WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DOUX S. A. v. Cambridge
Case No. DBIZ2002-00272
1. The Parties
The Complainant is DOUX S. A. a French company registered at Quimper, France, with head office in Zone Industrielle de Lospars 29150 Chateaulin, France.
The Respondent is Cambridge, address in 3555 NW 74th Avenue, Miami, 33122 Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <supreme.biz>.
The registrar of the disputed domain name is IHOLDINGS.Com, Inc., doing business as Dotregistrar.com, 13205 SW 137th Avenue Ė Suite # 133, Miami, Florida 33186, United States of America.
3. Procedural History
Complainant initiated this proceeding under the Start-Up Trademark Opposition Policy for .biz ("STOP") by filing a complaint received by the WIPO Arbitration and Mediation Center (the "Center") via e-mail on June 11, 2002 and in hardcopy on June 14, 2002. Following notice from the Center of several formal filing deficiencies on June 14, 2002, Complainant submitted an amended complaint received by the Center via e-mail on June 17, 2002 and in hardcopy on June 22, 2002. The Center then verified that the complaint complied with the Rules for Start-Up Trademark Opposition Policy ("STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz ("Supplemental STOP Rules"). Complainant paid the requisite filing fees.
On July 11, 2002, the Center transmitted notification of the complaint and commencement of the proceeding to Respondent by courier and e-mail, and advised that the deadline for transmission of a response was July 31, 2002.
On August 1, 2002, the Center transmitted by e-mail notification to Respondent of its default in responding to the complaint.
Following receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence from this panelist, on August 13, 2002, the Center appointed the undersigned sole panelist as the Administrative Panel in this matter and notified the parties of the appointment.
4. Factual Background
Complainant is the holder of a registration in France for the trademark "SUPREME" in word and device (logo), covering numerous food products in classes 29 and 30 (Reg. No. 99 809 808 with filing date of August 30, 1999, Annex 3 to the Complaint). The logo consists of a "bubble" design around the word "supreme".
NeuLevel WHOIS Database information obtained by the Center shows that Respondent is registrant of the disputed domain name, and that the Administrative Contact, Billing Contact and Technical Contact is Domain Collection.com. As of the date of this decision, DomainCollection.com still offers the disputed domain name <supreme.biz> for sale to the public on its commercial website located at Internet address (URL) "www.domaincollection.com". Persons interested in purchasing the disputed domain name are invited to request a price quote. DomainCollection.com offers a substantial number of domain names for sale. The home page of DomainCollection.com indicates "Thousands of Premium Domains available, including .US .BIZ and .INFO names!" The home page also includes the following notice:
"Our Policy: It is the policy of domaincollection.com to respect the legal rights of others. We regret that the volume of domains available through Domaincollection makes it infeasible for us to investigate whether any particular domain offered for sale resembles a registered trademark or service mark. We advise buyers to conduct such investigations as may be appropriate in their circumstances.
DomainCollection strives to obey all applicable laws regarding the registration and use of domain names. We also adhere to the policies established by ICANN for domain name registrations."
The .biz Registration Agreement incorporates the STOP and STOP Rules (adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, revised November 19, 2001). In registering the disputed domain name with the registrar, Respondent accepted the .biz Registration Agreement and consented to be bound by the STOP and STOP Rules. The STOP and STOP Rules provide for the resolution of disputes by a designated dispute resolution service provider, of which the Center is one. This Panel is appointed by the Center to decide the complaint under the STOP pursuant to the STOP Rules.
5. Partiesí Contentions
Complainant states that it is the holder of rights in the trademark "SUPREME" (word and device) for food products as evidenced by its registration in France (Annex 3 to the Complaint). Complainant contends that the disputed domain name is a reproduction of its trademark and creates confusion between the two of them.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant filed search results showing that no prior trademark rights have been registered in Respondentís name in USA, France, Canada, nor as European Community Trademarks or WIPO International Trademarks (Annex 3 to the Complaint).
Furthermore, Complainant states that it gave no authorization to Respondent to register the disputed domain name.
Complainant indicates that the wording "THIS DOMAIN IS FOR SALE" is entered under the heading "Administrative Contact Address 1" of the "whois.biz" database (Annex 1 to the Complaint) and alleges that Respondent registered the disputed domain name in bad faith because the registration was made primarily for the purpose of selling it. Complainant states that Respondent is not commonly known by the disputed domain name, and consequently, such registration was made in order to disrupt Complainantís business.
Respondent did not reply to Complainantís contentions.
6. Discussion and Findings
The Center transmitted notification of the complaint and the complaint by air courier and e-mail to Respondent at the addresses set forth in its registration of the disputed domain name. The e-mail transmission is shown to have been undertaken successfully, and there is no indication in the file that the courier mailing was not successfully delivered. The Panel finds that the Center took the steps prescribed by paragraph 2(a) of the STOP Rules for communicating with Respondent. Paragraph 2(e) of the STOP Rules provides that when communication has been undertaken in accordance with paragraph 2(a), such communication "shall be deemed to have been made". The Panel finds that Respondent had notice of this proceeding within the meaning of the STOP Rules.
To establish the right to transfer of a name from a respondent, a complainant under the STOP must demonstrate pursuant to paragraph 4(a):
(i) The disputed domain name is identical to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered or is being used in bad faith.
The Complainant must prove that each of these three elements is present.
Complainant has submitted evidence of a French registration of the trademark "SUPREME" (logo). Respondent has not challenged the presumption of Complainantís rights in the mark based on registration. Every letter in the disputed domain name and the "SUPREME" mark being the same, the Panel determines that the disputed domain name is identical to the "SUPREME" trademark, irrespective of the fact that said mark is registered as a logo (Consignia Plc and Post Office Ltd. v. Aly Ramzan, WIPO Case No. DBIZ2002-00180; Genting Berhad v. Tan Kim Sin, WIPO Case No. DBIZ2002-00071).
Paragraph 4(c) of the STOP provides that "any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondentís] rights or legitimate interests for purposes of paragraph 4(a)(ii)":
(i) Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or
(ii) Before any notice to respondent of the dispute, its 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
(iii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights.
A .biz domain name as to which an IP Claim has been filed under the NeuLevel start-up distribution procedure is placed on hold to allow the initiation of an administrative proceeding challenge, as has been initiated by Complainant here. The use of a .biz domain name in connection with an active website is effectively precluded pending the resolution of a STOP challenge (see STOP paras. 3 & 7 regarding maintenance of status quo pending resolution of start-up claims). This has not prevented Respondent from offering the disputed domain name for sale to the public on its commercial website, although Respondent would not be able to transfer the name to a third party unless this proceeding were resolved in its favor (see STOP, para. 3).
Respondent has not asserted any rights or legitimate interests in the disputed domain name. There is no reason to suggest that Respondent might have a trademark right in the name, or have been commonly known by the name. As already held in a comparable case involving the same Respondent, the offering of the disputed domain name for sale in the context of this proceeding does not constitute a bona fide offering of goods or services in the sense of paragraph 4(c)(ii), STOP. (Aware, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00014).
Moreover, Respondent completed its registration of the disputed domain name following notice from the registrar of Complainantís trademark claim (IP Claim) pursuant to the NeuLevel .biz start-up procedure. Such notice does not invariably equate with "notice of a dispute" in the sense of paragraph 4(c)(ii), STOP. There is, however, no evidence before the Panel to rebut a presumption of such notice here. In the circumstances of this proceeding, Respondent had "notice of a dispute" prior to offering the disputed domain name for sale (see also Aware, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00014,).
Therefore, Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.
The STOP includes a non-exhaustive list of circumstances that will demonstrate bad faith registration or use of a disputed domain name:
"(i) Circumstances indicating that [Respondent has] 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 [its] documented out-of-pocket costs directly related to the domain name; or
(ii) [Respondent has] registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on your web site or location." (para. 4(b), STOP)
Respondent has offered the Domain Name for sale to the public. As Respondent is in the business of purchasing and reselling domain names, it is reasonable to assume that it expects on completing a sale to receive valuable consideration in excess of its documented out-of-pocket costs directly related to the name.
Respondent is not offering the disputed domain name for sale specifically to Complainant or a competitor. "Supreme" is a common descriptive term in the English and French language, and it may be assumed that there are potential uses of the word as a domain name that would not interfere with Complainantís rights in its mark (for example, in another line of commerce). It is reasonable to assume that a person other than Complainant or a competitor might purchase the disputed domain name and use it without disturbing Complainantís rights in its mark. (see Aware, Inc. v. Cambridge, WIPO Case No. DBIZ2002-00014).
The purchase and resale of domain names as such is a legitimate business, and participating in that business does not in itself evidence bad faith. The issue in this case is whether Respondent evidences bad faith by registering and offering to resell a domain name that directly incorporates Complainantís mark, when Respondent has been advised of Complainantís trademark claim in advance of registration, and when Complainantís mark theoretically might be purchased and used by third parties without infringing Complainantís rights. Respondent is essentially creating an auction in which Complainant must bid against others for use of its mark in a domain name, when there might be other good faith bidders. Following the analogous precedent involving the same Respondent (Aware, Inc. v. Cambridge, WIPO Case, No. DBIZ2002-00014) the Panel determines that Respondentís conduct constitutes bad faith registration and use of the Domain Name because Respondent (a) has prevented Complainant and any other business with a good faith interest in using the name from registering it, and (b) has placed Complainant and third parties in the position of paying more to purchase the domain name than if they were able to acquire it directly from an accredited registrar, without adding any value for Complainant or any prospective third party purchaser.
Complainant has demonstrated that Respondent registered the disputed domain name that is identical to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the disputed name, and that Respondent has acted in bad faith, all within the meaning of paragraph 4(a) of the STOP.
The Panel determines that Complainant, DOUX S.A., has met the burden of proving that Respondent, Cambridge, has registered the disputed domain name, <supreme.biz>, identical to a trademark in which Complainant has rights, that Respondent has not established rights or legitimate interests in that domain name, and that Respondent registered the disputed domain name in bad faith, all within the meaning of paragraph 4(a) of the Stop. The Panel therefore directs to transfer the disputed domain name to Complainant.
Dated: August 27, 2002