WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sources Minérales Henniez SA v Jorge Clapes
Case No. D 2001-0680
1. The Parties
The Complainant is Sources Minérales Henniez SA, Zone industrielle, CH 1525 Henniez, Switzerland, represented by Philippe Gilliéron, Rue Grand-Chêne 5, CH 1002 Lausanne, Switzerland.
The Respondent is Multi Level Internet Marketing, Jorge Clapes, 103 ave Nte Y P Gral Escalon B5, SV San Salvador, El Salvador.
2. The Domain Name and Registrar:
The Domain Name at issue is <henniez.com>. The Registrar is NameIT Corporation, 421 Maiden Lane, Fayetteville, NC 28301, USA.
3. Procedural History:
The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) by e-mail on May 22, 2001, and a hardcopy was received by the Center on May 29, 2001. The Center acknowledged receipt of the Complaint on May 23, 2001.
On May 23, 2001, the Center sent to NameIT Corporation a request for verification of registration data. On June 5, 2001, NameIT Corporation confirmed to be the Registrar, that Jorge Clapes is the Registrant of the domain name <henniez.com>, and that the domain name registration <henniez.com > is "Locked".
On June 5, 2001, WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The Panel is satisfied that this is the case.
On June 6, 2001, the Complaint was properly notified in accordance with the Rules, paragraph 2(a), and the administrative proceedings commenced. On June 11, 2001, the Center received a Response from the Respondent.
On June 26, 2001, the Center notified the Parties that an Administrative Panel, composed of a single member, Dr. Gerd F. Kunze, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
On June 25, 2001, the Center received a reply to the Response from the Complainant, which was not requested by the Panel. The Panel decided not to take into account the arguments put forward in the Reply, but to accept an information relating to a pending case at the Center. The date scheduled for issuance of the Panelís decision is July 9, 2001.
4. Factual Background
The Complainant has been incorporated in 1913 and is having its place of business in Henniez, Switzerland. It is the Swiss leader in the distribution of water products with a sales volume amounting in 2000 to 180 millions Swiss Francs. Its trademarks "Henniez" label and "Henniez" in a graphic device, which are being used and are known particularly for the bottled mineral water sold by the Complainant, have been registered in Switzerland since 1979 and in a number of other countries since 1994, covering goods of class 32 (in particular mineral waters, fruit drinks and juices, and preparations for making beverages).
These facts are all evidenced by the attachments to the Complaint and not questioned by the Respondent. The Panelist is therefore satisfied that the respective documents submitted by the Complainant are truthfully reflecting the factual circumstances of the case.
The Complainant submits that its trademark "Henniez" is a well-known mark and, based on his own knowledge, the Panelist is personally convinced that this is true at least for Switzerland. Also in neighboring countries, such as France and Germany, the trademark HENNIEZ is certainly known to consumers.
The Complainant administers an informative website under the cctld domain name <www.henniez. ch>. Since 1997, it was also the owner of the domain name <henniez.com>, however it did not renew that domain name when its registration term expired.
Shortly after the expiry of its domain name registration "henniez.com" the Complainant became aware that the domain name <henniez.com> had been registered on February 15, 2001, by a registrant named "henniez.com", with an address in Bolivia. On April 4, 2001, Counsel for the Complainant sent an e-mail to the registrant of the domain name and to the technical contact (located in Trinidad), requesting the transfer of the domain name to the Complainant, and on April 23, 2001, he sent letters to the addresses listed in the WHOIS data base. He received no answer to its e-mails and the letters were returned because the addresses listed in the WHOIS data base were unknown. However, he noticed on April 30, 2001, that the domain name <henniez.com> had been transferred, on April 5, 2001, to the Respondent.
On May 4, 2001, the Counsel for the Complainant sent an e-mail to the Respondent, requesting the transfer of the domain name <henniez.com> to the Complainant.
According to the submissions of the representative of the Respondent, it had asked its web designer to register the domain name <henniez.com> for its organization (on February 15, 2001), and the web designer moved the domain name on April 5, 2001, to Respondentís account and the contact information in the WHOIS data base was accordingly changed. The Respondent submits that it never had been informed by the web designer about the e-mails of the Complainant. When it received the e-mail dated May 4, it sent the following reply to the Complainant:
"We purchased the domain as it is the name of our organization. Henniez is a common word. Take as much legal action as you want. We will be happy to explain to the ICANN panelists our use for the domain."
5. Partiesí Contentions
Complainant submits that (1) the domain name <henniez.com> is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
The Respondent submits that it has a legitimate interest in the domain name<henniez.com> and that it has not registered and is not using it in bad faith.
It also submits that the Complainantís request for transfer of the domain name <henniez.com> should be considered as an attempt of reverse hijacking (see section 6(4)).
6. Discussion and findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:
1) The domain name is identical or confusingly similar to a trademark or service mark ("mark") in which the Complainant has rights; and
2) the Respondent has no rights or legitimate interests in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith.
1) Confusing similarity with a mark in which the Complainant has rights
The domain name <henniez.com> consists of a combination of the Complainant's trademark HENNIEZ and the generic TLD indicator "com", which cannot be taken into consideration when judging confusing similarity. Even if the Complaintís mark is not registered as a wordmark, the term "Henniez" is the main distinguishing element of the Complainantís trademark registrations. In oral communication Complainantís mark is referred to by the term "Henniez" and in the context of the Internet the domain name "Henniez" will be understood as a reference to the trademark of the Complainant (as evidenced by the Claimantís use of the domain name <henniez.ch>).
For the Policy to apply it is sufficient that the Complainant has rights in a trademark of which the domain consists or with which it is confusingly similar. As mentioned before, the Complainant has rights in the trademark HENNIEZ in a number of countries, and at least in Switzerland his trademark is clearly a well-known mark, which belongs to the best known trademarks in the country.
The Respondent submits that the Complainant has no trademark registration in El Salvador and that its registrations of the trademark HENNIEZ in the USA had been cancelled (the last one on January 7, 2001). The Respondent does not deliver evidence for the latter submission (he refers to the general data base of the USPTO). However, for the Policy to apply, the Complainant need not have trademark rights in the USA, nor in the country of the Respondent. Even if Respondentís submission relating to the situation in the USA were correct, it did not influence the factual situation, on which the decision is based.
Considering use of the domain name on the Internet, users who may search the Complainantís website under the domain name <henniez.com> and are informed that the domain is not active, may be discouraged to search further. Should, however, the Respondent in the future use the domain <henniez.com> as reference for a website, users searching for the Complainant would no doubt expect to receive information relating to the Complainant and not to the Respondent.
The Respondent submits that it is not in the same industry as the Complainant, without giving any indication in which industry it is. However, in view of the fact that the trademark HENNIEZ of the Complainant is an extremely well-known mark in Switzerland, any use of the domain name <henniez.com> at least by Swiss users of the Internet would be expected to refer to the Complainant.
In conclusion, the domain name <henniez.com> is confusingly similar with a trademark, in which the Complainant has rights.
2) Legitimate rights or interests in respect of the domain name
The term "Henniez" is the name of a small town in Switzerland and has no meaning in the Spanish language. It cannot therefore be considered to be a descriptive term, in which the Respondent might have an interest.
The Complainant has not consented to the Respondent's use of the domain name. Simple stocking of the domain name by the Respondent does not create any right or legitimate interest in the domain name.
Furthermore, none of the circumstances listed under 4(c) of the Policy, possibly demonstrating rights or legitimate interests, are given. The Respondent does not use (commercially or non-commercially) the domain name. In his response he has submitted that HENNIEZ was chosen by one of the members of the "marketing group", of which the Respondent is said to consist, as his organizations name (each member of the group having its own name). The Respondent considers "Henniez" to be easy to remember and use and therefore to fit well in its marketing strategy. Respondent submits to still be raising funds for the domainís marketing strategy. Therefore it is currently using the domain name mainly for e-mail service.
Clearly, the Respondent has not been commonly known by the domain name. Despite all statements which are submitted to make believe that it does have a legitimate interest in the domain name, it did not submit any concrete argument relating to circumstances that might show a legitimate interest in the domain name. Actually, in many words the response does say nothing of substance. In particular, no explanations are given as to the marketing strategy which is intended to be developed or followed. There is also no need to register a term as domain name in order to use it as an e-mail address. Therefore, the Panel is satisfied that the Respondent has no rights or legitimate interests in the domain name <henniez.com>.
3) Registration and use in bad faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith..
The Respondent has not attempted to sell the domain name to the Complainant and does not actively use it (use as an e-mail address cannot be considered to be an active use of the domain name, since for using an e-mail address the respective term need not be registered as a domain name). The question is therefore, whether the passive holding of the domain name may be considered to be registration and use in bad faith, taking into account all circumstances of the present case.
In that context, it has been convincingly argued in Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003), that inaction of the Respondent is within the concept of 4a(iii) of the Policy.
(i) Registration in bad faith
Similar to the Telstra case, the Respondent has taken steps to make it difficult to determine its true identity and to make communication difficult for the Claimant.
The first Registrant of the domain name, who is said to be the web designer of the Respondent never replied to any of the Complainantís mails. When he received the first e-mails of the Complainant he at once transferred the domain name to the Respondent.
When looking at the addresses indicated by the first registrant of the domain name, as listed by Network Solutions (Annex 8 of the Complaint), these addresses give the impression to be wrong and incomplete. This impression is confirmed by the fact that the letters sent by the Complainantís Counsel to these addresses were returned, since the addresses were unknown.
If the first registrant is the web designer of the Respondent, as submitted by the Respondent, it is also most unlikely that the real name of the first registrant is "Henniez.com", as indicated by it to the first Registrar of the domain name <henniez.com>.
The submissions of the Respondent as to the legal nature of the registration of the domain name <henniez.com> and its transfer to the Respondent are contradictory. In the e-mail dated May 4, 2001, the Respondent stated "We have purchased the domain as it is the name of our organization". In the response to the Complaint, the Respondent submits that it had asked a web designer (located in Bolivia) to register the domain <henniez.com> for it and that the web designer later moved the domain to its account. If that is true, the domain was from the very beginning owned by the Respondent, even if it was not registered as owner of the domain name. Probably the Respondent was indeed from the very outset the owner of the domain name, since originally <henniez.com> was indicated as owner of the domain name, registered in Bolivia, and according to the contents of the Respondentís e-mail dated May 4, 2001, this is the name of the Respondent (even if this statement is in contradiction to the contents of the WHOIS data base). In conclusion, the submissions of the Respondent as to the history of the domain name registration <henniez.com> since its registration on February 15, 2001, and to its present ownership and the structure of the Respondent are most contradictory and make it impossible to draw any clear picture.
Be it as it may, the very fact that the original registrant of the domain name <henniez.com> indicated incomplete addresses and did not reply to the mails of the Counsel for the Complainant is a very strong indication of registration in bad faith. The simple statement of the Respondent that the web designer did not act in bad faith as he registered the domain name on Respondentís behalf, does not add any argument in favor of the Respondent. It would only mean that not the web designer but the Respondent acted in bad faith when hiding behind a wrong address indicated by his web designer. Apparently the Respondent tries to escape from any responsibility by playing around with the different persons involved in the registration and subsequent transfer of the domain name <henniez.com>, i.e. the original registrant, who according to the WHOIS data base was <henniez.com> and the present registrant, who according to the information of the Registrar is Jorge Clapes (who in an e-mail dated May 4, 2001, told the Claimant that "henniez" would be the name of his organization). In that context it is also interesting to note that the Response to the Complaint was made by a Mr. Rafael Lopes, whose e-mail address is Rafael.Lopes@Henniez.com (whilst Mr. Clapes has different e-mail addresses, not related to <henniez.com>).
Further strong evidence of registration of the domain name<henniez.com> in bad faith is the fact that the registrant (be it the web designer in Bolivia or the Respondent represented by that web designer) chose as its domain name the name of a small town in Switzerland, which is such a distinct name that it is virtually impossible to imagine that the registrant would have invented that word, ignoring the name of the Swiss town and ignoring the Complainantís business. This evidence is strengthened by the very fact that the domain name was registered shortly after the previous registration of the domain name <henniez.com> in the name of the Complainant had lapsed. The submission of the Respondent that the domain name <henniez.com> was chosen because it is easy to remember and use, is not convincing. It is true that it is recommended marketing practice to find for a new product or service a term that is easy to remember and pronounce, and the same principles make sense when choosing a domain name. However, the Panelist, who for many years was in-house counsel of a leading marketer of branded products, would from its own experience not consider the term "Henniez" to belong to this category of terms. On the contrary, "Henniez" is a complicate term, even in the French language which is spoken in the Swiss region where the town of Henniez is located. Even more it is difficult to pronoune and remember in English and Spanish (why chose the normally not pronounced letter "h" at the beginning and the double "nn" in the middle of the term for Spanish speaking persons who are supposed to easily memorize the chosen domain name?). The Respondent could have admitted that it was aware of the town of Henniez in Vaud, Switzerland and could have given plausible reasons for that choice and for the intended legitimate use of it (such as in the case City of Hamina v. Paragon International Projects Ltd, D2001-0001). Since apparently the Respondent has no legitimate business interests in the name "Henniez" he chose instead to argue that he never had heard of the name "Henniez" before registering it and that the name was chosen because it would be easy to remember and use.
For the Panelist this is further evidence showing that the Respondent forwards all sorts of non-convincing arguments instead of submitting clear and understandable facts explaining his real intentions.
These findings, with the findings under section 6(2) that the Respondent has no rights or interests in the domain name, lead the Panelist to the conclusion that the domain name <henniez.com> has been registered in bad faith.
(ii) Use in bad faith
For the Complainant to succeed, it also has to prove that the Respondent is using the domain name in bad faith.
The Administrative Panel in the Telstra case (paragraphs 7.8 to 7.10) has convincingly argued that the provisions of the Uniform Policy in Paragraph 4(b) support the assumption that inaction is within the concept of a domain name being used in bad faith. It depends therefore on all circumstances of the case whether it can be said that the Respondent is acting in bad faith.
The question therefore arises in the present case, what circumstances of passive holding other than those identified in paragraphs 4(b) (i) - (iii) of the Policy can constitute that the domain name is being used by the Respondent in bad faith.
The Panelist considers that the following circumstances justify such conclusion:
- the Complainant's trademark HENNIEZ enjoys a particularly strong reputation in Switzerland;
- the Respondent has made no commercial or other use of its domain name (us as e-mail address is no reason for registering a domain name);
- the Respondent has failed to submit any convincing argument why it has chosen the name a Swiss town, which at the same time is the registered trademark of the Complainant, and is a complicate term which has no meaning in Spanish language;
- the Respondent has failed to explain the business activity of its organization respectively of its member who is supposed to use the domain name; actually it has explained its business in a way which is most confusing and does not give any indication of the real purposes of this business respectively of the registration of the domain name <henniez.com>;
- the Respondent has failed to submit any indication about its intentions concerning possible use of the domain name <henniez.com>. It simply states: "We are in the process of making a legitimate use of the domain, without misleading the complainantís customers";
- the Respondent has not provided, and failed to correct, contact details, about its telephone and fax number, in breach of its registration agreement with the Registrar (the reasons given by the Respondent for this failure are not convincing since they would apply to every registrant of a domain name);
even if this indication alone is not strong enough to support an application of paragraph 4(b)(i) of the Policy, it is a factor to be considered, together with the other factors as mentioned before, as an active choice of the Respondent;
- in the same direction goes the fact that the original registrant of the domain name (the web designer of the Respondent) had established data under which he could not be contacted.
- Taking into account all these considerations together, and absent any substantive submission of the Respondent, it is not possible to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being infringement of Complainant's well-known mark or an act of unfair competition and infringement of consumer protection legislation.
In light of these particular circumstances, the Panelist concludes that the Respondent's passive holding of the domain name <henniez.com> satisfies the requirement of paragraph 4(a) of the Policy that the domain name is being used in bad faith by the Respondent.
In conclusion the Administrative Panel is satisfied that the domain name <henniez.com> has been registered and is being used in bad faith.
4) Reverse hijacking
The Respondent accuses the Complainant of an attempt of reverse hijacking, when asking for the transfer of the domain name <henniez.com>.
(i) It refers to a number of domain name registration of the Complainant, which are not actively used and which it considers to be mostly generic terms;
(ii) it considers that no commercial entity can claim to be the legitimate holder over a town, adding that well schooled individuals know that Henniez is a commune of the Swiss Vaud canton.
(iii) The Respondent furthermore claims that the Complainant had not objected to the registration of the domain names <henniez.org> and <henniez.net> by a Swiss citizen, being a resident of the Canton de Vaud and that this shows that the Complainant is only interested in the domain name <henniez.com> which it wants to exploit for its commercial activities.
In this context the Respondent overlooks the following:
(i) It is common practice of trademark owners to register some of their trademarks as domain names, often not only in their respective cctld but also in several gtlds. The principal reason generally is not to entertain numerous websites under these trademarks, but to prevent third parties from infringing their trademark rights by registering the respective domain names. Such practice has become common in order to fight hijacking and cannot be considered to be an act of reverse hijacking. In particular, the Respondent is not aggrieved by these registrations, which all relate to the Complainantís water business, which according to the Respondentís submission is not his business.
(ii) There cannot be any doubt that trademark law allows the registration of a geographical indication as a trademark, where this indication truly reflects the situation of the Registrant. Since the Complainant is located in the town of Henniez, and is its only manufacturer of water products, the Panelist cannot see why the Complainant should not be the rightful owner of his trademark registrations (apart from the fact that, for the purpose of the Policy, registration is evidence of rights in the trademark). As an other example within the same business category the trademark "Evian" may be referred to, which is a well-known trademark for the water business of a competitor of the Complainant, who is located in Evian, France. Furthermore, the town of Henniez has apparently not contested the registration and use of its name as domain name by the Complainant, the leading business of the town, which has made it known to the public at large, at least in Switzerland;
(iii) As concerns the registrations <henniez.org> and <henniez.net>, the Complainant submits in a reply to the Response that it has brought an action against the registrant of these domain names and that this case is now (still) pending at the Center. This submission can easily be verified by checking the Centerís listing of pending cases, where this case is listed under D2000-0638. The number also clearly indicates that the Complainant complained to the Center against these domain name registrations even before submitting the present Complaint. The Panelist did not consider any of the arguments submitted by the Complainant in his reply to the Response, which he had not requested. However, he saw no reason not to accept Complainantís information as to the action taken against the registrants of the domain names <henniez.org> and < henniez.net> which he could have found himself by checking the Centerís data base of filed cases.
(iv) The Respondent finally submits that the Complainant requests the transfer of the domain name <henniez.com> because it wants to commercially exploit it. This argument cannot be considered as an indication of reverse hijacking since, contrary to the Respondent, the Complainant has rights in the name "Henniez" (also his company name contains the word Henniez). These very reasons for which the Respondent accuses the Complainant of wrong doing when requesting the transfer of the domain name <henniez.com> are further indications of bad faith of the Respondent. The Respondent is aware of the fact that Henniez is the name of a town in Vaud, Switzerland, and that the Complainant is having a business in that town which has made its name well known and nevertheless he claims to have a legitimate interest in a good faith use of that name as domain name for his business located in Latin America. Even if it were true that only after having received the requests for transfer of the domain name <henniez.com> to the Complainant the Respondent had become aware of the Complainantís business and interest in the name Henniez, at the latest since May 4, 2001, the Respondent is aware of all the factual circumstances of the case and nevertheless it is not prepared to cease the name to the Complainant. Consequently the Respondent now claims to be the exclusive owner of a domain name, consisting of the name of a town in Switzerland, far away from his place of business, to which he has no relationship whatsoever, in the .com gtld (for global exploitation?).
In conclusion, the arguments put forward by the Respondent for an supposed attempt of reverse hijacking by the Complainant are not convincing, rather they are further indications of the Respondentís registration and use of the domain name <henniez.com> in bad faith.
The Panel decides that the Complainant has proven each of the three elements of paragraph 4a of the Policy.
The Panel requires that the registration of the domain name <henniez.com>be transferred to the Complainant.
Dr. Gerd F. Kunze
Dated: July 6, 2001