The Complaint in this case could have been more carefully prepared. There are numerous claims in the Complaint that "Le Figaro" newspaper is world famous, but apart from a Google search page there is very little evidence before the Panel to substantiate that claim. Nevertheless, the Google search page that is provided not only displays a link to the Complainant's website, but two Wikipedia pages describing the Complainant's newspaper. Further, and notwithstanding the obvious dangers in a panel relying upon its personal knowledge in relation to matters of fact in dispute between parties, this Panel believes that it is legitimate to take judicial notice of the fact that "Le Figaro" is a well known newspaper in France and has a reputation that to at least some degree extends beyond that country.
However, regardless of the exact extent of the fame of the Complainant's newspaper and mark outside of France, the Respondent's claims in this case come across as highly contrived and implausible and are not supported by the evidence produced by the Respondent.
In particular, the Respondent claims that “Le Figaro” is a well known character in the opera “The Marriage of Figaro” and at times appears to assert that “Le Figaro” is the name of the opera itself. The Panel accepts that “Figaro” alone is the name of a character in that opera. However, “le” is merely the definite article in Italian. Accordingly, “The Figaro” makes little sense as a name for either that character or the opera in which he appears.
Further, the Respondent claims “that millions of places, streets, people, and businesses have been named after the opera”. In this respect the Respondent provides evidence that the name “Figaro” alone has been adopted as a name by a couple of other businesses in New York. The Panel suspects that this claim, in common with other assertions in the Response, is somewhat exaggerated.
However, significantly no evidence is provided that supports the contention that any business other than the Complainant uses the name “Le Figaro”. If the Respondent’s claim that names that refer to the opera are common is true to at least some degree, then the Respondent’s failure to demonstrate that any person other than the Complainant has adopted the name “Le Figaro” is extremely revealing.
Next there is the form of the webpage that has recently appeared from the Domain Name. The Respondent appears to contend that no adverse inference can be drawn from this page’s first appearance after proceedings were commenced given that the Complainant filed these proceedings only 14 days after the domain name was registered. If the website that recently appeared had been a complex one and/or there were evidence of extensive activity on that site, this might have been a persuasive contention. However, there is merely a single simple post the text of which is set out in the Factual Background section of this decision and which has not subsequently been supplemented or updated since the date it first appeared. Further, the screenshot of that site that was appended to the Response was taken a mere 3 minutes after the post was made. In short, this looks more like material that has been manufactured after proceedings have been commenced in order to substantiate the Respondent’s claims in these proceedings, than real evidence of the Respondent’s actual intent at the time the Domain Name was registered.
A complainant must prove its case in proceedings on the balance of probabilities. When all the material before the Panel is considered in the round, the Panel has reached the conclusion that regardless of the Respondent’s denials, the Respondent was aware of the Complainant’s business and mark when the Domain Name was registered. It also concludes that it is more plausible that the Domain Name was registered and is being held in order to take some form of unfair advantage of its actual and potential associations with the Complainant, than for an opera related blog. This is sufficient to justify a finding of bad faith registration and use; see, for example, Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
Finally, and for completeness, the Panel notes the Complainant’s contention that its mark was registered in the Trademark Clearinghouse (the “TMCH”). Although this is not disputed, there is no attempt to explain why the fact that the mark was registered in the TMCH is of significance in these proceedings. The Panel suspects that what the Complainant may be trying to argue here is that the Domain Name was registered during the .news claims notification period (or has opted in to ongoing notifications service) and since the mark was registered in the TMCH, the Respondent is likely to have received notice of the existence of the mark as part of the Domain Name registration process. If this is correct, this would directly contradict the Respondent’s claims that it was not aware of the Complainant or its rights until these proceedings were commenced.
Unfortunately, none of this is clearly argued or properly substantiated in the Complaint. In the circumstances, the Panel has not taken this into account in coming to its decision in this case. Luckily for the Complainant, this has not on this occasion impacted upon the outcome of these proceedings.
The Complainant has, therefore, satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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