WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Air France v. Bakemark Sverige AB
Case No. DBIZ2002-00048
1. The Parties
Complainant is Société Air France, with offices at 45 rue de Paris, F-95747 Roissy CDG Cedex, France, represented by Meyer & Partenaires, patent and trademark agents, Bureaux Europe, 20 Place des Halles, 67000 Strasbourg, France.
Respondent is Bakemark Sverige AB, Box 47619, 117 94 Stockholm, Sweden, represented by Christer Lindberg who appears to be an employee of Respondent.
2. The Domain Name and Registrar
The domain name at issue is <bonjour.biz> (the Domain Name), registered on March 27, 2002, with Nameengine of New York, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Complainantís complaint on April 25, 2002 (electronic version) and April 26, 2002 (hard copy). The Center verified that the complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy for .BIZ (the STOP), the Rules for Start-up Trademark Opposition Policy (the STOP Rules), and the Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the WIPO Supplemental STOP Rules). The formal date of the commencement of this administrative proceeding is May 22, 2002.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on May 22, 2002, to Respondent and to the Registrar, Notification of Complaint and Commencement of the Administrative Proceeding, via fax, courier and e-mail.
The Center advised that the response was due by June 11, 2002. However, Respondent had already sent its response to the Center on May 17, 2002, (electronic version) and on May 22, 2002 (hard copy).
On May 30, 2002, the Center invited Mr. Geert Glas to serve as a panelist. Having received Mr. Geert Glasí Statement of Acceptance and Declaration of Impartiality and Independence on May 31, 2002, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist, on June 4, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental STOP Rules.
The Administrative Panel shall issue its Decision based on the complaint, the response, the evidence presented, the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
4. Factual Background
Complainant is the owner of numerous trademark registrations in various countries for the trademark "BONJOUR". Copies of certain trademark registrations are attached to the complaint. These are:
- the French mark nį 1262027, filed on February 28, 1974, for the word mark "BONJOUR", for the classes 16, 39 and 42;
- the U.S. mark nį 1055266, registered on December 28, 1976, for the device mark "BONJOUR", for the classes 35 and 39; and
- the Swedish mark nį 149876, registered on January 3, 1975, for the word mark "BONJOUR", for the classes 16, 39 and 42.
It appears from the file that Complainant did not contact Respondent prior to filing its complaint.
There is no relation between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained an authorization to use Complainantís trademarks.
It is relevant to note that a Swedish company called Van Den Bergh Foods Aktiebolag is presently the owner of the Swedish word mark "BONJOUR", registered on November 15, 1974, for goods of the class 29. It appears from the Notification of .BIZ Intellectual Property Claim Conflict sent by NeuLevel to Complainant's representative by email on September 19, 2001, that Respondent filed its IP Claim with NeuLevel on the basis of this trademark. Curiously, Respondent did not name the mark, but merely gave the date, nationality and class of the trademark registration.
The Domain Name does not resolve to any web page.
5. Partiesí Contentions
According to Complainant, Complainant is the third largest international passenger carrier in the world, tracing its origins back to 1933. It offers the largest medium-haul network in Europe today in terms of daily flights, namely 1,700 daily flights to 200 destinations in 85 countries. Complainant also welcomed 42,4 millions passengers on its flights in the years 2000 and 2001 and its turnover for the years 2000 and 2001 is close to EUR 12,3 billions.
In 1974, Complainant launched a brochure named "BONJOUR" and associated services to promote tourism in France, targeting foreign visitors. The brochure contains information about how and where to spend one's holiday in France and lists several hotels, restaurants, museums and other useful tourist information.
Since 1994, the French Groupement d'Intérêt Economique "Maison de la France" is in charge of the worldwide promotion of tourism in France, and as such it has become the exclusive licensee of Complainant's trademark "BONJOUR".
Complainant contends that the Domain Name registered by Respondent is identical to Complainant's trademark, that Respondent has no right nor legitimate interest in the Domain Name and that Respondent registered the Domain Name in bad faith.
Consequently, Complainant requires the transfer of the Domain Name registration.
In its response, Respondent merely states the following:
"BakeMark Sverige AB was a division in Van den Bergh Foods AB until 2001 October 1. At that time our company was bought by CSM Bakery Supplies Europe Co. All legal rights of the trademark BONJOUR were transferred to BakeMark Sverige AB.
We have an agreement with Van den Bergh Foods AB to use the trademark BONJOUR.
BONJOUR is the name of our BREAD assortment used worldwide.
12 companies all around the world represent CSM Bakery Supplies Europe.
Our products operate in both classes 29 and 30."
6. Discussion and Findings
Paragraph 15(a) of the STOP 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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the STOP directs that Complainant must prove each of the following:
(1) that the Domain Name registered by Respondent is identical to the trademark or service mark in which the Complainant has rights; and,
(2) that Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered or is being used in bad faith.
The Domain Name is <bonjour.biz>.
"BONJOUR" is a registered trademark of Complainant.
In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark of Complainant, which is moreover not contested by Respondent.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks, nor has he ever been known by this name.
Respondent states that until October 1, 2001, it was a division of the company Van den Bergh Foods AB, which is the owner of a Swedish trademark registration for the word mark "BONJOUR" and that it has an agreement with Van den Bergh Foods AB with regard to this trademark.
While Respondentís position appears to the Panel to be a reasonable one, which could qualify for a legitimate right if properly evidenced, Respondent has produced no documentation whatsoever to support its position. If Respondent was previously a part of Van den Bergh Foods AB and if it was granted any right to the trademark owned by Van den Bergh Foods AB, one may reasonably expect there to be at least some documentation that could have been put before the Panel as evidence of the alleged right.
In these circumstances, the Panel is not in a position to find that Respondent has rights or legitimate interests in respect of the Domain Name.
c. Registration or Use in Bad Faith
When filing its IP Claim, Respondent based it on a trademark owned by a third party, namely Van den Bergh Foods AB. While Respondent did have ample opportunity to evidence its relationship with Van den Bergh Foods AB in the framework of this proceeding, as well as its possible rights to the trademark "BONJOUR" deriving from this relationship, it obviously failed to do so.
It should be kept in mind that the IP Claim filed by Respondent indeed contains a representation that the applicant is the owner of a registered or common law trademark or service mark. Moreover, as both Respondent and Complainant filed identical IP Claims, Respondent was made aware, prior to the registration of the Domain Name, of Complainant's trademark rights and IP Claim.
Notwithstanding this, Respondent decided to proceed with the registration of the Domain Name, thereby disregarding Complainant's trademark rights without having rights of its own.
Therefore, the Panel finds that when registering the Domain Name, Respondent knowingly chose a name which is identical to the trademark of Complainant, thereby intentionally creating a situation which is at odds with the legal rights and obligations of the parties.
In conclusion and in view of the above, it is the Panelís opinion that Respondent registered the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name <bonjour.biz> registered by Respondent is identical to the trademark of Complainant, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that Respondent registered the Domain Name in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the STOP, the Administrative Panel requires that the registration of the Domain Name <bonjour.biz> be transferred to Société Air France.
In accordance with Paragraphs 4(l)(ii)(1) of the STOP and 15(e)(i) of the STOP Rules, the Panel decides that no subsequent challenges under the STOP against the disputed Domain Name shall be permitted.
Dated: June 20, 2002