WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Société Softissimo v. Owner

Case No D2001-1105

 

1. The Parties

The Complainant in this administrative proceeding is Société Softissimo, a company organized under French law, located at 7, rue Auber, 75009 Paris, France, hereinafter the "Complainant", and represented by Iteanu and Associates, with offices 166, rue Faubourg Saint Honoré, 75008 Paris, France.

The Respondent is referred to as OWNER, with as address GPO BOX: 8558, Hong Kong, SAR China, hereinafter the "Respondent".

 

2. Domain Name and Registrar

The domain name at issue is <reverso.com>, hereinafter the "Domain Name". The registrar is Tucows.com Inc. and the Domain Name was registered on May 29, 2000.

 

3. Procedural History

The WIPO Arbitration and Mediation Center, hereinafter "the Center" received the Complainant's Complaint by electronic version on September 6, 2001, and the hardcopy with the exhibits on September 10, 2001.

On September 11, 2001, the Center transmitted, via email, to Tucows.com Inc. a request for Registrar Verification relating to this case. On September 12, 2001, the Registrar transmitted, via email, to the Center its Verification Response, confirming: that a copy of the complaint has been sent to it, that the Domain Name is registered with it, that the Respondent is the current registrant of the Domain Name. It also confirmed that the Uniform Domain Name Dispute Resolution Policy is applicable and that the Domain Name registration status is "on hold" for the duration of the dispute.

On September 13, 2001, the Center verified that the Complaint satisfies with the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rulesfor Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy(the Supplemental Rules).

On the same day, the Center transmitted to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding and a copy of the Complaint via post/courier and email in accordance with the following contact details:

Registrant, administrative contact, billing contact, technical contact:

OWNER
GPO BOX: 8558
Central
Honk Kong, 0000
HK

Tel: 852 2546 2625
Email: dns_admin@c-a-s-h.com

The Center also issued the Notification of Complaint and Commencement of the Administrative Proceeding and a copy of the Complaint in accordance with the details as previously appearing in the WHOIS database:

Registrant, administrative contact, billing contact, technical contact:

OWNER
27026 nichols sawmil rd,
Magniola
TX 77355
US

Tel: 281 356 41 04
Email: webmaster@commbine.com
and postmaster@reverso.com

The Center advised that the Response was due by October 3, 2001

On September 20, 2001, the Center received the Respondent's response by e-mail. On September 24, 2001 the Center issued a Response Deficiency Notification, to the e-mail address of both parties.

On September 25, 2001, the Center received the amended Response from the Respondent by e-mail, and on October 1, 2001 by hardcopy.

On October 2, 2001 the Center transmitted by e mail the Acknowledgement of Response Receipt to both the Complainant and to the Respondent according to the new contact details it provided in its Response, namely:

Wong Kam, Steven (Manager Itdept)
8B Hang Lunbg House, 184-192 Queens Rd, Central

Tel: 852 2543 7420
Fax: 852 2854 0274
Email: stevenkw@c-a-s-h.com

On October 12, 2001, in view of the Complainants designation of a single panelist, the Center invited Geert Glas to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.

On October 15, 2001, having received Geert Glas' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted a few days later on October 19, 2001, Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail to the parties, in which Geert Glas was formally appointed as the Sole Panelist. On the same day, the Center transmitted to the Sole Panelist the Case File and the electronic format of the Complaint. The projected decision date was November 2, 2001.

On October 15, 2001, the Center received from the Complainant by email and on October 17 by hardcopy, an additional reply and a request to submit same to the Panel.

The Administrative Panel finds that it is not in the interest of the parties nor is it fair to the decision making process to refuse the submission of both the Response and the additional reply.

The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

 

4. Factual Background

The Complainant is a company created in 1986. It is the owner of the French trademark "REVERSO" that was registered on December 1997 for goods and services of classes 9, 38, 41 and 42.

The Complainant uses the trademark REVERSO to designate linguistic software and other services related to linguistic engineering and training.

The Complainant is the owner of the domain name <reverso.net> which resolve to a website where the Complainant provides free electronic automated online translation services.

REVERSO has become, through the above mentioned website and through the goods and services offered by the Complainant, a well known trademark as evidenced by the exhibits provided with the Complaint.

The Domain Name was registered on May 29, 2000.

In February 2001, a certain S. Shunit offered to sell the Domain Name to the Complainant for $US 18,500. It appears from this e-mail that Mr Shunit sent a copy of his offer to jeff bhavnanie whose address is jeff@commbine.com

At that time, according to the print out of the WHOIS database dated from June 22 2001, the registrant was:

OWNER
27026 nichols sawmill rd.
Magnolia, TX 77355
US

The email address for any contact was then: wemaster@commbine.com

The domain servers of the Domain Name were NS.COMBINE.COM and NS2.COMMBINE.COM.

When the Complaint was filed, a printout of the WHOIS database, dated September 5, 2001, was attached. It appears that the identity and address of the registrant then is identical to the situation which the Administrative Panel is currently assessing:

OWNER
GPO BOX: 8558
Central
Hong Kong, HK 0000
HK

The email address for any contact is: dns_admin@c-a-s-h.com

The domain servers for the Domain Name are NS.BIGDRAGON.COM and NS2.BIGDRAGON.COM.

The Domain Name is currently linked to a portal site.

 

5. Parties Contentions

a. Complainant

The Complainant contends that the Domain Name is similar to its trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It affirms that the Respondent did not file or register any trademark identical or similar to the Domain Name and that the website related to the Domain Name is a fake portal site.

The Complainant contends that the Respondent has registered the Domain Name in bad faith. He contends that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant as evidenced by the purchase proposition in the emails provided in the exhibits. It contends also that the Respondent is giving false contact details in breach of section 2(a) of the UDRP to which the Respondent has agreed at the time of registration. According to the Complainant, the Respondent is the same individual or entity as the registrant mentioned previously in the WHOIS database as established in Texas, and does not disclose its real identity. Moreover the Complaint contends that the Domain Name is not being used in connection with a bona fide offering of goods or services.

b. Respondent

The Respondent explains that the Domain Name was transferred to him by Combine.com LLC in lieu of payments for services provided. It further states that it has never been in contact with the Complainant.

It contends, also, that the Complainant has no right to claim the Domain Name since the word reverso is generic and five identical trademarks are registered in the United States..

Respondent also corrects its address (that it is 8B Hang Lung House, 184-192 Queens Rd, Central) and indicates that its General Manager, Steven Wong Kam, is acting on its behalf.

c. Complainant's Reply

The Complainant contends that there is no existing company established at the address mentioned in the response; that there is no entity called OWNER, RK Group; and that none of the company names mentioned in the Response exists.

Therefore, the Complainant argues that Respondent is in breach of the registrant's obligations under section 18 of the contract with the registrar and is providing a false identity, which is an element of bad faith.

It underlines that the Respondent did not demonstrate any legitimate right or interest.

According to the Complainant, the Domain Name has never been transferred and the Respondent tries in vain to distinguish itself from the first registrant.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint 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."

Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and,

(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,

(3) that the Domain Name has been registered and is being used in bad faith.

a. Identity or confusing similarity

The Domain Name is identical to the Complainant's prior trademark REVERSO. The domain name duplicates, in its entirety, the Complainant's trademark.

The Administrative Panel, therefore, finds that the Domain Name is identical to the Complainant's trademark and finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

b. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name corresponding to its trademark.

There is no indication that the Respondent has registered or used the name REVERSO as a trademark, or has ever been known by this name.

In its Response, the Respondent failed to show or invoke any element or fact that could be considered as a legitimate right or interest.

Therefore the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

c. Registration and Use in Bad Faith

1. The Complainant's trademark is widely used as evidenced by various exhibits provided by the Complainant that show: a large media coverage, awards granted to the products and services of the Complainant, printouts of websites featuring the products designated by the Complainant's trademark and commenting on their popularity, major European and American portals containing references to the trademark, results of search engines with the trademark as keyword, etc.

Therefore, it must be taken into consideration for the present decision that the Complainant's trademark is well-known and consequently may have been known by the first registrant and by the current registrant, (if the alleged transfer claimed by Respondent actually occurred) when registering and when acquiring the Domain Name.

2. The Panel finds that the Domain Name has been registered in bad faith.

Indeed, if the registrant was the one referred to in the printouts of the Registrar's Whois database provided by the Complainant, it was an entity called OWNER established in Texas with email address at webmaster@commbine.com.

The Domain Name was then hosted by <ns.commbine.com> and <ns2.commbine.com> with IP numbers 209.61.129.1 and 209.61.129.2.

The first element of bad faith registration, is further established by research made by the Complainant with <www.infospace.com>. The research shows that the telephone number and the address provided in the Whois database are those of Mr. Shunit, not Mr. Kam, who claims to be the General Manager of OWNER. The registrant has registered the Domain Name under a false identity in breach of article 2(a) of the Policy and section 18 of the contract with the register. As previously stated in City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0001, the registration of a domain name under a false identity is an element proving that the domain name was registered or maintained in bad faith within the meaning of 4(a)(iii) of the Policy.

Secondly, in February 2001, this Mr. Shunit, who may at this stage be considered as the physical registrant of the Domain Name, proposed to the Complainant to sell the Domain Name for US$18,500.

This email was sent to Mr. jeff bhavnanies e-mail address jeff@commbine.com in cc.

The above elements, taken together, lead the Panel to conclude that the Domain Name has been registered in bad faith.

Before considering the question whether the Domain Name has also been used in bad faith, it is important to note the followings elements:

The above-mentioned Domain Name, <commbine.com> has, as established by a printout of the Registrar's Whois in June 2001, as registrant an entity called OWNER with the same address in Texas, the same email address, domain name server and IP address as that of the registration for the disputed Domain Name. When searching, as the Complainant did, and as the Panel verified, with Network Solutions Whois database information about the IP addresses and the server of those two domain names, the result shows that the coordinator of the domain names server is: Sarid Shunit

Commbine.com LLC
27026 nichols sawmill Rd
Magnolia , TX 77355

It is also relevant to underline that both webpages related to the Domain Name disputed in this proceeding and to <commbine.com> are, as evidenced by the exhibits provided by the Complainant, identical.

3. The Respondent affirms it has acquired the Domain Name from commbine.com LLC and pretends it has a mere commercial relationship with this company.

However, the disturbing picture which emerges from the facts is a clear one: the current registrant is the same as the original registrant, but is attempting to portray itself as a non-related entity to avoid any bad faith classification, which may jeopardize its good faith and its ownership of the Domain Name.

Firstly, it appears from the Registrar's Whois database that on September 2, 2001, the registrant of the Domain Name underwent a modification. The owner at that moment became OWNER GPO BOX 8558, Honk Kong, with as email address dns_admin@c-a-s-h.com.

The domain servers are <ns.bigdragon.com> and <ns2.bigdragon.com> with IP numbers 209.61.129.3 and 209.61.129.4.

The domain name bigdragon.com is registered with the same address, email address, domain server and IP address as the Domain Name. However, while the above-mentioned <commbine.com> has also changed registrant and is now registered with the same address and email contact as the Domain Name, it has kept <ns.commbine.com> as domain server.

Secondly, there are six domain names that lead to the same portal:

-<commbine.com>, <reverso.com>, <bigdragon.com> are registered in the name of OWNER, PO BOX 8558, 0000HK with as email contact: dns_admin@c-a-s-h.com

-<bhavnanie.com> is registered for C-A-S-H, PO BOX 5885, 0000HK with as email contact: dns_admin@c-a-s-h.com.

-<sarid.com> is registered in the name of OWNER with the same address in Texas as the first registrant of the Domain Name, but with as billing, administrative, technical contacts OWNER PO BOX 8558 in Honk Kong

<shunit.com> is registered in the name of Sahar Sarid

Thirdly, it appears from research on <www.arin.net> that the IP numbers of all those domain names, leading all to the same portal, belong to :

Shunit
27026 Nichols Sawmill Rd
Magnolia, TX 77355.

Fourthly, the trace-route shows that the server hosting the Domain Name (as well as <commbine.com>) is not located in Hong Kong but in Texas.

Lastly, it appears that from research on Googles, that Jeff Bhavnanie who was somehow involved in the sale of the Domain Name to the Complainant and whose internet address is jeff@commbine.com, also has an address at jeff@c-a-sh.com which is similar to the contact address of the Respondent located in Hong Kong. The Domain Name <c-a-s-h.com> is apparently owned by the Respondent with address at PO BOX 8558, HK0000

In the view of the Panel, it appears from the above mentioned facts that it is highly questionable if the Domain Name has ever been transferred from its first registrant to a third party as claimed by the Respondent.

In any event, the above-mentioned facts constitute evidence that the Respondent is closely linked to the entity which first registered the Domain Name and has deceivingly sought to conceal these links as well as its real identity.

The Panel finds, therefore, that the Domain Name is being used in bad faith.

Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is satisfied.

 

7. Decision

In light of the foregoing, the Administrative Panel decides that the Domain Name registered by the Respondent is identical to the Complainant's trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondents Domain Name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4(I) of the Policy, the Administrative Panel requires that the registration of the Domain Name <reverso.com> be transferred to the Complainant.

 


 

Geert Glas
Sole Panelist

Date: November 2, 2001