WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prisma Presse v. BUYDOMAINS.COM
Case No. D2001-1073
1. The Parties
The Complainant is Prisma Presse, a French company (commercial partnership) registered with the Registry of Commerce and Companies of Paris, having registered offices at 6, rue Daru Ė 75008 Paris, France.
The Respondent in this administrative proceeding is BUYDOMAINS.COM, 4936 Fairmont Ave. Ste 200 Bethesda MD 20814 6022, USA.
2. The Domain Name and Registrar
The domain name at issue is <geomagazine.com> and the corresponding registrar with whom the domain name is registered is Alldomains.com, 2261 Morello Ave, Suite C, Pleasant Hill, CA 94523, USA.
3. Procedural History
The Complaint was submitted via e-mail on August 28, 2001, and in hard copy on August 29, 2001, to the World Intellectual Property Organization Arbitration and Mediation Center (hereinafter the "WIPO Center").
On September 3, 2001, the WIPO Center requested the Registrar, Alldomains.com, pursuant to Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Rules"): (1) to confirm that a copy of the Complaint had been sent to Alldomains.com by the Complainant; (2) to confirm that the domain name at issue was registered with Alldomains.com, (3) to confirm that the person identified as the Respondent is the current registrant of the domain name; (4) to provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the registrarís Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact); (5) to confirm that the Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy") applies to the domain name, and (6) to indicate the current status of the domain name.
On September 4, 2001, Alldomains.com replied that: (1) Alldomains.com was the Registrar of the domain name registration; (2) the Registrantís contact information resulting from the WHOIS database were: geomagazine.com Domain for sale at www.BuyDomains.com 4936 Fairmont Ave. Ste 200 Bethesda MD 20814-6022.
Alldomains.com also provided the full contact details as requested, confirmed that the Policy applies to the domain name <geomagazine.com>, and that the domain name registration status is "Active" and is for sale by buydomains.com.
In accordance with Paragraph 2(a) of the Rules, the Complaint was properly notified on September 5, 2001 (which is also the date of commencement of the administrative proceeding), to the Respondent who did not file any Response and was notified of his default on October 2, 2001. On October 8, 2001 the Parties were informed that in accordance with Paragraph 6(f) of the Rules, an Administrative Panel consisting of a single Member had been appointed. The sole Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence and the date scheduled for the issuance of the Panelís decision was set for October 22, 2001.
In light of the above and according to the documents filed with the Panel, the Complaint appears to have been filed in accordance with the requirements of the Rules and of the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter the "Supplemental Rules").
The Panel finds that the payment was properly made and agrees with the WIPO Centerís assessment concerning the Complaintís compliance with the formal requirements.
Finally, in accordance with Paragraph 11 of the Rules, since the Parties to the present administrative proceeding have not agreed otherwise, and since the Registration Agreement that relates to the domain name in question does not specify otherwise, the language of the administrative proceeding will be the language of the relevant Registration Agreement, i.e. English.
4. Factual Background
According to the Complaint, the Complainant is a French commercial partnership. The Complainant is the owner of several GEO formative trademarks as follows:
"- GEO, a French trademark registration No. 1 457 064 dated August 18, 1989 covering communication notably in class 38 and all printing products including newspaper, books, magazines, periodical publications, reviews in class 16;
- GEO, a French trademark registration No. 95/587179 dated September 17, 1999 covering notably telecommunications in class 38 and newspapers, periodical publications, magazines, review, books in class 16;
- GEO MAGAZINE Díexception, a French trademark registration No. 97 700 446 of October 21 1997, covering notably telecommunications in class 38 and books, periodical publications, magazines in class16"
The aforesaid trademarks are used as the title of a renowned magazine named GEO. This magazine was first published in France in 1979 and, according to the Complainant, "due to the quality of its articles, it has a strong reputation within the public, with approx. 5 000 000 readers and 450 000 edition. GEO magazine has also an international reputation: the French version is distributed in Belgium, Germany, Switzerland, Canada, Italy, Portugal, Greece, Morocco, etc.. . Four different versions of the magazine are published: French, German, Spanish and Russian versions".
Furthermore, according to the Complaint, the Complainant "owns the following domain names: <geotravel.fr>, <geo.presse.fr>, <geo-mag.com>, <geoworldmusic.com>, <geo-guides.com>, <geo.tm.fr>, <geotourisme.net>, <geotourisme.org>, <geotourisme.com>, <geo-guides.tm.fr>, <geo-guide.net>, <geo-mag.org>, <geo-guides.org>, <geomagazine.fr>, <géoworldmusic.com>, <géotourisme.org>, <géotourisme.net>, <géotourisme.com>, <géo-mag.org>, <géo-mag.com>, <géo-guides.org>, <géo-guides.com> and <géo-guides.net>".
Under the Complaint, "Prisma Presse has engaged several millions francs in the Internet to develop its activity under its trademarks GEO". Prisma Presse has also registered several GEO formative trademarks:
- GEO COLLECTION a French trademark registration No. DP325345 of December 1, 1991 in classes 16,35,38 and 41;
- GEO GUIDE a French trademark registration No. 1602483 of March 28, 1990 in classes 16,35,38,39 and 41;
- GEO TELE a French trademark registration No. 93 72 622 of June 17 1993 in classes 16, 35,38 and 41;
- GEO VISION a French trademark registration No. 93 472 624 of June 17 1993 in classes 9, 35 and 38;
- GEO VIDEO a French trademark registration No. 93 472 623 of June 17 1993 in classes 16, 35,38 and 41;
- GEO MUSIQUE a French trademark registration No. 94 500 102 of January 1994 in class 9,16,35,38 and 41
All the aforementioned statements are uncontested and most of them are supported by ample documents. In the light of the foregoing, the Panel takes the view that Complainantís statements are a fair representation of Complainantís activities.
5. Partiesí Contentions
According to the Complainant, the disputed domain name is confusingly similar to a trademark in which the Complainantís has rights for the following reasons:
"The domain name <geomagazine.com> is totally confusingly similar to the registered trademarks "GEO" owned by the Complainant. The domain name consists of the trademarks of the Complainant to which the general noun "magazine " is added. The addition of the word "magazine" to "GEO" mark adds to the likelihood of confusion since GEO has been registered and is used for a notorious and world wide magazine "GEO". The domain name <geomagazine.com> is also totally confusingly similar to the registered trademark "GEO magazine díexception" owned by the Complainant. The domain name consists of the trademark of the Complainant without the term "díexception". The suppression of the term "díexception" does not permit the domain name to be distinguished from the trademark. The name by which the domain name will be identified is GEO magazine".
The Complainant also alleges that Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint because:
"The Respondent is not a licensee of the Complainant, and is, in no way, authorised to use Complainantís trademarks "GEO" and "GEO magazine díexception". Furthermore, the Respondent, does not own any trademark including the word "GEO". The Complainant is consequently the sole owner of the above mentioned trademarks and is the only one authorised to use said trademarks. Consequently, the Respondent, which has no link of any nature with the Complainant does not have any legitimate interest in using the domain name <geomagazine.com>.
Finally, the Complainant alleges, on the basis of several concurring arguments, that the domain name <geomagazine.com> should be considered as having been registered and used in bad faith. In particular, the reasons alleged by the Complainant to support its view are the following:
- GEO is a worldwide renowned magazine with a strong reputation. Therefore, the Respondent could not ignore the existence of the GEO magazine;
- Respondentís name and address do not appear on the Registrarís database. The Registrarís database mentions that the Registrant is "geomagazine.com" which, according to the Complainant, clearly appears to be a pseudonym. This shows that Respondent took deliberated steps to hide its real identity. From the above arguments, Complainant concludes that Respondent perfectly knew Complainantís trademark rights;
- Respondent is aware of the fact that Complainant considers its registration as an infringement in view of the communications sent to Respondent and attached to the Complaint as Annex E;
- Respondent offers for sale the domain name <geomagazine.com> at a minimum quoted price "which will be more than 650$, and could be as much as 10,000$". This latter circumstance is clear evidence that Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant, for valuable consideration, in excess of its documented out-of-pocket costs directly related to the domain name.
Respondent did not submit any response and should therefore be considered in default. The Panel, in compliance with Paragraph 14 of the Complainant, shall therefore proceed to a decision on the Complaint and shall draw such inferences therefrom as it considers appropriate.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of the following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service 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 was registered and is being used in bad faith.
1) The Panel believes that the domain name at issue <geomagazine.com> is confusingly similar to a trademark in which the Complainant has rights.
Complainant asserts that "The domain name<geomagazine.com> is totally confusingly similar to the registered trademarks GEO owned by the Complainant. The domain name consists of the trademarks of the Complainant to which the general noun magazine is added. The addition of the word magazine to GEO mark adds to the likelihood of confusion since GEO has been registered and is used for a notorious and world wide magazine GEO". Furthermore, the Complainant maintains that the domain name <geomagazine.com> is also confusingly similar to the Complainantís trademark GEO MAGAZINE DíEXCEPTION. The suppression of the term "DíEXCEPTION" does not avoid the likelihood of confusion between the disputed domain name and the Complainantís trademark.
The Panel shares the Complainantís view. The distinctive part of the disputed domain name lies on the GEO component, while the term MAGAZINE is a generic term. Therefore, the addition of the term MAGAZINE to the GEO component is not sufficient to avoid a likelihood of confusion between the disputed domain name and Complainantís GEO trademark.
The similarity between the domain name at stake and the Complainantís trademark GEO MAGAZINE DíEXCEPTION is even more brazenly obvious. In fact, in this case, <geomagazine.com> is a combination of the two first components of the Complainantís trademark. The fact that the domain name does not include also the third component of the Complainantís trademark does not exclude the similarity with the GEO MAGAZINE DíEXCEPTION mark. Indeed, the term DíEXCEPTION is an adjective specifying a quality of the GEO MAGAZINE and is thus deprived of distinctive character.
Therefore, the Panel is satisfied that the first condition is met.
2) The Panel finds that the Respondent has neither rights nor legitimate interests in respect of the domain name.
It is a consolidated principle that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondentís rights or legitimate interests in respect of the domain name according to Rule 4 (a) of the Policy is quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one. Accordingly and in line with other prior decisions, the Panel holds that it is sufficient that Complainant shows a prima facie evidence in order to shift the burden of prove on Respondent (Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553, Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467).
The Complainant alleged several circumstances that, in the Panelís view, create a sufficient prima facie evidence that justifies an inversion of the burden of proof.
In particular, according to the Complaint, Respondent is not a Complainantís licensee and was never authorized to use Complainantís trademarks GEO and GEO MAGAZINE DíEXCEPTION. Furthermore, Respondent does not own any GEO formative trademark.
Respondent might have rebutted the above circumstances. However, Respondent failed to file any response and thus, the Panel must conclude that Complainantís allegations are sufficient to establish that Respondent has no rights or legitimate interests in the domain name <geomagazine.com>.
In light of the foregoing, this Panel is satisfied that also the second condition is met.
3) This Panel finds that the domain name was registered and is being used in bad faith.
In order to reach this conclusion, the Panel examined separately two issues:
1) whether or not bad faith existed when the domain name was registered; and
2) whether or not the domain name was used in bad faith.
As far as the first issue is concerned, the Panel finds that Complainant has given enough and supported evidence of the fact that the domain name <geomagazine.com> was registered in bad faith.
The first argument in support of Complainantís assertion of Respondentís bad faith is that GEO is a worldwide renowned magazine and that Respondent could not ignore the existence of the GEO magazine. Accordingly, "the domain name <geomagazine.com> has been therefore registered and is used in bad faith".
This Panel does not share Complainantís view.
According to the documentation enclosed to the Complaint and to the Complainantís assertions, the GEO magazine was first published in 1979 and since then, has gained 5,000,000 readers and 450,000 editions. The French version of the magazine is distributed in Belgium, Germany, Switzerland, Canada, Italy, Portugal, Greece, Morocco, etc.. . The magazine is published in four different versions, namely French, German, Spanish and Russian. Finally, Complainant alleges to have destined several millions francs to develop its activity under its GEO trademark on the Internet.
Taking into account all the above, the Panel is satisfied that GEO is a renowned magazine in France and in several other countries, including some non-European countries such as Canada and Morocco. However, it is the Panelís belief that the above does not necessarily entail that Respondent "could not ignore the existence of the GEO magazine" Ė as stated by the Complainant - and hence, that the domain name <geomagazine.com> was registered and is used in bad faith. In fact, Respondent is located in the US and nowhere in the Complaint or in the documents supplied by the Complainant it appears that the GEO magazine circulates in this country either in an English version or in one of the other published versions mentioned above. The country closer to the US where the French version of the GEO magazine circulates appears to be Canada but, once again, the fact that the magazine is sold in this country does not automatically mean that it is well known or at least known to people living in the US.
In the light of the foregoing, this Panel cannot draw the conclusion that the domain name <geomagazine.com> was registered and is being used in bad faith based on Complainantís first argument.
The second argument in support of Respondentís bad faith is that "the address of the Respondent does not appear on the registrarís database, nor its name. The registrarís database mentions that the Registrant is <geomagazine.com>, which appears clearly to be a pseudonym. This clearly shows that Respondent has taken deliberate steps to hide its real identity".
This Panel agrees with the Complainantís statement that the way the Registrantís information is displayed in the Whois database is an evidence that Respondentís tried "to hide its real identity". According to the Whois document attached to the Complaint, the Registrant of <geomagazine.com> is: "<geomagazine.com> Domain for sale at www.BuyDomains.com 4936 Fairmont Ave. Ste 2000 Bethesda MD 20814-6022US". It is crystal clear that "geomagazine.com" is not the Registrantís name but is the disputed domain name itself. Furthermore, the specification "Domain for sale at www.BuyDomains.com 4936 Fairmont Ave. Ste 200 Bethesda MD 20814-6022", contained in the space reserved to the Registrantís data in the Whois document is a mere promotion of the offer for sale of the domain name <geomagazine.com> at the www.BuyDomains.com web site.
Therefore, this Panel shares the Complainantís view that "the name of the Respondent does not appear on the registrarís database" and, in the absence of any contrary evidence, this Panel agrees with Complainant when it indicates BUYDOMAINS.COM as the real Registrant . The following circumstances support this belief: (i) as clearly demonstrated by Complainant, the domain name <geomagazine.com> is offered for sale at the Internet address www.BuyDomains.com; (ii) when on July 17, 2001, the Complainantís lawyers sent a letter to Respondent informing of the Complainantís trademark rights, and challenging the registration of the domain name <geomagazine.com>, and requesting the immediate cessation of the offering for sale of such domain name as well as the transfer of its ownership to Complainant, the Respondent failed to reply; and (iii) when the WIPO Center notified the Complaint and the commencement of Administrative Proceeding as well as the Respondentís default to the Respondentís e-mail addresses displayed in the WHOIS database document, it received automated replies from the address: firstname.lastname@example.org reading as follows: "If you are seeking a domain from BuyDomains.com brokerage please go to http://www.buydomains.com/ and look up the domain where it says "Premium Domains". If it is unpriced please fill out the "request price" form that is linked to the name. If you still canít find the name you wish to buy please email email@example.com with pertinent details. Best regards";
The fact that BUYDOMAINS.COM never replied to the July 17, 2001, letter sent by Complainantís lawyers denying to be the Registrant of <geomagazine.com> and never contested the sending of a Complaint whereby it was indicated as the Respondent and thus, as the Registrant of the domain name at stake should be considered, in this Panel view, as an indirect admission of BUYDOMAINS.COM being the effective Registrant of <geomagazine.com> (and Respondent in this case) despite the misleading indications contained in the relevant Whois database.
This Panel agrees, in line with other prior decisions, that "Respondentís providing false contact information, in an obvious attempt to remain elusive, is an indication of bad faith" (Nintendo of America Inc. v. Berric Lipson, WIPO Case D2000-1121, which further specifies that "Even though this particular instance of bad faith is not specifically enumerated in the Policy, the Panel believes the non-exclusive nature of para 4 (b) (i-iv) and Rule 15 allow the Panel to find bad faith in a case such as this".
However, the Panel believes that providing false contact information although being an indication of bad faith should not be considered sufficient per se (i.e. if it is the only argument in support of Respondentís bad faith made by Complainant) to establish that the domain name was registered and is being used in bad faith
Thus, the Panel needs to examine whether or not Complainantís third and last argument may be considered decisive to establish the necessary Respondentís bad faith under Paragraph 4(a)(iii) of the Policy.
Complainant asserts that "the Respondent offers for sale the domain name <geomagazine.com> at a minimum quoted price "which will be more than 650$, and could be as much as 10,000$". It is therefore clear evidence that the Respondent has registered the domain name primarily for the purpose of selling to the complainant or to a competitor of the complainant, for valuable consideration, in excess of its documented out-of-pocket costs directly related to the domain name". This statement is supported by adequate evidence.
Under Paragraph 4 (b) of the Policy, "the following circumstance, in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name".
From the documentation enclosed to the Complaint it results that <geomagazine.com> is indicated as one of the "Premium Names" offered for sale at the web address www.buydomains.com. A special form named "Request Price for geomagazine.com" is provided specifying, "The minimum quoted price will be more than $650, and could be as much as $ 10,000. (Ö) You will receive a price quote within 3 business days by email or telephone. This is not an auction. The quoted price is a one-time fee only. You will be able to purchase this domain name on the spot by credit card at its quoted price. Due to high demand and decreasing availability, the prices of Premium Domains are rising weekly. (Ö) To estimate the value of a domain, consider what the value of one customer is, including its lifetime residual and all the referrals the customer will provide. Multiply this number by the number of customers that might sign up as a result of finding you because of your new premium URL. For example, if each customer is worth $1,000 dollars over its lifetime, and your new site attracted 50 new customers over the life of your company, then the domain name could be valued at $50,000 to your business. If your premium URL attracted 10,000 new customers and they were valued at only $5 each over their lifetime then you would come up with $50,000 valuation. Regardless of how many additional customers this name attracts to your company, it should hold its resale value and in all likelihood grow more valuable over time".
In this Panelís view, the aforesaid documentation, along with the statement contained in the Whois search result that <geomagazine.com> is a "Domain for sale at www.BuyDomains.com" are sufficient elements to establish, in accordance with the Complainantís assertion, that the domain name <geomagazine.com> has been registered for the primarily purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.
Having deemed satisfied the first condition, the Panel must now establish whether or not there has been use in bad faith.
The Complainant is silent in this regard. However, this Panel, in compliance with the powers conferred by Paragraph 14 of the Rules, believes that the continuous unsolicited offer for sale of <geomagazine.com> on the Respondentís website, accompanied by the promotion of such sale through the Whois search result which also redirects to the buydomains.com website, the persons interested in the domain name <geomagazine.com>, constitutes evidence of current use and of use bad faith.
In light of the foregoing, the Panel is satisfied that also the third condition is met.
In light of the foregoing, the Panel finds that Respondentís disputed domain name <geomagazine.com> is similar to a Complainantís trademark, that Respondent has no legitimate rights or interests in the disputed domain name, and that Respondent has registered and made use of the domain name in bad faith. Accordingly, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <geomagazine.com> be transferred to the Complainant.
Dated: October 22, 2001