Domain name with non-ASCII character transferred to owner of identical mark

In CELIO France SAS v Hocini (Case D2010-0444, May 4 2010), a World Intellectual Property Organization panel has ordered the transfer of the domain name 'cé' to CELIO France SAS.
Since 2003 it has been possible to register domain names containing characters outside of the basic Latin alphabet (also called non-ASCII characters) across a number of generic top-level domains and country-code top-level domains at the second level. These domain name registrations are known as internationalized domain name (IDN) registrations. With the introduction of such domain name registrations, the opportunities for cybersquatting were too much for some entities to resist, and French company CELIO was one of the latest victims of this behaviour.
CELIO is a men's clothing retailer which started operations in 1988. It has more than 400 stores in France and owns French and Community registrations for the mark CELIO, as well as the domain name ''. However, it discovered that an individual, Ken Hocini, had registered the domain name 'cé' and was selling it on an online auction platform. CELIO decided to file a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) against Hocini.
The character 'É' is a letter used in many languages, including French, Irish, Italian, Portuguese or Spanish, as a variant of the letter 'E'. As such, it is one of the more common non-ASCII characters to be offered by those domain name registries that provide IDN registrations.
In order to be successful in a UDRP procedure, a complainant must establish that:
  • the domain name registered by the respondent is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
  • the registrant has no rights or legitimate interests in the domain name; and
  • the domain name has been registered and is being used in bad faith.
Hocini registered the domain name 'cé' on December 3 2009 and pointed it to a website which consisted of an 'under construction' page and a link to a contact form.
To satisfy the first limb of the UDRP, CELIO contended that the domain name was identical to its French and Community trademarks, both phonetically and conceptually. According to CELIO, the only difference between the domain name and the trademarks was the non-ASCII character 'É', and this had no impact on the risk of confusion between them.
Hocini submitted that the term 'Célio' was being used in several diverse ways and provided examples of this, demonstrating that the term corresponded to:
  • the name of an aristocratic family of the Roman Empire;
  • the name of a Brazilian football player; and
  • the French diminutive for a laparoscopic surgery procedure.
Hocini added that another entity, specializing in home furniture, was also using the term 'Célio'. Finally, Hocini argued that the non-ASCII character 'É' constituted a significant difference between the domain name and CELIO's mark. On these grounds, according to Hocini, there could be no likelihood of confusion between the domain name and CELIO's mark.
The panel considered that it was irrelevant whether the non-ASCII character 'É' was included in the domain name, since the visual aspect of the domain name was only slightly different from CELIO's mark, while they were phonetically identical. Referring to previous UDRP cases ordering the transfer of domain names reproducing marks with the non-ASCII character 'É' (eg, 'fortuné', 'cré' and 'bébé'), the panel decided that a non-ASCII character included in the domain name had no influence on the risk of confusion between the domain name and CELIO's marks. Finally, in the panel's view, the fact that the name Célio was also a first name or a surname had no bearing on the question of the confusing similarity. The panel thus concluded that the domain name was confusingly similar to CELIO's marks.
For the purposes of establishing the second limb of the UDRP, CELIO relied on the fact that Hocini did not offer any product or service under the name Célio. Hocini argued that it had plans to sell the domain name to the entity using the name Célio in relation to home furniture, and that the website found at 'cé' was still under construction at the time of the complaint, due to negotiations for the sale of the domain name. Hocini further stated that, because the term 'Célio' was a common term, the registration of the domain name in order to operate a website or to derive commercial benefit from it was totally lawful.
The panel explained that, in accordance with Paragraph 4(c) of the UDRP, Hocini could have demonstrated his rights or legitimate interests in the domain name by showing:
  • his use of, or demonstrable preparations to use, the domain name in connection with a good-faith offering of goods or services prior to his receipt of notification of the complaint;
  • that he had been commonly known by the domain name; or
  • that he was making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
In this case, as Hocini had no rights in the name Célio, was not known under this name and had never used this name for a good-faith offering of goods or services, the panel found that Hocini had no rights or legitimate interests in the domain name. Hocini's statement that he had contacted the entity selling home furniture did not pass muster, as he had provided no evidence in this respect.
In the panel's view, all Hocini had done was to register the domain name and then try to sell it, either to other parties or to CELIO. The panel thus concluded that none of these circumstances fell within the scope of Paragraph 4(c) of the UDRP. Consequently, the second limb of the UDRP was established.
With regard to the third limb, the panel pointed out that the trademark CELIO was not generic, as it had been intensively advertised for more than 20 years and was well known in France, where Hocini was living. Moreover, the panel considered that Hocini must have been aware of the existence of CELIO's mark when he registered the domain name.
The panel also noted that Hocini had contacted employees of CELIO to inform them that the domain name was available for sale on an online auction website the day following the registration of the domain name. Relying on previous UDRP decisions, the panel considered that, although domain name speculation is not unlawful as such, it may become unlawful if conducted in bad faith, including where the domain name in question infringes prior rights. As a result, the panel found that the domain name had been registered and was being used in bad faith.
This decision clearly establishes that registering a domain name containing a non-ASCII character is not sufficient to prevent a finding of confusing similarity. It also makes it clear that the speculation on domain names has its limits and that the UDRP is an adequate forum to fight against bad faith speculation.
David Taylor, Hogan Lovells, Paris

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