WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Editions Gallimard v. Andrew Hasse
Case No. D2000-0930
1. The Parties
Complainant is Editions Gallimard, 5 rue Sťbastien Bottin, Paris, France, F-75007.
Respondent is Andrew Hasse, 3288 21st Street, no. 107, San Francisco, California, U.S.A., 94110.
2. The Domain Name and Registrar
The domain names at issue (the Domain Names) are "gallimard.com" and "gallimard.org". The registrar of the domain name "gallimard.com" is TierraNet, Inc. 3870 Murphy Canyon Road, no. 330, San Diego, California, U.S.A., 92123. The registrar of the domain name "gallimard.org" is GANDI, 119 rue Saint Denis, Paris, France, 75001 [hereinafter referred to collectively as the Registrars].
3. Procedural History
On August 3rd, 2000, the Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center to the Complainant via e-mail dated August 7th, 2000. On August 17, 2000 the Center transmitted via email to Network Solutions and GANDI a request for registrar verification in connection with this case.
The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on August 18th, 2000.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
On August 21st, 2000, Network Solutions informed the Center that the registration for the Domain Name "gallimard.com" had been transferred on July 13th, 2000, to TierraNet, Inc. . On August 22nd, 2000, the Center informed the Complainant that due to the change of registration the Complainant must be amended.
On August 29th, 2000, the Center received the amended Complaint.
In a letter dated September 12th, 2000, the Center informed the Respondent of the commencement of the proceedings as of September 12th, 2000, and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
It is of note that on September 11th, 2000, the Center received a response [hereinafter the Response] from the Respondent within the 20 day limit as provided for by the Center (the Response doubling as the response in Case D2000-0929). On the same date the Center acknowledged receipt of the Response to the Respondent and the Complainant [hereinafter referred to collectively as the Parties].
On September 15th, 2000, the Center received an additional submission from the Complainant [hereinafter the Supplemental Complaint]. On September 19th, 2000, the Center acknowledged receipt of the Supplemental Complaint to both the Complainant and the Respondent.
While there is no formal requirement for the Panel to take into account the Supplemental Complainant, the Panel has, using its discretionary powers, decided to take this into account during its deliberations.
On October 5th, 2000, the Center informed the Parties that an administrative panel would be appointed. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has taken into the Complainantís request at paragraph 14 to the Complaint that the panelist selected be French speaking. The Panel has also noted the Respondentís request in the Response that the selected panelist be either English speaking or at least bilingual. The Panel hereby certifies that it fulfills both these requirements. The Panel has also noted the Complainantís request at paragraph 14 to the Complaint that the decision be rendered in both the English and French language but feels that given the limited time frame and resources made available to the Panel it is unable to fulfil this request.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to October 18th, 2000, in the English language.
4. Factual Background
The Complainant is a legal person incorporated under the laws of France with head offices at 5 rue Sťbastien Bottin, Paris, France, F-75007.
The Complainant was incorporated in 1919 and has been active in the publishing business since incorporation under the name of "Librairie Gallimard" and later "Editions Gallimard". The Complainant is one of the leading publishers within French speaking countries. From 1988 until February 2000, the Complainant sold over 293 million books throughout the world including 250 million in France. In addition to France the Complainant sells its materials in Switzerland, Canada, Belgium and various countries in Africa and Asia.
The Complainant is the owner of Trademark registrations for the name GALLIMARD, as a single word or together with a logo. In France GALLIMARD was first registered as a trademark in 1972, said registration being regularly renewed and in force at the present time. The Complainant also owns the registrations of number of trademarks which incorporate GALLIMARD.
GALLIMARD has also served since incorporation as the major component in the corporate name of the Complainant. The Complainant currently operates a corporate website with domain name "gallimard.fr" and has been doing so continuously since 1995. The Complainant also owns the domain names "gallimard-jeunesse.fr" and "gallimard.tm.fr".
The Respondent Andy Hasse is a physical person. However, the Respondentís legal representative, Bertrand Gallimard, also a physical person, is claiming ownership to the Domain Name. The Respondent Andy Hasse and Bertrand Gallimard are referred to collectively hereinafter as the Respondents.
The Respondent Andy Hasse registered the Domain Name "gallimard.com" on March 3rd, 1999, and the Domain Name "gallimard.org" on May 24th, 2000. The Respondents in the guise of Globemedia also registered the domain name "gallimard.net" on March 14th, 2000. The e-mail addresses for the administrative contacts for all three domain names is at domain "hasse.com". In fact, the technical contact for the domain name "gallimard.net" and for the Domain Name "gallimard.com" is the same person. The Panel is of the opinion that in fact all the parties mentioned above are agents in one manner or other of the Respondent and therefore are referred to herein collectively as the Respondents.
On March 28th, 1999, the Respondents sent a letter to the Complainant offering to sell the domain name "gallimard.com" to the Complainant for US$3000. The letter was sent, in the French language, on a company letter head from "Hasse, Inc." with address 3288 21st Street, no. 107, San Francisco, California, U.S.A., 94110 (i.e. the same as the Respondent in this case).
On May 4th, 2000, the Complainant requested that the Respondent transfer the Domain Name "gallimard.com". As stated above, the Respondent registered the Domain Name "gallimard.org." on May 24th, 2000, following transmittal of this e-mail.
The Respondents are not licensees nor otherwise authorised to use the Domain Names by the Complainant.
5. Procedural Issues
The Complaint has filed separate complaints for the Domain Name and for the domain name "gallimard.net" (Case D2000-0929). Although the Panel is of the opinion that it would have been preferable to submit both complaints together as a single Complaint, under the circumstances the Panel understands the Complainantís reticence to do so given that the indicated owner of the Domain Names differs from that of the other domain name. Similarly, the Respondent submitted a single response in reply to both complainants. The Panel has taken into account the single response for both complaints.
The Panel has issued two separate decisions although the factual background is the same as are, in the Panelís opinion, the parties.
6. Partiesí Contentions
At paragraph 2(1) to the Complaint the Complainant maintains that the Domain Names are identical to the trademark GALLIMARD within which it has rights.
At paragraph 2(2) to the Complaint the Complainant continues by maintaining that the Respondent has neither rights nor legitimate interests in respect to the Domain Names, that the Respondent has not registered GALLIMARD as a trademark.
At paragraph 2(3) to the Complaint the Complainant maintains that the Domain Names have been registered in bad faith and in particular that the Domain Name "gallimard.com" was registered by the Respondents for the purposes of selling it to the Complainant for an amount in excess of costs directly related to the registration.
In the Supplemental Complaint the Complainant alleges that no company located in the United States was using the name Gallimard, nor could an individual Bertrand Gallimard be located in United States directories.
Furthermore, in the Supplemental Complaint the Complainant alleges that none of the founding members listed on the website located at "gallimard.com" could be identified. For example, Jim Burns, the director of development is described as having graduated from Brown University and having developed the TN3270 program for the Macintosh. The Complainant presented evidence in the form of a letter from the lead system programmer at Brown University confirming that Jim Burns was not the author of the program in question nor did he recognise the name Jim Burns.
The Complainant also maintains that Silvia Dewar, described as director of marketing with a degree from Chico State university was not known to the administrative services of that university.
In the Response the Respondent Gallimard alleges that the Domain Name is owned by himself through contract with the Respondent Globemedia, who had registered it for the Respondent Gallimard at his request. The Respondent Gallimard continues by alleging he intended to use the Domain Name for a networking hosting service as a proper expansion of his current business "Gallimard".
The Respondent Gallimard maintains that Gallimard is his surname and that he has been using the domain name "gallimard.com" for over 2 years.
The Respondent Gallimard maintains that the temporary page website located at the Domain name is a standard temporary page put up by Domains Are Free and is not meant to convey that the Domain name is being offered for sale.
7. Discussion and Findings
Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy] the Complainant must convince the Panel of three elements if it wishes to have the Domain Names transferred. It is incumbent on the Complainant to show:
i) that the Domain Names are identical or confusingly similar to a trademark in which the it holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Names; and
iii) that the Domain Names were registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
The Complainant has provided evidence that he is the owner of the trademark registration in France for GALLIMARD. As the Domain Names are for all intents and purposes identical to the Complainantís registered trademark, the Panel is of the opinion that the Complainant has met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy regarding identical or confusingly similar trademarks.
No Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the respondent has any rights or legitimate interests vested in the Domain Names. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Names; and (iii) legitimate non-commercial or fair use of the Domain Names.
The Panel is of the opinion that the evidence provided by the Respondents does not support a finding of legitimate rights or interests on behalf of the Respondents pursuant to paragraph 4(c)(i) and (iii), i.e. that the Respondents have not shown use, or preparations to use, the Domain Names in connection with a bona fide offering of goods or services nor do the Respondents have a legitimate non-commercial or fair use of the Domain Name.
The Panel is also of the opinion that the Respondents have also failed to establish a legitimate right and interest under paragraph 4(c)(ii) of the ICANN Policy but feels that some discussion is needed as to its motivation in this regard.
In the decision in Pivotal Corporation v. Discovery Street Trading Co. Ltd., Case No. D2000-0648, it was found that once lack of legitimate rights or interests have been alleged by a complainant the respondent is obliged to adequately address this issue and prove a legitimate right or interest on a balance of probabilities. The Panel subscribes to this view and finds that the Respondents have not adequately addressed this issue in the Response.
The Respondent Gallimard maintains that he is known and has been known by the name Bertrand Gallimard at the time the Domain Names were registered. However, the printout from the Whois database for the Domain Names does not support this finding as both the owner listed and the technical contact are known by names other than the Respondent Gallimard. Therefore, in the Panelís opinion, the burden is placed on the Respondent Gallimard to rebut this evidence by providing a credible and probative response that (i) he is in fact the owner and that if he is, (ii) that he has a legitimate right and interest.
The Respondent Gallimard provided some evidence that he had obtained ownership via the services of Globemedia in the form of an e-mail (exhibit D to the Response) from the Domain Name "gallimard.com"ís technical representative, Linda Blass (who is evidently not at armís length to the Respondents). The Panel is of the opinion that a document generated after the fact (the e-mail is dated September 8th, 2000) which is self serving and made by party so closely related to the parties to the case lacks credibility and therefore alone cannot suffice to prove or disprove an allegation.
Regarding the Respondent Gallimardís identity, the Panel is of the opinion it would have been extremely simple for the Respondent to provide evidence that he is who he maintains he is, for example the photocopy of a passport or other similar legal document, and that given this simplicity the Panel cannot accept the raw allegation contained in the Response as having any probative weight whatsoever.
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent on the Complainant to prove that the Respondent has registered and is using the Domain Name in Bad Faith. Paragraph 4(b) of the ICANN Policy provides a number of circumstances which, if found to be present, are evidence of the registration and use of a domain name in bad faith. In Particular, paragraph 4(b)(i) of the ICANN Policy holds that a finding of bad faith is to be made if the evidence reveals that the Respondent registered the domain name primarily for the purposes of selling, renting or otherwise transferring the domain name to the Complainant for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
The Complainant provided credible evidence that the Respondent offered the Domain Name "gallimard.com" to the Complainant for an amount which is clearly in excess of out of pocket expenses. The Panel finds that the Respondentís reasons for offering to transfer the Domain Name "gallimard.com" to the Complainant are not credible in light of the surrounding circumstances, in particular the short period of time which expired between registration by the Respondents and offer to sell the Complainant. Therefore the Panel is of the opinion that the Domain Name "gallimard.com" was registered and is being used in bad faith.
Additionally, the Complainant provided evidence that the Domain Names are not being currently used which supports finding that the Respondent is intending to sell the Domain Names. The Panel has also found above that the Respondent has failed to establish a use for the Domain Names in conjunction with a bona fide offering of goods or services.
Paragraph 4(b)(ii) of the ICANN Policy holds that a finding of bad faith is to be made if the evidence reveals that the Respondent registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
The Complainant has provided evidence that the Respondents registered the Domain Name "gallimard.org" after the Complainant had requested that the Domain Name "gallimard.com" and the domain name "gallimard.net" be transferred to the Complainant. In light of the surrounding circumstances, as well the short temporal lapse between the request for transfer and subsequent registration, the Panel is of the opinion that this supports both a finding that the Domain Name "galliamrd.org" was registered not only for the purposes of selling it to the Complainant pursuant to paragraph 4(b)(i) but also in order to prevent the Complainant from reflecting the mark GALLIMARD in a corresponding domain name. The Panel is also of the opinion that the Respondentsí actions regarding the Domain Names and the domain name "gallimard.net" indicate a pattern of such conduct, which is bad faith pursuant to paragraph 4(b)(ii) of the ICANN Policy.
Furthermore, the Panel is of the opinion that the Respondent, who obviously speaks French given the letter sent to the Complainant regarding the potential sale of the Domain Name "gallimard.com", was likely aware of the Complainant and the Complainantís registered trademark both at the time of registering the Domain Name "gallimard.com" and the domain name "gallimard.net" and subsequently when registering the Domain Name "gallimard.org". The Panel is of the opinion that this supports a finding of bad faith in registration on behalf of the Respondent.
For the foregoing reasons, the Panel concludes that:
- that the Domain Names registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
- that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
- the Domain Names have been registered and are being used by the Respondent in bad faith.
Accordingly, the Panel finds that the complaint should be allowed and the Domain Name "gallimard.com" be transferred to the Complainant and so directs TierraNet, Inc., to do so forthwith. The Panel also finds that the complaint should be allowed and the
Domain Name "gallimard.org" be transferred to the Complainant and so directs the registrar GANDI to do so forthwith.
Hugues G. Richard
Dated: October 18th, 2000