WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virtuel Culture & Loisirs SA and GIE Casinos Conseil & Service v. Bearnais Traders and Mrs Rayna Strike
Case No. D2002-0650
1. The Parties
The Complainants are Virtuel Culture & Loisirs Sa, a French company, incorporated in Bobigny under the rcs number B 420 462 913 and located 84 avenue du Président Wilson – 93210 Saint Denis La Plaine, France and Gie Casinos Conseil & Service, a French company, incorporated in Bobigny under the rcs number C 409 406 972 and located 84 avenue du Président Wilson – 93210 Saint Denis La Plaine, France.
The Respondents are Bearnais Traders 2191 S. Kihei Rd # 1401, Kihei HI 96753, United States of America ("USA") and Rayna Strike, 2191 S. Kihei Rd # 1401, Kihei HI 96753, USA.
2. The Domain Name and Registrar
The domain name at issue is <commeunreve.com> (hereinafter referred to as the "Domain Name").
The Registrar for the Domain Name is Intercosmos Media Group d/b/a directNIC.com (hereinafter referred to as the "Registrar").
3. Procedural History
On July 12, 2002, Complainants filed a Complaint, drafted in the English language, with the WIPO Arbitration and Mediation Center (hereinafter referred to as the "Center"). The Complaint was received via e-mail on July 12, 2002. The hardcopy was received on July 16, 2002.
On July 15, 2002, the Acknowledgement of Receipt of Complaint was sent to the Complainants. On the same date, the Center sent the Request for Registrar Verification.
On July 15, 2002, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Name registrant and further confirmed that:
- a copy of the Complaint was sent to it by the Complainants;
- it is the current Registrar of the Domain Name registration;
- Rayna Strike is the current Registrant of the Domain Name registration;
- the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "Policy") applies to the Domain Name;
- the Domain Name will remain locked during the pending administrative proceeding;
- the language of the Registration Agreement is English;
- the jurisdiction at the location of the principal office of the Registrar for court adjudication does apply;
The Center proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "Rules") and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the "WIPO Supplemental Rules"), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on July 24, 2002.
The Panel has reviewed the documentary evidence provided by the parties and agrees with the Center’s assessment that the Complaint complies with the formal requirements of the Rules and the WIPO Supplemental Rules.
On July 24, 2002, the Center informed the Respondents of the commencement of the proceedings as of July 24, 2002, and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a Response to the Center being August 13, 2002.
Between July 27, 2002, and August 14, 2002, various email correspondences have been exchanged between the Complainants, a certain Mr. Frinchaboy and the Center.
The Panel is satisfied that it was constituted in compliance with the Rules and the WIPO Supplemental Rules and has issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel has received no further submissions from either party since its formation.
The Panel is obliged to issue a decision on or prior to September 3, 2002, in the English language.
4. Factual Background
The following uncontradicted and unchallenged facts appear from the Complaint or the documents submitted in support thereof:
The Complainant Virtuel Culture & Loisirs is the owner of the trademark "COMME 1 REVE" registered on November 20, 1998. (Annex 3 – Registration certificate).
Virtuel Culture & Loisirs has caused to register, through the Gie Casinos Conseil & Service, the domain name <comme1reve.com> incorporating the trademark since May 2000, (Annex 4 – Database search).
The Domain Name <commeunreve.com> has been registered on December 20, 2000, by Mr. Maurice Frinchaboy.
On June 7, 2001, the Complainants sent a registered letter, that remained unanswered, to notify Mr. Maurice Frinchaboy of their trademark rights on the mark "COMME 1 REVE" and to ask him to cease this infringement to their intellectual property rights by transferring the Domain Name to them.
The Complainants then summoned him before the Pau Civil Court where the proceeding is still pending.
After the beginning of that litigation, Mr. Maurice Frinchaboy transferred the Domain Name to Bearnais Traders.
The administrative contact is Mrs. Rayna Strike. After that transfer, the name of the owner, Bearnais Traders, was deleted from the domain name's database.
Therefore, the Complainants sent a notification by registered mail to Mrs. Rayna Strike, in order to inform her about the litigation and to ask for the transfer of the Domain Name.
Mrs. Rayna Strike replied by writing that she was not opposed in selling the domain: "If you are interested in purchasing the domain name, this is something I would consider".
The Complainants agreed to purchase the Domain Name for a reasonable price, which should not exceed the usual costs for registering and maintaining the registration of a domain name.
As Mrs. Rayna Strike did not answer that proposal, the Complainants lodged the Complaint.
5. Parties’ Contentions
Over and above the uncontested and unchallenged facts as noted above, which are hereby incorporated herein by reference, it has been contended by:
- The Domain Name reproduces the Complainants' trademark "COMME 1 REVE"; the only (visual) difference being that the number "1" is written "un", which is the alphabetical wording for this number.
- The mark "COMME UN REVE", and as a result the Domain Name, is identical or confusingly similar to the trademark "COMME 1 REVE".
- The Respondents own no trademark registration for the signs "COMME UN REVE" or "COMME 1 REVE".
- The Complainants have never authorized the Respondents to use the marks "COMME 1 REVE" or "COMME UN REVE". The Respondents have not been licensed, contracted or otherwise permitted by the Complainants, in any way, to use the trademark "COMME 1 REVE" or to apply for any domain name incorporating the trademark "COMME 1 REVE".
- If the Respondents had a legitimate interest, they would never have accepted to sell the Domain Name.
- The name of this second owner, Bearnais Traders, is closely connected to the first owner, since Mr. Maurice Frinchaboy operates the Cyber Seventy's Café in Pau, which is in the Bearn region.
- The name Bearnais Traders disappeared from the database of the Domain Name <commeunreve.com>, as if to conceal any connection between the two owners.
- After receiving the registered letter from the Complainants' representative, the current owner could not ignore the trademark rights of Virtuel Culture & Loisirs. Therefore, the Respondents kept the ownership of this Domain Name knowingly and against the Complainants' rights.
- Mrs. Rayna Strike was at first not opposed in selling the domain name but when the Complainants' representative proposed a reasonable price, Mrs. Rayna Strike never answered.
- This clearly shows that Mrs. Rayna Strike tried to speculate on the price of the Domain Name and that she had no other or legitimate interest in that Domain Name. It is obvious that if she had a project related to that Domain Name, she would never had agreed to sell it.
The Respondents have either chosen to abstain or have failed to file a timely Response with the Center. The e-mail communications between Mr. Frinchaboy and the Complainants do not constitute a proper Response that respects the criteria of the present proceeding, as only the parties or their attorneys can respond. Consequently, only a Response by Mrs. Strike or Bearnais Traders and not Mr. Frinchaboy in his own name could constitute a proper Response. However, the Panel has read the arguments and allegations of Mr. Frinchaboy and has come to a decision which would not be any different even deeming Mr. Frinchaboy's response to be a party's response.
6. Discussion and Findings
Pursuant to the Policy, the Complainants must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent upon the Complainants to cumulatively show:
(i) that the Domain Name is identical or confusingly similar to a trademark in which they hold rights; and
(ii) that the Respondents have no rights or legitimate interests in the Domain Name; and
(iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
(i) Identity or Confusing Similarity between the Domain Name and Complainants' Trademark
The Panel finds Complainants have rights in the "COMME 1 REVE" trademark, Virtuel Culture & Loisirs SA having validly registered the French words "COMME 1 REVE", words and design n° 98 760 306, on November 20, 1998, in classes 9, 28, 41, 42 (Annex 3 – Registration certificate) in relation to simulation games.
While the Domain Name is not identical to Complainants' mark, the Panel finds that it is confusingly similar. The test of confusion in comparing the words or marks at issue is from the stand point of the average unwary consumer, looking at the marks in their totality, having an imperfect recollection of the former.
The Domain Name incorporates the Complainants' registered mark in its totality and the only deviation is that the Domain Name incorporates the alphabetical wording for the number one instead of writing it in its numerical form.
In addition, the Complainants not only hold rights in the disputed Domain Name, but they have actively exercised them by bringing a legal claim before a court of law (Pau Civil Court) which certainly demonstrates on their part an intent to avoid the trespassing of their rights.
On the same note, registering the Domain Name <comme1reve.com> demonstrates the legitimate intention of the Complainants to exploit their trademark rights.
Pursuant to the above mentioned reasons and having considered Mr. Frinchaboy's answers not to be relevant, the Panel is therefore of the opinion that the Complainants have satisfactorily met their burden of proof as required by paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests in the Domain Name by Respondents
The Panel finds the Respondents have no rights or legitimate interests in the Domain Name given the fact that there exists no relationship between Complainants and Respondents that would give rise to any license, permission or authorization by which Respondents could own or use the Domain Name <commeunereve.com>. Moreover, any rights that the Respondents might allegedly hold were acquired only after legal proceedings had been instituted against their predecessor in title, to which prima facie they appear to be associated; consequently Respondent has a constructive knowledge of the vitiated assignment.
Additionally, the Panel finds that the fact that Respondents were willing to sell the Domain Name, or more precisely, not opposed to selling the Domain Name, would tend to demonstrate that they had no intention to use the name for any legitimate purpose and can therefore demonstrate no legitimate interest or rights in the Domain Name.
For these reasons, the Panel concludes that, on a balance of probabilities, the Complainants have discharged their burden to show that the Respondents have no rights or legitimate interests in the Domain Name especially since there have been no explanations or evidence in conformity with the Forum Rules offered by the Respondents to establish the contrary except through Mr. Frinchaboy which has not been found convincing.
(iii) Bad Faith in Registration and Use of the Domain Name by the Respondents
The Panel finds the Respondents have acted in bad faith in registering and using the Domain Name. The responses of Mr. Frinchaboy, even assuming it to be a party, have not been found credible.
Also, the fact that the assignment of the Domain Name was made after the beginning of the proceedings is certainly evidence that the Respondents were trying to "run away" with it.
Consequently, the Panel finds that Respondents acted in bad faith in registering and using the Domain Name.
For the foregoing reasons, the Panel finds that:
- The Domain Name registered by the Respondents is confusingly similar to the trademark to which the Complainants hold rights; and
- The Respondents have no rights or legitimate interests in respect of the Domain Name; and
- The Domain Name has been registered and is being used by the Respondents in bad faith.
Accordingly, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the registration of the Domain Name <commeunreve.com> be transferred to Virtuel Culture & Loisirs SA, the owner of the trademark "COMME 1 REVE", and directs the Registrar to do so forthwith.
Jacques A. Léger, Q.C.
Dated: September 3, 2002