WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Marie Claire Album v. ATS

Case No. D2003-0096

 

1. The Parties

The Complainant is Marie Claire Album of Issy les Moulineaux, France, represented by Béatrice Vrignaud of France.

The Respondent is ATS of Raeford, North Carolina, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <marieclairemag.com> is registered with Tucows Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 10, 2003, by email, and on February 12, 2003, by hard copy. The Complaint stated that the registrar was 123cheapdomains.com and that a copy of the Complaint had been sent to the Respondent and also to the above-mentioned registrar. On February 12, 2003, the Center transmitted by email to disputes@opensrs.org a request for registrar verification in connection with the domain name at issue. Later on February 12, 2003, disputes@opensrs.org transmitted by email to the Center its verification response that the domain name is registered with Tucows Inc., that the Respondent is the current registrant of the domain name, that a copy of the Complaint had not been received by the said Registrar and provided the contact details for the administrative, billing, and technical contacts. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed with the Center an amendment to the Complaint on February 18, 2003, by email, and on February 19, 2003, by hard copy correcting the name of the Registrar to Tucows Inc. The Complainant has advised that the amendment was sent to the Respondent and that the original Complaint along with the amendment were sent to the correct Registrar. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint by Notification of Complaint and Commencement of Administrative Proceeding on February 19, 2003. The Panel notes that according to the FedEx report this document in a Priority Envelope was delivered to the Respondent and acknowledgement of receipt was signed by "B. Swain" on February 24, 2003. However there was an error in the original Notification of Complaint and Commencement of Administrative Proceeding as to the amount to be paid by the Respondent in the event the latter wished to designate a three-member panel. The Notification was corrected later the same day and the corrected Notification was resent on February 20 and February 25, 2003. The proceedings commenced on February 19, 2003. In accordance with paragraph 5(a) of the Rules, the due date for Response was March 11, 2003. No Response was received by the Center which forwarded a Notification of Respondent's Default to the Parties on March 13, 2003.

The Center appointed Joan Clark as the Sole Panelist in this matter on March 26, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence as required by the Center to ensure compliance with paragraph 7 of the Rules.

 

4. Factual Background

The Complainant is the owner of the following registered trademarks for the words MARIE CLAIRE:

French trademark registration for MARIE CLAIRE No 1712118 covering especially international classes 16 and 41 registered December 16, 1991, and renewed August 16, 2001;

French trademark registration for MARIE CLAIRE No 1712366 covering especially international classes 16, 38 and 41 registered December 17, 1991, and renewed August 16, 2001;

International trademark registration for MARIE CLAIRE No R 338 976 covering classes 1 to 42 over 24 countries registered September 21, 1987;

US trademark registration for MARIE CLAIRE No 1224181 covering especially class 16, registered January 18, 1983. A certificate of renewal of this registration, due to expire on January 18, 2003, was not filed;

US trademark registration for MARIE CLAIRE No 1974703 covering especially classes 38 and 41 registered May 21, 1996.

The Complainant asserts, which is not contested by the Respondent (the latter not having filed a Response), that the MARIE CLAIRE trademark has been used since 1937 in France to designate a womenís magazine, and that more than 25 international editions have been launched in the United States of America, Europe, South Africa, Brazil, Mexico, Australia and elsewhere. It is also asserted by the Complainant that the MARIE CLAIRE trademark has many websites including "www.marieclairemagazine.com" and "www.marieclaire-magazine.com."

The domain name in dispute owned by the Respondent does not appear to resolve to a website according to a printout produced by the Center.

According to copies of correspondence produced by the Complainant, prior to filing the Complaint the Complainant wrote on December 18, 2002, to the Respondent, to the attention of Mr. Antoine Swain, asserting the Complainantís ownership of the trademark MARIE CLAIRE worldwide, the extensive advertising thereof and the Complainantís rights and goodwill therein. The Complainant claimed that the Respondentís registration of the domain name <marieclairemag.com> infringed its trademark rights, was likely to cause confusion and was a violation of the Policy. The Complainant called upon the Respondent to cancel the domain name or to transfer it to the Complainant free of charge and required an answer by January 5, 2003, failing which the Complainant would be forced to pursue any and all legal remedies available.

On December 23, 2002, Mr. Antoine Swain replied to the Complainantís letter stating inter alia that he was a domain name broker who "come[s] up with domain names and list[s] them in an auction." He asserted that according to the Policy he was in his rights to register any domain name as long as he was not using it in bad faith. He concluded that he had no intention to use the domain name "as a business or etc." and the only way he would transfer the domain name would be for no less than $35,000.

There is no record of further correspondence between the Parties and the Complaint herein was filed on February 10, 2003.

 

5. Partiesí Contentions

A. Complainant

The Complainant maintains that the domain name <marieclairemag.com> is identical or at least confusingly similar to the MARIE CLAIRE trademark and that the three letters "mag" which refer to "magazine," being the main product sold under the MARIE CLAIRE trademark, have been added to create confusion when consumers try to connect themselves to this address.

The Complainant adds that it has been successful in other domain name cases, including:

<mariclaire.net> in the case of Marie Claire Album v. Byoung Ryull Moon, WIPO Case No. D2001-0884 (October 20, 2001); <e-marieclaire.com>, <mariclaire.com>, <mariclaire.net>, <mariclaire.org> in the case of Marie Claire Album v. Barestel Serveis S.L.L., WIPO Case No. D2001-1452 (March 6, 2002); and <marieclairemagazine.com> in the case of Marie Claire Album S.A. v. Buy This Domain, WIPO Case No. D2002-0677 (September 4, 2002).

The Complainant asserts that the Respondent has no rights or legitimate interests in the "marie claire" name or in "marieclairemag," and refers to the correspondence that ensued between the Parties in which the Respondent stated he was a domain name broker and proposed to sell the domain name.

The Complainant further asserts that the domain name <marieclairemag.com> was registered primarily for the purpose of selling the registration to the Complainant who is the owner of the trademark for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name, and notes that the Respondent proposes to sell the domain name for an amount between $35,000 and $60,000.

The Complainant requests that the domain name be transferred to the Complainant.

B. Respondent

The Respondent did not file a formal Response although, prior to the filing of the Complaint, Mr. Antoine Swain made his position clear in his letter to the Complainant dated December 23, 2002, referred to under Factual Background above.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy states that in order to be successful, a Complainant has the burden of proving that all three elements are present in the Complaint, namely:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent's rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The first and most significant part of the domain name in dispute consists of "marieclaire," which is almost identical and certainly confusingly similar to the Complainantís trademark, the only difference being that, in the registered trademark, there is a space between "marie" and "claire," and also the letters are in upper case.

The leading and distinctive element "marieclaire" is followed by "mag" which is the abbreviation of "magazine," being the principal product with which the Complainantís trademark is associated. As was found in Marie Claire Album S.A. v. Buy This Domain, WIPO Case No. D2002-0677 (September 4, 2002) concerning the domain name <marieclairemagazine.com>, the descriptive addition "magazine" (or in the present case, its abbreviated form "mag") "actually refers directly to the original and main object identified by the trademark, i.e. the Marie Claire magazine. Instead of being a mere addition without significance from the perspective of this comparison, this addition reinforces the likelihood of confusion with the trademark held by the Complainant." The Panel adopts this conclusion.

The Panel has no hesitation in finding that the domain name in dispute is confusingly similar to the Complainant's trademark MARIE CLAIRE in which the Complainant has rights and that the requirement of paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no legitimate interests in the "marie claire" name or in "marieclairemag" and in apparent support of this statement refers to the correspondence between the Parties referred to above and, in particular, the Respondentís statement in his letter of December 23, 2002, that he is a domain name broker and proposes to sell the domain name.

By the Complainant's assertion aforesaid and reference to the above statement of the Respondent, the burden of proving that the Respondent has no rights or legitimate interests in the domain name has shifted and it is therefore the Respondent who must demonstrate his rights or legitimate interests in the domain name.

The Respondent has failed to demonstrate his rights or legitimate interests in the domain name. Since the Respondent did not file a formal Response, the matter could be left there, but in fact the informal letter from the Respondent to the Complainant dated December 23, 2002, reinforces the Complainantís position that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) of the Policy provides examples of three sets of circumstances which, if proven, may demonstrate a Respondent's rights or legitimate interests in the domain name. Referring to these three non-limitative situations, the Panel finds that the Respondent has not used, and does not intend to use, the domain name in connection with the bona fide offering of goods or services; there is no evidence that the Respondent has been commonly known by the domain name; and the Respondent is not making a legitimate non-commercial or fair use of the domain name without intent for commercial gain. The Respondent's candid admission that he did not intend to use the domain name but intended to sell it for a substantial sum portrays the very conduct which if unchecked would undermine the purpose and good functioning of a useful system of domain name registrations and use.

The Panel finds the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Respondent's conduct falls squarely within the parameters of one set of circumstances set forth in paragraph 4(b)(i) of the Policy which may be evidence of the registration and use of a domain name in bad faith. The Respondent has admitted that he has acquired the domain name primarily for the purpose of selling the domain name registration for a valuable consideration of $35,000 or more, being certainly in excess of the out-of-pocket costs directly related to the domain name.

While the Respondent does not specifically state that his purpose was to sell the domain name to the Complainant or a competitor of the Complainant, it is fair to presume that the Complainant would be the logical potential purchaser of the domain name, as intended by the Respondent. The Panel has no hesitation in concluding that the domain name was registered in bad faith. The circumstance outlined in paragraph 4(b)(i) of the Policy is given as an example of both registration and use in bad faith. That is therefore sufficient to fulfill the requirement of both registration and use in bad faith. The Panel supplements this with the principle, laid down in numerous decisions, that the use needs not be active use but may be passive holding, such as the mere registration of the domain name which prevents the use of the same domain name by another. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000); Tengizchevroil v. Hardinvestments Limited, WIPO Case No. D2002-0061 (April 4, 2000); Plymouth Savings Bank v. Telmex Management Services, WIPO Case No. D2001-1333 (February 27, 2002))

The Panel accordingly finds that the domain name in dispute has been registered and is being used in bad faith and the requirement of paragraph 4(a)(iii) of the Policy has been satisfied.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the domain name <marieclairemag.com> be transferred to the Complainant.

 


 

Joan Clark
Sole Panelist

Dated: April 15, 2003