WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DCI S.A. v. Link Commercial Corporation
Case No. D 2000-1232
1. The Parties
The Complainant is DCI S.A., Cours Des Bastions 3b, CH-1205 Geneva, Switzerland.
The Respondent is Link Commercial Corporation, Bitco Building Floor 3, Box 4852, Nassau, 11530 Bahamas. The administrative and billing contract provided for by the Respondent is a John Lopez.
2. Domain Name and Registrar
The Domain Name at issue is "5asec.com", hereinafter referred to as the "domain name". The Registrar of this domain name is Network Solutions, Inc., of Herndon, Virginia, USA.
3. Procedural History
WIPO Arbitration and Mediation Center ("the Center") received DCI’s Complaint on September 18, 2000 by email and on September 20, 2000 in hardcopy. An acknowledgement of receipt was sent to Complainant by email on September 21, 2000.
On September 22, 2000 a request for registrar verification was transmitted to the Registrar, Network Solutions, Inc., requesting inter alia confirmation that the Uniform Domain Name Dispute Resolution Policy applies to the domain name. On September 28, 2000, Network Solutions replied to the request and confirmed that Network Solutions is in receipt of the Complaint, that Network Solutions is the Registrar of the domain name and confirmed that the contact data as given by the Complainant are correct. Network Solutions further replied that the Network Solution’s 5.0 Service Agreement is in effect, meaning that the Uniform Domain Name Dispute Resolution Policy applies to the domain name.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules on October 2, 2000, a Notification of Complaint and Commencement of Administrative Proceeding was transmitted by the Center to the Respondent. In this notification the Center advised that the response was due by October 21, 2000. This communication was sent to the respondent by means of email (Complaint without attachments), by means of fax (without enclosures) to the fax numbers given in the contact details of Network Solutions and by means of post/courier (with enclosures) via FedEx to the addresses of Respondent and technical contact according to the contact details of Network Solutions’ Whois database.
The Notification (plus Complaint) could not be delivered to Respondent’s address by FedEx. It was returned to the shipper. The Notification (plus Complaint) directed to the address of the technical contact (Hostmaster, Pro Website Inc., Millersville, Maryland) was delivered on October 4, 2000 and signed for as received by the reception at the front desk (signed for by a D.Piel). A fax transmission to the Respondent directed to the administrative contact John Lopez at the fax number indicated in the Whois database excerpt failed twice.
On October 24, 2000, having received no response from Respondent, the Center issued to Respondent a Notification of Respondent Default. This Notification was sent to Respondent by email. The Notification was copied to Complainant.
On November 8, 2000 in view of Complainant’s designation of a single panelist, the Center invited Mrs.Andrea Jaeger-Lenz to serve as panelist and transmitted to her the Request for Declaration of Impartiality and Independence and a statement of acceptance. Mrs. Jaeger-Lenz’s Declaration of Impartiality and Independence and Statement of Acceptance, dated November 8, 2000 was sent to the Center.
On November 10, 2000 the Center transmitted to the parties a Notification of Appointment of Administrative Panel and projected decision date by which Mrs. Jaeger-Lenz was formally appointed as sole panelist.
Prior to the originally projected decision date (being November 23, 2000), the panelist, on November 22, 2000, having reviewed the case material provided by the Complainant, requested the Complainant via the Center to provide further documentation as evidence regarding the alleged transfer of the trademarks to the Complainant, on which the Complaint is based. The original annexes did not support the claim of ownership via alleged assignment of the trademarks, on which the Complaint is based. Prior to the five-day deadline for submitting evidence of ownership of the trademarks via assignment, the Complainant by additional writ of November 23, 2000 provided the Center with the requested additional information. This additional information regarding ownership of the trademarks via assignment was received by the Administrative Panel on November 28, 2000 whereupon December 7, 2000 was issued as the new date for rendering the decision.
The sole panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, the Rules and the Supplementary Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2 (a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." The only contact information given by Respondent in its registration data information in Registrar’s Whois database were the postal address of Respondent used by the Center (unsuccessfully), the contact information of the technical contact (used successfully), the fax number (used unsuccessfully) and the email addresses (used successfully by the Center). The domain name does not resolve to an active webpage indicating further contact possibilities. Therefore, the Centre followed each of the instructions of paragraph 2 (a) of the Rules.
Therefore, and since Respondent has not provided a response, according to paragraph 5 (e) and 14 (a) of the Rules, the Administrative Panel shall issue its decision based on the Complaint and additional evidence, the Policy, the Rules and the Supplementary Rules and without the benefit of any response from
4. Factual Background
4.1 Complainant’s activities and trademarks
The Complainant is a company, which is involved in the dry cleaning business. The abbreviation DCI, the name of the Complainant, stands for "Dry Cleaning International". Neither the Complaint itself nor the annexes provided for by the Complainant give a clear picture of the nature of the business, as far as the Complainant itself is concerned. However, the Complainant is owned by the Company 5 a sec Holding France and appears to be a sister company of the company 5 a sec France S.A. The company 5 a sec France S.A., according to a brochure provided for in annex 8 and and a newsletter in annex 9 to the Complaint, claims to be the world’s leading dry cleaning company with outlets and franchises in numerous countries across the world. The Complainant is thus part of a conglomerate of companies involved in establishing outlets for dry-cleaning under the denomination "5 a sec" in countries around the world and apparently designated to hold the trademarks rights in the denomination "5 a sec". Neither the Complainant nor its mother and sister companies nor its services were known to the Administrative Panel prior to the procedure. The Respondent has, however, not contested the claims of the Complainant.
The Complainant claims to be owner of the following trademarks:
French trademark no.1453705 "5 a sec" (word mark), registered in the name of the French company 5 a sec - société d’études des marques et des procédées pour le nettoyage à sec S.A., 134 Boulevard de la Madeleine, 06000 Nice, registered for goods and services in classes 1, 3, 37 and 40. This trademark was registered in 1978 and renewed in 1988. Complainant claims that this trademark has been renewed a second time.
International trademark no.626217 "5 a sec" (device mark with circle and triangle) registered on October 28, 1994 on behalf of the company 5 a sec-société d’études des marques et des procédées pour le nettooyage à sec S.A., 9, Rue Vallon Jourdan, F-13007 Marseille, for goods and services in classes 1, 3, 37 and 40.
International trademark registration no.690692 "5 a sec" (device mark with a straight and a wavy line) of February 18, 1998, registered also on behalf of 5 a sec société d’études des marques et des procédées pour le nettoyage à sec S.A., 9, Rue Vallon Jourdan, F-13007 Marseille, for goods and services in classes 1, 3, 37 and 38.
The Complainant further provided a non-exhaustive list of registrations of the trade- and service marks "5 a sec" in the countries France, Switzerland, Benelux, Spain, Portugal, Germany, Austria, Italy, Greece, Poland, Romania, Czech Republic, Cyprus, Israel, Great Britain, Ireland, Sweden, Finland, Norway, Denmark, Lebanon, Hungary, Bulgaria, Russia, China, Morocco, Algeria, Angola, Australia, Japan, Malaysia, Brunei, Indonesia, Singapore, Philippines, Taiwan, USA, Columbia, Uruguay, Argentina, Brazil, Chile, Venezuela, Bolivia, Ecuador, Mexico, Paraguay and Peru. This list according to Annex 7, however, did not give evidence, which company had registered these trademarks, nor when they have been registered, nor in particular that the Complainant had registered these trademarks.
However, after the request of the Administrative Panel for documentary evidence on the alleged assignment of said trademarks to Complainant, the Complainant provided copy of a Trademark Assignment Agreement dated June 25, 1999, between the company 5 a sec International S.A. (société d’études des marques et des procédées pour le nettoyage à sec S.A.) and the Complainant, according to which this company assigned to Complainant most of the above mentioned trademarks, in which Complainant claims ownership. In this further documentation received by panelist on November 28, 2000, the Complainant further gave evidence of ownership of – among other - the following trademarks: "5 a sec" 123451 in Israel, international trademarks No. R362934 "5 a sec", R468352 "5 a sec" and 626217 "5 a sec", Venezoelan trademark no. 178730 "5 a sec", Danish trademark no. VR 1995 05917 "5 a sec", Uruguayan trademark no. 271 521 "5 a sec" etc. In this additional information, the Complainant provided further evidence of ownership of trademarks "5 a sec" worldwide by supplying deeds of assignment for individual trademarks in the denomination "5 a sec", requests for recordal of change of ownership in several national registers for the Complainant as proprietor of trademarks "5 a sec". By this additional documentary evidence, Complainant has, to the satisfaction of the Administrative Panel, documented its claim to be owner of rights in the trademark and denomination "5 a sec" worldwide.
4.2 Respondent’s identity and activities
The Respondent is the registrant of the domain name 5asec.com. This domain name does not resolve to a website or other online presence. The fact that the Complaint with enclosures could not be served on Respondent at the actual address stated by the Respondent in the contact information of the Whois database of Network Solutions leads to the assumption, that either there are no actual activities at the address given or that the contact information given is false. Prior to filing the Complaint with the Center, the Complainant twice tried to get in contact with Respondent according to letters provided for in annex 10 a and 10 b. To these requests, Respondent did not reply. Nothing further on Respondent’s identity and activities is known. In particular, Respondent has not offered the domain for sale to the Complainant.
5. Parties contentions
5.1 The Complainant
The Complainant contends that the three elements which according to paragraph 4 a of the Policy must be present for a proceeding to be brought against Respondent, are given. In particular, the Complainant contends that the domain name in question is identical or at least confusingly similar to trademarks and service marks in which the Complainant has rights. He further contends that, as set out in paragraph 4 a (ii) of the Policy the Complainant has no rights or legitimate interests in respect of the domain name, as, to the knowledge of the Complainant, the Respondent is not owner of any registration of a trade or service mark in the name of "5 a sec" nor has any other legitimate interests in respect of this nomination. Finally, the Complainant contends that according to paragraph 4 a (iii) of the Policy the domain name has been registered and is being used in bad faith. The Complainant presumes that the contested domain name was registered in order to prevent the owner of the trade/service marks from reflecting said mark in a corresponding domain name, and possibly to try getting financial income from the Complainant to transfer said domain name to it. The Complainant further contends that, as the domain name 5asec.com appears to be non-active, there could be no doubt about the fact that the registration by the Respondent – in view of the other circumstances – was made in bad faith.
5.2 The Respondent
As the Respondent has failed to reply to the Complaint, there are no contentions of the Respondent to consider.
6. Discussion and findings
According to paragraph 4 (a) (i) to (iii) of the Policy the Complainant in the Administrative Proceeding must prove that the domain name 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 domain name; and that the domain name has been registered and is being used in bad faith. If these three requirements are proven to the satisfaction of the Administrative Panel and if the Respondent fails to give evidence of rights or legitimate interests in the domain name and of the absence of bad faith, then the remedies available according to paragraph 4 (i) of the Policy and paragraph 15 of the Rules are cancellation or transfer of the domain name to the Complainant.
6.1 Identical or confusingly similar domain name, paragraph 4 (a) (i) of the Policy and paragraph 3 (b) (ix) (1) of the Rules
The domain name in issue is "5asec.com". The relevant (name) part of this domain name is "5asec". The Administrative Panel finds that this part of the domain name is identical to the numerous trademark registrations of the word "5 a sec". As far as the registered trademarks are word/device marks, the distinctive word part of these word/device marks is "5asec". Thus, as far as the word and device marks are concerned, the domain name at issue is confusingly similar to these word device marks. The Complainant has, in his writ subsequent to the Complaint of November 23, 2000 and the annexes to this writ, submitted sufficient evidence to his contention in the Complaint that he is owner of trademark rights in the denomination "5asec", either word or device marks worldwide. This is set out in the factual background (see above 4.). The Administrative Panel finds that the whole of the domain name is confusingly similar to those trademark registrations, in which the Complainant has, according to his further evidence of November 23, 2000 rights.
6.2 Respondent’s rights or legitimate interests in the domain name, paragraph 4 (c) of the Policy and paragraph 3 (b) (ix) (2) and paragraph 5 (b) (i) of the Rules
The Respondent has not provided evidence of circumstances of the type specified in paras. cited above of the Policy and the Rules, or of any other circumstances giving rise to a right or legitimate interest in the domain name. The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of the marks "5 a sec". Furthermore, the word "5 a sec" – even though if translated from the French language it has some allusion to the word "dry" and thus may bear some relationship to the service area of a dry cleaning (nettoyage a sec means dry-cleaning), in which the Complainant or his associated companies is involved – still appears to be an invented word, a fantasy name, and not a generic one. The reason for this is that the combination of the number 5 with the words "a sec" makes no sense as to the description of dry-cleaning services. As such, "5 a sec" is not a word traders would legitimately choose unless seeking to create an impression of an association with the Complainant or one of the Complainant’s related companies. In view of this, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.
6.3 Domain name registered and used in bad faith, paragraph 4 (b) of the Policy and paragraph 3 (b) (ix) (3) of the Rules
It is less clear whether Complainant has proved the third element required for ruling in favour of the Complainant, namely that the domain name "has been registered and is being used in bad faith" by Respondent. The Complainant merely presumes that the contested domain name was registered in order to prevent the owner of the trade or service marks from reflecting said mark in a corresponding domain name, and possibly to try getting financial income from the Complainant to transfer said domain name to it. The Complainant admits that it is presently not possible to know what the intentions of the Respondent are, since the domain name 5asec.com is not active and since the Respondent has not replied to the two letters of Complainant of March 6 and August 21, 2000 in annex 10 a and annex 10 b. The only thing that is evidenced by the Complainant is that the Respondent passively holds the domain name 5asec.com and that he did not respond to the letters according to annex 10 a and 10 b.
The fact that the Complaint with enclosures could not be served on the Respondent at the address given by the Respondent in the Whois information in the Network Solutions database shows that the Respondent either has provided false information as to his address deliberately in order to prevent communications or writs being served on him, and/or that he is not actually present or has no commercial activities at the address stated.
As opposed to that, the annexes to the Complaint and the further documentation of November 23, 2000, show that the trademark "5 a sec", even though it is not known to the Administrative Panel, appears to be a trademark that is known in the area of dry cleaning through a large number of outlets and franchisees in numerous parts of the world (except Germany). According to the brochure provided in annex 8 the trademark "5 a sec" has been used for 30 years in Argentina, Aruba, Belgium, Brazil, Chile, Cyprus, Congo, Spain, France with overseas departments and territories in Greece, Indonesia, Israel, Luxembourg, Malaysia, Philippines, Portugal, Poland, Romania, Singapore, Switzerland, Czech Republic and Uruguay and there have been 50 new openings per year since 1981. According to the "5 a sec" news in annex 9 dated March 2000, the franchise organisation continues to grow in these countries. The numerous trademark applications and registrations for word and word device marks "5 a sec" world wide document at least intention to use and strong commercial interests of the Complainant in these trademarks and the denomination "5 a sec" as such.
In view of all of the above, the Administrative Panel follows the rulings set out in the decision case No. D 2000-0003-Telstra Corporation Limited vs. Nuclear Marshmallows in finding that the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. The Administrative Panel concludes that the Respondent holds the domain name in bad faith. The particular circumstances of this case which lead to this conclusion are:
(1) The Complainant has demonstrated that the trademark "5 a sec" is used in the area of dry cleaning in France and in other countries worldwide;
(2) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(3) the domain name "5asec.com" is not a domain name any user would choose unless he knew of the trademarks of the Complainant, as "5 a sec" is neither a generic term nor particularly suggestive. It is a fantasy word;
(4) The Respondent has apparently actively provided, and failed to correct, false contact details, in breach of its registration agreement, and
(5) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing-off, an infringement of consumer protection legislation or an infringement of the Complainant’s rights under trademark law.
In the light of these particular circumstances, the Administrative Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4 (a) (iii) of the Policy that the domain name "is being used in bad faith" by Respondent.
The Administrative Panel decides that the Complainant has proven each of the three elements in paragraph 4 (a) of the Policy. Accordingly, the Administrative Panel requires in accordance with paragraph 4 (i) of the Policy and paragraph 15 of the Rules that the domain name "5asec.com" be transferred to the Complainant.
Dr. Andrea Jaeger-Lenz
December 7, 2000