordance with applicable law. Respondent’s business is easily identifiable and easily found, should Complainant resort to further legal action. E.g., eCrush.com, Inc. v. Cox, Davis & Simpsom, LLC, Mr. Ken Cox, Mr. Brian Simpson, Mr. Ron Davis, WIPO Case No. D2004-0552.

7. Decision

For the foregoing reasons, the Complaint is denied.

Richard G. Lyon
Sole Panelist

Dated: December 29, 2006

¹ The Panel's limited research indicated that Internet users are not likely so to be confused, as a Google® search of "café de flore" yielded many hits about Complainant's café but none in the first 50 hits about Respondent's. Respondent's café is described in the sixty-ninth hit, after hits describing cafes of the same name in Los Gatos, California and Saratoga, New York, United States of America.

² The word "flore" is not a noun or other word in the Italian language, although it is in French.

³ On willful blindness, see, e.g., Sprunk-Jansen A/S v. Chesterton Holdings, WIPO Case No. D2006-1080; Eurial Poitouraine v. Compana LLC, WIPO Case No. D2004-0270.

⁴ The parties' logos are different and Respondent's café-bar, as illustrated on its website, is not an imitation of Complainant's. For example, Respondent describes its establishment as including an American bar; there is nothing remotely American about Café De Flore in Paris.

⁵ In fact, only one of these indicia (trading off Complainant's fame) is even alleged, and that allegation depends on whether Complainant's mark is famous.

⁶ This opinion, of course, deals only with issues under the Uniform Dispute Resolution Policy, not French or Italian trademark law. Nothing in the Panel's opinion is binding in a subsequent legal proceeding between the parties. In an infringement action, the legal standards are different, the procedural rules are different, and each party is entitled to discovery and cross-examination. The Panel expresses no opinion on whether Respondent's use of the name Café De Flore constitutes trademark infringement.