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12|12|2008 10:33 pm EDT

Frank Schilling defends Joystick.com and PCJeux.com

by Chad Kettner in Categories: Legal Issues

Frank Schilling’s  Name Administration Inc. was able to defend it’s right of ownership for the domains Joystick.com and PCJeux.com after a French company filed a dispute through the World Intellectual Property Organization (WIPO). Although the panel concluded that the complainant failed to establish that the disputed domain names were registered and being used in bad faith, one panelist submitted a statement of dissenting opinion expressing that he believed PCJeux.com was registered in bad faith because it is a French term and the Respondent (Schilling) is a non-French language speaker.

The Complainant, Future France of Levallois Perret, publishes two widely read magazines in France by the names of “Joystick” and “PCJeux” (with a combined readership of 2 million) and owns French trademark registrations for “JOYSTICK” (Registration No. 92408539;  March 4, 1992), “PC JEUX, LE MAGAZINE DES JEUX SUR PC” (Registration No. 96612906;  April 5, 1996) and “PC JEUX” (Registration No. 063430986;  May 19, 2006).

While the complainant was able to establish that the disputed domains were identical or confusingly similar to the trademarks in which he has rights as well as demonstrate that the respondent has no rights or legitimate interests in the domain names, its dispute was denied since a majority of the three-person panel did not believe the domain names were registered and being used in bad faith.

After the majority finding decided that “for all the foregoing reasons…the Complaint is denied”, panelist Mr. Christophe Caron issued a statement of dissenting opinion arguing that PCJeux.com was registered in bad faith:

“I agree with my co-panelists that the Complaint, concerning the domain name <joystick.com>, should be denied.  I also agree that the domain name <pcjeux.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the disputed domain name <pcjeux.com>.  But I would not however make a finding about the registration and the use in good faith of the domain name <pcjeux.com>.

I believe that the registration of the domain name <pcjeux.com> has been made in bad faith.  In fact, the expression “pcjeux” is protected by several valid well known trademarks in France.  Since the bad faith registration is a question of intent, the Respondent, who is a non-French language speaker, obviously decided to choose, as a domain name, an expression well known in France, in the field of video games, in order to create a website hosting links to third party websites.

Furthermore, “pcjeux” is a distinctive expression in the French language because the distinctiveness must be determined not only in relation to each word taken separately but also in relation to the whole which they form.  And the syntactically unusual juxtaposition of the “pc” and “jeux” is not a familiar expression in the French language (but “jeuxpc” or “jeux pour pc” would be such a familiar expression).

From that point of view, the word combination in question may be viewed as an abnormal way of referring to the goods or of representing their essential characteristics in common parlance.

In conclusion, I believe that the registration, by the English-speaking Respondent of the French language domain name <pcjeux.com>, which is not a familiar expression in the French language but is identical to a well-known trademark in France, has been made in bad faith.

I also believe that the use of the <pcjeux.com> domain name has also been made in bad faith.  The Respondent uses the domain name only to host links to third party websites that offer goods and services in areas corresponding to the Complainant’s products and he derives revenues from that activity.  The Panel itself, in the present decision, “sides with many previous UDRP panels that have concluded that this activity, in and of itself, is not a bona fide offering of goods or services”.  And I believe that the Respondent intended to confuse French Internet users, who know that the expression “pcjeux” is well known in France, because he hosts especially French links on his website.  The Respondent intended to capitalize on the value created by the Complainant’s well known trademarks in order to derive revenue from merely hosting French language links to third party websites.  And the French Internet users are victims of that bad faith behavior.

In conclusion, I believe that the use and the registration of the domain name <pcjeux.com> have been made in Bad Faith.”

Thankfully the majority decision was spot-on, but it is still unsettling to have a WIPO panelist honestly believe that one must either be from France or at least speak French in order to register French-language domain names in good faith.

[Thank you to John Berryhill]

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