WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vachette v. Syncopate.com
Case No. D2002-0670
1. The Parties
Complainant is Vachette, a French company, with its principal place of business at 50, rue de la Paix 10 000 Troyes, France. Complainant is represented by OPUS, 19 rue de l'Aubrac, 75012 Paris, France.
Respondent is Syncopate.com – Smart Names for Startups, whose address is 2 Townsend Street, Bldg. 1-500, San Francisco, CA 94107, United States of America ("USA").
2. Domain Name and Registrar
The domain name in issue is <vachette.com>.
The Registrar with whom <vachette.com> is currently registered is Enom Inc. of Portland, Oregon, USA.
The domain name was initially registered with Registrar NameScout Corp., Whitepark House, White Park Road, Bridgetown, Barbados.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint via email on July 18, 2002, and in hard copy on July 25, 2002. The Center transmitted an Acknowledgement of Receipt of Complaint to the Complainant and to the Respondent on July 19, 2002.
On July 19, 2002, the Center transmitted via email to the registrar Namescout Corp. a Request for Registrar Verification in connection with this case.
On July 19, 2002, the registrar Namescout Corp. transmitted via email to the Center, Namescout Corp.'s report. Namescout Corp advised that it had not received a copy of the Complaint at that time.
Namescout Corp. confirmed that it is the Registrar of the domain name in dispute and advised that the respondent herein, Syncopate.com – Smart Names for Startups, is the registrant of the domain name <vachette.com>, and the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the domain name. Namescout Corp. advised that the registrant’s address shown in their records is 635 Tennessee Street, Ste 202, San Francisco, CA 94107, USA. The Administrative and Technical contact is C.S. Trainer, Syncopate.com – Smart Names for Startups, DNS Administrator, 635 Tennessee Street, Ste. 202, San Francisco, CA 94107, USA
Namescout Corp. advised that it is currently beyond the control of NameScout to lock the domain name because "The Registry " […] has locked the domain name pending a transfer which was initiated on July 16, 2002". Namescout Corp. advised that the registrant agreement is in English and that the domain name registrant has submitted to the jurisdiction of the Province of Ontario, Canada pursuant to the registrant agreement.
On August 2, 2002, the Center requested the Complainant to confirm that payment for this proceeding had not been received. On August 5, 2002, the Center advised the Complainant that it had received confirmation that the Complainant's fee had been received.
On August 6, 2002, the Center advised the Complainant that the Center had just been informed by NameScout Corp. that it is not the Registrar of the domain name in dispute <vachette.com>. The Center requested the Complainant to file an amended Complaint naming the correct Registrar.
Also on August 6, 2002, the Center transmitted via email to the Registrar Enom Inc. a Request for Registrar Verification in connection with this case.
On August 7, 2002, Enom Inc. confirmed by email to the Center that it had received a copy of the Complaint and that it is the Registrar of the domain name in dispute <vachette.com>. Enom Inc. confirmed that the Respondent herein, Syncopate.com – Smart Names for Startups, is the registrant of the domain name <vachette.com>, and the Policy applies to the domain name. Enom Inc. advised that details of the Registrant Contact shown in their records is Syncopate.com – Smart Names for Startups, DNS Services (firstname.lastname@example.org), USA States of America. The Administrative and Technical Contacts are identical to the Registrant Contact.
Enom Inc. advised that the status of the domain name in dispute is "Protected/Locked". Enom Inc. confirmed that the Policy applies to the domain name in dispute. The language of the registration agreement is English and the registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name.
On August 7, 2002, the Complainant forwarded an Amendment to the Complaint to the Center, the Respondent and the Registrar. The Complainant advised that an important note has been added in the amendment. The note states that Respondent changed his registrar as soon as he knew about the complaint related to the domain name <vachette.com>. Complainant submits that this action is another proof of bad faith.
On August 13, 2002, the Center forwarded an e-mail to Kelsie Greear at Enom Inc. requesting confirmation that the Registrant's details with respect to the domain name in dispute will remain locked or "frozen" for the duration of the Center's proceeding.
On August 13, 2002, Mr. Greear advised the Center that the Registrant cannot change holders during a proceeding but contact information can be changed as required to keep it updated and accurate.
The Center verified that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On August 13, 2002, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint and the Amendment to the Complaint to the Respondent and to Respondent’s Administrative Contact via email, fax and via registered mail to the addresses provided by the Registrar. In the Notification, the Center advised that the response was due by September 2, 2002, pointed out the response should be in accordance with specified rules, and described the consequences of a default if the response was not sent by September 2, 2002, including inter alia that an Administrative Panel would be appointed to review the facts and decide the case, and the Panel may draw appropriate inferences in the event of default.
The copy of the Complaint sent by the Center via FedEx to the Respondent at DNS Services, 2 Townsend Street, Bldg 1-500, San Francisco, CA 94107 USA was delivered on August 15, 2002. The copy of the Complaint sent by the Center via FedEx to C.S. Trainer at 635 Tennessee Street, Ste 202, San Francisco CA 94107, USA could not be delivered, was marked "incorrect address" and returned to the Center.
The electronic copy of the Complaint sent to ‘email@example.com’ was not deliverable. The Mail Delivery service advised that the address ‘firstname.lastname@example.org’ had "fatal errors". The Mail Delivery service attempted to send the message between August 13, 2002, and August 14, 2002. On August 13, 2002, the Center attempted to forward a copy of the Notification of Complaint and Commencement of Administrative Proceeding, the Complaint and the Amendment to the Complaint by facsimile to Syncopate.com at fax no. 505-758-1524. The fax message could not be completed.
On September 1, 2002, the Center received the Response by email from Eyetooth.com Inc. Eyetooth.com Inc. advised that hardcopies were sent to the Center by courier on August 31, 2002. On September 2, 2002, the Center forwarded an Acknowledgement of Receipt (Response) to the Respondent.
On September 11, 2002, the Center advised the parties via email of the appointment of Ross Carson as the Sole Panelist, and advised that the decision was due on September 25, 2002. The Center also forwarded the Case File to the Panelist by email and courier on September 11, 2002.
4. Factual Background
Complainant advises that Complainant owns numerous registrations worldwide for the trademark "VACHETTE". The mentioned trademark is registered for different classes of goods and services in France on November 11, 1966, and subsequently in various countries, such as Algeria, Canada, Taiwan, Province of China, Austria, Benelux, Italy, Spain, Portugal, Sweden, Switzerland (Annex E to the Complaint).
Complainant submits that the name "Vachette" has been used by Complainant as a trade name since 1966 and is a well-known and famous trade mark.
5. Parties’ Contentions
Complainant avers that all three elements of the Policy, Paragraph 4(a) are met because:
1. the domain name in issue is identical or confusingly similar to a trademark in which Complainant has rights;
2. the Respondent has no rights or legitimate interests in the domain name; and
3. the domain name was registered and is being used in bad faith by Respondent.
Complainant submits that Vachette was created in 1864, and is the French leading manufacturer of lock systems and offers solutions aiming at improving the security of individuals and their belongings: locks, door-closers, night-latches, padlocks, multilock systems, security rim locks, armoured doors. Over the years, Vachette extended its production operations in architectural hardware to new sectors: automobile industry, hotel trade, hypermarkets and supermarkets. Vachette became the French market leader by the 1980s. In 1997, Vachette became a member company of the Assa Abloy Group, the world's No.1 in the high security industry, which opened up new development prospects for Vachette on the international scale. Complainant submits that the "VACHETTE" trademark is well known in the security field in France and worldwide.
Complainant is the owner of the domain name <vachette.fr>, registered in 1997. It also owned <vachette.com> on June 21, 1997, but it lost it because messages from Network Solutions did not reach Complainant's representative after the representative had moved premises. Upon moving premises, Complainant's representative arranged for the transfer of postal mail to its new address but some mail was not redirected correctly and thus Complainant's representative did not receive postal messages concerning the renewal fee for the registration of the domain name in dispute. Moreover, Complainant's representative also suppressed some of its email addresses. The renewal fee was not paid and the Complainant's registration for <vachette.com> expired on June 22, 2001.
Complainant advises that on September 13, 2001, the domain name was registered by Syncopate.com - Smart Names for Startups (Respondent), whose activity is to sell domain names registrations (as it is indicated on their web site "www.syncopate.com").
The Domain Name Registered by Respondent is Identical to a Trademark or Service Mark in which the Complainant has Rights
Complainant submits that the contested domain name is strictly identical to the trademark VACHETTE. Visually and phonetically, Complainant's trade mark "VACHETTE" and the domain name <vachette.com> are identical.
The added gTLD ".com" does not affect this assertion because generally, a domain name is constituted of a prefix "http://" or "http://www.", followed by a mark or a company name and a suffix. This suffix can describe the type of activity : ".com" for commercial, ".info" for information, or geographical characteristics (".fr" for France, ".ch" for Switzerland…) for example. The added gTLD ".com" should not be taken into account when considering the identity between the domain name of Respondent and the trademark of Complainant.
Complainant submits that the identical imitation of the Complainant's trademark by Respondent and its abusive registration as a domain name is a counterfeit of the registered trademark "VACHETTE" and represents damage to the Complainant's company name. When reading or hearing the domain name <vachette.com>, the public will be led to think that the domain name is owned by, or related to, the Complainant. This causes, again, damage to the owner of the trademark.
Complainant submits that it has an undeniable notoriety in France and worldwide. It is identified by this trademark which is similar to its name. This trademark has acquired over the years a distinctive character that should be respected all over the world. By owning a domain name in which it has no rights, Respondent prevents Complainant from using its trademark "VACHETTE" in the corresponding domain name <vachette.com>, counterfeits Complainant's trademark, creates a risk of confusion in the public's mind, which is unacceptable, and inevitably causes great damage to the Complainant in terms of image.
Respondent has no Rights or Legitimate Interests in Respect of the Domain Name
Complainant submits that Vachette is the owner of the famous trademark VACHETTE which has been registered in France and world-wide. Complainant also owns the domain name <vachette.fr>. Complainant submits that it is actually the legitimate owner of the domain name <vachette.com>.
Complainant submits that Respondent has no trademark containing the word "vachette". Respondent has no activity and is not known under the name "vachette". Neither its products nor its services are related to the domain name <vachette.com>.
The name vachette is a French word that has no signification in English. As Respondent is an American company, it has no real reason to use it, except if it had similar trademarks, but that is not the case.
Respondent is a company that sells a catalogue of domain names on the Internet, as it is indicated on its web site: "Eyetooth creates mind-catching new names for companies and products. We provide new naming options for your venture, packaged with the intuitive dot-com".
Respondent never received authorization from Complainant to register and/or use the domain name related to its trademark.
The Domain Name <vachette.com> was Registered and is Being Used in Bad Faith
Complainant submits that the contested domain name is not and has never been used. Upon accessing the web-site "www.vachette.com", the homepage of "wownames" is displayed, in which one can read "This domain may be available to new startups!". A copy of the homepage of the web site "http://www.vachette.com" (July 17, 2002) is in Annex F.
Complainant submits that the activity of Respondent's company is to sell registered domain names. Respondent has not registered the domain name <vachette.com> in order to use it but to sell it. The Respondent also registered numerous domain names in order to sell them.
Respondent has no activity related to the domain name.
Vachette was the owner of <vachette.com> until June 22, 2001.
The trademark held by Complainant is famous in France and world-wide. Respondent should have known that it had no rights to this domain name.
Annex G contains a copy of the message sent by the company that owns the domain name <vachette.com>. Complainant submits that this message clearly indicates that the domain name <vachette.com> is for sale.
In France, the use of a trademark as a domain name on the Internet is considered as a counterfeit of the registered mark in most cases.
Complainant submits that its submissions clearly show that the domain name <vachette.com> was registered or acquired primarily for the purpose of selling the domain name registration provided that the Respondent has engaged in a pattern of such conduct. On his web site "www.syncopate.com", Respondent offers a catalog of domain names registrations. Respondent may sell this registration to any company, including a competitor or the owner of the trademark itself.
Domain Name Registration
The Respondent submits that the domain name was initially registered with Registrar NameScout.com of Barbados on September 13, 2001. The current registrar of this domain is Enom Inc. of Portland, Oregon, USA. Prior to the August 2002 commencement of this dispute and prior to any notification of this dispute, Respondent moved the domain to the Registrar Enom Inc. of Portland, Oregon, USA. The name must be renewed annually before September 13th of each year. Respondent moved the domain to a Registrar which offered preferable services as is common practice. There was no lapse in the utility of any of the WHOIS contact information, and the registrant of record remained Syncopate.com.
Respondent advises that Complainant is a French company which manufactures and sells specialty locks. Complainant has registered marks in France and various other countries for the word "VACHETTE" for trade in "fabrication de serrures et de ferrures" (manufacture of fittings and locks). Complainant does not have a registered "VACHETTE" mark in the United States and has not filed an application for a "VACHETTE" mark in the United States to date. Complainant's products are not sold or advertised in the United States. The word "vachette" is a common noun in French meaning calf (specifically young cow or teenage calf), as well as calfskin (calf leather). It is also an English word for high quality calfskin, leather ligatures, and a specific saddle leather. The word "vachette" is also a common family name in France and worldwide. The word "vachette" appears in 6,410 webpages online, discussing leather products, cattle, children's stories, family homepages, etc.
Respondent is a partner in the company Eyetooth Branding and Trademark, located in San Francisco, California, USA. Since 1999, Respondent has provided services in logo design and graphics, brand name and tagline conception, US trademark research, and marketing consultation. Respondent submits that it registered the <vachette.com> domain name on September 13, 2001, as a new name option for a client company, an online baby products retailer. The client selected Respondent's coined term "Wonderbaby" instead. Several months later, Respondent posted a page at <vachette.com> stating that the "domain may be available to new startups" and an email address to contact to "check eligibility". Respondent's brand, logo, and domain for "Vachette" is currently being considered by a financial services company in Florida. Complainant has used the <vachette.fr> internet location since 1997. Complainant states that they once owned the <vachette.com> domain, but they allowed it to expire on June 22, 2001. Approximately one year later, on April 18, 2002, Complainant initiated contact with the Respondent in pursuit of the domain name <vachette.com.> Complainant used an "email@example.com" web address to make contact without stating any "vachette" mark use or company name. Respondent replied to the Complainant by email stating "Buyers must intend a new, good faith mark use (or Buyer's mark rights if any must have vested after 9/2001, our registration date)..." Respondent submits that Mr. Azouz subsequently phoned Respondent, stating heatedly that Respondent should give the domain to Complainant because they are called "Vachette". Respondent stated that "vachette" is a common noun used by many people worldwide, and that, as stated in the email, the domain is not available for sale to them or to their competitors. Complainant then asked if he could buy it later and how. Respondent replied that he could not. Respondent submits that, as noted on Respondent's webpages, Respondent's <vachette.com> domain may be available for sale to eligible parties--those building a new and legal mark. Any conceived sale of <vachette.com> is via contract with an eligibility condition of sale which entitles Respondent to reclaim the domain if the Buyer misrepresents his or her eligibility. No further contact between Complainant and Respondent followed, and several months later, Complainant filed the present dispute.
A. Whether the Domain Name is Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights
Respondent submits Complainant has not submitted any evidence that its "VACHETTE" mark is famous and deserving of a global monopoly of protection in every top-level domain. There is no evidence in the record concerning the scope of use or strength of Complainant's mark. Complainant possesses no "VACHETTE" trademark registration in the United States and has to date not applied for one. (Annex 1, from the US Patent and Trademark Office, showing that the only VACHETTE record is an abandoned filing for LA VACHETTE based on intended use by an unrelated party.) As per Complainant's website, "Vachette" has one principal place of business, located in Troyes, France. Complainant does not sell, distribute or advertise its "VACHETTE" mark in the United States.
Respondent submits that as stated on the Complainant's website (Annex 2), Vachette's trade is limited to one very specific product: security locks. By contrast, there is no reference to locks or to any related field at Respondent's <vachette.com> site. Respondent's <vachette.com> domain name resolves to a parking page at the Wowname.com domain registry. (Currently the domain name is "on hold" by the Registrar subsequent to this dispute.) Respondent submits that its web page states plainly that the Respondent's field of trade is branding and trademarks, and includes the text "FAQs About Eyetooth Branding and Trademark" and "We screen for trademark, and on request, orchestrate full legal clearance". A copy of the <vachette.com> webpage is attached as Annex 3. That page refers visitors to Respondent's branding company, Eyetooth.com. Based on the concerns expressed in past WIPO decisions, the Respondent declares that <vachette.com> and all Respondent's web pages past and present are entirely devoid of any pornographic or gambling content, or advertising for same, or 'mousetraps' or any similar unscrupulous advertising techniques.
Respondent submits that that Complainant's mark and the domain name at issue are based on a word which is common in both the French and English language. The Complaint admits only that "vachette" is a French word. In fact, "vachette" is a common noun in French for 'calf' (specifically a young cow or teenage calf), as well as the French noun for the commodities calfskin or calf leather, as well as a common family name in France and worldwide. There are 6,410 webpages containing the word "vachette". Of the first 200 returned, only two reference the Complainant's company. The remainder discuss "cuir de vachette", "vachette veritable", "vachette avec papa", "vachette leather", "vachette clasp", etc. as well as the thousands of people worldwide sharing the common family name "Vachette". (See Annex 4, with three dictionaries and their online definitions of "vachette", and various webpages using "vachette" as French noun, English noun, or family name, and the web search displaying 6,410 webpages using the word "vachette".)
Concerning the strength of the mark in France, Respondent submits that the word "vachette" is a common word which is the name of an animal (young cow), the name of a commodity (calfskin), and a common family name. As such, the word "vachette" is a weak mark which is in use in France by many other enterprises unrelated to the Complainant. Ten of these unrelated parties are on file with France's 'Registre National du Commerce et desSociétés.' (Annex 5, the EURIDILE record of these registrations, available at "http://www.euridile.inpi.fr/weur2/init.ow?wrncs=302109577221".)
B. Whether the Respondent has Rights or Legitimate Interests in Respect of the Domain Name
Respondent submits that eleven months before the Respondent received any notice of this dispute, the Respondent was making commercial use of, and demonstrable preparations to use, the domain <vachette.com> in connection with a bona fide offering of goods or services.
Syncopate.com is headquartered in San Francisco and is the registrant of the domain name <vachette.com>. Syncopate.com is the name of a domain property holding partnership comprised of two of the three partners of Eyetooth Branding and Trademark Co., a company headquartered in San Francisco. The "Syncopate.com - Smart Names for Startups" registrant name on the WHOIS record preserves and reflects the property right of the specific Eyetooth Co. partners who originally conceived of the domain name. For purposes of this dispute, the Respondent, Syncopate.com, and the Eyetooth Branding and Trademark Co. are the same entity.
The Respondent, as Eyetooth Branding and Trademark Co., conceives new names and brands for evolving unnamed companies, known in the United States as "startups". The Respondent has served clients since 1999, researching US trademark rights, providing company logos and graphics, conceiving names and taglines, and offering online branding and trademark consulting services. All business and advertising is conducted in English, and all clients to date have been US residents. The trademark services offered by the Respondent are limited to preliminary US trademark searches. Full legal trademark searches are outsourced to firms such as Thomsen and Thomsen, as are all foreign trademark searches.
The Respondent is not "a company that sells on the Internet a catalogue of domain names" as the complaint alleges. There are no domain names offered for public sale by the Respondent nor by any associate of the Respondent, including Eyetooth Branding and Trademark. The <vachette.com> parking page at the registry directs all inquiries to the Eyetooth site, which then discusses eligibility and trademark at length. The parking page at <vachette.com> specifically points out that parties interested in acquiring the domain name they have sought out must be found eligible to buy beforehand, and that no contacts will be accepted from "Afternic.com" (a US company that facilitates anonymous bidding on domain names).
Respondent submits that the domain name <vachette.com> was registered by Respondent on September 13, 2001, as a name option for a new, unnamed baby clothing and supplies venture. Naming US companies using foreign words is common practice, since it provides great branding advantages as well as stronger mark protection. (See Annex 9, showing Respondent's competitors use of foreign language words as a specific name genre for US branding.) Respondent verified beforehand that "Vachette" was not a registered mark at the United States Patent and Trademark Office (online at "http://www.uspto.gov" and see Annex 1). Various logos and taglines were commissioned for the baby supplies client (Annex 7). An alternate name option from Respondent, "Wonderbaby", defeated the original "Vachette" concept. The domain itself was not abandoned by the Respondent and in May 2002, <vachette.com> was submitted as a name option to an unrelated client, a small financial services company in Florida, which has not yet made a final decision on the name. Branding options for the "Vachette" name for that client are attached as Annex 8. Though well suited for the original children's products concept, Respondent proffered the name to the second client for its branding potential as a reference to "cash cows", "bull markets", and potential for growth.
Respondent's business model is identical to that of dozens of other companies in this field of branding and marketing. (See Annex 9 for a list of the leading US companies all of whom provide naming services and which offer the intuitive domain name as well if possible.) When a domain name is involved, it is standard business practice to retain a name dismissed by one client for future use by another. At no time has the domain name <vachette.com> been made available for open sale to the public. Respondent is not a "domain name reseller" and posts no catalog of domains, accepts no bids, and has never sought out a potential buyer of any domain name. If the Respondent owns a name such as <vachette.com>, the only means of contacting the Respondent to attempt to purchase the domain is by email. Thereafter, the party must establish eligibility in writing: "Buyers must intend a new, good faith mark use (or Buyer's mark rights if any must have vested after 09/2001, our registration date) unless textstring is a generic expression or a dictionary word." (Excerpt from Respondent's April 18, 2002, email reply to Complainant's contact. Both complete emails are attached as Annex 10.) Failing eligibility, there is no "back door" and anonymous methods of purchase are not allowed by Respondent (See the <vachette.com> parking page at Annex 3, disallowing "Afternic" bidding). The Respondent has a sale contract which makes a name buyer's eligibility a condition of sale, so that a buyer who proceeds to the contract stage has agreed to relinquish the domain if the Respondent learns that the buyer has misrepresented his mark status or intent to use the domain in a new and legal mark. As stated on Respondent's website:
If you've picked a name without our research help, we require this written assurance of your good-faith intent to build a legal mark. If you have already begun use of a mark and we own a similar domain name, your eligibility to buy usually depends on the date on which we registered our name and the date on which you began use of your mark in commerce. If you began mark use prior to our date of registry, you are not eligible to buy the domain. If we have a domain similar to your mark, you are likely using only common law mark protection, so please forward the details of your mark use to us for our records in our mutual best interest. (See Annex 11).
Respondent cites Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 which cites that under appropriate circumstances the offering for sale of a domain name can itself constitute a bona fide offering of goods or services for purposes of paragraph 4(c)(i) of the Policy. In the instant case, the Respondent did not offer the domain name for sale to the Complainant. The email makes plain that the Complainant would not be eligible to buy because of Complainant's mark use. When the Complainant phoned to protest his ineligibility to buy, the Respondent unequivocally refused to sell.
Further, in a dispute concerning a Brazilian complainant and the Italian word "paparazzo", registered by a Cantonese-speaking Respondent in Hong Kong, "the Respondent is entitled to conduct a business of capturing generic trademark names which become available in the marketplace - often through failure to renew registration". GLB Serviços Interativos S.A. v. Ultimate Search Inc (aka Ult. Search Inc),WIPO Case No. D2002-0189. The facts of the instant case parallel GLB in that "vachette" is a common word in French, the Respondent is an English language speaker, and the facts of the instant case exceed GLB in that Respondent is in a country outside of the Complainant's scope of trade.
C. Whether the Domain Name has been Registered and is being Used in Bad Faith
Good Faith Registration
Respondent submits that it originally registered the domain name <vachette.com> on September 13, 2001, as a name option for a new and unnamed baby clothing and supplies venture as noted supra. Respondent verified before registration that "VACHETTE" was not a registered mark at the United States Patent and Trademark Office (online at "http://www.uspto.gov" and see Annex 1). Respondent was not familiar with the Complainant's business until the commencement of this action. Where the Complainant has filed no mark application, and neither sells products nor advertises in the United States, and where Complainant has one place of business in Troyes, France where they sell solely specialty locks, it is no surprise that the Respondent was not aware of their enterprise. The Complainant's locks are not the sort of product that a person encounters unless they are personally building a bank doorway, etc. The Respondent singled out the domain name <vachette.com> because one partner in the Respondent's company has two years of basic French study. Animal names like chien or vache are easily recognizable. This paired with AltaVista's online French dictionary served to help the company register the simple French animal domain name <chevreuil.com> (deer) as well in 2000. Both of Respondent's domains are untrademarked names in the United States (available at "http://www.uspto.gov").
In Bernardaud Porcelaines de Limoges S.A. and Bernaudaud N.A. Inc. v. Chapman Capital LLC, WIPO Case No. D2001-0247, a Three Member Panel denied a complaint concerning "the registration […] by an American of a domain name containing a trademark that is well-known in France, but does not appear to be well-known in the United States outside of the porcelain area". The findings stated:
"This is a basic point, as all of the examples of bad faith under Section 4 (b) of the policy appear to require some familiarity either with the complainant or with its trademark.
To infer that the Respondent was familiar with the Complainants or their trademarks, the Complainants rely on Telstra, WIPO Case No. D2000-0003 (February 18, 2000). However, in Telstra the complainant was one of the largest and most well-known companies in the country where the respondent resided and had numerous trademark registrations both domestically and internationally. That is not the case of the BERNARDAUD trademark which, although well-known in France, does not appear on the basis of the Complainants' evidence to be well-known and widely used in the United States or internationally except in the area of porcelain. Indeed the first US registration for the trademark was in 1989. That is prior to the date of registration of the domain name in question. However, it hardly supports the argument that BERNARDAUD is a famous trademark that should have been recognized as such by the Respondent when it registered the domain name."
In the Bernardaud dispute, the Complainant sold its products throughout the US, had a trademark registration in the US, and "Bernardaud" was not a common noun in French and English. In the instant case, Complainant Vachette is a French company with one location in Troyes, France, which neither possesses a US trademark registration nor has filed an application to date, which sells no products, does not advertise, and has no mark presence in the United States where Respondent resides, and the name "vachette" is a common noun in French and English. The facts of the instant case thus exceed those of Bernardaud in favor of the Respondent.
The Respondent asks the Panel to make a finding of reverse domain hijacking in this instance because the record establishes that there was clearly no intent to sell the domain to Complainant or Complainant’s competitors and Complainant was well aware of this. (Rules, Paragraph 15(e)). Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". (See also Paragraph 15(e) of the Rules.) To prevail on such a claim, Respondent must show that Complainant knew of either the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v Trilynx Pty. Limited, WIPO Case No. D2000-1224. Further, when determining whether the Complainant brought the Complaint in bad faith, the Panel should consider both "malicious intent and recklessness or knowing disregard of the likelihood that the respondent possessed legitimate interests". Goldline International, Inc. v Gold Line, WIPO Case No. D2000-1151.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove, with respect to the domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to a mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, any one of which for purposes of Paragraph 4(a)(iii) above, if proved by a complainant, shall be evidence of a Respondent’s registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by Respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.
a. Preliminary Observations
The Panel has assured itself that the parties have been treated with equality and Respondent has been given a fair opportunity to present its case (the Rules, Paragraph 10(b)). Accordingly, in the Panel’s view, the Respondent has been afforded due process.
b. Identical or Confusing Similarity
Complainant has the burden of proving that the trademark and domain name in dispute are identical or confusingly similar.
The Complainant is the French leading manufacturer of lock systems created in 1864. Complainant owns numerous trademark registrations in relation to lock systems in France, Algeria, Taiwan, Province of China, Austria, Benelux, Italy, Spain, Portugal, Sweden and Switzerland (Annex E). The Complainant is the owner of the domain name <vachette.fr> and was the owner of the domain name <vachette.com> both registered in 1997. The Complainant's representative had changed its address and did not pay the renewal fee for <vachette.com> when the renewal fee was due on June 21, 2001. The Complainant's registration for <vachette.com> expired on June 22, 2001.
The Respondent submits that the word "vachette" is a French word for a young calf and is as well a family name in France and therefore a mark of low inherent distinctiveness. The Complainant's registrations disclose registration of VACHETTE in countries in which French is the official language or an official language such as France, Benelux, Switzerland and Canada. The word "vachette" is not a created word but is a word which has little or no connection with the goods locks systems.
The Respondent submits that the Complainant has no registrations for VACHETTE in the United States of America. The Respondent further submits that there are eleven entries in the French register of business and corporate names which include VACHETTE as part of the business or corporate name. (Annex 5). There is no evidence of use of a trademark VACHETTE by others as a trademark or as part of a domain name.
The only difference between the domain name in dispute <vachette.com> and the registered trademarks for VACHETTE is the lower case letter format and the addition of the gTDL ".com". These differences are not significant in determining whether the domain name is identical or confusingly similar to the mark: see CBS Broadcasting Inc. v Worldwide Webs Inc., WIPO Case No. D2000-0834.
The Panel finds that the Complainant has satisfied the first requirement.
c. Rights or Legitimate Interests
The onus is on the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.
Paragraph 4(c) of the Policy includes a list of circumstances, which if found by the Panel to be proved on the basis of the evidence presented, shall demonstrate Respondent's rights or legitimate interests in the domain name for the purpose of Paragraph 4(a)(ii). The list of circumstances includes examples of circumstances which if proved demonstrate rights or legitimate interests, but other facts if proved by the Respondent may demonstrate rights or legitimate interests in the domain name in dispute. The three circumstances particularly referred to in Paragraph 4(c) are as follows:
(i) before any notice to you of the dispute, your use of or demonstrable preparations to use, the domain name or a 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.
With regard to proving facts supporting a finding of legal rights and legitimate interests in the domain name in dispute, the Respondent states:
(1) The Respondent registered the domain name <vachette.com> on September 13, 2001, well before any notice of the dispute.
(2) The Respondent is in the business of buying domain names which may be sold to startups in the United States. In addition the Respondent will develop names and brands for startups based on data provided by the client as to its product and industry. The Respondent is not in the business of offering domain names to the public on a website. The Respondent will not sell a domain name to a client who has used a mark or trade name confusingly similar to the domain name prior to the registration of the domain name. The Respondent also provides or advises on trade-mark clearances and will for remuneration provide web page designs.
(3) The Respondent states that it was not aware of the Complainant at the time of registration of the domain name <vachette.com>. The Respondent searched the US Trademark database for VACHETTE before registration of <vachette.com> and did not locate any US applications or registrations belonging to the Complainant. It is the Respondent's policy to limit initial searches to the United States trademark database.
(4) The Respondent states that <vachette.com> was registered as a domain name option for a new unnamed baby clothing and supplies venture. The Respondent states that the startup selected another domain name as a preferred name. The Respondent retained the domain name <vachette.com> for a future start-up having a business suitable for association with the domain name <vachette.com>.
(5) The Respondent states the business of providing name and branding services is a bona fide offering of services in the United States of America. The Respondent maintains domain name registrations cleared against the US Trademark Register which may be suitable for naming or branding of start-up companies. The Respondent filed evidence of other companies in the branding, product names business whose promotional material supports the fact that such companies are interested in foreign words which may provide good branding advantages. (Annex 9, Response).
The Complainant states that the trademark VACHETTE is a famous trademark. The evidence shows use of the trademark VACHETTE is well known in France in relation to lock systems but there is no evidence of any reputation of the trademark in North America. The Respondent was not aware of the trademark VACHETTE at the time of registration of the domain name <vachette.com>. The Complainant submits that the Respondent offers a catalogue of domain names on the internet. The Respondent is in the name and branding business, partial trademark clearance and web designs and limits sale of names and brands to start-up companies who have not used a confusingly similar trademark prior to the date of registration of the domain name in dispute. The Respondent refused to sell the domain name in dispute to the Complainant. The Complainant submits that "vachette" is a French word that has no significance in English. The Respondent filed evidence that foreign words may have branding possibilities in the United States of America.
On the basis of the evidence submitted, the Panel finds that the Respondent has a legitimate interest in the domain name <vachette.com> in accordance with Paragraph 4c(i) of the Policy.
As the legal onus is on the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the domain name under Paragraph 4(a)(ii) of the Policy the Panel finds in favor of the Respondent on this issue. (See Allocation Network GmbH v Steve Gregory, WIPO Case No. D2000-0016).
d. Registration and Use in Bad Faith
As the Respondent has succeeded in establishing its right and legitimate interest in the domain name <vachette.com>, it is not necessary for the Panelist to consider bad faith.
e. Reverse Domain Hijacking
The Respondent requested the Panel to make a finding of reverse domain hijacking based on the facts of the case. The Panel finds that the Complainant did not commence the proceeding with malicious intent and recklessness or knowing disregard of the Respondent's rights or legitimate interests in the domain name <vachette.com>.
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights.
(b) That the Respondent has rights or legitimate interests in respect of the domain name.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel refuses the Complainant's request that the registration of the domain name <vachette.com> be transferred to the Complainant.
Dated: September 24, 2002