A one member World Intellectual Property Organization (WIPO) panel of Christopher J. Pibus has denied the attempt of the Societe du Figaro S.A. of Paris, France, to grab the domain name figaro.club
The domain name is owned by Cognac Inc., Juan Hervada of Florida.
It’s an interesting case because the term “Figaro” is heavily trademarked by the Complainant, Societe du Figaro, which has has been publishing a daily newspaper under the historic name LE FIGARO in France since the 1800’s.
The Complainant owns several trademark registrations, including:
LE FIGARO – U.S. Trademark Registration No. 0571473 dated March 10, 1953;
FIGARO – International Trademark Registration No. 609499 dated September 29, 1993;
FIGARO – International Trademark Registration No. 677937 dated July 7, 1997;
FIGARO – French Trademark Registration No. 93472294 dated June 15, 1993;
FIGARO – French Trademark Registration No. 9766372 dated February 28, 1997;
LE FIGARO – French Trademark Registration No. 1447624 dated May 5, 1987;
LE FIGARO – French Trademark Registration No. 95594725 dated October 27, 1995.
The Complainant also owns several domain name registrations, including the following:
figaro.biz
figaro.eu
figaro.fr
figaro.info
figaro.net
figaro.press
figaro.tel
The Respondent is identified as Cognac Inc. and Juan Hervada. The disputed domain name was registered on May 20, 2014, and at the time the Complaint was filed, it reverted to a website that was under construction.
The individual Respondent, Juan Hervada is a journalist, who has worked in France, the U.S. and other countries.
The Respondent submits that the Complainant does not have exclusive rights to the word “Figaro”, since it is the name of a well-known literary or fictional character which originated with Beaumarchais.
The Respondent points to 67 records in the United States Trademarks Office for the trademark FIGARO, which do not belong to the Complainant, covering a variety of wares and services from cigars, to gaming machines, medical devices and telecommunication services. They include the following marks:
FIGARO – Serial No. 86102486;
FIGARO – Serial No. 85967200;
FIGARO – Serial No. 85644596;
FIGARO – Serial No. 79081173;
FIGARO – Serial No. 79075876;
FIGARO – Serial No. 78601890;
FIGARO – Serial No. 78504688;
FIGARO – Serial No. 78264747;
FIGARO – Serial No. 77238804;
FIGARO – Serial No. 75670805.
The Respondent also notes that the Complainant does not own the following domain names:
figaro.com
figaro.org
figaro.us>
figaro.ca
The Respondent also contends that he does have a legitimate interest and right to the disputed domain name.
The Respondent and his fellow club members were associated with a particular café in New York City dating back to the 1960’s, which operated under the names Le Figaro Café, and Figaro Café. The Figaro Café was located in the West Greenwich Village at the intersection of McDougal St. and Bleecker St..
The Respondent moved to New York City as a correspondent for Spain’s “Zeta” media group in the mid-1970’s. The Figaro Café became a meeting place for him and his friends, and a place where he could conduct interviews for his employment.
The Respondent states that in 2008 the Figaro Café went out of business and the Respondent thereafter conceived of a virtual Figaro Café for members from various countries who could continue to discuss cultural issues through the Internet. Respondent claims to have created a non-profit foundation to operate a website under the Figaro Club name.
The Respondent contends that the exhibits submitted by the Complainant which purport to show the Respondent’s website are merely test pages that the Figaro Club was using to determine what software platform would be utilized in association with the website. The text in the pages is comprised of meaningless Latin phrases commonly adopted for typesetting purposes as dummy text called “Lorem Ipsum”. These phrases do not show that the real content of the website was or will necessarily be news-related.
The Respondent submits that he has not registered and is not using the disputed domain name for the purpose of renting, selling or otherwise transferring the domain name to the Complainant or a competitor of the Complainant for monetary gain. The disputed domain name was not registered to prevent the Complainant from registering the domain name, or to mislead Internet users away from the Complainant’s website. The Respondent has not registered the disputed domain name for purposes of monetary gain, and denies any intentional attempt to cause confusion. The Respondent submits that he has registered and is using the disputed domain for the purpose of creating an online platform for a community of people to gather to exchange ideas, culture, art and events, all for non-profit purposes, related to their historic connection to the Figaro Café. Respondent also produces a sample page of by-laws which recite the non-profit purposes for his Figaro Club organization.
6. Discussion and Findings
The Panel finds that the Complainant does have registered trademark rights in the mark FIGARO by virtue of its Trademark Registrations, including those listed in paragraph 4 of this decision.
The Panel further finds that the domain name is confusingly similar to the Complainant’s registered trademark FIGARO. The addition of the TLD “.club” does not serve to distinguish the disputed domain name from the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel is prepared to find that the Complainant does have a substantial reputation in and to the registered trademark FIGARO in association with newspaper and publication services. The Panel also finds that the Respondent was aware of the LE FIGARO newspaper, and that the Complainant owned the FIGARO trademark. Based on the test pages from the Respondent’s website which were accessible, it is also understandable why Complainant would apprehend Respondent’s activities as a potential threat to its core business.
However, Respondent has provided a detailed explanation of his historical association with the New York restaurant called the Figaro Café, and of his current activities with the Figaro Club which was named as a result of that association. He has provided some evidence of the non-profit nature of his activities (in the form of Article II from the by-laws of The Figaro Club Inc.). He has also explained that the webpages challenged by the Complainant were only test pages, and were not indicators of the ultimate content or format to be adopted by The Figaro Club.
In a fully contested proceeding which permitted cross-examination and reply evidence, the Respondent’s explanation could possibly be challenged.
Under the Policy, that sort of full-scale litigation process is not available, as the Panel can only receive and review evidence in a summary procedure that does not readily lend itself to an indepth investigation of contested facts. Within the framework of the Policy, the Respondent has raised sufficient facts to lay claim to a legitimate interest in the domain name in question. This finding by the Panel is not intended to be a comprehensive approval of the Respondent’s explanation, which the parties may choose to test in a different forum with a different set of procedures. However, for the purposes of this proceeding, the Respondent has succeeded in preventing the Complainant from establishing the absence of legitimate interests.
Accordingly, the Panel finds that the Complainant has not satisfied the requirement under paragraph 4(b) of the Policy.
C. Registered and Used in Bad Faith
In view of the findings in Paragraph 6(B), under Rights and Legitimate Interests, the Panel will not proceed to make a finding with respect to Bad Faith.
