WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sparco S.r.l. , Sparco France S.à r.l. v. CataloguExpress,
Case No. D2003-0318
1. The Parties
The Complainants are Sparco S.r.l., Borgaro Torinese, of Italy and Sparco France S.à r.l., Nice, of France, represented by Studio Legale Jacobacci e Associati of Italy.
The Respondent is CataloguExpress, Saint-Chamond, of France.
2. The Domain Names and Registrar
The disputed domain names are <sparco-france.com> and <sparcofrance.com> (hereinafter collectively referred to as the "Disputed Domain Names"). The Disputed Domain Names are registered with Tucows Inc. ("Tucows").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 24, 2003. On April 24, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name(s) at issue. On April 25, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 30, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2003.
The Center appointed Tobias Cohen Jehoram as the sole panelist in this matter on May 27, 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 the Rules, paragraph 7.
4. Factual Background
Sparco S.r.l of Italy and Sparco France S.à r.l of France (hereinafter collectively referred to as "Complainants") are two companies of the Sparco group of companies. The Sparco group of companies are an internationally operating group in the field of accessories for cars and car related sportswear. Sparco S.r.l is owner of numerous trademarks consisting of the term "SPARCO". Amongst these trademarks, Sparco S.r.l is owner of the international trademark for "SPARCO" (registration number 478132 of May 2, 1983) which is extended to, amongst others, France (hereinafter referred to as "the Trademark"). Complainants operate web-sites at, amongst others, "www.sparcousa.com".
CataloguExpress (hereinafter referred to as "Respondent") is a French company that, as it states on its web-site "www.cataloguexpress.com", provides internet services for small and medium-sized enterprises in order for them to promote and sell their products to a large audience. On September 26, 2001, Respondent registered the Disputed Domain Names. Currently, both domain names contain the exact same web-site content, which is identical to "www.achatweb.com", another of Respondents' web-sites. This web-site enables visitors to link through to various direct-sale web-sites.
There is no relation between Complainants and Respondent and Respondent is no licensee of Complainants, nor did they otherwise obtain an authorization to use any of Complainants' intellectual property rights.
5. Parties’ Contentions
Complainants wish to have the Disputed Domain Names transferred to complainant Sparco France S.à r.l. on the grounds mentioned in to paragraph 4 a. of the Policy. Complainants base their claims on the following grounds:
Firstly, the Disputed Domain Names are confusingly similar to the Trademark and are virtually identical to the trade name SPARCO FRANCE of Complainant Sparco France S.à r.l.
Secondly, due to the fact that the Trademark is well known, the Respondent must have been aware of it's existence. In the event that a domain name has a connection with a well-known trademark, the use of this name by someone with no connection to the products suggests (in the absence of contrary evidence) opportunistic bad faith. Regarding this matter reference is made to Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157, Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163 and Parfums Cristian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. Reference is also made to Expedia, Inc. V. European Travel Network, WIPO Case No. D2000-0137 where, even though the trademark involved (EXPEDIA for online travel services) was less famous than the trademarks mentioned earlier, it was considered that "the Respondent knew or should have known of the Complainants trademark and services". In the case at hand, the Respondent, located as it is in France, a main market for the Sparco Group, could not conceivably have been ignorant of the Trademark and the trade name Sparco France.
Thirdly, Respondent has no rights or legitimate interests in the Disputed Domain Names. Respondent has never been commonly known by a trade name similar to the Disputed Domain Names, or by any trade name other than CataloguExpress, nor is there any evidence that Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Names. In fact, its use of the Disputed Domain Names is typically commercial.
Respondent uses it's web-sites to offer a variety of goods and services. Partially, it links to companies selling a diversity of products, including Complainants' products. This however, does not amount to establish a legitimate interest in terms of paragraph 4 a. of the Policy. The trademark laws of Italy, France or the European Union establish that a retailer does not acquire trademark rights simply by retailing goods manufactured by other parties. Concluding otherwise with respect to domain names would deprive trademark owners of their rights, since any given product is sold by thousands of retailers, and each of them would be recognized as a potentially legitimate owner of the corresponding domain name. In this matter, reference is made to GEAC Computer Corporation Limited v. NEWTEC Consulting Group Incorporated, WIPO Case No. D2001-1131. and Ferrero S.p.A. v. Fistagi S.r.l., WIPO Case No. D2001-0262, R.T. Quaife Engineering, Ltd. v. Luton, WIPO Case No. D2000-1201 and Motorola, Inc. v. Newgate Internet, Inc., WIPO Case No. D2000-0079. In both the Fistagi case and the R.T. Quaife case, the Respondent had been "authorized by the Complainant to sell the latter’s products" while, in the present case, Respondent merely provides a link to web-sites selling Sparco S.r.l.’s products.
Respondent also links to an American company selling discount computer products through the web-site "sparco.com". Beside the conflicts between that American company and Complainants, clearly a right (or alleged right) under the Policy is not transferable. Additionally, CataloguExpress uses the domain name <sparcofrance.com> (or <sparco-france.com>). The only French company existing under this name is Complainant Sparco France S.à r.l.
Finally, the Disputed Domain Names are being used in bad faith. Both web-pages are being used for the publicity for various companies and services. Complainants never authorized Respondent’s activities, nor do they control them. Complainants have no control of what Respondent currently includes, or will include in the future, in its web-site. By the use of the Disputed Domain Names, Respondent also diverts traffic which would otherwise go to Complainants’ web-sites which promote the SPARCO products and the company Sparco France.
Respondent did not reply to Complainants' contentions.
6. Discussion and Findings
Respondent has defaulted. In accordance with paragraph 14 of the Rules, the Panel shall proceed to a decision on the complaint and shall draw such inferences therefrom as it considers appropriate.
According to paragraph 4 a. of the Policy, Complainant must prove that each of the following three elements are present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Disputed Domain Names are confusingly similar to the Trademark. The most distinctive element of the Disputed Domain Names is "sparco". The adjectives "france" and "-france" merely indicate the market for which the web-sites are designated. Since this can not be regarded as an element that sufficiently distinguishes the Disputed Domain Names from the Trademark, it must be concluded that they are confusingly similar to the Trademark.
B. Rights or Legitimate Interests
Where Respondent was in default, no reason or circumstance has been provided for on the basis of which it could be assumed that Respondent has any right or any legitimate interest in the Disputed Domain Names. In particular, there is no indication that Respondent has been using the element SPARCO in the combination SPARCOFRANCE or SPARCO-FRANCE in any way other than by having the Disputed Domain Names registered and using these domain names to show the same web-site it shows under the domain name "www.achatweb.com". In accordance with Complainants' contentions, in order for Respondent to have a legitimate interest, it does not suffice to merely have links to Sparco-products selling companies, or to provide a link to a (presumably) non-affiliated web-site "www.sparco.com".
Regarding the links to companies selling Sparco-products, the Panel considers this to be of such a distant nature, that this cannot constitute a legitimate interest in the Disputed Domain Names. Concluding otherwise would make it possible for a person to maintain a domain name by merely linking to a company offering goods of the complainant. This would constitute an unacceptable limitation to the rights of a trademark holder. It does not constitute a valid reason for such use and cannot qualify as fair use of the trademark.
Also, since there is no indication that Respondents are in any way affiliated to the American company using the web-site "sparco.com", the Panel sees no reason why a mere link to this web-site would suffice for a right or a legitimate interest. Again, a mere link to a company using a trademark does not constitute a legitimate interest in a domain name which is identical or confusingly similar to the trademark.
C. Registered and Used in Bad Faith
The Panel is of the opinion that the Disputed Domain Names have been registered and used in bad faith, on the following grounds.
Since Respondent might have intended to create confusion not only with Sparco France S.à r.l but also with the company using the web-site "www.sparco.com", it cannot be concluded with certainty that Respondent has intended only to profit from confusion with respect to Complainants' trademark. However, first of all it is likely that Respondent intended to profit from confusion with the Trademark as this is the only trademark with renown in France, and also, Sparco France is an existing company, while there is no indication that the company using the domain name <www.sparco.com> has any entity using the name Sparco France. But even if the Respondent intended to create confusion with both the Trademark and with the company using "www.sparco.com", the requirement is still met that the Respondent registered the domain name in bad faith vis-a-vis Complainants.
Also, as was satisfactory set out by Complainants, it must be assumed that Respondent was aware of Complainants' existence and trademark use. This finding is supported by the fact that Complainants' products can be purchased via Respondents' web-sites. Furthermore, it must be assumed that SPARCO is a well known trademark for automotive products in France, the country in which Respondent is active, and the country that the Disputed Domain Names refer to. Besides that, there is no indication that Respondent has registered the Disputed Domain Names for any other purpose than to profit from the goodwill associated with the Trademark and from the confusion that the use of this trademark is likely to create, in particular to profit from the internet traffic that is created as a result of this confusion.
In view of the above, the Panel holds it that the Disputed Domain Names have been registered and used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <sparco-france.com> and <sparcofrance.com>, be transferred to complainant Sparco France S.à r.l.
Tobias Cohen Jehoram
Dated: June 5, 2003