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October 5, 2016 / Nate Harris

FNAC-DARTY.COM owner speaks in tongues, loses domain

Summary of FNAC and Etablissements Darty et Fils v. James

(WIPO Case No. D2016-1518)

Filed: July 26, 2016; Decided: September 19, 2016 (Panelist: Ilhyung Lee)

Disputed domain name: <fnac-darty.com>

screen-shot-2016-10-04-at-9-32-17-pm

Screenshot of <fnac-darty.com> captured Oct. 4, 2016

Summary

A respondent’s protests in English that he does not understand the Complaint in English fall on deaf ears; the respondent’s registration of a domain name combining two company names on the same day those companies announced their merger is evidence of bad faith.

The Parties

Complainant FNAC is a French retailer of books, videos, computers, and the like.  It has used the FNAC trademark since at least 1977, owning registrations in various jurisdictions, including France and South Korea.  Complainant Darty is also a French company, selling household equipment, audio and video equipment, televisions, and computers. Darty owns a number of trademark registrations for the DARTY mark in France dating back to 1980.  On November 6, 2015, the parties announced that they were merging.

That same day, Respondent James Park registered the disputed domain.  The domain name directs visitors to a site with Korean text that translates to, among other things, “the homepage is in the middle of preparations.”

According to the Complaint, Park is “not a novice to UDRP proceedings,” including a number in which he had similarly registered domain names combining the marks of companies that had recently announced a merger.

The Language of the Proceedings

Under Paragraph 11(a) of the Rules, UDRP proceedings are usually conducted in the language of the Registration Agreement governing the domain, unless the parties or the Registration Agreement specify otherwise.  But the Rules also give the Panel discretion to determine the language with regard to the circumstances of the case.

In this case, the Registration Agreement is in Korean. The Complainants, however, requested that the proceeding be in English.  Park objected, requesting (in Korean) that the proceeding be in Korean.  WIPO then notified the parties that the Complaint would be accepted as filed in English, but that the response and the decision could be filed in either language.

Park did not file a formal response to the Complaint, but reiterated his objection to proceeding in English.  His message includes several lines of Korean text in which he states that he cannot understand the Complaint as filed in English, and will ignore the decision and/or challenge it in the Korean courts.  The last line of the communication, however, contains the following text (red in original):

We will appeal to to Korean District Court against WIPO Decision!! We will ignore it!

On the basis of this outburst, the Panel concludes that Park has “familiarity with the intricacies of the UDRP proceeding in English, but chose not to submit a Response in either language.”  Thus, “[t]his Decision will be in English.”

Trademark Rights

The Panel finds that the parties have rights in their respective FNAC and DARTY marks.

Identical or Confusingly Similar

The Panel finds that the disputed domain name is identical or confusingly similar to the combination of the two Complainants’ marks–namely, because it is the combination of those two marks, separated by a hyphen.  As the Panel notes, prior decisions have found identity or confusing similarity in the case of domains incorporating separately-owned marks of companies that have or will merge.

Rights or Legitimate Interests

The Complainants allege that Park has no right or legitimate interest in their respective marks; they have not authorized him to use the marks, and they have no relationship with him.  The Panel finds the Complainants have therefore made a prima facie showing.

Because Park did not substantively respond to the Complaint, he fails to overcome that showing.  The Panel therefore concludes that Park lacks rights or legitimate interests in the mark.

Registered and Used in Bad Faith

The Panel finds that the timing of Park’s registration of the disputed domain–on the very same day the merger between the Complainants was announced–indicates that Park must have been aware of them, and registered the domain in bad faith to “take advantage of the confusion between the domain name and any potential complainant rights.”

The Panel also concludes that Park used the domain in bad faith by attracting visitors by creating a likelihood of confusion with the Complainant’s marks.

Decision
The Panel orders that the disputed domain name be transferred to FNAC, as requested in the Complaint.

Commentary

One of the cases cited by the Panel as evidence of Park’s “familiarity with the intricacies of the UDRP proceeding in English” is interesting. opra Group and Steria v. JSP, (WIPO Case No. D2014-0673) involved a very similar scenario to the one here. Though the Registration Agreement was in Korean, the complainant requested the proceeding be conducted in English.  Park objected, arguing in Korean for Korean (as he did here).  In that case, however, the Panel ordered the complainant to provide a copy of the complaint in Korean, which it did.  Park, however, never responded.

When the Panel here indicates that “there is little purpose in ordering translation of the Complainants’ submissions into Korean,” it is probably referencing the opra Group case.  Park seemingly forced the complainant in that case to waste money on translating a complaint he didn’t intend to respond to.  This Panel probably wanted to avoid repeating that.

Is the decision here regarding the Language of the Proceeding fair as applied to Park?  Certainly.  But it would be concerning if this case were cited for the general proposition that a respondent who uses a few scraps of a language is foreclosed from arguing against that language’s use in the proceeding. Yet other than the last sentence of his email, there is no indication here that Park speaks English.

Using this case as an example, it’s not hard to imagine a non-English-speaking respondent receiving a complaint in English, and getting an English-speaking friend–or using an online translator–to reiterate, in English, that the respondent doesn’t speak English.  Even if the respondent can cobble together a sentence in English without help, that’s a far cry from understanding the factual allegations and points of law in a legal complaint.

That twist ending though!  The conclusion of Park’s letter to WIPO reminded me of the last scene in No Way Out, when Kevin Costner suddenly starts speaking in Russian.  (Spoiler alert.)

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