WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thomson v. Out-Site
Case No. D2005-0166
1. The Parties
The Complainant is Thomson, Boulogne-Billancourt, France, represented by MEYER & Partenaires, Strasbourg, France.
The Respondent is Out-Site, c/o Mr. Geel H.J., Utrecht, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <scenium.com> (“the Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2005. On February 11, 2005, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On February 14, 2005, CSL Computer Service Langenbach GmbH dba Joker.com 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 February 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2005. The Response was filed with the Center on February 28, 2005.
The Center appointed Dr. Thomas Legler as the sole panelist in this matter on March 9, 2005. 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
A. The Complainant
The Complainant (together with its American affiliate RCA) is a leading provider of technology and service solutions for integrated media entertainment companies and consumers. It provides end-to-end solutions to content creators, video network operators and manufacturers, retailers and consumer electronic products through its brands like Technicolor, Thomson, Grass Valley, RCA and Scenium. The Complainant is based in France.
Scenium is a complete range of products developed by Thomson since 1999 referring to audiovisual equipment like televisions (flat screens, integrated DVD, extra large screen televisions, rare projectors) and audio products (digital tuner and amplifier, loudspeakers).
The Complainant operates a corporate website at “www.thomson.net” and for Scenium products a website under “www.thomsonscenium.com”.
On May 27, 1999, the Complainant filed the combined trademark “Scenium” with the European Community Trademark Office in Alicante. This CTM-registration has been made under no. 001187806 and refers to products in class 9.
The wordmark and logo “Scenium” has also been protected in many countries of the world outside the European Community.
Little is known about the Respondent since, in its Response the Respondent did not give many details. Pursuant to the “WhoIs” excerpt, Respondent is named “Out-Site c/o Mr. Geel”. The Response is signed by Mr. Geel who is domiciled in the Netherlands.
5. Parties’ Contentions
In the early days of June 1999, i.e. a few days after Complainant’s filing of the CTM-trademark “Scenium” on May 27, 1999, an entity named “Out-Site” represented by Mr. Geel and based in Amsterdam, Netherlands, registered the Domain Name <scenium.com>.
After its registration, the Domain Name was offered for sale through “GreatDomains.com” indicating a minimum offer of US$ 300.- (Annex E).
A few months later, the Domain Name <scenium.com> pointed to a webpage belonging to the Respondent with no relevant content except a disclaimer on the top left of the page stating: “this page is not related to Thomson-Scenium and/or RCA- Scenium. Please follow those links to get to these page: Thomson-Scenium, RCA-Scenium”.
Hyperlinks lead to the Complainant’s “Scenium” dedicated websites (Annex E). Pursuant to the Complainant, this demonstrates that the Respondent knew about the Complainant’s trademark already when he registered the Domain Name.
The Complainant is convinced that the Respondent tried to catch its attention to the Domain Name. On September 20, 2002, the Complainant sent a cease and desist letter to the Respondent by which it claimed its trademark rights on “Scenium” and requested from the Respondent the transfer of the Domain Name (Annex F).
The Respondent replied to this letter by email dated October 1, 2002, indicating that he would immediately stop to display the links pointing to the Complainant’s website (Annex G).
However, the Respondent did not comply with the Complainant’s request for assignment of ownership indicating that the risk of confusion among the general public would be negligible.
In 2005, the Complainant found out that the Domain Name was now pointing to an adult content related website displaying hardcore porn content (Annex H). The website is managed by the Respondent through a revenue share program called “SEXMoney.com” that allows to earn a commission from all revenues generated from the Internet traffic to the “SEXMoney.com” network affiliated sites.
The Complainant feels that such use of its trademark is unbearable and therefore submitted the matter to the WIPO Arbitration Center.
Regarding Article 4(a) (i) UDRP, the Complainant claims that the Domain Name is identical to its trademark “Scenium” in which it has rights.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. To Complainant’s best knowledge, the Respondent is not and has never been commonly known under the word “Scenium”. Pursuant to a trademark search carried out by the Complainant, no national or Benelux trademark held by the Respondent could be found. Moreover, there is no business registered under the name of the Respondent in the trade register in the Netherlands. The Complainant also indicates that the Respondent is not related in any way to the Complainant’s business neither as agent nor in any other capacity and has not been licensed or authorized to use the trademark “Scenium” by Complainant.
The Complainant also points out that the Domain Name has never been properly used since its registration. First it has been parked with a domain name sale service, then it has been used to host a unique webpage and nowadays it is used to name a pornographic website with intolerable content.
Consequently, the Complainant is of the opinion that the Respondent has no right or legitimate interest in respect of the Domain Name.
Based on evidence (Annexes K and L) the Complainant asserts that “Scenium” has acquired a certain fame since 1999. Pursuant to Complainant, it is very surprising that the Domain Name was registered only a few days after the trademark filing by Complainant, especially considering that the Domain Name is a distinctive word. The Complainant claims also that the Respondent had a good knowledge of the trademark “Scenium” and of the Complainant’s interest in this mark. Accordingly, the Respondent pointed in 2000 its domain name to Complainant’s website. Furthermore, in its reply to the cease and desist letter sent by Complainant on September 2002, the Respondent was not in any manner surprised about Complainant’s claim.
As a consequence, the Complainant asserts that the Respondent registered the disputed Domain Name only to prevent Complainant from any use of the Domain Name directly reflecting its registered trademark related to a new range of products.
Therefore, Complainant asserts that the Respondent has registered the Domain Name in bad faith.
By recently pointing the Domain Name to a pornographic website (Annex H), the Respondent makes a use of the Domain Name which is very detrimental to the Complainant who does not want to be related to such contents. The Respondent is using the Domain Name to divert Internet users to an adult related website and is hereby profiting illegally from the fame and renown of the trademark “Scenium” leading to a dilution of Complainant’s mark.
The Respondent is earning money thanks to the traffic generated via the Domain Name (Annex M). Respondent’s only possible purpose for using the Domain Name is to intentionally attract Internet users to its pornographic website and to profit from the traffic generated with users seeking Scenium brand product websites.
Consequently, the Complainant asserts that the Domain Name is also used and has been always used in bad faith.
In view of the foregoing, the Complainant requests the Panel to transfer the Domain Name to Thomson.
In its Response the Respondent first agrees that the spelling of the word “Scenium” is identical to the trademark of Thomson. He indicates that the trademark “Scenium” was filed on May 27, 1999, but was not registered until January 18, 2001. The Respondent explains the coincidence with the fact that when he registered the Domain Name, it was in the hype years of the Internet bubble, when domain names were being registered at the speed of light. He sustains having not been aware of the filing of the trademark by Thomson and feels that it is just bad luck that the dates between filing the trademark and registering the domain name are so close together.
The Respondent admits that he first used a domain name parking service to try to sell the Domain Name. He used this service until he had its own webspace and website ready. At the end of 2000 he started to run his website named “scenium”, i.e. “the SCEne of the new MillenNIUM”. He indicates that he wanted to start a site about a new scene for the new millennium. Due to several factors, the site did not become a real hit. The Respondent had some emails from visitors asking about “Scenium” from Thomson. That was the reason why he decided to put a link to Thomson’s website.
The Respondent took these links away after having received Complainant’s letter dated September 20, 2002. The Respondent however did not transfer the Domain Name at this point to Thomson, since he felt that Thomson had already other sites like “scenium.tv”, “scenium.us” and “scenium.biz” to conduct its marketing.
The content of Respondent’s website did not change from 2002 to 2004 until he decided in November 2004 to join a program from “SEXMoney.com”. Pursuant to the Respondent, this company offers adult content which is 100 % legitimate in the Netherlands. He feels that the case from Thomson has not so much to do with the Domain Name <scenium.com> but more with the content of the website. In his view, Thomson is not interested in “scenium” as a top level domain name and would have other possibilities for domain names which are still available but not yet registered by Thomson.
The Respondent indicates that he does not want to give up his Domain Name but in order to show his good will, he would have removed the content of the site, which is apparently disturbing Thomson for its business. However, he adds that “within short time my old website will be online again”.
Finally, regarding the issue of bad faith, the Respondent indicates that he has never contacted Thomson for the sale of his Domain Name, that he is not in the same business as Thomson and has no interest whatsoever to disrupt Thomson’s business. He adds that he has not registered the Domain Name in an intentional attempt to commence sales. The redirect which was online until February 28, 2005, had nothing to do with the business of Thomson, so the confusion among general public can be neglected.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the Domain Name of the Respondent has to be transferred to the Complainant:
(i) the domain name is identical or confusingly similar 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 domain name has been registered and is being used in bad faith.
A. Identity or Confusing Similarity with a mark in which the Complainant has rights
There are no doubts for the Panel (and the Respondent agrees) that the Domain Name is identical with Complainant’s trademark.
B. Legitimate Rights or Interests in respect of the Domain Name
Pursuant to Paragraph 4(c) of the Policy, any of the following circumstances may demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a) (ii) :
(i) before any notice of the dispute, the Respondent’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; or
(ii) the Respondent, as an individual, business (or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate, non commercial or fair use of the domain name without intent for a commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Before considering the matter under Paragraph 4(c) of the Policy, the Panel wishes to state that although the trademark in question has not been existing for a very long time, Complainant has submitted evidence which shows that within the five years of its existence, the Scenium-products have gained a certain fame on the market so that the trademark may be considered as quite well-known. Also, Complainant’s Annexes show that the Complainant is an important producer of electronic products with the consequence that its new products and product lines like “Scenium” have good chances from the outset to become, under normal circumstances, objects with a good market value. Furthermore, it cannot be contested that the word “Scenium” is a quite fanciful one so that the Panel has serious doubts that it was a coincidence that Respondent registered the Domain Name only a few days after Complainant’s filing of its CTM-trademark on May 27, 1999. The Panel’s consideration is further backed by Article 40 of the Council Regulation (IC) no. 40/94 of December 20, 1993 on the Community Trademark which provides in its Article 40 that all CTM-applications are published. In practice, all CTM filings are even accessible via the CTM online database one day after their submission. In so far as the Respondent insinuates having a priority right since Complainant’s registration was made after Respondent’s domain name registration, the Panel draws Respondent’s attention to Article 31 of the same Council Regulation providing that the date of priority shall count as the date of filing of the Community Trademark Application.
The Panel has also the impression that the Respondent tried over the past years to attract Complainant’s attention to the Domain Name for whatever reason until it became unbearable for Complainant, i.e. when its trademark became associated with a porn site. Indeed, the Domain Name was first offered for sale via a domain name sales service before pointing to a webpage without any serious content, but with hyperlinks to the Complainant’s official Scenium-website. Finally, the Respondent teased the Complainant by directing his website to an adult entertainment service. The Respondent indicates having removed the link to the porn site after Complainant’s filing of the present complaint with WIPO. However, the Respondent indicates in its Response that within short time his old website will be online again. Therefore, there is no previsibility what will exactly happen in future with this Domain Name and any website linked to it. This constitutes a sufficient legal interest for Complainant in order to have this case decided now.
Although running an adult sex-site is in itself perfectly legal (notwithstanding the fact that it may be seen, by some people, as morally questionable) and may therefore constitute a bona fide offering of goods or services (see Motorola Inc. vs. NewGate Internet Inc., WIPO Case No. D2000-0079), there is no bona fide offering where a well-known trademark is used as a domain name for such purpose (see V&S Vin & Sprit AB vs. Oliver Garcia, WIPO Case No. D2002-1081).
Regarding Paragraph 4(c) (ii) of the Policy, the Panel notes that the Respondent’s name is “Geel” and the entity name he is using is “Out-Site” so that they can not be commonly known by the Domain Name. Moreover, the Respondent did not submit any evidence that he is the owner of a company having the Domain Name as its corporate name and that it is commonly known by such name. Furthermore, the Complainant indicated that the Respondent has no link to Thomson whatsoever and has never been licensed to use the trademark in question, a fact which has not been contested by the Respondent.
The Panel can also not see any legitimate, non-commercial or fair use of the Domain Name. The homepage set up in the year 2000 and containing no serious content has to be considered as a mere sham. Respondent’s explanation for having chosen the Domain Name “Scenium”, i.e. that he wanted to set up a platform “for a new scene for the new millennium” is hardly believable.
Consequently, the Panel is of the opinion that the Respondent has no rights or legitimate interests in the sense of Paragraph 4(c) of the Policy.
C. Registration and Use in Bad Faith
As set out before, the Panel is of the opinion that Complainant is a well-known company and that its products, like the ones in question, are of foreseeable great value on the market. Before registering its Domain Name, the Respondent could have conducted a trademark search which would have revealed that Complainant had already filed a trademark application with an identical sign. As mentioned above, such a database search is easy to carry out via the CTM Online website.
That Respondent was aware of Complainant’s forthcoming product “Scenium” is also shown by the fact that a couple of months after the Domain Name registration, the Respondent started its personal webpage showing hyperlinks to Complainant’s “Scenium” dedicated websites.
Moreover, the Respondent has been using the Domain Name in bad faith when he connected it to a adult website. The Respondent admits having generated traffic via the Domain Name in order to earn money via the commission based “SEXMoney.com”- program. Consequently, the Respondent made an intentional attempt to attract for commercial gain Internet users to his website. Contrary to Respondent’s opinion, this Panel considers that by using this specific Domain Name, a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website is given. Indeed, Complainant is engaged in the electronic business and media entertainment (see above, 4A) so that a user may believe that the Respondent’s website is linked to Complainant’s technical support or the provision of electronic services or technologies to this effect. Hence, the Panel admits the likelihood of confusion in the sense of Paragraph 4(b) (iv) of the Policy.
Consequently, the Panel finds that the Domain Name has been registered and is being used in bad faith.
In the light of the foregoing the Panel concludes and decides that the Domain Name <scenium.com> shall be transferred to the Complainant.
Dr. Thomas Legler
Date: April 1, 2005