WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FRANPIN SA v. PAINT TOOLS S.L.
Case No. D2000-0052
1. The Parties
The complainant is FRANPIN SA a corporation organised under the laws of France, having its principal place of business in La Capelle (29 à 37 avenue du Général de Gaulle, BP 34 - 02260) France and represented by Blandine Poidevin ("the Complainant").
The Respondent is PAINT TOOLS, S.L. PL. America 74-A, 33055 Oviedo, Asturias, Espagne, a corporation organised under the laws of Spain, having its principal place of business in Oviedo, Asturias (PL America 7 4-A, 33055), represented by Société PAINT-TOOLS ("the Respondent").
2. The Domain Name and Registrar
The domain name at issue is <franpin.com>. The Registrar is Network Solutions, Inc. 505 Huntmar Park Drive, Hundon, Virginia 20170-5139, United States of America.
3. Procedural History
A complaint was submitted electronically with the World Intellectual Property Organisation Arbitration and Mediation Center (The "WIPO Center") on February 10, 2000. The hardcopy under cover of a letter of the same date was received on February 14 , 2000 ("the Complaint"). An Acknowledgement of Receipt was sent by the WIPO Center to the Complainant dated February 15, 2000.
On February 14, 2000, a Request for Register Verification was transmitted to the Registrar. On February 14, 2000, the Registrar confirmed by e-mail that the domain name <franpin.com> is registered with NSI and that the Respondent is the current registrant of that domain name. The Registrar also forwarded the requested Who-Is details.
On February 23, 2000, a Notification of Complaint and Commencement of Administrative Proceedings (the "Commencement Notification") was transmitted by email to the Respondent setting a deadline of March 13, 2000, by which the Respondent could make a response to the Complaint.
On March 13, 2000, no response had been received from the Respondent by the WIPO Center;
On March 15, 2000, Complainant submitted via telefax a NSI Registrant Name Change Agreement dated March 6, 2000, in which Respondent intends to transfer the domain name to Complainant. Because of this transfer, on April 13, 2000, a Notification of Suspension of Administrative Proceedings was transmitted by email to the Complainant setting a deadline of April 17, 2000, by which the Complainant could make a response to the WIPO Center.
On April 13, 2000, Complainant confirmed via email that it agreed to suspension of the proceedings.
On May 10, 2000, the Complainant advised the WIPO Center via e-mail that the NSI had not accepted the Registrant Name Change Agreement and the Complainant therefore wished to re-institute proceedings.
On May 10, 2000, the WIPO Center confirmed to Complainant the re-institution of proceedings.
On May 11, 2000, the WIPO Center sent a Notification of Appointment of an Administrative and Projected Decision Date by email to the parties, in which Wolter Wefers Bettink was appointed as a Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemented Rules.
4. Factual Background
On the basis of the complaint submitted by Complainant the following facts - not contested by Respondent - can be established.
The Complainant is the owner of the registered International trademark franpin, registered on February 9, 1996, (number 655466) for Benelux, France, Germany, Italy, Portugal, Spain and Switzerland and the French trademark franpin registered on July 28, 1989, (number 1569354). The trademarks are registered for "abrasives, machines for painters, bricklayers, tilers, upholsterers and glaziers, tools and man-handed instruments driven manually for painters, bricklayers, tillers, upholsterers and glaziers, protective gloves, painting rollers, paint brushes, sponges, brush-ware materials, brushes, housework brush-ware, wire wool, strings and ropes" in the international classes 3,7,8,9,16, 21 and 22.
The Respondent registered the domain name <franpin.com> on November 1, 1997. The Respondent has economic links with the RODAPIN Company which, according to Complainant, is the main competitor of the FRANPIN Company in Europe.
5. Applicable Rules
Paragraph 4a of the Policy directs that Complainant must prove each of the following:
(i) the domain name in issue is identical or confusingly similar to Complainant's trademark, and
(ii) Respondent has no rights or legitimate interest in respect of the domain name, and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4b of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of paragraph 4 (a)(iii) above.
Paragraph 4c of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent's rights or legitimate interest to the domain name for the purpose of paragraph 4 (a)(ii) above.
6. Parties’ Contentions
The Complainant states that it uses the name FRANPIN through its trademarks franpin.
The grounds for the Complaint are:
(1) the domain name <franpin.com> is confusingly similar to the trademarks franpin in accordance with Article 4a(i) of the Policy;
(2) the Respondent has no rights or legitimate interest in respect of the domain name <franpin.com> as provided in Article 4a(ii) in connection with Article 4c of the Policy. The Spanish Respondent registered the domain name in 1997, when Complainant’s trademark was already registered in France and Spain;
(3) the domain name <franpin.com> was registered in bad faith as provided in article 4a(iii) in connection with article 4b of the Policy because the domain name was registered for the purpose of disrupting the business of Complainant in accordance with Article 4b(iii) of the Policy. Registrant has economic links with the Rodapin Company which is the main competitor of Complainant in Europe.
Since Respondent has not submitted a response to WIPO, Complainant’s contentions are not contested.
7. Due process
Where, as in this case, a Respondent does not submit a response and the file does not contain any communication from the Respondent, the rules of due process require the Panel to verify as much as possible that the Respondent is aware of the present proceedings. The Panel is satisfied, on the basis of the documents in the file, that this is the case.
A hard copy of the complaint and a letter of Notification of Suspension of Proceedings were sent by the WIPO Center to the address of the Respondent mentioned under 1. above by courier. In addition, Complainant has submitted originals of earlier correspondence with Respondent at the same address, as well as an original return receipt, signed on behalf of Respondent, for a registered letter of February 18, 1998 to Respondent and a copy of a bailiff’s notification to Respondent through the Parquet du Procureur of Laon, which according to a confirmation from the Juzgado Decano at Oviedo dated December 22, 1998, has been notified to Respondent.
As all these documents carry the same address as the address mentioned under 1, the Panel assumes that the Respondent has received the complaint and the Notification, but has chosen not to respond.
8. Discussion and Findings
a. Identical or confusingly similar
The domain name <franpin.com> is clearly confusingly similar to Complainant's trademark franpin.
b. Rights or legitimate interests
Under article 4c of the Policy, Respondent may demonstrate that it has a right or legitimate interest to a domain name for the purpose of Article 4(a)(ii), inter alia, by providing evidence of any of the following circumstances:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue."
As Respondent has not submitted a response and, therefore, no evidence that in its opinion proves that it has such legitimate interests, it should be held that Respondent has no legitimate interest in the domain name <franpin.com>.
c. Bad faith
Under Article 4b of the Policy, the following circumstances are given which present evidence of the registration of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product or service on your web site or location.
Complainant has properly alleged, and Respondent has not contested, that Respondent registered and used the domain name in order to disrupt the business of the Complainant. As appears from a Dun & Bradstreet report submitted by Complainant, Respondent has economic links with Rodapin S.A. of LA BOLGACHINA, Spain, which company trades in goods which are identical or similar to those traded by Complainant. According to Complainant, Rodapin S.A. is the main competitor of Complainant in Europe. It should therefore be held that Respondent has registered the domain name <franpin.com> in bad faith in accordance with Article 4b(iii) of the Policy, primarily for the purpose of disrupting the business of a competitor, i.e. Complainant.
In light of the foregoing, the Panelist decides that the Respondent has no rights or legitimate interests in respect of the domain name <franpin.com> and registered and used the domain name in bad faith. These three factors entitle Complainant to the requested order transferring the domain name from Respondent to Complainant. Accordingly, pursuant to Article 4(i) of the Policy, the Panel orders that the registration of the domain name <franpin.com> be transferred to Complainant.
Wolter Wefers Bettink
Dated: May 25, 2000