WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L'usine Nouvelle v. Halami Philippe Tropic Telecom
Case No. D2000-0983
1. The Parties
Complainants are L'Usine Nouvelle s.a. and Groupe Industries Services Info s.a., both having their registered offices at 12-14, rue Médéric 75815 Paris Cedex 17, France. Complainants are represented by CVFM - SOS Domaines, whose principal place of business is located at 32, rue de Paradis, 75010 Paris, France. Hereinafter referred to as "Complainants".
Respondent is Philippe Halami, with a declared address at P.O. Box 584, Herzelyia, 46105 Israel. Hereinafter referred to as "Respondent".
2. The Domain Name and Registrar
The domain name at issue is: "lusinenouvelle.com" (hereinafter referred to as "the Domain Name").
The registrar of the Domain Name at issue is Abacus America, Inc. DBA Names4Ever, A+net Internet Services, 5266 Eastgate Mall, San Diego, CA 92121, USA. (hereinafter referred to as "Registrar").
3. Procedural History
On October 26, 2000, after having receiving Benoit Van Asbroeck’s completed and signed statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel.
The Complaint submitted by L'Usine Nouvelle was received on August 9, 2000, (electronic version) and August 14, 2000, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on September 27, 2000, transmitted by post/courier and by email a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also sent by e-mail to the Registrar and ICANN.
On September 29, 2000, the Registrar confirmed that a copy of the complaint was received, that the domain name is registered with it and that the Respondent is the current registrant.
In a letter dated October 20, 2000, the WIPO Center informed the Respondent that he was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.
On November 17, 2000, the WIPO Center notified to the parties the following ruling issued by the Administrative Panel:
"Pursuant to Paragraph 10 and 12 of the Rules for Uniform Domain Name Dispute Resolution Policy, the seized administrative panel requires from both Complainants evidence of their rights with respect to the Trademark L'Usine Nouvelle, since in the document filed by Complainants the Company having registered said mark is Groupe Usine Nouvelle société anonyme which is not party to the present case (..)"
On November 20, 2000, Complainants sent complementary information to the WIPO Center.
On November 28, 2000, the WIPO Center notified to the parties a second ruling issued by the Administrative Panel i.e.:
"After perusal of Complainant's complementary submission of documents dated November 20, 2000, the administrative panel has decided, according to Paragraph 10 and 12 of the Rules for Uniform Domain Name Dispute Resolution Policy, to reopen again the debates for an eventual ultimate filing of complementary elements. The administrative panel request from Complainant more attention in the drafting of its reply to the ruling of the panellist.
It appears from the documents submitted by Complainant that Groupe Industries Services Info s.a. has concluded on March 31, 2000, a contract with the Groupe Usine Nouvelle s.a. allocating namely to the Groupe Industries Services Info s.a a use licence of Groupe Usine Nouvelle trademark's L'Usine Nouvelle. However, no provision of this contract allocates to the Groupe Industries Services Info s.a. the rights to initiate any legal action to protect the Trademark L'Usine Nouvelle. Furthermore Groupe Industrie Services Info request the transfer of the disputed domain name to L'Usine Nouvelle s.a. whose rights on the disputed trademark L'Usine Nouvelle are not evidenced by Complainants.
Moreover, Complainants should detail the relationship between Groupe Usine Nouvelle s.a. and L'Usine Nouvelle s.a. and if necessary the rights of L'Usine Nouvelle s.a. on the disputed trademark L'Usine Nouvelle".
On December 1, 2000, Groupe Industries Services s.a. Info sent a letter to the WIPO Center intended to answer this second ruling of the Administrative Panel.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
Groupe Industries Services Info s.a. concluded on March 31, 2000, with Groupe Usine Nouvelle s.a., which is not party to the present case, a contract of "location-gérance" which inter alia allocates to Groupe Industries Services Info s.a. a use licence of the trademark "L'Usine Nouvelle" and the right to publish a weekly magazine named "l'usine nouvelle". In this context, Groupe Industries Services Info s.a. has also implemented a web version of this magazine at the URL "usinenouvelle.com".
Groupe Usine Nouvelle s.a. is the owner of the above-mentioned trademark duly registered since June 15, 1988, with the French trademark office (INPI).
Groupe Usine Nouvelle s.a. also holds the following domains names which have been given in "location-gérance" to Groupe Industries Services Info s.a. within the framework of the above-mentioned contract:
The complaint is based upon Complainants’ claimed rights in the trademark "L'Usine Nouvelle".
On March 29, 2000, Respondent registered the domain name "lusinenouvelle.com".
On July 27, 2000, a bailiff acting on behalf of Groupe Industries Services Info s.a., Mr. Proust, ascertained that Groupe Industries Services Info s.a could access its website "usinenouvelle.com" but was actually automatically routed to Respondent’s website which showed pornographic content.
On July 27, 2000, by letter and on August 1, 2000, by mail to "email@example.com", Groupe Industries Services Info s.a sent a formal notice to Respondent to prevent him from using the Domain Name and to require a cancellation of the Domain Names registration. Respondent apparently never answered Complainant's e-mail, but removed the pornographic pages on the disputed website.
5. Parties’ Contentions
According to Paragraph 4(b) (i) of the Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (hereinafter referred to as "the Policy"), Complainants request a transfer in favour of "L'Usine Nouvelle S.A." of the Domain Name since it cumulatively meets the conditions listed under Paragraph 4 (a) of the Policy.
Complainants contend that the Domain Name is identical to Complainant's sub 1 registered trademark.
Moreover, Complainant sub 1 holds several domains names declining several different forms of Complainant's sub 1 trademark.
Respondent cannot demonstrate or establish any legitimate interest in the Domain Name as he does not possess any right on Complainant's sub 1 trademark. He is not a Complainant's sub 1 licensee and there is no relation between Complainants and Respondent.
The Domain Name has been registered and used in bad faith since Respondent could not be unaware of the damage he caused to Complainant and its reputable economic magazine by registering the Domain Name and opening at this identical URL a pornographic website.
Although not supported by adequate evidence, Complainants contend that Respondent has registered other domain names similar to other trademarks in the media sector and has also established with these URL active web pages with pornographic content.
Complainants allege furthermore that shortly after Complainant's sub 2 formal notice, Respondent cancelled his pornographic website.
However, by surfing on Respondent's website, one could still send an e-mail to Respondent at "firstname.lastname@example.org". According to Complainants, this fact is enough to prove Respondent's intention to sell the Domain Name. Complainants do not submit any evidence to support this contention.
No response was submitted.
6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "Rules"), the Administrative Panel shall issue its decision on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy provides that a Complainant must cumulatively establish each of the following three conditions to successfully challenge a registered domain name:
(1) 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; and
(2) that the Respondent has no legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
On November 1, 2000, the Administrative Panel opened Respondent's URL "http://www.lusinenouvelle.com". The home page shows a mere commercial advertising site offering several services to consumers. Evidently, there wasn't any reference to an e-mail "email@example.com" nor to pornographic e- commerce. The Administrative Panel also opened Complainant's sub 2 web site "http://www.usinenouvelle.com". The Complainant's sub 2 website homepage appears clearly and the query is not routed to Respondent’s web site.
The Administrative Panel shall now examine whether the conditions specified under paragraph 4(a) of the Policy are satisfied here.
- Right of Complainants in the Trademark L'Usine Nouvelle
According to Paragraph 4 (a) of the Policy, Complainants are required to have rights in the trademark, which is reflected in the disputed domain name.
It appears from the Notification of Complaint and Commencement of Administrative Proceeding document sent by the WIPO Arbitration and Mediation Center on September 27, 2000, to the parties that the Complainants are L'Usine Nouvelle s.a. and Groupe Industries Services Info s.a. This Document has not been disputed by the parties.
It appears from the files submitted by Complainants that Groupe Usine Nouvelle s.a., which is not a party to the present case, and not L'Usine Nouvelle s.a., is owner of the trademark "L'Usine Nouvelle".
Despite the Administrative Panel's rulings, Complainants have offered neither any explanation with a possible mere material error between Groupe Usine Nouvelle s.a. and L'Usine Nouvelle s.a. nor any evidence that L'Usine Nouvelle s.a. would be assignee of all or part of Groupe Usine Nouvelle s.a.’s rights in the trademark "L'Usine Nouvelle".
The Administrative Panel thus has to conclude that L'Usine Nouvelle s.a. has no rights in the trademark at issue i.e. "L'Usine Nouvelle";
Since the conditions provided under Paragraph 4 (a) of the Policy must cumulatively be established, and since Complainant sub 1 failed on the first condition, the Administrative Panel shall not further examine the other conditions of Paragraph 4 (a) of the Policy.
Consequently, the remedy sought by Complainant sub 1 should be denied.
With respect to Complainant sub 2, i.e. Groupe Industries Services Info s.a. the situation is different. As mentioned earlier, the latter company has a use license for the trademark at issue.
Despite the Administrative Panel's rulings, Complainants did not offered any elements supporting that this license includes the right for the licensee to initiate the present procedure in order to protect Groupe Usine Nouvelle s.a.'s trademark.
Article 4 (a) (i) of the Policy does not specify the extension of the rights to be held by the Complainant in the trademark at issue.
However, pursuant to article 4 (i) of the Policy, the remedies available to a Complainant are limited to requiring the cancellation of the disputed domain name or the transfer of said domain name to the Complainant.
Since Complainant sub 2 does not request the transfer of the Domain Name to itself but to Complainant sub 1 which has no right in the trademark at issue, the requested remedy is in any event not available to Complainant sub 2.
In light of the foregoing, the Administrative Panel decides that Complainants’ request to transfer the domain name "lusinenouvelle.com" to L’Usine Nouvelle s.a. is denied.
Benoit Van Asbroeck.
Dated: December 28, 2000