The Complainant is Societe du Figaro S.A. of Paris, France, represented by Nameshield, France.
The Respondent is Cognac Inc., Juan Hervada of Florida, United States of America ("U.S.").
The disputed domain name <figaro.club> is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 11, 2014. On December 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2014, 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.
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 December 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 8, 2015. The Response was filed with the Center on January 8, 2015.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 16, 2015. 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.
The Complainant, Societe du Figaro, has been publishing a daily newspaper under the historic name LE FIGARO in France since the 1800's. The Complainant owns several trademark registrations, including:
LE FIGARO - U.S. Trademark Registration No. 0571473 dated March 10, 1953;
FIGARO - International Trademark Registration No. 609499 dated September 29, 1993;
FIGARO - International Trademark Registration No. 677937 dated July 7, 1997;
FIGARO - French Trademark Registration No. 93472294 dated June 15, 1993;
FIGARO - French Trademark Registration No. 9766372 dated February 28, 1997;
LE FIGARO - French Trademark Registration No. 1447624 dated May 5, 1987;
LE FIGARO - French Trademark Registration No. 95594725 dated October 27, 1995.
The Complainant also owns several domain name registrations, including the following:
<figaro.biz>;
<figaro.eu>;
<figaro.fr>;
<figaro.info>;
<figaro.net>;
<figaro.press>;
<figaro.tel>.
The Respondent is identified as Cognac Inc. and Juan Hervada. The disputed domain name <figaro.club> was registered on May 20, 2014, and at the time the Complaint was filed, it reverted to a website that was under construction. The individual Respondent, Juan Hervada is a journalist, who has worked in France, the U.S. and other countries.
The Complainant submits that it owns many trademark registrations for FIGARO and LE FIGARO, including those listed in paragraph 4 above.
The Complainant further contends that the domain name <figaro.club> is identical to the Complainant's FIGARO trademark except for the addition of the Top-Level Domain ("TLD") "club". The Complainant submits that the addition of the TLD does not serve to distinguish the disputed domain name from the Complainant's registered trademark.
Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant's registered FIGARO trademark.
The Complainant submits that the Respondent does not have any legitimate rights or interests in the <figaro.club> domain name. The Respondent is not commonly known by the name Figaro, and has never been authorized or licensed by the Complainant. The Complainant further contends that the Respondent has not used the domain name in connection with a bona fide offering of goods and services. The Complainant contends that it is unrealistic to believe that the Respondent was unaware of the Complainant's reputation in the FIGARO trademark and its newspaper, because the Respondent is a journalist and has worked in France.
The Complainant submits that the Respondent has registered and is using the domain name <figaro.club> in bad faith because (i) Respondent must have been aware of the Complainant's registered trademark rights in FIGARO, when the Respondent registered the confusingly similar domain name; and (ii) Respondent registered and is using a confusingly similar domain name to trade on the goodwill and reputation of the Complainant's registered trademark by using the domain name in association with a website that provides identical services of the Complainant, and is thereby interfering with the commercial business of the Complainant. Complainant provides copies of pages associated with a website under the disputed domain name that look like a news website, in a format comparable to Complainant's news business.
The Respondent submits that the Complainant does not have exclusive rights to the word "Figaro", since it is the name of a well-known literary or fictional character which originated with Beaumarchais.
The Respondent points to 67 records in the United States Trademarks Office for the trademark FIGARO, which do not belong to the Complainant, covering a variety of wares and services from cigars, to gaming machines, medical devices and telecommunication services. They include the following marks:
FIGARO – Serial No. 86102486;
FIGARO – Serial No. 85967200;
FIGARO – Serial No. 85644596;
FIGARO – Serial No. 79081173;
FIGARO – Serial No. 79075876;
FIGARO – Serial No. 78601890;
FIGARO – Serial No. 78504688;
FIGARO – Serial No. 78264747;
FIGARO – Serial No. 77238804;
FIGARO – Serial No. 75670805.
The Respondent also notes that the Complainant does not own the following domain names:
<figaro.com>;
<figaro.org>;
<figaro.us>; or
<figaro.ca>.
The Respondent also contends that he does have a legitimate interest and right to the disputed domain name. The Respondent and his fellow club members were associated with a particular café in New York City dating back to the 1960's, which operated under the names Le Figaro Café, and Figaro Café. The Figaro Café was located in the West Greenwich Village at the intersection of McDougal St. and Bleecker St..
The Respondent moved to New York City as a correspondent for Spain's "Zeta" media group in the mid-1970's. The Figaro Café became a meeting place for him and his friends, and a place where he could conduct interviews for his employment.
The Respondent states that in 2008 the Figaro Café went out of business and the Respondent thereafter conceived of a virtual Figaro Café for members from various countries who could continue to discuss cultural issues through the Internet. Respondent claims to have created a non-profit foundation to operate a website under the Figaro Club name.
The Respondent contends that the exhibits submitted by the Complainant which purport to show the Respondent's website are merely test pages that the Figaro Club was using to determine what software platform would be utilized in association with the website. The text in the pages is comprised of meaningless Latin phrases commonly adopted for typesetting purposes as dummy text called "Lorem Ipsum". These phrases do not show that the real content of the website was or will necessarily be news-related.
The Respondent submits that he has not registered and is not using the disputed domain name for the purpose of renting, selling or otherwise transferring the domain name to the Complainant or a competitor of the Complainant for monetary gain. The disputed domain name was not registered to prevent the Complainant from registering the <figaro.club> domain name, or to mislead Internet users away from the Complainant's website. The Respondent has not registered the disputed domain name for purposes of monetary gain, and denies any intentional attempt to cause confusion. The Respondent submits that he has registered and is using the disputed domain for the purpose of creating an online platform for a community of people to gather to exchange ideas, culture, art and events, all for non-profit purposes, related to their historic connection to the Figaro Café. Respondent also produces a sample page of by-laws which recite the non-profit purposes for his Figaro Club organization.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant does have registered trademark rights in the mark FIGARO by virtue of its Trademark Registrations, including those listed in paragraph 4 of this decision.
The Panel further finds that the domain name <figaro.club> is confusingly similar to the Complainant's registered trademark FIGARO. The addition of the TLD ".club" does not serve to distinguish the disputed domain name from the Complainant's registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.
The Panel is prepared to find that the Complainant does have a substantial reputation in and to the registered trademark FIGARO in association with newspaper and publication services. The Panel also finds that the Respondent was aware of the LE FIGARO newspaper, and that the Complainant owned the FIGARO trademark. Based on the test pages from the Respondent's website which were accessible, it is also understandable why Complainant would apprehend Respondent's activities as a potential threat to its core business.
However, Respondent has provided a detailed explanation of his historical association with the New York restaurant called the Figaro Café, and of his current activities with the Figaro Club which was named as a result of that association. He has provided some evidence of the non-profit nature of his activities (in the form of Article II from the by-laws of The Figaro Club Inc.). He has also explained that the webpages challenged by the Complainant were only test pages, and were not indicators of the ultimate content or format to be adopted by The Figaro Club.
In a fully contested proceeding which permitted cross-examination and reply evidence, the Respondent's explanation could possibly be challenged. Under the Policy, that sort of full-scale litigation process is not available, as the Panel can only receive and review evidence in a summary procedure that does not readily lend itself to an indepth investigation of contested facts. Within the framework of the Policy, the Respondent has raised sufficient facts to lay claim to a legitimate interest in the domain name in question. This finding by the Panel is not intended to be a comprehensive approval of the Respondent's explanation, which the parties may choose to test in a different forum with a different set of procedures. However, for the purposes of this proceeding, the Respondent has succeeded in preventing the Complainant from establishing the absence of legitimate interests.
Accordingly, the Panel finds that the Complainant has not satisfied the requirement under paragraph 4(b) of the Policy.
In view of the findings in Paragraph 6(B), under Rights and Legitimate Interests, the Panel will not proceed to make a finding with respect to Bad Faith.
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Date: January 29, 2015