WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Electro-Banque S.A. v. Ahmed Anis Darragi
Case No. D2001-0119
1. The Parties
The Complainant is Electro-Banque S.A., a French société anonyme, having its principal place of business in Paris, France.
The Respondent is Ahmed Anis Darragi with an address at 555 Taylor, # 406, San Francisco, California 94102, USA.
2. The Domain Name and Registrar
The domain name at issue is <electro-banque.com>. The domain name registrar is Network Solutions, Inc.
3. Procedural History
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received by email on
January 22, 2001, and in hard copy on January 24, 2001.
On January 26, 2001, the Center transmitted a request for registrar verification to Network Solutions, Inc. in connection with this case.
On January 31, 2001, Network Solutions, Inc. sent via email to the Center a verification response confirming that the Respondent is the registrant as well as the administrative and billing contact and that the technical contact is Engineering Network of Atlanta, Georgia, USA.
On January 31, 2001, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On January 31, 2001, the Center formally commenced this proceeding and notified Respondent that its response would be due by February 19, 2001. The notification was sent to the Respondent by courier, fax and by email. The courier and fax were not delivered to the Respondent due to what appears to be an invalid address and fax number. The email was not transferred successfully. The courier was successfully delivered to the technical contact.
Respondent did not file a response by the due date. The Center sent a notification of respondent default to the Respondent by email on February 23, 2001.
On March 3, 2001, the Respondent sent by email to the Center what appears to be an informal response. The Center acknowledged that the response was late in view of the filing deadline. The Panel accepts the Respondent's submission in this case as part of the record.
Complainant elected a single-member Panel. On March 14, 2001, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the panelist, and set
March 28, 2001 as the deadline for issuance of a decision.
4. Factual Background
Because there is no formal response, the following facts are taken from the Complaint and are generally accepted as true in the circumstances of this case.
"Complainant Electro-Banque, S.A. is a wholly-owned financial services subsidiary of Alcatel. Alcatel, a French company headquartered in Paris, together with its consolidated subsidiaries and associated companies, is a world leader in providing telecommunications equipment and systems…While Alcatel has operations in 130 countries, it has a particularly strong market base in Europe, where it currently generates approximately 59% of its consolidated net sales. Alcatel employs approximately 118,000 people, primarily in Europe. On the basis of market capitalization at December 31, 1998, Alcatel is one of the largest French companies listed on the Paris Bourse. The Chairman and Chief Executive Officer of Electro-Banque, S.A. is Jean-Pierre Halbron, who is also a Director of Alcatel...
Complainant has continuously used the trademark ELECTRO BANQUE for over 15 years. Furthermore, Complainant owns the following existing registration for the ELECTRO BANQUE trademark:
ELECTRO BANQUE, French Reg. No. 1269102, dated April 18, 1984 for services in International Class 35 ('advertising and business services') and services in International Class 36 ('insurance and financial services')
Complainant's registration is in full force and effect, and use of the mark has not been abandoned."
The Respondent registered the domain name at issue on September 9, 2000.
5. Parties’ Contentions
Complainant makes the following allegations. The factual elements of such allegations are generally accepted as true in the circumstances of this case in light of the Complainant's supporting documents. The legal issues are discussed in the next section of this decision.
In respect of the domain name being identical or confusingly similar to a trademark or service mark in which the Complainant has rights, Complainant alleges that:
"The Domain Name is electro-banque.com; Complainant's trademark is ELECTRO BANQUE. The Domain Name is identical or confusingly similar to the trademark used and owned by Complainant. Complainant's use of its trademark long predates any use or registration of the Domain Name by Respondent."
Complainant contends that the Respondent has no rights or legitimate interests in the domain name and relies on the following elements:
"The Respondent had no use of, nor any 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 before any notice to Respondent of the dispute.
Respondent has never been commonly known by the Domain Name.
Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
Respondent is not a licensee of Complainant, and has not received any permission or consent to use the trademark ELECTRO BANQUE or apply for the Domain Name."
Complainant further alleges that the domain name was registered and used in bad faith by the Respondent based on the following elements:
"Respondent registered the domain name on September 9, 2000 in order to prevent the Complainant from reflecting the mark in a corresponding domain name, and has engaged in a pattern of such conduct. Respondent has clearly engaged in a pattern of conduct of registering domain names incorporating the names of corporations and/or their subsidiaries, as well as famous hotels…
Evidence of the Respondent's registration of these domain names is attached as Annex 5 to this Complaint. These are only a few examples. Respondent has registered hundreds of other domain names in which it has no legitimate rights or use.
As of January 22, 2001, there was no evidence whatsoever of the Respondent's 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. The Domain Name simply resolves to a 'placeholder' website and demonstrates no other on-line presence. Respondent is also using the name of Complainant's Chairman and Chief Executive Officer (Jean-Pierre Halbron) in the email address for the Administrative Contact for the Domain Name (viz., "JPHalbron@electro-banque.com") without any legitimate right or interest thereto. As a result, the existence of the Domain Name has disrupted Complainant's business. In the absence of any indication whatsoever from Respondent to the contrary, the only logical inference that Complainant can draw is that the Domain Name has been registered by a competitor.
…Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site, or of a product or service on its web site or location. Complainant alleges that Respondent has simply used the Domain Name to intentionally attempt to attract internet users to an unused on-line location that, by its very nature, creates a likelihood of confusion with Complainant's mark (the Policy, ¶4(b)(iv)). Respondent is 'using' the Domain Name in that it does not resolve to a Web site or other on-line presence. Further, Respondent's use of the name of Complainant's Chairman and Chief Executive Officer (Jean-Pierre Halbron) in the email address for the Administrative Contact for the Domain Name (viz., "JPHalbron@electro-banque.com") without any legitimate right or interest thereto, serves to further the likelihood of confusion. The Respondent has registered a Domain Name which inevitably and misleadingly diverts consumers to that address and has the effect of tarnishing Complainant's valuable trademark. CSA International v. John O. Shannon, et al., WIPO Case No. D2000-0071 (March 24, 2000). Respondent's registration and use of the Domain Name for purposes of diverting Complainant's customers to an inactive on-line location is tantamount to bad faith.
…Complainants allege that Respondent's registration of the Domain Name without any legitimate right or interest thereto, followed by complete inaction with respect to the Domain Name and mere passive holding thereof, constitutes bad faith. See Aeroturbine, Inc. v. Domain Leasing Ltd, NAF Case No. NAF FA0093674 (March 23, 2000) (bad faith registration followed by inaction or passive holding constitutes bad faith use of domain name under UDRP)."
The Respondent did not contest the above allegations of the Complainant.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) 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;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) That the domain name has been registered and used in bad faith.
A. Similarity of the Domain Name and Trademark.
Complainant has established its rights in the trademark "ELECTRO BANQUE" with a trademark registration in France in 1984.
This panelist finds that <electro-banque.com> is confusingly similar to the trademark "ELECTRO BANQUE". The hyphen between the words "electro" and "banque", the use of lower case letter format and the addition of the gTLD ".com" are not significant in determining whether the domain name is identical or confusingly similar to the mark: see CBS Broadcasting Inc. v. Worldwide Webs, Inc., Case No. 2000-0834 (WIPO, Sept. 4, 2000).
Therefore, the Complainant has satisfied the first requirement.
B. Respondent's Rights and Legitimate Interests.
The Complainant has established that the trademark has been registered in France. Such trademark registration was prior to the date on which the domain name was reserved.
The Complainant does not appear to have licensed or otherwise authorized the Respondent to use its trademark or to apply for any domain name incorporating the trademark. Therefore prior to any notice of this dispute, the Respondent had not used the domain name in connection with any bona fide offering of goods or services within the meaning of Paragraph 4 (c) (i) of the Policy.
Nor is there any evidence that the Respondent is commonly known by the domain name or is making a legitimate noncommercial or fair use of the domain name within the meaning of Paragraph 4 (c) (ii) or (iii) of the Policy.
The Respondent has failed to demonstrate, pursuant to paragraph 4(c) of the Policy, that it has rights or a legitimate interest in the domain name in his informal response.
Therefore, the panelist concludes on the basis of the evidence of the Complainant that the Respondent has no rights or legitimate interests in the domain name.
C. Bad Faith Registration and Use.
The Complainant contends that the Respondent registered the domain name in dispute to prevent the Complainant from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct. Annex 5 of the Complaint shows a large number of domain names that appear to be registered by the Respondent, some of which simply incorporate names of known companies. Therefore, there appears to be a pattern of such conduct that is evidence of bad faith under paragraph 4 (b) (ii) of the Policy.
The domain name at issue appears not to have a web site or other on-line presence. Registration of domain names incorporating third party trademarks with no web site or on-line presence has been taken as evidence of bad faith: see BIC Deutschland GmbH & Co KG v. Paul Tweed, Case No. 2000-0418 (WIPO, June 20, 2000).
The panelist accepts that the Respondent's use of Complainant's Chairman and Chief Executive Officer in the email address of the administrative contact for the domain name could disrupt the Complainant's business. The panelist does not consider the conduct of the Respondent to fall within paragraph 4 (b) (iii) of the Policy since no evidence has been submitted showing that the Respondent is a competitor in the business sense. However, such use is an indication of bad faith in general and Section 4 (b) of the policy is not limited to the examples provided in it.
The Respondent appears to be holding the domain name without making any use of it. Nor has the Respondent adduced any evidence that he is preparing to use the domain name. This inaction has been found to be evidence of bad faith as to registration and use of a domain name depending on the facts of the case: see Telstra Corp. v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO, Feb. 18, 2000), Metabolife International v. Robert Williams, Case No. D2000-0630 (WIPO,
Sept. 5, 2000). Moreover, passive holding of a domain name can qualify as bad faith if the domain name owner's conduct creates the impression that the name is for sale: see Cruzeiro Licenciamentos Ltda. v. David Sallen, Sallen Entreprises and J.D. Sallen Entreprises, Case No. D2000-0715 (WIPO, Sept. 6, 2000).
In an email of March 3, 2001, the Respondent states that "I’ve registered electro-banque.com domain name to build an e-investment web site. Your client should use electrobanque.com. If they are interested to buy the domain name, tell them to make an offer." This type of offer to sell the domain name is clear evidence of bad faith on the part of the holder of the domain name: see paragraph 4 (b) (i) of the Policy and Metabolife International v. Robert Williams, Case No. D2000-0630 (WIPO, Sept. 5, 2000). It also suggests that the Respondent believed that (1) the right to use the domain name in question was valuable and (2) the Complainant would be willing to pay a significant amount for the domain name, despite the Respondent's lack of legitimate interest in it.
The panelist is satisfied that the Respondent registered and is using the domain name in bad faith in accordance with the criteria set out under paragraph 4(b) (i) and (ii) of the Policy.
For the foregoing reasons, the panelist holds:
(a) that the domain name is confusingly similar to the trademark "ELECTRO BANQUE" in which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the Respondent registered and is using the domain name in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the panelist decides that the domain name <electro-banque.com> must be transferred to the Complainant.
Thomas H. Webster
Dated: March 28, 2001