WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SR Teleperformance v. At Random
Case No. D2005-0193
1. The Parties
The Complainant is SR Teleperformance, Paris, France, represented by Inlex Conseil, France.
The Respondent is At Random, West Cornwall, Connecticut, United States of America, of United States of America, represented by Cheryl Thibault, United States of America.
2. The Domain Names and Registrars
The disputed domain names <tele-performance.biz> and <tele-performance.com> are registered with Tucows and Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2005. On February 18, 2005, the Center transmitted by email to Tucows and Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On February 18, 2005, Tucows and Network Solutions, LLC transmitted by email to the Center their verification responses 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 March 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2005. The Response was filed with the Center on March 23, 2005.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on April 1, 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
Complainant is the owner of the trademark TELEPERFORMANCE, which has been registered worldwide in countries including France, the European Union and the United States (see EU registrations no. 001341650, dated October 11, 1999, and no. 003460524, dated October 29, 2003; ER registrations no. 507250, dated September 4, 1986, and no. 540588, dated July 12, 1989; French trademark registrations no. 1354316, dated May 13, 1986, and no. 1516210, dated February 24, 1989; and US registrations no. 74084264, dated August 2, 1990, and no. 75083550, dated April 4, 1996).
Complainant has registered various domain names including <teleperformance.com> and <teleperformanceusa.com>.
Respondent registered the domain name <tele-performance.com> on January 21, 2000, and registered the domain name <tele-performance.biz> on February 4, 2002.
5. Applicable Rules
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
“(i) the domain name at issue is identical or confusingly similar to a trademark 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.”
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4(a)(iii) above.
Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate interests to the domain name for the purpose of Paragraph 4(a)(ii) above.
6. Parties’ Contentions
Complainant is a French company with its head office in France. Complainant is a worldwide leader in outsourced customer relationship management solutions with worldwide revenues of nearly USD1 billion. Complainant has several subsidiaries located in various countries and 40% of its activity concerns the United States. Complainant’s most important American subsidiary, Teleperformance USA, has grown to become one of the largest contact center outsourcers in the US market.
Complainant has trademark rights to TELEPERFORMANCE, registered, inter alia, in France, the European Union and the United States. According to Complainant the trademark TELEPERFORMANCE is a well-known trademark.
The grounds for the Complaint are:
(i) the domain names <tele-performance.com> and <tele-performance.biz> are identical or confusingly similar to Complainant’s trademark TELEPERFORMANCE. According to Complainant the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to the mark.
(ii) Respondent has no rights or legitimate interests in respect of the domain names at issue as provided in Paragraph 4(a)(ii) in connection with Paragraph 4(c) of the Policy.
Respondent is not known under ‘Teleperformance’ or ‘Tele-performance’ and has no trademark rights to ‘Teleperformance’ or ‘Tele-performance’. Complainant has not licensed or otherwise authorized the Respondent to use the TELEPERFORMANCE trademarks and there is no relationship between Complainant and Respondent.
Respondent appears to be active in the same field as Complainant and therefore should have been aware of Complainant’s well-known trademark TELEPERFORMANCE.
Respondent claims that it registered the domain names at issue for a subsidiary that has ‘teleperformance’ included in its name. However, Respondent has not provided any evidence of this fact.
Respondent has not used the domain name <tele-performance.biz> since its registration. Complainant therefore contends that Respondent never planned to develop a website.
Teleperformance is a distinctive term and, as such, has no significance in and of itself in the English language.
(iii) the domain names at issue were registered in bad faith as provided in Paragraph 4(a)(iii) in connection with Paragraph 4(b) of the Policy. Respondent registered the respective domain names in order to attract Internet users to their website and/or to prevent Complainant from reflecting their trademark in a corresponding domain name. Complainant also claims that Respondent has been using the domain names at issue in bad faith because of the passive holding of the domain names. Moreover, Complainant claims that Respondent’s registration of the domain names at issue was primarily for the purpose of gaining business benefits resulting from the confusion arising with Complainant’s trademark and to sell the domain names at issue for a valuable consideration in excess of its costs.
The Respondent acknowledges that the domain names at issue are identical or confusingly similar to Complainant’s trademarks.
Respondent claims to be harassed by Complainant. Respondent states that it has offered to transfer the domain names at issue to Complainant provided that its registration fees and costs would be reimbursed. According to Respondent Complainant refused this offer.
Respondent states that it has not registered or used the domain names at issue in bad faith. The reason behind the registration of <tele-performance.com> and <tele-performance.biz>. was twofold. Since 1996, Respondent has been involved in telephone performance assessment services. The inclusion of the hyphen between ‘tele’ and ‘performance’ in the domain names at issue was according to Respondent simply a play on the words. Respondent claims to have been unaware of committing any unlawful act when acquiring the domain names as Respondent was purchasing available domain names associated with the words ‘telephone performance’. Furthermore, Respondent had plans to create another company involved in telephone performance assessment services. However, the company was never realized. Respondent kept the domain names at issue solely because it never gave them any further thought.
7. Discussion and Findings
Complainant must provide evidence of all elements of Paragraph 4(a) of the Policy.
A. Identical or confusingly similar
Complainant has provided sufficient evidence of its rights to the trademark TELEPERFORMANCE.
Respondent has acknowledged that the domain names at issue are confusingly similar to Complainant’s trademark TELEPERFORMANCE.The Panel finds that the Complaint has met the first element of Paragraph 4(b) of the Policy.
B. Rights or legitimate interests
Under Paragraph 4(c) of the Policy, Respondent may demonstrate that it has a right or a legitimate interest to the domain name for the purpose of Paragraph 4(a)(ii), inter alia, by providing evidence of any of the following circumstances:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Respondent has not denied that the domain name <tele-performance.com> until recently redirected Internet traffic to the website of At Random Communications under “www.arllc.com”. This company is located at the same address as Respondent and has almost the same name. The Panel therefore concludes that these companies are the same or at least closely related. As appears from the website under “www.arllc.com”, Respondent is active in the same field or in a field closely related to that in which Complainant is active.
The domain name <tele-performance.biz> has apparently never been used by Respondent. A search using the domain name directs one to a website ‘currently under construction’.
Respondent has not contested Complainant’s trademark rights in many countries, including the United States (since 1990), nor that these trademarks are well-known in the market where both Complainant and Respondent operate. Furthermore, Respondent has not denied that it was aware of the existence of Complainant and its activities in the United States when registering the domain names on January 21, 2000, and February 4, 2002, respectively. Respondent has not provided evidence that it is a reseller of Complainant’s products nor that Complainant has licensed Respondent to use the trademark TELEPERFORMANCE. Even if Respondent would have been an authorized retailer of Complainant’s products, this in itself is not sufficient to give Respondent a right to use the TELEPERFORMANCE trademark as a domain name. See inter alia, Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; Mikimoto (America) Co. v. Asanti Fine Jewellers Ltd., Case No. AF-0126 (eResolution April 8, 2000); R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton, WIPO Case No. D2000-1201; Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101; Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292.
Furthermore, Respondent has failed to provide evidence of any other right or legitimate interest. Respondent has claimed to have reserved the domain names at issue for a yet to be established subsidiary or another company, but has confirmed that the subsidiary or company has never been realized.
Respondent has also stated that the word ‘tele-performance’ is a play on the field ‘telephone performance assessment services’ where Respondent is active. However, the word ‘tele-performance’ is not descriptive of the activities of Respondent. Both ‘tele-performance’ and ‘teleperformance’ are words not found in the English language. Furthermore, ‘tele-performance’ is not a common abbreviation for the activity in which Respondent is engaged. Therefore, this does not constitute a right to the domain name at issue.
In the light of the foregoing, the Panel finds that Complainant has provided sufficient evidence that Respondent does not have a right or legitimate interest in the domain names at issue.
C. Registered and Used in Bad Faith
The Panel finds that Complainant has provided sufficient evidence that Respondent, by registering and using the domain name <tele-performance.com>, intended to attract for commercial gain, internet users to their website or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of their website or location, or of a product or service on their website or on-line location as set out in Paragraph 4(b)(iv).
Complainant is the proprietor of various US trademark registrations of TELEPERFORMANCE, the earliest of which dates to August 2, 1990. Respondent has not denied that it knew of Complainant, its trademarks and its activities in the American market when it registered the domain name. As Respondent’s activities are closely related to or in the same field as those of Complainant, the Panel concludes that Respondent has deliberately included Complainant’s trademark in the domain names at issue in order to attract business. Furthermore, by the use of the domain names at issue Respondent has created the (incorrect) impression of endorsement by, or affiliation with, Complainant. This confirms that Respondent has intentionally used the goodwill of Complainant’s trademark to create traffic to its website operating under the domain name <tele-performance.com>. See also e.g. Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413.
As to the use of the domain name <tele-performance.biz> the Panel concludes that no real website has been attached to this domain name since its registration more than three years ago. Respondent has claimed to have registered this domain name for a new company/subsidiary that was to be set up, but was not realized. Respondent has shown no demonstrable preparations for that claim. Therefore, the Panel concludes that, in view of the circumstances referred to above in relation to <tele-performance.com>, the registration of the domain name <tele-performance.biz>, in combination with the failure to make a bona fide use of the domain name for a substantial period following registration, constitutes bad faith. (See Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Chernow Communications Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131)
The Panel concludes that there is sufficient evidence that Respondent’s registration and use of the domain names at issue are in bad faith.
On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence for the requested order transferring the domain names at issue from Respondent to Complainant. Accordingly, pursuant to Paragraph 4(i) of the Policy the Panel orders that the registration of the domain names <tele-performance.com> and <tele-performance.biz> be transferred to Complainant.
Wolter Wefers Bettink
Dated: April 15, 2005