{
    "case_number": "CAC-UDRP-102586",
    "time_of_filling": "2019-08-20 13:42:49",
    "domain_names": [
        "lefigarofr.vip",
        "lefigarofronline.com",
        "lefigaro.site"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "SOCIETE DU FIGARO"
    ],
    "complainant_representative": "GODIN ASSOCIES",
    "respondent": [
        "DMR  Wahyu KARUNA"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant is the publisher of France's leading daily newspaper LE FIGARO.\r\n\r\nLE FIGARO was founded in 1826 in Paris and it is the most distributed paper among daily titles with 309 492 copies sold each month in average in 2018.\r\n\r\nThe main edition of LE FIGARO has been developed into:\r\n\r\n- the online edition available at <lefigaro.fr>;\r\n\r\n- the supplement LE FIGARO MAGAZINE published weekly;\r\n\r\n- the supplement MADAME FIGARO, dedicated to women, aka LE FIGARO MADAME, published weekly;\r\n\r\n- several additional editions, in particular a business edition, available in paper and online versions.\r\n\r\n\r\nThe Complainant is owner of a large intellectual property rights portfolio (IPrs), comprising trademarks registered in several jurisdictions, company \/ trade name and domain names, all containing the words LE FIGARO \/ FIGARO alone or associated with other terms. Some of those IPrs are identified above and will be hereinafter referred to as FIGARO Trademark.\r\n\r\nThe Complainant has demonstrated to have well-established rights to the FIGARO Trademark which has become distinctive and well-known in association with newspaper and publication services at national (in France) and international level.\r\n\r\nThe disputed domain names were created by an Indonesian corporation with privacy service on 30 March 2019, hence well after the registration of the FIGARO Trademark.\r\n\r\nThe disputed domain names are inactive, except for <LEFIGARO.SITE> which resolved to a parking page in relation with news and direct reference to the Complainant at the moment of the filing of the Complaint.\r\n\r\nThe facts asserted by the Complainant are not contested by the Respondent.",
    "other_legal_proceedings": "The Panel is not aware of other legal proceedings which are pending or decided and which relate to the disputed domain names.\r\n\r\nThe Complainant has brought three separate administrative proceedings related to the disputed domain names before the CAC. As soon as the Registrar revealed that the disputed domain names were registered in the name of the same Respondent, the Complainant requested the consolidation of the three proceedings and the CAC agreed to such consolidation.\r\n\r\nSee in details under Procedural Factors.",
    "no_response_filed": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT\r\n\r\nOn the first UDRP element the Complainant contends that the disputed domain names are highly similar to the Complainant’s prior trademarks, since they all reproduce the distinctive part of the FIGARO Trademark (i.e. the words LE FIGARO \/ FIGARO) in its entirety. The addition of the letters \"FR\" (which is a clear reference to France) in two cases, the generic and descriptive term \"ONLINE\" in one case and the gTLDs \".VIP\", \".COM\", \".SITE\" (which are technical requirements of the registration) are irrelevant in the comparison of the disputed domain names and Complainant's marks.\r\n\r\nOn the second UDRP element the Complainant argues that the Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the prior FIGARO Trademark or to register any domain name incorporating the FIGARO Trademark, nor has the Complainant acquiesced in any way to such use or registration of the FIGARO Trademark by the Respondent. Considering that two of the three disputed domain names are inactive and the third one resolves to a parking page in relation to news with direct reference to the Complainant, there is no fair or non-commercial use of the disputed domain names. Finally, the Complainant asserts that the multiple registration of the Respondent shows a pattern from the Respondent, who could not ignore the prior rights of the Complainant.\r\n\r\nOn the third UDRP element the Complainant affirms that the choice of the terms “LE FIGARO”, which are original, purely arbitrary and well-known in France and worldwide, could not have been accidentally made by the Respondent notably since the Complainant's prior rights significantly predate the creation of the disputed domain names. Hence, by registering the disputed domain names, the Respondent intended to take advantage of the Internet traffic related to the Complainant's activities. The content of one of the three disputed domain names (parking page with clear reference to the Complainant) confirms the constructive knowledge of the Complainant's mark and activities on behalf of the Respondent. On the other hand, the non-use of the other two disputed domain names does not prevent the finding of bad faith under the doctrine of passive holding.  \r\n\r\nConsequently, the Complainant requested the transfer of the disputed domain names.\r\n\r\n\r\nRESPONDENT\r\n\r\nNo administratively compliant Response has been filed.",
    "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).  ",
    "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).  ",
    "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).  ",
    "procedural_factors": "The Complainant initiated three separate administrative proceedings related to the disputed domain names. As soon as the Registrar revealed that the disputed domain names were registered in the name of the same Respondent, the Complainant requested the consolidation of the proceedings. The CAC, in accordance with the Complainant's request and given that the Respondent was duly informed about all the three proceedings by e-mail and written notice and the Response period elapsed in all three proceedings, consolidated such proceedings and appointed this Panel.\r\n\r\nParagraph 10(e) of the UDRP Rules grants the panel the power to consolidate multiple domain name disputes. At the same time, Paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. \r\n\r\nAny final determination on consolidation is to be made by the appointed panel. \r\n\r\nConsidering the above-mentioned reasons (domain names were registered in the name of the same Respondent, the Respondent was duly informed about the proceedings initiated against him), it would be equitable and procedurally efficient to permit the consolidation in the present proceeding and, therefore, this Panel accepts the Complainant's request and consolidates the proceedings No. 102642 and 102643 with the case No. 102586.\r\n\r\nThe Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.\r\n  ",
    "decision": "Accepted",
    "panelists": [
        "Avv. Ivett Paulovics"
    ],
    "date_of_panel_decision": "2019-10-01 00:00:00",
    "informal_english_translation": "TRADEMARKS\r\n\r\nThe Complainant has shown to be owner of several trademarks containing the words LE FIGARO \/ FIGARO alone or associated with other terms registered worldwide. In particular, the Complainant holds the following trademarks: \r\n\r\n- International registration LE FIGARO n°319381, filed on 26 August 1966 in renewal of the trademark number 138021 filed on 2 August 1948, in class 16, designated countries: Uzbekistan, Algeria, Armenia, Austria, Belarus, Benelux, Bosnia Herzegovina, Croatia, Czech Republic, Egypt, Germany, Hungary, Italy, Kazakhstan, Kyrgyzstan, Latvia, Liechtenstein, Moldova, Monaco, Morocco, North Macedonia, Portugal, Romania, Russian Federation, San Marino, Serbia, Slovakia, Slovenia, Spain, Switzerland, Tajikistan, Ukraine, Vietnam;\r\n\r\n- International registration LE FIGARO MAGAZINE n°442333, filed on 8 January 1979, in class 16, designated countries: Algeria, Austria, Belarus, Benelux, Bosnia Herzegovina, Czech Republic, Egypt, Germany, Hungary, Italy, Liechtenstein, Monaco, Morocco, Romania, Russian Federation, San Marino, Serbia, Slovakia, Spain, Switzerland, Vietnam;\r\n\r\n- French trademark LE FIGARO n°1447624, filed on 11 May 1987 in renewal of a trademark filed on 16 May 1977, in classes 16, 35, 38, 39 and 41;\r\n\r\n- International registration MADAME FIGARO n°555522, filed on 11 May 1990 in classes 16, 35, 38 and 41, designated countries: Algeria, Armenia, Austria, Belarus, Benelux, Bulgaria, China, Cuba, Czech Republic, Dem. People's Rep. of Korea, Egypt, Germany, Hungary, Italy, Kyrgyzstan, Latvia, Liechtenstein, Moldova, Monaco, Mongolia, Morocco, Portugal, Romania, Russian Federation, San Marino, Serbia, Slovakia, Spain, Sudan, Switzerland, Tajikistan, Ukraine, Vietnam;\r\n\r\n- International registration LE FIGARO n°655549, filed on 29 March 1996, in classes 3, 8, 9, 12, 20, 21, 24, 28, 30, 34, 35, 38, 39, 41 and 42, designated countries: Austria, Belarus, Benelux, Germany, Italy, Liechtenstein, Moldova, Monaco, Poland, Portugal, Russian Federation, San Marino, Spain, Switzerland, Ukraine, Vietnam;\r\n\r\n- French trademark LEFIGARO.FR n°(00)3062563 filed on 6 November 2000 in classes 9, 16, 35, 38, 41 and 42;\r\n\r\n- International registration FIGARO n°1272039, filed on 19 January 2015 in classes 3, 9, 14, 16, 18, 19, 20, 21, 24, 25, 28, 35, 39, 41 and 43, designated countries: Greece, Japan, Mexico, Philippines, Republic of Korea, Singapore, United Kingdom, China, Germany, Italy, Monaco, Portugal, Russian Federation, Spain, Switzerland, Vietnam.\r\n\r\n\r\nCOMPANY NAME \/ TRADE NAME\r\n\r\nThe Complainant has carried on business and provided its services under the company \/ trade name SOCIETE DU FIGARO.\r\n\r\n\r\nDOMAIN NAMES\r\n\r\nThe Complainant is owner of numerous domain names, among which <lefigaro.fr> registered on 14 August 1996, used as the main website of the Complainant.",
    "decision_domains": {
        "LEFIGAROFR.VIP": "TRANSFERRED",
        "LEFIGAROFRONLINE.COM": "TRANSFERRED",
        "LEFIGARO.SITE": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}