WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SAGEM S.A. v. Tesh
Case No. D2002-0500
1. The Parties
The Complainant in this administrative proceeding is SAGEM S.A., 6 avenue díIéna, F-75016 Paris, France.
The Respondent is Tesh, 6 Fleeman Grove, Nottingham, Notts NG2 5BH, United Kingdom.
2. The Domain Name and Registrar
The domain name in dispute is <sagemwa3050.com>.
The Registrar with which the domain name is registered is Tucows Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on May 29, 2002, by e-mail and on June 4, 2002, in hardcopy.
On May 30, 2002, the Center sent the corresponding Request for Registrar Verification in connection with this case to Tucows Inc. On that same day the Registrar's verification response confirmed that the Registrant was TESH and that the domain name <sagemwa3050.com> was in "locked" status.
On June 5, 2002, after having verified whether the Complaint was satisfying the formal requirements, the Center notified by e-mail and courier the Commencement of Administrative Proceeding to the Parties, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
On June 27, 2002, the Center issued by e-mail the Notification of Default to the Respondent for having failed to submit a response to the Complaint within the deadline granted.
On July 10, 2002, the Center proceeded with the appointment of the Administrative Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment of the undersigned as sole panelist in accordance with Paragraph 6(f) of said Rules, after the latter had signed and forwarded to the Center on July 9, 2002, a statement of acceptance and declared his impartiality and independence in this matter.
Transmission of the file to the Sole Panelist was made on July 10, 2002, by e-mail and registered post, hard copy of which was received by the undersigned a few days later.
The Sole Panelist forwarded his decision to the Center within the time limit fixed.
4. Factual Background
SAGEM is the corporate and trade name of the Complainant (Complaint's Annex 3). The trademark SAGEM is owned by the Complainant which uses it throughout the world (Complaint's Annex 4).
The Complainant is the owner of the domain name <sagem.com>.
5. Partiesí Contentions
The Complainant essentially submits the following.
(i) The domain name <sagemwa3050.com> is identical or confusingly similar to the trademark and company name registered by the Complainant.
(ii) The Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint since it has no prior rights, as trade marks or corporate/trade name, on the Complainantís trade marks. The Complainant and the Respondent have no legal link between them (subsidiary, successors, assigns, licensees, etc.) and the Complainant has never given any authorization to the Respondent to register the domain name.
(iii) The domain name should be considered as having been registered and used in bad faith.
The Complainant is a notorious group and as has a great variety of activities such as in communication or defense; this group is the second largest French group in the field of telecommunications and the third largest European company in electronics for defense and security. The Complainant is present in more than twenty countries, including the United Kingdom where the Respondent is domiciled.
Concerning particularly the field of communication, the Complainant is a major actor in the field of mobile telephones. It has a strong position in the "GSM" mobile telephone markets in Europe and offers "GSM" lines notably in Europe, in Asia and America, developing a flood of innovations based on the new communications technologies. Among these new communications technologies, the Complainant has developed the mobile phone name "SAGEM WA 3050". This mobile phone is the Industry's First Pocket PC Phone and is a main product for the Complainant which attaches to it a central position in its communication, including in its web site.
As a result and considering the notoriety of the Complainant in general, throughout the world, including in the United Kingdom and, the production and the sale of a mobile phone "SAGEM WA 3050", the Respondent could not ignore the existence of the firm SAGEM. As a matter of fact, the voluntary association of the terms WA 3050 (which are two imaginary terms) to SAGEM cannot be an accident. This association shows that the Complainant knew the existence of the firm SAGEM and the mobile phone named "SAGEM WA 3050".
The registration of the concerned domain name was only due to the willingness to benefit of the notoriety of the Complainant.
Besides, the Respondent has not created any web site linked to the infringing domain name. The only aim of the Respondent is the appropriation of the Complainant's trade mark in a fraudulent manner.
The Complainant concludes that such pattern of conduct amounts to bad faith within the meaning of Paragraph 4 (b) (iv) of the Uniform Domain Name Dispute Resolution Policy ("the Policy").
The Respondent has not submitted any response to the Complaint.
6. Discussion and Findings
Paragraph 4 (a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4 (a) of the Policy.
The Administrative Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.
A. Identity or Confusing Similarity
There is at least confusing similarity between the Complainant' trademark "SAGEM" and the domain name <sagemwa3050.com>.
The Complainant has also established its rights in trademark "SAGEM" with various registrations for such a name, in particular in the European Union (see Complainant's Annex 4).
B. Rights or Legitimate Interests of the Respondent
Paragraph 4 (c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, to demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4 (c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14 (b) of the Rules.
It is the Sole Panelistís finding that the Complainant has established that the trademark "SAGEM" and its related products have been well known in the European Union, especially in the United Kingdom, for a significant period of time.
Furthermore, absent evidence to the contrary and as pointed out by the Complainant, the latter have not granted any license or otherwise permitted the Respondent to use such trademark or to apply for any domain name incorporating the said trade and service marks.
Under those particular circumstances, the undersigned is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.
C. Registration and Use in Bad Faith
Paragraph 4 (b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of 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; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The fact that the Respondent has chosen not to submit a Response is particularly relevant to the issue of whether the Respondent has registered and is using the domain names in bad faith. As already mentioned above Paragraph 14 (b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Uniform Rules.
The Sole Panelist finds there are no exceptional circumstances for the failure of the Respondent to submit a Response. This Administrative Panel draws from this failure the following two inferences: (i) the Respondent does not deny the facts which the Complainant asserts, and (ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts. Nevertheless, the undersigned still has the responsibility of determining which of the Complainantís assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
In so far as it relies on Paragraph 4 (b) (iv) of the Policy, the Complainant's assertion that the Respondent, in using the domain name in dispute, has intentionally attempted to attract, for commercial gain, Internet users to such web site is unsubstantiated in the Sole Panelist's opinion.
This is one of those cases where, apparently, the Respondent has done nothing other than register the domain name in dispute. The issue then is whether passive use constitutes bad faith registration and use. This may be so according depending on the circumstances of the case (see Telstra, Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In the instant case, the Complainantís trademark has a strong reputation and is widely known whilst the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name; together with the Complainant's contention that, under the present circumstances, the association of the terms "WA 3050" to "SAGEM" has not been made by accident and this was due to the Respondent's willingness to benefit of the notoriety of the Complainant, this amounts, in the Sole Panelist's opinion, to a prima facie case of bad faith within the general meaning of Paragraph 4 (b) of the Policy.
Transfer of the domain name in favor of the Complainant shall therefore be ordered.
In light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondent is confusingly similar to the corresponding trademark of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.
Accordingly, pursuant to Paragraph 4 (i) of the Rules, the Sole Panelist requires that the registration of the domain name <sagemwa3050.com> shall be transferred to the Complainant.
Dated: July 12, 2002