WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prisma Presse v. Pass Consultants
Case No. DBIZ2002-00235
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 Pass Consultants, with offices at 28 Wealdon Close, Southwater Horsham, West Sussex Rh13 7hp, United Kingdom, represented by Mr. Ian M. Pass, at the same address as the Respondent.
2. The Domain Name and Registrar
The domain name at issue is <gala.biz> (the Domain Name), registered on March 27, 2002, with Internetters Limited of Middlesex, United Kingdom.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Complainant’s complaint on May 17, 2002 (electronic version) and May 23, 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 June 12, 2002.
Having verified that the complaint satisfied the formal requirements of the STOP and the STOP Rules, the Center transmitted on June 12, 2002, to Respondent and to the Registrar, Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier and e-mail.
The Center advised that the response was due by July 2, 2002. On June 27, 2002, Respondent sent its response to the Center by email. On July 8, 2002, the Center received the hard copy of the response.
On July 9, 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 16, 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 19, 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 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 weeklies, 9 monthlies and 1 bimonthly, comprising the magazine "Gala". According to the information found on the dedicated web site of the magazine, located at "http://www.gala.fr", "Gala's credo is to inform, distract and make dream, thanks to exclusive photographs and reports (mainly about rich and famous people) a luxurious layout and a spectacular format. Single in its kind, Gala is the most feminine of the "people" magazines." (freely translated from French).
Statistics dated April 17, 2001, inserted in the sample magazine provided as annex to the Complaint, show that the magazine sells at an average of 277,385 copies per month, including 248,716 copies sold in France and 28,669 copies sold in the rest of the world.
Complainant is the owner of numerous trademark registrations for the trademark "Gala". Copies of these trademark registrations are attached to the complaint. These are, among others:
- the International mark n° 424552, registered on August 26, 1976, for the semi-figurative mark "Gala", for goods of class 16;
- the French mark n° 94511032, filed on March 15, 1994, for the semi-figurative mark "Gala", for services of classes 38 and 41;
- the French mark n° 95598981, filed on November 23, 1995, for the semi-figurative mark "Gala", for goods and services of classes 16, 35 and 41; and
- the French mark n° 013114658, filed on August 1, 2001, for the semi-figurative mark "Gala", for services of classes 38, 41 and 42.
According to the response, Respondent is a British consultancy company engaging in telecommunications, design and management services, international equipment procurement, marketing studies and asbestos survey and management.
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.
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 "Gala". 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 "Gala". In addition, Complainant asserts that Respondent registered the Domain Name in bad faith because its "Gala" magazine is very well know throughout Europe, which Respondent cannot have ignored. Finally, Complainant contends that there is no evidence of Respondent's use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services prior to any notice to Respondent of the dispute.
Consequently, Complainant requires the transfer of the Domain Name registration.
In its response, Respondent brings forth in summary the following arguments:
- Respondent registered the Domain Name for and on behalf of Gala Marketing Limited, as evidenced by documents provided by Respondent in annex to the response;
- The word "Gala" is a word appearing in English dictionaries and is therefore generic;
- Respondent and Gala Marketing Limited have done business together since 1995 in a number of areas, and Respondent already registered the domain name <gala-group.co.uk> for Gala Marketing Limited;
- Neither Gala Marketing Limited nor Respondent have any intention to infringe upon the rights of any third party with the Domain Name;
- It is the understanding of Respondent that Complainant does not have any trademark rights to the word "Gala" within the United Kingdom – and potentially many other countries, apart from France, Monaco and Switzerland;
- Since Complainant's magazine "Gala" is not written in the English language, it is not well known within the United Kingdom. Accordingly, Complainant’s allegation that "The Respondent cannot ignore the existence of the "Gala" magazine which has a strong reputation, and is well known in Europe" is incorrect;
- Prior to the issuance of this STOP Procedure, neither Gala Marketing Limited nor Respondent knew of Complainant and it’s publications. The issue of whether Pass Consultants might have applied for the Domain Name with a view to then offering it to the Complainant does not arise – both by virtue of having registered the Domain Name with the agreed object of transferring it to Gala Marketing Limited and by being unaware of the Complainant’s existence at the time of the application for the Domain Name;
- Complainant asserts that "prior to any notice to the domain name registrant of the dispute, there is no evidence of the registrant’s 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". Respondent regards this claim as untrue since it is Complainant’s invocation of the STOP procedure, which has until now inhibited any use of the Domain Name.
Consequently, Respondent requires that the transfer of the registration of the Domain Name be denied.
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 <gala.biz>.
"Gala" 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.
However, it appears from the evidence submitted by Respondent that the latter has indeed been asked by Gala Marketing Limited to register the Domain Name on its behalf. In June 2000, Gala Group made a similar request to Respondent with regard to the <gala-group.co.uk> domain name which was subsequently registered and is now used by Gala Marketing Limited. Judging from the content of this latter website, Gala Marketing Limited seems to be a bona fide company offering marketing services to (predominantly) U.K. based clients.
Having registered the Domain Name on behalf of one of its clients who itself seems to have a right and legitimate interest to the GALA name, the Administrative Panel finds that Respondent did under the given circumstances have a legitimate interest in the Domain Name.
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:
- Respondent registered the Domain Name at the express request and on behalf of a company called Gala Marketing Limited;
- There is no evidence that Respondent or Gala Marketing Limited knew of Complainant or the "Gala" magazine before the registration of the Domain Name.
While the French language "Gala" magazine is indeed very well known in France and other French speaking countries (Switzerland, Canada, Belgium…), it cannot be presumed that Respondent or Gala Marketing Limited who are both established and active in the U.K. had Complainant's trademark in mind when registering the Domain Name.
In view of these facts, it appears to the Panel that when Respondent registered the Domain Name it did so because it was requested to do so on behalf of Gala Marketing Limited and that there are no indications that this decision was influenced by Complainant's trademark.
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 <gala.biz> registered by Respondent is identical to the trademark of Complainant, that Respondent has a legitimate interest in respect of the Domain Name, and that it is not established that Respondent would have 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. In addition, pursuant to Paragraph 4(l)(ii)(2) of the STOP and Paragraph 15(e)(ii) of the STOP Rules, the Administrative Panel decides that no subsequent challenges under the STOP against the Domain Name shall be permitted.
Dated: July 31, 2002