WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cegetel (SA) v. Coldwell Banker Burnet
Case No. DBIZ2001-00027
1. The Parties
The Complainant is Cegetel (SA), a French limited company, having its principal place of business at 42, avenue de Friedland, Paris, France.
The Respondent is Coldwell Banker Burnet, an entity giving an address at 270-4611 Viking Way, Richmond, British Columbia, Canada.
2. The Domain Names and Registrar
The domain names at issue are <groupecegetel.biz> and <groupecegetelsfr.biz>.
The domain name registrar is Registrars.com, having its principal place of business at Vancouver, British Columbia, Canada ("Registrars.com").
3. Procedural History
Complainant filed a STOP Complaint with the World Intellectual Property Arbitration and Mediation Center (the "WIPO Center") on December 12, 2001, in electronic format and on December 18, 2001, in hard copy. The Complainant has standing to file such a Complaint, as Complainant timely filed the required Intellectual Property (IP) Claim Form with the registry operator, NeuLevel. As an IP Claimant, Complainant noted its intent to file a STOP Complaint against Respondent. The WIPO Center transmitted an Acknowledgement of Receipt of Complaint on December 14, 2001.
On December 27, 2001, the WIPO Center transmitted to the Complainant a Request for Amendment to Complaint, requesting that Complainant specify the Mutual Jurisdiction to which it would submit for purposes of any appeal pursuant to Rule 3(c)(xii) of the Rules for Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP Rules). On January 4, 2002, Complainant submitted the required amendment.
The WIPO Center verified that the Complaint as amended satisfied the formal Requirements of the Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP), the Rules for Start-up Trademark Opposition Policy for <.biz>, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the STOP Rules) and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for <.biz> (the WIPO Supplemental STOP Rules). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the STOP Policy, the STOP Rules, and the WIPO Supplemental STOP Rules. The required Panel fees were paid on time and in the required amount by Complainant.
On January 9, 2002, a Notification of STOP Complaint and Commencement of Administrative Proceeding was transmitted to the Respondent (with Copies to the Complainant, Registrars.com and ICANN), setting a deadline of January 29, 2002, by which the Respondent could file a Response to the Complainant. The Commencement Notification was transmitted to the Respondent by email to the email addresses indicated in the Complaint and specified in Registrars.com's records. In addition, the Complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the STOP Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On January 31, 2002, not having received a formal Response, the WIPO Center sent the Respondent a Notification of Respondent Default.
On March 13, 2002, having received his Statement of Acceptance and Declaration of Impartiality, the WIPO Center appointed M. Scott Donahey to serve as Panelist in this matter and forwarded to the parties a Notification of Appointment of Panel.
4. Factual Background
Complainant is the holder of French trademarks GROUPE CEGETEL and GROUPE CEGETEL SFR. Complainant produced certifications of such registrations, dated August 24, 2001, showing a filing date of March 19, 2001. Complaint, Annex 3.
Respondent registered the domain names at issue, but when Complainant attempted to contact Respondent by email, he found that the email address listed in Whois was that of a company, namely, dollardomainname.com. Apparently where a registrant submits incomplete or corrupted information, the domain name is transferred to dollardomainname.com to hold until such time as the information can be correctly supplied. Complaint, Annex 4.
Dollardomainname.com gave Complainant assurances that the registry would be corrected to show Complainant as owner of the domain names at issue, but this has not been done.
5. Parties’ Contentions
Complainant contends that the domain names at issue are identical to trademarks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain names, and that the domain names have been registered in bad faith.
Respondent does not contest Complainant's allegations.
6. Discussion and Findings
Paragraph 15(a) of the STOP Rules provides that the Panel is to "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."
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical 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; and
(3) the domain name has been registered or is being used in bad faith.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property IP claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the .biz generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant's Rights in the Mark
Complainant has rights in the marks GROUPE CEGEGEL and GROUPE CEGETEL SFR as demonstrated by its registered trademarks.
The domain names at issue are identical to Complainant's trademarks.
Rights or Legitimate Interests in Respect of the Domain Name at Issue
Respondent makes no assertion of rights or legitimate interests in respect of the domain name at issue. Where Complainant asserts that Respondent has no rights or legitimate interests and where Respondent fails to contest such assertions, the Panel is entitled to infer that Respondent has no such rights or interests. See, e.g., Alcoholics Anonymous World Services v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011.
Bad Faith Registration or Bad Faith Use
Under the STOP, Complainant must only show either bad faith registration or bad faith use, not both as are required under the UDRP. Here, as in most cases likely to be brought under the STOP, there has been no use. The question arises, how is the Complainant to show bad faith registration.
The examples of bad faith registration or bad faith use set out in the STOP are illustrative only, and are not intended to be comprehensive. STOP, paragraph 4(b) ("in particular but without limitation"). Here, Respondent has registered two domain names, each of which is identical to a separate, similar trademark of Complainant, each of which denotes the very business name under which Complainant conducts business. In such a case, the Panel believes that the Respondent has registered the domain names at issue in order to prevent the Complainant from reflecting the mark in a corresponding domain name. STOP, paragraph 4(b)(ii). Moreover, the incomplete or false contact information listed by the Respondent also supports a finding of bad faith.
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are identical to the trademarks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names, and that Respondent has registered the domain names in bad faith. Accordingly, pursuant to paragraph 4(i) of the STOP, the Panel requires that the registration of the domain names <groupecegetel.biz> and <groupecegetelsfr.biz> be transferred to the Complainant.
M. Scott Donahey
Dated: March 20, 2002