On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 100034
Time of Filing 2009-02-26 10:20:22
Disputed domain name REPUBLICAINLORRAIN.COM
Case Administrator
Name Tereza Bartošková
Complainant
Organization Le Républicain Lorrain SA
Authorized Representative
Organization Meyer & Partenaires
Respondent
Organization Texas International Property Associates
A summary of this Decision is hereby attached in English as an Annex.
Other Legal Proceedings
The Panel is not aware of the existence of other proceedings concerning the disputed domain name.
Factual Background

The Complainant, Le Républicain Lorrain SA is a French Publishing company that publishes the French regional newspaper named Le Republicain Lorrain, which was created on June 19th 1919.

The Complainant created a website to support its publishing activities, operating from republicain-lorrain.fr, registered on June 11th 1996. Likewise, the Complainant is the registered owner of the French trademark Le Republicain Lorrain filed on April 27, 2005, and also is the registrant of the domain names republicain-lorrain.eu, registered since 29 September 2006; republicain-lorrain.net, registered since 19 November 2001; republicain-lorrain.org, registered since 19 November 2001, and republicain-lorrain.info, registered since 30 June 2007, some of these domain names being registered on behalf of the Complainant by its computing subsidiary, the company Victoria Multimédia.

The Respondent registered the disputed domain name, “republicainlorrain.com” on January 30th 2005, and in accordance with its brief, Respondent contracts with Hitfarm which connects its own websites to the domain name to offer a legitimate business of targeted advertising searches.
Parties' Contentions
A. Complainant
The Complainant on its brief upholds that:

A. The domain name is identical or at least confusingly similar to a trademark in which the Complainant has rights as:

a.i. It is the registered owner of the French nominative trademark Le Republicain Lorrain, filed on April 27, 2005, for products and services of classes 6, 9, 16, 35, 36, 38 to 42 of the international classification of Nice, and registered on September 30, 2005 under number 05 3 356 091.

a.ii. It claims that the name Le Republicain Lorrain has been used to name its newspaper since June 1919.

a.iii. It underlines the fact that Le Republicain Lorrain is the Complainants’ trade name since 1979.

a.iv. It holds numerous domain names consisting of the wording Republicain Lorrain as: republicain-lorrain.fr; republicain-lorrain.com; republicain-lorrain.net; republicain-lorrain.org and republicain-lorrain.info, despite that some of these names are registered on behalf of the Complainant by its computing subsidiary, the company Victoria Multimédia.

a.v. Republicain Lorrain is the name of the newspaper published by the Complainant since 1919.

a.vi. The disputed domain name is confusingly similar to the trademark Le Republicain Lorrain on which it holds exclusive rights.

B. The Respondent has no right or legitimate interest in relation with the disputed domain name, since:

b.i. It doesn’t have any relation whatsoever with the Complainant’s business, and no license or authorization has been granted to Respondent to make any use, nor apply for registration of the disputed domain name by Le Republicain Lorrain SA.

b.ii. It is not currently and has never been known under the wording Republicain Lorrain.

b.iii. It has registered the domain republicainlorrain.com in order to take advantage of the Complainant’s well-known trademark to confuse and divert internet users to commercial websites through a “pay per click” domain parking solution.

C. The Complainant accuses the Respondent that the registration and use of the disputed domain name are made in bad faith because:

c.i. The Complainant asserts that it holds the trademark rights on the wording Republicain Lorrain, and this trademark has been in use for more than 90 years to name a famous French regional newspaper edited by the Complainant or its predecessors.

c.ii. The Complainant has proved and certified the use of the wording “le republicain lorrain” to operate a website on line since 1997, under the domain name “republicain-lorrain.com” which has been registered in September 2001.

c.iii. A mere investigation on Google.com shows that Republicain Lorrain is exclusively associated to the Complainant.

c.iv. At the time the Respondent registered the disputed domain name, it was aware of the existence of the trademark Republicain Lorrain or, at least, of the existence of the Complainant and its business activity even on the internet.

c.v. As to the use, the domain name is pointing to a parking page which may generate financial gain for the Respondent.
B. Respondent
The Respondent upholds on its brief that:

A. The domain name is not identical to any mark in which Complainant has enforceable rights under the Policy because:

a.i. While Complainant may have rights in France effective upon its filling of a trademark on April 27, 2005, the Complainant has not established the existence of any common law rights in the United States at the time that the domain name was registered on January 30, 2005.

B. The Respondent has rights and a legitimate interest in the disputed domain name, as:

b.i. The Complainant has failed to demonstrate that the Respondent has no rights or legitimate interest in the disputed domain name.

b.ii. The disputed domain name consists of a common name Lorrain, combined with the typo of one of the two most prominent political parties in the United States.

b.iii. Respondent’s use of the domain materializes on the fact that Respondent contracts with Hitfarm which connects its own websites to the domain name to offer a legitimate business of targeted advertising searches that are legal everywhere in the world, and are actually undertaking in connection with industry leaders Google and Yahoo.

b.iv. The links are provided pursuant to Yahoo or Google’s terms and are triggered by search requests entered by computers users. Respondent has no control over what terms advertisers bid on at Google or Yahoo and what terms appear on there website.

C. Complainant has not demonstrated that the disputed domain name was registered and is being used in bad faith, since:

c.i. No bad faith may exist when taking into account that at the time of making the registration the Respondent had not knowledge of Complainant.

c.ii. In this case Complainant filed for its trademark after Respondent had registered its domain name.

Discussion and Findings
As gathered from the writ filed by Complainant, it is clear that its intention is to cover its claim on the Provisions of Paragraph 4 (a) of the UDR Policy, on the basis of upholding that, as provided for that rule:


(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith, while Paragraph 4.d of the Policy provides which are the circumstances that, among others, may prove the existence of a registration and use of domain name in bad faith by the part of Respondent.

As indicated under Paragraph 4 (a) of the Policy, the Complainant must prove that each of the above mentioned elements are present.

Likewise, under Paragraph 4 (c) of the Policy, the Respondent must provide evidence of its rights to and legitimate interests in the disputed domain name for purposes of Paragraph 4. (a) by proving, among others, the circumstances mentioned under paragraphs (i) to (iii) of Paragraph 4 (c) of the Policy.

Regarding the need to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the truth is that the Complainant has demonstrated that: (i) it is the holder of the French registered trademark “Le Republicain Lorrain”, requested on April 27th 2005, trademark with which it has a special relation and connection, as it corresponds with the name of the newspaper published by the Complainant, “Le Republicain Lorrain”, that was created in June 1919; (ii) it is the holder and has been using the “Republicain-Lorrain.fr” domain since 1997; (iii) besides, it has registered through its computing subsidiary, the domain “Republicain-Lorrain.eu” since September 29th 2006, “Republicain-Lorrain.com since November 19th 2001, “Republicain-Lorrain.net” since November 19h 2001, “Republicain-Lorrain.org” since November 19th 2001 and “Republicain-Lorrain.info” since June 30th 2007.


Taking into account that the disputed domain name registered by the Respondent on May 30th 2005 is “Republicainlorrain.com”, the Panel understands that the Complainant has demonstrated that such name is not only confusingly similar to its domain name “Republicain-lorrain.com”, but practically identical (with the exception of the hyphen, which is not at all a relevant distinctive element between the disputed domain name and the domain “Republicain-Lorrain.com” of Complainant), thus the mentioned disputed name being also practically identical and confusingly similar to the “Le Republicain Lorrain” trademark, owned by the Complainant, as demanded by Paragraph 4 (a) (i) of the Policy.

Regarding the Complainant’s need to prove that the Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4 (a) (ii) of the Policy), such circumstance has a correlation with the need that the Respondent proves some of the circumstances referred to by Paragraph 4 (c) of the Policy, and in this sense, the Complainant has made it clear that none of the uses that Respondent makes of the disputed domain name has any relation or association with this denomination, and that the Respondent is not, neither has been commonly known by the domain name. In this sense, the Panel considers that the justification given by the Respondent on its writ to argue its rights and legitimate interests in the disputed domain name, has been sufficiently proved , as the documents provided along with its writ about the relation of the disputed domain name with the recent American candidates are dated after the time the domain was registered, not really understanding what could be the link or relation the Respondent may have with the Lorrain Hotel or with the place in which Dr. Martin Luther King Jr. was assassinated. The justifications or excuses given by the Respondent rather seem to respond to an attempt to protect the registration of a domain which mark was previously known by it; the mark with which the newspaper published by the Complainant is known, an awareness that is supported by the several references that appear on the searches in connection with “Republic Lorrain”, all of them in reference to the paper of the Complainant, etc.

Based on the above the Panel considers that the Complainant has demonstrated that Respondent has no rights or legitimate interests in respect of the domain name, a circumstance that has not at all been properly impaired by the Respondent

Finally, and with reference to the proof that the disputed domain name has been registered and is being used in bad faith (as demanded by Paragraph 4 (a) (iii), the confusion arising between the domain name and the trademark owned by the Complainant is clear , being also clear that such trademark and the domain names registered could have been known to the Respondent at the time of applying for the domain name, for being prior to the date of application. And the conclusion reached by the Panel is not impaired by the fact that the Respondent is, per his words, the registrant of thousands of domain names, as the generic words mentioned on its writ as examples are, as a maximum, different –for being purely generic- to the disputed domain name, specially when the creation of that name, according to the Respondent’s own words, does not respond to a free-speech use, but rather to a sort of complicated combinations of the Republican Party, instead of the place where Dr. Martin Luther King Jr. was assassinated and the Hotel Lorraine, an intricate combination that may not be framed within the expression “generic” the Respondent intends, that however confirms the truthful aim sought by the Respondent with the registration of the disputed domain name.

Based on all the above the Panel considers that the Complaint must be accepted, and the disputed domain name transferred to the Complainant.


Decision
For the reasons set out above, the Complaint is Accepted
and the disputed domain name(s) is(are) to be
REPUBLICAINLORRAIN.COM Transferred to Complainant
Panellists
Name Enrique Batalla
Date of Panel Decision 2009-04-20
Annexes
Annex: English summary of the Panel Decision
The Complainant, Le Républicain Lorrain SA is a French Publishing company that publishes the French regional newspaper named Le Republicain Lorrain, which was created on June 19th 1919.

The Complainant created a website to support its publishing activities, operating from republicain-lorrain.fr, registered on June 11th 1996. Likewise, the Complainant is the registered owner of the French trademark Le Republicain Lorrain filed on April 27, 2005, and also is the registrant of the domain names republicain-lorrain.eu, registered since 29 September 2006; republicain-lorrain.net, registered since 19 November 2001; republicain-lorrain.org, registered since 19 November 2001, and republicain-lorrain.info, registered since 30 June 2007, some of these domain names being registered on behalf of the Complainant by its computing subsidiary, the company Victoria Multimédia.

The Respondent registered the disputed domain name, “republicainlorrain.com” on January 30th 2005, and in accordance with its brief, Respondent contracts with Hitfarm which connects its own websites to the domain name to offer a legitimate business of targeted advertising searches.

Taking into account that the disputed domain name registered by the Respondent on May 30th 2005 is “Republicainlorrain.com”, the Panel understands that the Complainant has demonstrated that such name is not only confusingly similar to its domain name “Republicain-lorrain.com”, but practically identical (with the exception of the hyphen, which is not at all a relevant distinctive element between the disputed domain name and the domain “Republicain-Lorrain.com” of Complainant), thus the mentioned disputed name being also practically identical and confusingly similar to the “Le Republicain Lorrain” trademark, owned by the Complainant, as demanded by Paragraph 4 (a) (i) of the Policy.

Regarding the Complainant’s need to prove that the Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4 (a) (ii) of the Policy), the Panel considers that the Complainant has demonstrated that Respondent has no rights or legitimate interests in respect of the domain name, a circumstance that has not at all been properly impaired by the Respondent .

With reference to the proof that the disputed domain name has been registered and is being used in bad faith (as demanded by Paragraph 4 (a) (iii), the confusion arising between the domain name and the trademark owned by the Complainant is clear, being also clear that such trademark and the domain names registered could have been known to the Respondent at the time of applying for the domain name, for being prior to the date of application.

Based on all the above the Panel considers that the Complaint must be accepted, and the disputed domain name transferred to the Complainant.
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