ADMINISTRATIVE PANEL DECISION
VIE DE FRANCE YAMAZAKI INC. v. DONNA SAYADA
Case No. D2000-1081
1. The Parties
Complainant is Vie de France Yamazaki Inc., 2070 Chain Bridge Road, Suite 500, Vienna, Virginia, U.S.A. 22182.
Respondent is Donna Sayada, Francevision, 4930 Staint Elmo Ave., Bethesda, Maryland, U.S.A. 20816.
2. The Domain Name and Registrar
The domain name at issue (the Domain Name) is “laviedefrance.com”. The registrar of the Domain Name is Network Solutions, Inc., 505 Huntmar Park Dr., Herndon, Virginia, 20170, U.S.A.
3. Procedural History
On August 16, 2000, the Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in an e-mail to the Complainant dated August 21, 2000. In a letter dated August 23, 2000, the Center informed the registrar, Network Solutions, that a complaint had been submitted to the Center regarding the Domain Name.
The Center then proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on August 23, 2000.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
On August 24, 2000, the Registrar confirmed that the Domain Name had been registered via the Registrar’s registration services and that the Respondent was the current registrant of the Domain Name. The Registrar also confirmed that the Uniform Dispute Resolution Policy was applicable to the Domain Name.
In a letter dated August 24, 2000, the Center informed the Respondent of the commencement of the proceedings as of August 24, 2000, and of the rule providing for a response to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
On September 9, 2000, the Center received a response [hereinafter the Response] from the Respondent within the 20 day limit as provided for by the Center. On September 11, 2000, the Center acknowledged receipt of the Response to the Respondent and the Complainant [hereinafter referred to collectively as the Parties].
On September 14, 2000, the Center received an additional submission from the Complainant [hereinafter the Supplemental Complaint].
On September 20, 2000, the Center received a supplemental response from the Respondent [hereinafter the Supplemental Response].
While there is no formal requirement for the Panel to take into account the Supplemental Complainant and the Supplemental Response, the Panel has, using its discretionary powers, decided to take both these into account during its deliberations.
On September 21,2000, the Center informed the Parties that an administrative panel would be appointed. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel notes the request of the Respondent in the Response to the effect that the “Presiding Panelist speak or at least have a knowledge of the French language”. The Panel further notes the request by the Complainant in its covering letter to the Supplemental Complaint that the “Presiding Panelist be a native French Speaker”. The Panel hereby certifies that it fulfills both of these requirements.
The Panel is obliged to issue a decision on or prior to October 13, 2000, in the English language, and is unaware of any other proceedings which may have been undertaken by the parties or others in the present matter.
4. Factual Background
The Complainant is a legal person incorporated under the laws of Virginia. It is of note that the Complainant’s trade name is formed using Vie de France in conjunction with Yamazaki.
The Complainant is the owner of a number of U.S. Trademarks for the mark “Vie de France” which have been used in association with a variety of goods, including restaurant and retail bakery services, bread, etc. All of the Trademarks include “Vie de France” either as a word mark or part of a design mark (exhibit 1). Complainant, through its predecessor in interest, has continuously used the “viedefrance” trademark since at least 1974 both in the U.S. and Japan in association with its goods and services. In addition, the Complainant also operates a website using the domain name “viedefrance.com”, although no evidence was provided as to the duration of such use. The Panel’s own research in Registrar’s Whois database has revealed that the domain name “viedefrance.com” was registered in May 1996.
The Complainant operates 24 bakery outlets throughout the United States, with 14 in the Washington, D.C. area. The Complainant’s products are also sold by approximately 135 convenience stores which display signs bearing the “Vie de France” mark. The Complainant’s parent also operates approximately 130 retail outlets under the “Vie de France” mark in Japan.
The Complainant has spent approximately US$2,350,000.00 in the last four years promoting its products in the United States and Japan.
The Complainant’s annual U.S. sales were approximately US$105,000,000.00 in 1999.
The Respondent is a physical person acting as CEO of Mercury International Productions [hereinafter Mercury], a Delaware corporation established in 1982 originally for the purchase and distribution of American films in French speaking territories on video, DVD and television. This is an activity Mercury continues to do through major distributors in France, Belgium and Switzerland, all of which are French speaking territories.
In 1992 the Respondent opened a French language video store in the Washington, D.C. area under the name of “Version Française” for the large French community in the U.S. Capital. The Panel therefore assumes that the clientele of the video store includes not only clients from France but also from other French speaking territories.
In 1993 Mercury began purchasing the U.S. video distribution rights to French language films which it subtitles and offers under the trademark “Video France”. At the end of 1994 Mercury began producing a weekly television series entitled “Francevision” which is broadcast via satellite across the United States and is carried by a number of U.S. cable companies. The show carries a half-hour cultural feed from Antenna 2 in France and is supplemented by a further half-hour of reports on daily French life, French actors, directors and singers and music clips.
In 1995 Mercury created “francevision.com” as a supplement to the television show and video club to sell French language audio visual materials (i.e. videos, music, CDs, etc.) online.
The Respondent registered the Domain Name together with the domain name “laviefrancaise.com” on March 27, 2000. At the time of deliberations both the Domain Name and the domain name “laviefrancaise.com” redirect to the Respondent’s website at francevision.com.
The Respondent admits to being aware of the Complainant’s use of “Vie de France” prior to registering the Domain Name. In fact, the Respondent is from a region where the Complainant has a number of retail outlets which display the “Vie de France” mark.
On August 21, 2000, the Respondent registered the domain name “lavieenfrance.com”.
5. Parties’ Contentions
At paragraph 13(a) of the Complaint the Complainant maintains that the Domain Name is virtually identical to the Complainant’s registered trademark “Vie de France” not withstanding the addition of the definite article “Le”.
The Complainant at paragraph 13(b) of the Complaint continues by maintaining that the Respondent does not operate a legitimate business under the Domain Name and, at paragraph 13(c) of the Complaint that the Domain Name is not descriptive of the Respondent’s goods or services, nor could they as “vie de france” has no special meaning in French.
At paragraph 13(d) of the Complaint, the Complainant maintains that the Respondent registered the Domain Name in bad faith. The Complainant bases this allegation on the Respondent’s admission as to having knowledge of the use of “vie de france” by another prior to registering the Domain Name and that “vie de france” is an arbitrary collection of words, not a common French phrase, which the Respondent would be unlikely to have created without this knowledge. The Complainant at paragraph 13(d)(1)(C) of the Complaint concludes based on the above that the Respondent knowingly chose a domain name virtually identical to that of the Complainant’s Trademark. The Complainant also maintains at paragraph 13(d)(1)(E) of the Complaint that by choosing a virtually identical name, the Respondent had attempted to create confusion and attract Internet users for commercial gain, given that both sell products which are associated with France.
Finally, at paragraph 13(d)(2)(A) of the Complaint, the Complainant maintains that the Respondent is using the Domain Name in bad faith given that an under construction web page is displayed at the Domain Name.
At paragraph 2 of the Supplemental Complaint, the Complainant continues by maintaining that the registration of the domain name “lavieenfrance.com” after the filing of the Complaint is further evidence of bad faith.
The Responding maintains that the Domain Name is not confusingly similar with the Complainant’s mark nor its domain name (“viedefrance.com”). The Respondent maintains that only a native French speaker would appreciate the addition of the definite article “la” and, given that the Complainant only engages in business within the United States and Japan, which are not French Speaking, there is no risk of confusion.
As stated in the facts, the Respondent operates a web site using the domain name “francevision.com” as a supplement to its television and video club. The Respondent maintains that it intends to take advantage of streaming video to offer online selections of the material aired consisting primarily of the daily French life “shorts” aired on television. The materials in question will be made available on a non-profit basis to universities and schools (an activity which the Respondent currently supports through its television broadcasts). The Respondent maintains that a second domain name is necessary to offer the streaming video as well as to make a distinguish the non-profit activities from the profit generating web site, “francevision.com”.
The Respondent continues by maintaining that they do have a legitimate right and interest in using the Domain Name as it is “exactly” a description of the wares and services that they are offering on their website. In the Response referring to the domain name “laviefrancaise.com” and the Domain Name the Respondent states “I chose those 2 names because they describe exactly what I intend to offer – a glimpse at traditional daily life in France”.
In this regard, the Respondent also argues that the addition of “la” to vie de France makes the phrase descriptive and provides it with a definite meaning, the meaning which the Respondent is intending to convey when used with its goods or services.
The Respondent also maintains that they have not yet implemented a site using the Domain Name as they are in the process of choosing a host and server capable of large scale streaming video. In any case, the Respondent maintains that it has replaced the under construction banner with a redirect which forwards all traffic to francevision.com.
Finally, the Respondent maintains that they have nothing to gain from being associated with the Complainant, given that they are in completely different businesses.
6. Discussion and Findings
Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which the it holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
The Panel is of the opinion that the evidence provided by the Complainant supports a finding that the Complainant has registered the trademark “Vie de France”. Given that the Domain Name is for all intents and purposes identical to the registered Trademark of the Complainant, notwithstanding the addition of the definite article “la”, the Panel is of the opinion that the Complainant has met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy regarding identical or confusingly similar trademarks.
It is trite law that the function of a trademark is to distinguish goods and services from others whereas a trade name is to distinguish ones business. Although the ICANN Policy does not refer to trade names per se, the fact that the Complainant also uses “vie de france” as a portion of its trade name also adds to the risk of confusion, especially in the case of domain names which often reflect the trade name of a given corporation.
No Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.
In this regard, the Panel refers to its decision in Pivotal Corporation v. Discovery Street Trading Co. Ltd., Case No. D2000-0648. The Panel is of the opinion that, once lack of legitimate rights or interests has been alleged by a complainant, the respondent is obliged to adequately address this issue. This finding is supported by the various means which are available to a respondent under the ICANN Policy to show legitimate right or interest. The Panel would also like to state that in its opinion the burden placed on a respondent for adequately supporting a finding of the existence on behalf of the respondent of a legitimate right or interest is one on a balance of probabilities.
The Panel is of the opinion that the evidence provided by the Respondent does not support a finding of legitimate rights or interests of the Respondent pursuant to paragraph 4(c)(ii) and (iii), i.e. that the Respondent is not commonly known by the Domain Name nor does the Respondent have a legitimate non-commercial or fair use of the Domain Name.
Additionally, in the Supplemental Response, the Respondent rejects the allegation made by the Complainant that any number of other names would have been sufficient for the purposes of the Respondent and states that “...none of them are as easy to pronounce or to remember for non-French speakers as ...” the Domain Name. In this regard the Panel is of the opinion that the Respondent cannot establish a legitimate right or interest based on an argument of convenience, notwithstanding that the ease of pronunciation or remembering may be true. The Panel also is of the opinion that this is even more so when the convenience is for the benefit of non-French speakers who may not (or most likely do not) understand the meaning of the phrase “la vie de France”.
Paragraph 4(c)(i) of the ICANN Policy provides that a respondent may establish a legitimate right or interest in a domain name by showing use, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. The Respondent provided no evidence of use of the Domain Name. In fact, at the time of deliberations, the Panel’s research revealed that the Domain Name redirected to “francevision.com”. The Respondent also maintains that they intend to use the Domain Name as the address for a web site offering streaming video. In the Panel’s opinion this may well be a plausible explanation for the registration of the Domain Name, however the paragraph 4(c)(i) of the ICANN Policy places a burden on the Respondent to show demonstrable preparations to use the Domain Name. In this regard the Respondent provided no evidence other than maintaining what they intended to use the Domain Name for. The Panel is therefore of the opinion that this is insufficient for the purposes of demonstrating preparations for use of the Domain Name for the purposes of the ICANN Policy.
Pursuant to paragraph 4(a)(iii) of the ICANN Policy, the Complainant is required to prove on the balance that the Respondent has registered and is using the Domain Name in bad faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which provide evidence of registration and use of a domain name in bad faith. The Panel is of the opinion that none of the particular circumstances detailed under paragraph 4(b) of the ICANN Policy are in evidence in the present proceeding. In particular the Complainant provided in sufficient evidence that the Respondent:
- registered the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or a competitor of the Complainant;
- registered the Domain Name in order to prevent the Complainant from using the Domain Name;
- registered the Domain Name primarily for disrupting the business of the Complainant; and
- intentionally intends to attract Internet users for commercial gain by creating a likelihood of confusion.
However, the ICANN Policy also provides that a finding of bad faith is not limited to those circumstances listed at paragraph 4(b). In the Response, the Respondent admitted having knowledge of the Complainant’s mark when the Domain Name was registered. By the Respondent’s own admission, the Respondent was aware of the Complainant’s use of the domain name “viedefrance.com” in combination with its goods and services. In this regard, the Panel is of the opinion that once it has been shown that a respondent had notice of a complainant’s mark prior to registration of the offending domain name, which is not per se evidence of bad faith, it does make the appreciation of bad faith subjective. Therefore, although good faith is presumed at law, the Panel is of the opinion that once such knowledge has been shown, a respondent may no longer simply rely on the presumption of good faith but rather must make credible arguments to rebut a complainant’s allegations of bad faith.
In its defense, the Respondent argued that the primary reason that the Domain Name was chosen was given its descriptive nature and that it “describe[s] exactly” what the Respondent was intending to offer via the web site located at the Domain Name. The Panel is of the opinion that this is not (strictly) correct. The Respondent has made much of the products which are imported by Mercury, while in the Panel’s opinion these products, consisting primarily of music, videos of French films and CDs, are cultural goods and are not described adequately by the phrase “la vie de france”.
The Panel is also of the opinion that the same finding applies to the television shorts which are to be made available via the web site located at the Domain Name. In fact, the Respondent states quite clearly in the Response that the materials will consist of a selection of the materials broadcast on Francevision, which the Respondent has stated in the Response as consisting of a “cultural” feed from Antenna 2 as well as programming on daily French Life, music clips and programs on French actors, directors or singers. Therefore, the Panel is of the opinion that at best the phrase “la vie de France” would describe only a small portion of the materials made available via the web site in question. Consequently, the conclusion that the phrase “la vie de France” (and thus the Domain Name) perfectly describes the products to be made available on the web site could only be sustained if there was no other alternative. As there are obviously a large number of other perfectly adequate phrases (and thus domain names) which could be used (for example “france culture”, “france vie”, etc.), some of which may in fact provide a better description of the products available on the web site, the Respondent’s argument in this regard is not persuasive.
Furthermore, in its Response, the Respondent maintains that the website located at the Domain Name will be used to distribute the subtitled television shorts to selected American Universities and Schools. The Panel is of the opinion that the descriptive component of the Domain Name will be lost on the majority of such viewers given that their mother tongues will in almost all cases be English or at least non-francophone and that their knowledge of French will be limited.
Similarly, the Panel is of the opinion that, in light of the above, the Respondent’s argument that the Complainant’s trademark is composed of extremely common words and therefore its use by the Respondent was inevitable cannot be sustained.
Additionally, the Respondent stated in the Response that they intended to make a special effort in designing its logo not to resemble the Complainant’s logo. The Panel is of the opinion that when dealing with domain names any question in this regard as to the logos on the web site is largely irrelevant and cannot be used to avoid a finding of bad faith.
Finally, the Panel is also of the opinion that the Respondent’s argument in the supplemental Response as to convenience, i.e. that no other domain name would be “... as easy to pronounce or to remember for non-French speakers as ...” as the Domain Name, cannot be used as a defense against an allegation of bad faith.
As a result, the Panel is of the opinion that the Complainant has proven on the balance that the Respondent has registered and is using the Domain Name in bad faith.
For the foregoing reasons, the Panel concludes that:
- that the Domain Name registered by the Respondent is confusingly similar to the Trademark to which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
- the Domain Name has been registered and is being used by the Respondent in bad faith.
Accordingly, the Panel finds that the Complaint should be allowed and the Domain Name “laviedefrance.com” be transferred to the Complainant and so directs Network Solutions, Inc., to do so forthwith.
Jacques A. Léger, Q.C.
Dated: October 13, 2000