The Complainant is Société du Figaro of Paris, France, represented by Nameshield, France.
The Respondent is Guolong Wang of Beijing, China, self-represented.
The disputed domain names <figaro.live> and <madamefigaro.online> (the “Disputed Domain Names”) are registered with Name.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2016. On October 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 19, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 26, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2016. On November 7, 2016, the Respondent submitted an email to the Center requesting to cancel the Disputed Domain Names or to transfer the Disputed Domain Names to the Complainant. On the same day, the Center notified the Parties that the Complainant should submit a request for suspension by November 13, 2016 in order to explore settlement options. The Complainant submitted a request for suspension on November 7, 2016. On November 8, 2016, the Center notified the Parties the proceeding was suspended until December 8, 2016.
The Respondent submitted two emails on November 12, 2016 and November 23, 2016, requesting to cancel the Disputed Domain Names. On November 17, 2016, the Complainant submitted a request for reinstitution of the proceeding. Accordingly, on November 17, 2016, the Center informed the Parties the proceeding was instituted and the response due date was November 24, 2016. On November 23, 2016, the Respondent submitted the signed Standard Settlement Form signed by both Parties, but crossed both options that the Disputed Domain Names be transferred and that they be cancelled. On November 25, 2016, the Center informed the Parties of the commencement of panel appointment.
The Center appointed Andrea Mondini as the sole panelist in this matter on November 30, 2016. 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 publishes the daily newspaper “Le Figaro” as well as the fashion magazine “Madame Figaro” which is provided together with the Saturday edition of the newspaper. The Complainant is the owner of the trademarks LE FIGARO (including international trademark registration no. 319381 on August 26, 1966), FIGARO (including international trademark no. 609499 on September 29, 1993) and MADAME FIGARO (including international trademark no. 554143 on May 11, 1990).
The Disputed Domain Names <figaro.live> and <madamefigaro.online> have been registered by the Respondent on October 9, 2016. The Disputed Domain Names previously resolved to registrar parking websites and they currently resolve to inactive websites.
The Complainant owns international trademark registrations for the trademarks FIGARO and LE FIGARO since 1966, and for MADAME FIGARO since 1990.
The Complainant contends in essence:
- that the Disputed Domain Names are identical to its trademarks;
- that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because the Complainant is not affiliated with the Respondent nor has authorized the Respondent to use its trademarks;
- that its trademarks FIGARO and MADAME FIGARO are also registered in the TradeMark ClearingHouse since 2013, so that the Respondent must have been aware of the Complainant’s trademarks when he registered the Disputed Domains Names;
- that considering the distinctiveness and reputation of the Complainant’s trademarks, the Respondent registered the Disputed Domain Names in bad faith and is using them in bad faith by passively holding them and depriving the trademark owner of reflecting its own trademark in a domain name.
The Respondent submitted several emails offering to cancel the Disputed Domain Names or to transfer the Disputed Domain Names to the Complainant, but did not respond to the Complainant’s contentions substantively. On November 23, 2016, the Respondent submitted a Standard Settlement Form signed by both Parties but crossing both options that the Disputed Domain Names be transferred and that they should be cancelled.
In any event, the correspondence with the Respondent makes clear that the Respondent does not raise any valid defenses to the Complaint.
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;
(ii) The respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Complainant has shown that it has rights in the FIGARO, LE FIGARO and MADAME FIGARO trademarks. The Panel finds that the Disputed Domain Names are confusingly similar to these trademarks.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names..
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the potentially impossible task of proving a negative proposition. Such a proof requires information that is primarily within the knowledge of the Respondent. Therefore, the common view is that paragraph 4(c) of the Policy shifts the burden of production to the Respondent to come forward with evidence of rights or legitimate interests in the Disputed Domain Names. However, the Complainant has to make a prima facie showing indicating the absence of such rights or legitimate interests. See, e.g., Document Technologies Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In the present case, the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names. The Respondent has not shown any rights or legitimate interests in the Disputed Domain Names as described under paragraph 4(c) of the Policy.
Moreover, by signing the Settlement Form, the Respondent accepted that he has no rights or legitimate interests in the Disputed Domain Names.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
The Respondent obviously was on actual notice of the Complainant’s rights in FIGARO, LE FIGARO and MADAME FIGARO trademarks because it cannot be a coincidence that he registered precisely these trademarks as domain names. The Respondent used the Disputed Domain Names in bad faith by passively holding them and depriving the trademark owner of reflecting its own trademark in a domain name.
The Panel thus finds that the Respondent registered and used the Disputed Domain Names in bad faith.
Finally, the Panel notes that on November 23, 2016, the Respondent submitted a signed Standard Settlement Form crossing both options that the Disputed Domain Names be transferred and that they should be cancelled. However, in the Complaint the Complainant requested that the Disputed Domain Names be transferred to the Complainant. The Respondent has not shown any legitimate interests why the Disputed Domain Names should be cancelled instead of transferred.
The Panel therefore decides that in this case the Complainant’s unambiguous request for transfer must prevail over the ambiguous wording of the Settlement Form.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <figaro.live> and <madamefigaro.online> be transferred to the Complainant.
Andrea Mondini
Sole Panelist
Date: December 21, 2016