Damien Persohn c/o CPPD SAS / Têtu v. Joshua Lim c/o Webxel Consulting Pte Ltd
Claim Number: FA0612000874447
Complainant is Damien Persohn c/o CPPD SAS /
Têtu 6 bis rue Campagne-Première,
The domain name at issue is <têtu.com>, registered with eNom, Inc.
The undersigned Daniel B. Banks, Jr., certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 27, 2006.
On December 29, 2006, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the PUNYCODE equivalent of the <têtu.com> domain name [xn--ttu-fma.com] is registered with eNom, Inc. and that the Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 29, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@têtu.com by e-mail.
A Response was received in electronic but not hard copy form on January 30, 2007. Therefore, the National Arbitration Forum has deemed the Response deficient according to Supplemental Rule 5(a).
A timely Additional Submission was received from Complainant on February 5, 2007 and was considered.
On February 5, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
TÊTU is a registered trademark, recorded within the Institut National de la Propriété Industrielle on 05/29/1995 (rec. # 95/573388) then renewed on 06/15/2004 (rec. # 04/3297588). It has been used as the title of the magazine published since 1995 by CPPD SAS, Complainant.
The domain name <têtu.com> is the internationalized version of the <tetu.com> domain name; the French word “têtu” is always written with the circumflex accent. The <tetu.com> website also shows that Complainant always uses the trademark “TÊTU.”
Complainant owns the TÊTU trademark and has been using the <tetu.com> domain name for its website for ten years.
TÊTU magazine is currently sold in
International Domain Names didn’t exist at that time, so <têtu.com> couldn't be reserved. The tetu.com> domain name represents Têtu on the web since 1996.
Respondent has no rights in the TÊTU trademark, as well as no legitimate interests for using a domain name containing an accent that is only used in French.
Mr. Lim is currently using the domain name in order to provide an offering of services for the increasing number of people who would try to display the original têtu website by using the internationalized domain <têtu.com> instead of <tetu.com>. His site is just a unique page that consists of a list of links likely to interest the usual target of the complainant's website, <tetu.com>.
Respondent's website doesn't offer anything but commercial links, primarily related to homosexuality: chat-rooms, porn videos, massage offers. The domain name has been registered in bad faith, with the aim of recovering a part of the traffic of the true site, in a dishonest manner. There is no content other than a list of commercial links.
Mr. Lim may have bought this domain name in order to sell it to the highest bidder, considering that Têtu is a magazine that is known on the international scale.
The term ‘têtu’ is a generic term, the French equivalent of the English word for stubborn.
Complainant’s trademark “TETU,” which is not identical to “têtu,” is for TÊTU magazine. Respondent is not in the magazine or gay services business, nor is it a competitor of TÊTU magazine. The patrons of TÊTU magazine, who would be looking for gay materials which Respondent has no intention to provide, would not confuse Respondent’s website with the gay magazine.
There exist similar websites and domain names bearing the terms tetu and têtu, but offering a bona fide product or service different from that of Complainant.
shows that Complainant does not possess a monopoly over the generic term.
Examples of similar websites:
Respondent’s domain name <têtu.com>, an IDN (International Domain Names), corresponds to a common word. Hence this is not a case of “inconceivable legitimate use” by another.
Respondent is in the business of website development and internet advertising. Prior to any notice if this dispute, Respondent had been parking the name and providing links to bona fide offering of goods and services as many developers do today. Respondent is also planning to develop an informational website to provide further value to their web visitors by 2007.
Respondent is not in the business of publishing gay magazines or websites and the patrons of TÊTU magazine, who would be looking for gay materials, would not confuse Respondent’s website with the gay magazine.
Respondent acquired the domain, Respondent was not aware of the existence of
TÊTU magazine or the trademark TÊTU.
Respondent has not received any prior correspondence from Complainant
despite Complainant’s claim. Respondent
has not tried selling the name in private or publicly to anyone, nor does it
have the intention to sell this domain.
Respondent is not in the magazine or gay services business, nor is it a competitor of TÊTU magazine.
Respondent registered the domain
in good faith, its business being in providing links to bona fide offering of
goods and services, and not to mislead the patrons of TÊTU magazine, who would
be looking for gay materials. Respondent
has no knowledge that the website displays homosexuality, chat-rooms, or porn
videos as claimed by Complainant. A
check on the website would reveal that no such material is being displayed, nor
does it intend to display such materials in the future.
C. Complainant’s Additional Submission
ON THE FACT THAT TÊTU IS A GENERIC TERM
Têtu is not a generic term, but a word extract from the French dictionary. As an example, magazine or flower are generic terms, and couldn’t have been registered as trademarks. According to Respondent’s idea, The Times, Elle or Vogue, as words from English or French dictionaries, are not trademarks, and anyone could edit a magazine with those names!
ON THE REGISTRATION OF THE TRADEMARK
The record of TETU trademark has been made without accents.
Here are the facts explaining this:
When writing with minuscules, it is a convention in French that you absolutely have to write accents; but, when writing with majuscules, some people indicate accents, and some don’t. The word remains the same, and is understood by everybody. Le Parisien: that daily journal writes the same word, présidentielle, without accent when uppercased. Another newspaper, Le Monde, always puts accent on words written uppercased. This shows there is no exact rule in the French language about accents on majuscules. TETU equals TÊTU. Most of French-speaking persons actually don’t know how to compose majuscules with accents on a computer because you need to know keyboard combinations as complex as “Press Alt key, hit 0199 and release Alt” in order to display a “ç.” Only people involved in jobs related to publishing or edition, and computer-aware persons, know the way to do it.
ON OWNING A MONOPOLY ON TÊTU TERM
The websites listed in the Response of Mr. Lim do not conflict with the TÊTU trademark, since they use the common French word têtu (and tetu without accent in their domain names), which is not forbidden, because the domain name is not the same, doesn’t look like ours, and that they don’t intend to interfere with the publishing business of Complainant. For example, <ambulances-tetu.com> is an ambulance service, and <tetu.dk> seems to be a Danish breeding of dogs. There can’t be any ambiguity.
Confusion is possible (and, in our
opinion, wanted by the Respondent) for <têtu.com>.
Respondent offers a commercial portal
with a lot of links addressed to gay, male and/or French-speaking persons. Complainant wonders what is the interest of Mr.
Lim, who resides in
ON THE FACT RESPONDENT CLAIMS NOT TO KNOW TÊTU MAGAZINE
Têtu is a word that is only used by French or French-speaking people. How could Mr. Lim have decided to register the <têtu.com> domain name without being aware a non-accented version of the domain name was used by the magazine Complainant represents? It’s obvious that magazines always register their name as a trademark.
Têtu is known worldwide. Annex I “Têtu celebrates its 10th birthday” is an article from the French reference newspaper, Le Monde, in which it’s explained that the magazine belongs to Yves Saint-Laurent and Pierre Bergé, and provides interviews of international stars like Elton John, Elisabeth Taylor or Madonna. Subscriptions to Têtu magazine are also offered on <amazon.com>. The cybersquatting of Respondent causes prejudice to Têtu magazine.
ON THE GOOD FAITH OF RESPONDENT
Respondent pretends not to provide a website offering links that may interest possible visitors of <tetu.com> website. He provides, in annex A of his Response, a screenshot displaying a list of commercial links with not one containing links about gay stuff. That screenshot is not what is displayed when a visitor arrives on <têtu.com>. The Complaint contained a real screenshot of <têtu.com> with the following links:
Cybermen : Chat Gay – <cybermen.com>
L’amour entre garcons [Love between guys written in french] – <gay.gomeo.fr>
gay.fr chat gay gratuit [free gay chat] – <gay.fr>
Femmes Gays sur Meetic [gay women on Meetic], <meetic.fr>
Rencontres entre gays [Gay dating], <jmec.fr>
On a screenshot realized on 1/30/2007, when Response was sent (see annex K), <têtu.com> homepage contains:
Watch Gay Movies Online – <moviemonster.com>
Gay.fr Chat, profils gay – <gay.fr>
Plus a number of links offering subscriptions to magazines, as Magazine pour Homme (For Men) or <lemonde.fr> and <teleloisirs.fr>, two french magazines, with .fr as TLD (Top Level Domain) extension.
We wonder if Respondent is obviously lying when he writes he’s not targeting the patrons of <tetu.com> website. This is a typical case of parasitic cybersquatting.
Is he lying too when he pretends not to have received a mail from the Complainant? An e-mail was sent to the address Respondent had filed in the whois, where he indicated he was domiciled in The Republic of Singapore. Complainant has never received a response.
Complainant would like to point out the fact that the e-mail address of Respondent is now firstname.lastname@example.org, which clearly indicates Respondent may rely on the sale of domain names to make business. A few people are aware that IDN are now supported by every modern Internet browser, and some cybersquatters record internationalized versions of domain names in order to sell them back to the real owner of the trademark, as the knowledge of IDN registration possibility rises.
Preliminary Issue: Deficient Response
The National Arbitration Forum has
determined that Respondent submitted a deficient Response in accordance with
ICANN Rule 5(a), because the National Arbitration Forum did not receive the
Response in hard copy form. The Panel has
decided to consider the deficient Response in addition to the Complaint. See Strum v. Nordic Net
Preliminary Issue: Internationalized Domain Name
The domain name in dispute, <têtu.com>, is an internationalized domain name (“IDN”) with the Punycode translation of <xn--ttu-fma.com>. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or non-Latin characters. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as Punycode. For Complainant to display the letter “ê” with the diacritic in the <têtu.com> domain name, it first had to encode it into the <xn--ttu-fma.com> domain name.
In the past, panels have found IDNs and their Punycode translations to be equivalent. See Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of Complainant’s Chinese trademark in a domain name). This Panel finds that the <têtu.com> domain name is one and the same with its Punycode translation, <xn--ttu-fma.com>, for purposes of this proceeding.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
claims that it has registered the TÊTU mark with the Institut National de la Propriété
Complainant claims that the <têtu.com> domain name is identical to its registered TÊTU mark because the disputed domain name contains the entire mark and merely adds the generic top-level domain “.com.” The Panel finds that Respondent has failed to adequately differentiate the disputed domain name from Complainant’s mark and that as a result, the domain name in dispute is identical to the mark according to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted onto the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Complainant alleges that Respondent is not commonly known by the <têtu.com> domain name, because the WHOIS information lists “Joshua Lim c/o Webxel Consulting Pte Ltd” as the registrant of the disputed domain name, and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Complainant also asserts that it has not authorized or licensed Respondent to register or use domain names incorporating its TÊTU mark or any variation. The Panel agrees that Respondent is not commonly known by the disputed domain name, and finds that Respondent does not have rights or legitimate interests in the <têtu.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain
name in connection with a legitimate or fair use); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant also claims that Respondent is using the <têtu.com> domain name to divert Internet users to a commercial search engine website with links to multiple websites that may be of interest to Complainant’s customers, including competing magazines. The Panel finds that Respondent’s use of the disputed domain name for commercial gain, presumably by earning “click-through” fees for each consumer Respondent diverts to other websites, is not bona fide offerings of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair uses pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii), because Respondent has used the <têtu.com> domain name to operate a commercial search engine with links to Complainant’s competitors. The Respondent registered and is using the <têtu.com> domain names primarily to disrupt Complainant’s business in violation of Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Furthermore, Complainant alleges that Respondent is using the <têtu.com> domain name to redirect Internet users to other websites for commercial gain through a pay-per-click website, presumably earning referral fees for diverting consumers to these websites. The evidence indicates that Respondent has been taking advantage of the confusing similarity between the <têtu.com> domain name and Complainant’s TÊTU mark in order to profit from the goodwill associated with the mark. Such actions constitute bad faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel finds that the Complainant brought this action in good faith and this is not an instance of reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <têtu.com> [xn--ttu-fma.com] domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: February 19, 2007
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