WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Prisma Presse v. CyberVision Network

Case No. DBIZ2002-00173

 

1. The Parties

The Complainant is Prisma Presse, a company incorporated under the laws of France, having its registered office at 6 rue Daru 75008, Paris, France. The Complainantís authorized representative is Deprez Dian Guignot, Law Firm of Paris, France.

The Respondent is CyberVision%20Network who address is recorded as PMB%20330%2d739%20%201733%20H% 20Street, Blaine, WA, 98230, United States of America. The Respondentís authorized representative is Stephen L. Anderson of Anderson & Shippey, Newport Beach, CA, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name is <capital.biz>.

The Registrar with which the disputed domain name is registered is Blueberry Hill Communications, Inc, 77-670 Springfield Ln., Ste 11B, Palm Desert, CA 92211, United States of America ("Registrar").

 

3. Procedural History

The Complaint was submitted for decision in accordance with the Start-up Trademark Opposition Policy ("STOP") for .BIZ, adopted by NeuLevel, Inc. and approved by Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, in accordance with the Rules for Start-up Trademark Opposition Policy for .BIZ, adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 ("STOP Rules"), and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("WIPO Supplemental STOP Rules").

The Complaint was received by the WIPO Arbitration and Mediation Center ("Center") via e-mail on April 27, 2002, and in hard copy on April 30, 2002.

On May 22, 2002, before the Notification of STOP Complaint and Commencement of Administrative Proceeding had been sent to the Respondent, the Respondent filed a Response.

On May 23, 2002, the WIPO Center sent the Notification of STOP Complaint and Commencement of Administrative Proceeding. It also advised the Respondent that its Response had been filed before the Administrative Proceeding had formally commenced and before a Response was due. The Respondent was asked to elect whether it wished to use the further 20 day period allowed to file a further or supplementary Response, or whether it preferred that the WIPO simply proceed forthwith with the appointment of a Panelist. On the same day, the Respondentís authorized representative requested the WIPO Center to immediately proceed with the appointment of a Panelist.

In accordance with Paragraph 4(a) of the STOP Rules, the Center has verified that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules. The Panel has reviewed the Complaint and is satisfied with the Centerís assessment that the Complaint satisfies the formal requirements of the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.

 

4. Factual Background

The Complainant

The Complainant publishes a magazine entitled "CAPITAL". It states that this magazine has been published in France since 1991 and has a significant reputation with the public. Approximately 400,000 copies of the magazine "CAPITAL" are sold per month.

The Complainant is the registered proprietor in France of the word mark "CAPITAL" in classes 16, 35 and 38. It is also the registered proprietor in France of the mark "CAPITAL (with colour device)" in classes 16, 35, 38 and 41. The Complaint is based on these two trademarks.

The Complainant is also the registered proprietor (in France) of a further 25 trademarks which incorporate the word "CAPITAL".

The Complainant claims that it has expended several million French Francs on Internet-related activities under the trademark "CAPITAL". It owns the following domain names:

h <capital.fr>
h <capital.info>
h <capital.presse.fr>
h <capital-mag.com>
h <capital.tm.fr>
h <capital-immo.com>
h <capitalimmo.com>
h <capital-mag.net>
h <capital-mag.org>

The Respondent

The Respondent is an Internet Service Provider based in the United States of America. It operates as a "sole proprietorship" owned by Mr. Ross Lebel, an individual. The Respondent states that in compliance with local law, Mr. Lebel filed a declaration for proprietorship in the name of CyberVision Network, an Internet Service Provider, in May 1996.

CyberVision Network is a business that offers Internet services including web hosting services on share servers and dedicated servers, domain name registrations, Internet connections, Internet and Intranet solutions, networks and networking services and sales and marketing services. The Respondent also offers website development services and offers support for such features as RealAudio/Video, Java Chat, Pop3 email, FTP, Telnet, Major Domo List server, MYSQL Database, Bulletin Boards, CGI Scripts, Perl Scripts, SSL Certificates and other e-commerce services such as SHOPPING CARTS, inventory tracking and shipping integration.

The Respondent registered the disputed domain name on March 27, 2002.

 

5. The Partiesí Contentions

A. The Complainant

The Complainant claims that each of the elements specified in Paragraph 4(a) of STOP have been satisfied.

The Complainant provided evidence that it is the registered proprietor of each of the trademarks relied upon: CAPITAL (registration number 1 739 212) and "CAPITAL (with color device)" (registration number 98 723 957).

The Complainant asserts that the Respondent has no rights or legitimate interests to the disputed domain name:

(a) The Respondent is not a licensee of the Complainant, and is in no way authorized to use the Complainantís trademark;

(b) The Respondent does not own any trademark comprising or including the word "CAPITAL";

(c) The Complainant is the sole owner of its trademarks "CAPITAL" and is the only entity authorized to use these trademarks.

The Complainant asserts that the Respondent has registered the disputed domain name in bad faith, or is using it in bad faith. It bases these contentions on the following:

(a) Capital is a famous magazine, and its title "Capital" is protected by numerous trademarks registered in France;

(b) The Respondent cannot ignore the existence of the "Capital" magazine which has a strong reputation, and is well-known worldwide.

The Complainant also asserts that there is no evidence of the Respondentís use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. It also claims that the Respondent is not known by the disputed domain name.

Finally, it claims that the name and address of the Respondent do not appear correctly on the Registry Operatorís Whois database, and that this is evidence that the Respondent took deliberate steps to hide its real identity.

B. The Respondent

The Respondent claims that it applied for the disputed domain name <capital.biz> for use as a vehicle for its Internet services. It states that it is well established that an intent to use a descriptive domain name for a related website constitutes use in connection with a bona fide offering of goods and services.

The Respondent asserts that the mark "CAPITAL" is a generic term, which was not registered by the Respondent in bad faith. The Respondent claims that it selected the disputed domain name "without the Complainant in mind" and that prior to receiving the IP Claim submitted by the Complainant, the Respondent had never seen a copy of the Complainantís magazine and was unaware that the Complainant had ever used the term CAPITAL.

The Respondent claims that it registered the disputed domain name because the mark "Capital" was apt, and was indicative of the fact that the Respondentís e-commerce services could be used by its customers as a "means to create wealth" or a further "advantage or gain", which might be obtained. It also states that the term "CAPITAL" alludes to the fact that the Respondentís services are "first rate or excellent".

The Respondent provided evidence that the term "CAPITAL" is susceptible to a number of definitions, including:

(i) Accumulating wealth esp. as used to produce more wealth;

(ii) The total face value of shares of a stock issued by a company;

(iii) Persons holding capital;

(iv) Advantage, gain;

(v) A larger letter than the ordinary small letter and often in different form;

(vi) The capital of a state or country;

(vii) The top part or piece of an architectural column;

(viii) Punishable by death;

(ix) Most serious;

(x) Expenditures;

(xi) First rate or excellent.

The Respondent also provided evidence that the "CAPITAL" also has numerous meanings in Spanish.

The Respondent claims that a cursory Internet search using any common search engine such as Yahoo, Google and Alta Vista reveals millions of "hits" which demonstrate "countless third-party use in connection with goods, services and non-commercial references that are totally unrelated to the Complainantís magazine". It cites as an example a search on the Google search engine, which revealed 19,600,000 websites. A search on the Yahoo search engine revealed 40 million hits.

The Respondent notes that the Complainant does not own a number of top level domain names and country-code domain names, such as <capital.com>, <capital.net>, <capital.org>, <capital.edu>, <capital.de>, <capital.bg>, <capital.ro> and so forth. All are registered in the name of various third parties.

The Respondent also states that there are 2,876 records of trade marks filed with the United States Patent and Trademark Office that contain or contained the term "CAPITAL". Not one of these is registered to the Complainant.

In addition, the Respondent states that a cursory review of the trademark registrations reveals numerous instances where third parties have claimed rights to marks containing or consisting of the term "CAPITAL" but have disclaimed the "CAPITAL" portion of the mark. The Respondent claims that these disclaimers are evidence of the generic nature of the term.

Further, the Respondent states that it has a legitimate interest in the mark "CAPITAL" because:

(1) The name was registered in connection with the bona fide offering of goods and services; and

(2) It aptly describes the Respondentís intended offering of goods and services which reflect the termís generic and descriptive meaning.

Finally, the Respondent asserts that the disputed domain name was not registered in bad faith. It cites the case of Immediate Software fur Marketing und Media Und Czaia v emmediate, WIPO Case No. DBIZ 2001-00007, February 13, 2002, where the Panel held:

"A non-exhaustive list of what constitutes bad faith registration and use of a domain name is found in paragraph 4(b) of the Policy. While that list is non-exhaustive, one common feature of all the examples given is that at the time of the registration of the domain name the Respondent had the Complainant in mind. In other words, at the time of the registration of the Domain Name, the Respondent intended to extort money from the Complainants, to block the Complainants, to disrupt the Complainantís business or to mislead Internet users into believing that the Respondentís on-line location is in some way associated with Complainantís on-line location."

The Respondent states that there is no evidence that the Respondent registered the disputed domain name with the intent of selling it to the Complainant, to disrupt its business, to prevent it from registering its name or to confuse consumers. It also points out that the Complainant has not provided any evidence of why the Respondent should have been aware of the Complainantís trademark "CAPITAL", since the Complainant publishes a French language magazine with limited circulation and the Respondent provides Internet services based in the United States and Canada. It states that the Complainant has failed to submit any evidence to support its assertion that "Capital magazine Ö has a strong reputation and is well-known world wide".

The Respondent also claims that the fact that its address was recorded as "PMB%20330%2d739%20%201733%20H% 20Street, Blaine, WA, 98230, United States of America" was not as a result of the Respondent attempting to hide its true identity. It claims that the %20 symbols were not inputted by the Respondent but were a computer generated "glitch" which appeared in place of spaces in the Respondentís address details.

 

6. Discussion and Panel Findings

Domain name is identical to a trademark or service mark in which the Complainant has rights

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.

The disputed domain name is clearly identical to the trademark "CAPITAL" in which the Complainant has rights. The Respondent does not deny that the disputed domain name is identical to the Complainantís registered trademark "CAPITAL".

However, the Panel notes that the Complainantís trademarks "CAPITAL" and "CAPITAL (with colored device)" on which it relies, are both registered only in France and there is no evidence to substantiate the claim that it has a reputation outside France Ė particularly in Canada and the US. This will have implications for the other elements of the STOP.

No rights or legitimate interests in respect of the domain name

The Panel considers that the word "CAPITAL" is a generic or descriptive term. It has plainly been used by a significant number of third parties in relation to domain name registrations, trademark registrations and in a generic sense. Therefore, the Panel is unable to accept the Complainantís assertion that "the Complainant is Ö the only one authorized to use said trademarks". Clearly, other parties are using the trademark "CAPITAL" and other domain names incorporating the trademark (e.g. <capital.com>, <capital.net> and <capital.org>, and are entitled to do so.

The disputed domain name does not appear to be currently in use. However, the Respondent has asserted that it registered the disputed domain name as a vehicle for its Internet services. This is confirmed in the affidavit of Ross Lebel annexed to the Response.

Paragraph 4(c) of the STOP sets out certain circumstances that, in particular but without limitation, demonstrate the Respondentís rights or legitimate interest in the disputed domain names:

(i) that the Respondent is the owner or beneficiary of a trade or service mark that is identical to the disputed domain name; or

(ii) before any notice to the Respondent of the dispute, the Respondent has used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(iii) that the Respondent, as an individual, business or other organization, has been commonly known by the disputed domain name, even if the Respondent has not acquired any trademark or service mark rights.

The burden of proof is on the Complainant to demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Given the generic nature of the disputed domain name, the Panel considers that the Complainant needs to do more than merely assert its own trademark rights to the name, especially as the Complainant has not proved any reputation outside France and the Respondent is located in the United States of America. The Respondent has specifically stated that when he first applied to register the disputed domain name for the purpose of offering goods and services, he did so without any knowledge of the Complainant. The Respondentís principal has provided an affidavit stating that this was in fact the position.

The Panel therefore finds that the Complainant has not discharged the onus of proving that the Respondent has no right or legitimate interest in the disputed domain name.

Domain name was registered or is being used in bad faith

Under the STOP Policy, Complainant must only show either bad faith registration or bad faith use, not both as are required under the UDRP. The STOP provides that:

"The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be considered evidence of the registration or use of a domain name in bad faith:

i. Circumstances indicating that you have registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the 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 Complainant from reflecting the mark in a corresponding domain name; 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 Panel does not consider that there is any evidence to demonstrate that the disputed domain name was registered in bad faith under any of these circumstances. It does not see any reason to disbelieve the Respondentís assertion that it had not heard of the Complainant or the Complainantís magazine Capital at the time it first applied to register the disputed domain name. The Panel accepts the view set out in Immediate Software fur Marketing und Media und Czaia (supra) where the Panel held:

"A non-exhaustive list of what constitutes bad faith registration and use of a domain name is found in paragraph 4(b) of the Policy. While that list is non-exhaustive, one common feature of all the examples given is that at the time of the registration of the domain name the Respondent had the Complainant in mind. In other words, at the time of the registration of the Domain Name, the Respondent intended to extort money from the Complainants, to block the Complainants, to disrupt the Complainantís business or to mislead Internet users into believing that the Respondentís on-line location is in some way associated with Complainantís on-line location."

(emphasis added)

The Complainant has not put forward any evidence to support a finding of bad faith under any of these categories.

In addition, the Respondent has convincingly answered the challenge that it tried to hide its true identity. The Panel accepts the Respondentís explanation that this was a computer-generated glitch.

Finally, the Panel notes that the disputed domain name has not been used, so the alternative limb of the bad faith test - that the disputed domain name has been used in bad faith - is not relevant on the facts of this case.

The Panel therefore finds that the disputed domain name was not registered in bad faith, nor is it being used in bad faith. The Complainant has not proven paragraph 4(a)(iii) of the STOP.

 

7. Decision

The Panel finds that:

(a) The disputed domain name is identical to a trademark or service mark in which the Complainant has rights;

(b) The Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) The Complainant has failed to demonstrate that the disputed domain name was registered or is being used in bad faith.

The Complainant having failed to prove the requirements of the STOP, the Panel dismisses the Complaint.

The Panel notes that there are other potential Complainants who wish to challenge the registration of the domain name <capital.biz>.

As noted, the Panel dismissed this Complaint on the basis that the Complainant failed to discharge the onus of proof required to demonstrate that the Respondent had no legitimate rights to the disputed domain name and that there was no evidence of bad faith. In these circumstances, Paragraph 15 of the STOP Rules provides that subsequent challenges under the STOP against the disputed domain name shall be permitted, although not by the same Complainant.

 


 

A H Brown
Sole Panelist

Dated: July 3, 2002