WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prisma Presse v. Femmes
Case No. DBIZ2002-00174
1. The Parties
Complainant is Prisma Presse, having its registered offices at 6, rue Daru, 75008 Paris, France, represented by the law firm Deprez Dian Guignot, with offices at 21, Rue Clément Marot, 75008 Paris, France.
Respondent is Femmes, with offices at 57, rue Boissière, 75116 Paris, France.
2. The Domain Name and Registrar
The domain name at issue is <femme.biz> (the Domain Name), registered on March 27, 2002, with Melbourne IT d/b/a Internet Names World Wide of Melbourne, Australia.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Complainant’s complaint on April 27, 2002 (electronic version), and April 30, 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 28, 2002.
Having verified that the complaint satisfied the formal requirements of the STOP and the STOP Rules, the Center transmitted on May 28, 2002, to Respondent and to the Registrar, Notification of Complaint and Commencement of the Administrative Proceeding, via fax, post/courier and e-mail.
The Center advised that the response was due by June 17, 2002. However, Respondent did not submit any response. Consequently, the Center issued a Notification of Respondent Default on July 4, 2002.
On July 12, 2002, the Center invited Mr. Geert Glas to serve as a panelist. Having received Mr. Geert Glas’ Statement of Acceptance and Declaration of Impartiality and Independence on July 15, 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 July 17, 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 evidence found and presented, the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.
4. Factual Background
According to the information found on Complainants' web site, located at http://www.prisma-presse.com, Complainant is France's second largest magazine press group. It publishes 15 titles, including 5 weekly editions, 9 monthly editions and 1 bimonthly edition, comprising the magazine "Femme", selling at 53,043 copies per month. "Femme" is a magazine directed towards women, which takes a feminine look at society, fashion, beauty, shopping and trends. More information on this magazine can be found on the web site located at http://www.femme.fr/.
"Femme" is the French word for "Woman".
Complainant is the owner of numerous trademark registrations for the trademark "FEMME". Copies of these trademark registrations are attached to the complaint. These are:
- the French mark n° 1278080, filed on July 5, 1984, for the semi-figurative mark "FEMME", for class 16;
- the French mark n° 1449191, filed on February 10, 1988, for the semi-figurative mark "FEMME", for classes 9, 35, 38, 39 and 41;
- the French mark n° 95592489, filed on October 16, 1995, for the semi-figurative mark "FEMME", for class 16; and
- the International mark n° 479402A, registered on September 17, 1983, for the word mark "FEMME", for class 16.
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 Complainant’s trademarks.
According to the contact information on the WHOIS record of the Domain Name, it appears that Respondent also owns the domain name <actiondefemme.fr>. This is furthermore confirmed by the WHOIS database of the AFNIC (Association Française pour le Nommage Internet en Coopération), the French Network Information Center. The web site, which is exploited under http://www.actiondefemme.fr/, provides considerable information about Respondent. As per this web site, Respondent is the association "Action de Femme", the aim of which is to enable women to express themselves and to take an active part in the decision-making process of administration bodies of companies, such as board of directors or other councils. According to the press section of the association's web site, which lists references to articles in several magazines and newspapers about the association, Complainant's magazine "FEMME" published an article about Respondent in its March 1999 issue.
The Domain Name does not resolve to any web page.
5. Parties’ Contentions
According to Complainant, the Domain Name is identical to Complainant's trademark "FEMME". Complainant furthermore states that Respondent has no rights or legitimate interests in respect of the Domain Name since Respondent is not a licensee of Complainant and does not own any trademark including the word "femme". Finally, Complainant asserts that Respondent registered the Domain Name in bad faith because "FEMME" is a magazine which is very well known in France and which Respondent cannot have ignored.
Consequently, Complainant requires the transfer of the Domain Name registration.
Respondent did not submit any Response.
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 <femme.biz>.
"FEMME" 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
Because of the Administrative Panel's view of the evidence directed to bad faith registration or use below, it is not strictly necessary for the Administrative Panel to consider this ground of the Complaint, in order for the Panel to conclude that the Complaint should be dismissed. However, this is a situation where there are multiple IP claimants, and it is therefore necessary under Paragraph 4(l)(ii) of the STOP to consider whether the Respondent has demonstrated that it has "legitimate rights to the domain name."
By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate its rights or legitimate interests in the Domain Name.
In view of this failure to submit a response, Respondent cannot be found to have demonstrated such rights or interests.
The Administrative Panel thus finds that the Respondent has not established that the Respondent has a legitimate interest in the Domain Name as required by Paragraph 4(l)(ii) of the STOP.
c. Registration or Use in Bad Faith
Several facts have to be taken into consideration when assessing the absence/presence of bad faith in this matter:
1. "FEMME" is not only the trademark of Complainant, but also a common word in the French language, which plainly means "woman";
2. Respondent is an association that promotes the active presence of women in decision-making bodies of legal entities;
3. Respondent is known as "Action de Femme";
4. Respondent did not file any response, failing thereby to invoke any circumstances that could demonstrate its good faith in the registration or use of the Domain Name.
In view of these facts, it appears to the Panel that Respondent registered the Domain Name primarily because it is an easy word that perfectly corresponds to Respondent's purposes, activities and targeted public.
Although one may reasonably assume that Respondent knew of Complainant and its "FEMME" publication since quite some time, the Panel finds that this element does not as such prove the mere assertion that Respondent registered the Domain Name because of Complainant's trademark "FEMME" and in violation of Paragraph 4(b)(i), (ii), (iii) or (iv).
Consequently, in consideration of, and weighing the facts above stated, the Administrative Panel finds that the circumstances present do not indicate that Respondent registered the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name <femme.biz> registered by Respondent is identical to the trademark of Complainant, but it is not established that Respondent has registered the Domain Name in bad faith. Accordingly, pursuant to Paragraph 4(i) of the STOP, the Administrative Panel denies Complainant's request for transfer.
Pursuant to Paragraph 4(l)(ii)(3) of the STOP and Paragraph 15(e)(ii) of the STOP Rules, the Administrative Panel decides that subsequent challenges under the STOP against the Domain Name shall be permitted.
Dated: July 31, 2002