WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Safiag Lepeltier Demarchi and Assurexia v. Salesrep
Case No. D2007-0382
1. The Parties
The Complainants are Safiag Lepeltier Demarchi and Assurexia, Paris, France, represented by Cabinet Plasseraud, France.
The Respondent is Salesrep, Massachusetts, United States of America and Casablanca, Morocco, represented internally by Saad Echouafni.
2. The Domain Names and Registrar
The disputed domain names:
are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2007. On March 16, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On March 16, 2007, Wild West Domains, Inc. 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 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 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2007. That day the Respondent asked the Center how long it had to answer. Upon being informed that time had expired, the Respondent sought an extension of time. The Complainant opposed a 7-day extension proposed by the Center. On April 13, 2007 the Center granted the Respondent a 5-day extension until April 18, 2007.
It appears from the correspondence between the Respondent and the Center that on April 18, 2007, the Respondent attempted to submit its Response by email, comprising the formal Response and 36 Annexures. On April 19, 2007 the Center informed the Respondent that the Response had not been received. It appears the email containing the Response bounced back, possibly because of its large volume. The Response was eventually filed with the Center in 34 separate emails on April 20, 2007. Subsequently a hard copy of the formal part of the Response was received by the Center. Despite the failure of the Respondent to file its Response within the extended time, the Panel has taken the Response into account in the interests of ensuring that each party is given a fair opportunity to present its case in the exercise of its general powers under paragraph 10 of the Rules.
The Center appointed Alan L. Limbury as the sole panelist in this matter on May 4, 2007. 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.
Although many of the exhibits to the Response are in French, the language of the proceedings is English. It has not been necessary for the Panel to seek translations.
4. Factual Background
The Complainant Safiag Lepeltier Demarchi (“Safiag”), a French Société Anonyme established in 1931, is the owner of French registered trademark No. 03 3 232 778 ASSUREXIA, registered on June 24, 2003 for services which include insurances and financial matters. Since June 2, 2006, the Complainant Assurexia, a French Société par Actions Simplifiée established in 1993 and until relatively recently known as Groupe Choiseuil, has been formally licensed by Safiag to use that mark. The President of Safiag is also the President of Assurexia.
In about early February 2005, the Respondent, a Moroccan and United States corporation, was engaged by the Complainants to provide web hosting and other services, to assist the Complainants in establishing an online e-commerce web site selling health insurance products. On February 11, 2005, the President of Safiag confirmed the name of the web site would be ‘assurexia’, provided to the Respondent a copy of the French ASSUREXIA trademark registration certificate and asked the Respondent to arrange for the registration of the domain names <assurexia.com> and <assurexia.fr>. The latter domain name is not the subject of this proceeding.
The disputed domain names <assurexia.com> and <assurexia.net> were registered by the Respondent on February 11, 2005.
By June 2005, Assurexia had become No. 1 in sales of insurance on the Internet. One factor contributing to this success was the procurement of online advertising, for which the Respondent paid and was later reimbursed by the Complainants. The Respondent performed various “back office” functions in connection with the Assurexia business, although there was no formal contract under which the Respondent provided services to the Complainants.
The parties held discussions about forming a business partnership but no agreement was reached.
The disputed domain names <assurexia.biz>, <assurexia.org> and <assurexia.info> were registered by the Respondent on February 11, 2006, the day on which the registrations of <assurexia.com> and <assurexia.net> were renewed.
In about March/April 2006 relations deteriorated and it appears the relationship between the parties terminated shortly thereafter. The Respondent claims to be owed about €300,000 by the Complainants.
5. Parties’ Contentions
The Complainants allege that the disputed domain names are identical to the ASSUREXIA mark, in which each of the Complainants has rights; that the Respondent has no rights or legitimate interest in respect of the domain names and that the disputed domain names were registered and are being used in bad faith.
As to legitimacy, the Complainants say the Respondent has no prior rights over the Complainants’ mark; that as the Complainants’ Internet service provider, the Respondent was aware of the existence of the Complainants’ prior rights, from which absence of legitimate interests may be inferred: Blemain Group v. Mr. Stuart Frost, WIPO Case No. D2006-0871. The Respondent simply kept the WebPages of the Complainants as they were installed on the corresponding contested domain names, although the Complainants noticed that from time to time those domain names became unavailable, partially available or fully active when no technical reason could justify this discrepancy of activity.
As to bad faith, the Complainants refer to paragraph 4(b)(iii) of the Policy, which provides (non exhaustively) that it shall be evidence of bad faith registration and use if a respondent is shown to have registered the domain name primarily for the purpose of disrupting the business of a competitor. They contend that because the circumstances listed in paragraph 4(b) are non-exhaustive, disruption of the business of the Complainants should be included, whether or not they are competitors of the Respondent, since the disputed domain names are their major brand.
Further as to bad faith use, the Complainants say that right from the start, when the Complainants used the Respondent’s Internet provider services, the Domain Name Servers (DNS) were those of the Respondent.
The Complainants further say, as to bad faith registration, that in acting as the administrative contact and technical contact, the Respondent had all power to modify both the name of the registrant and the technical information, such as the DNS if necessary. A manifestation of this bad faith is that the Respondent registered the contested domain names in the two names Salesrep and Safiag, giving the Complainants’ Paris address. This is said to be shown by copies of two so-called ‘Domain Name Expiration Notices’ received by the Complainants from Domain Registry of America in September 2005, in relation to the domain names <assurexia.com> and <assurexia.net>, which were addressed to ‘Salesrep & Safiag’ in Paris. The Complainants say co-ownership is not recognized by any top level domain and that when these domain names were renewed, the Respondent, acting again as the Complainants’ Internet service provider, modified the data by suppressing Safiag’s name.
The Respondent says it has three pending cases against the Complainants that are being filed in the courts of Morocco and France. For this reason, the Panel does not set out here more than is necessary to decide this administrative proceeding.
The Respondent alleges that this is not an infringement issue, it is a partnership deal gone bad, which should be resolved through the courts. It says the domain names were created for a mutual partnership; that in Morocco Assurexia is the Respondent’s trade name, in which the Respondent has a legitimate interest; that although the Complainant claims to have engaged the Respondent as its Internet service provider, it has never paid for any hosting costs and that is because the Respondent did a lot more than hosting a web page.
The Respondent says since the domain names were registered at the Complainant’s request, they were not registered in bad faith.
As to the renewal notices from the American company, the Respondent was listed with Safiag because this was a partnership, as those notices reveal.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires the Complainants to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Under paragraph 18 of the Rules, where legal proceedings are initiated prior to or during an administrative proceeding, the Panel has a discretion to decide whether to suspend or terminate the proceeding or to proceed to a decision. It is not clear whether the legal proceedings foreshadowed in the Response have been commenced, nor whether the issues would cover any of the same ground as this administrative proceeding. Under these circumstances the Panel will proceed to a decision.
A. Identical or Confusingly Similar
The top level of a domain name such as “.com”, “.org” or “.net” is not to be taken into account when considering whether the domain name is identical or confusingly similar to a trademark: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
The disputed domain name is clearly identical to Safiag’s French registered ASSUREXIA mark, of which Assurexia is a licensee. Both Complainants have rights in that mark and they have established this element of the case.
B. Rights or Legitimate Interests
The Complainant contends that all of the disputed domain names were registered by the Respondent on behalf of the Complainants, knowing of the Complainants’ trademark ASSUREXIA. Under comparable circumstances, it has been held that a respondent cannot be said to have any rights or legitimate interests in respect of the domain name absent a specific contractual arrangement covering their ownership. Further, the fact that a respondent registered the domain name in his own name and at his own expense does not of itself constitute sufficient evidence of any such arrangement: Blemain Group v. Mr. Stuart Frost, WIPO Case No. D2006-0871.
Even assuming that the Respondent acquired a legitimate interest in each of the disputed domain names at the time of registration based on a relationship with the Complainants under which those domain names were registered (whatever that relationship was), the termination of such arrangement would have deprived the Respondent of any such legitimate interest. The relevant time for the assessment of whether a respondent has rights or legitimate interests in a domain name is the date of the Complaint: Lonely Planet Publications Pty Ltd v. Mike Tyler, WIPO Case No. D2004-0670 and the cases there cited.
The Respondent’s claim to own the Moroccan trade name “Assurexia” is not supported by any evidence before the Panel and cannot, for that reason, be accepted in the present proceedings as giving rise to rights or legitimate interests in the domain names.
The Complainants have established this element of the case.
C. Registered and Used in Bad Faith
The following passage from Blemain Group v. Mr. Stuart Frost, WIPO Case No. D2006-0871 is apposite here:
“The Complainant is understandably concerned that the Domain Names, which were registered on its behalf and which have at all material times been linked to the Complainant’s websites at “www.blemaingroup.co.uk” and “www.blemainfinance.co.uk”, are outside the Complainant’s control.
However, the fact that the Domain Names are outside the Complainant’s control is not of itself a basis for a complaint under the Policy. For the Complaint to succeed under this head of complaint the Respondent must have registered the Domain Names with bad faith intent. The Panel addressed this issue in Tomatis Developpement SA v. Jan Gerritson, WIPO Case No. D2006-0708 in the following terms:
´For the purposes of this head of complaint under the Policy, the motives of the registrant at time of registration are of crucial importance. The Policy was designed to deal with cybersquatters i.e. people who register domain names knowing them to be the trade marks of others and with the intention of causing damage or disruption to the trade mark owners and/or unfairly exploiting the trade marks to their own advantage.
Paragraph 4(b) of the Policy contains a non-exhaustive list of what shall constitute bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy. The first three examples expressly refer to the registrant’s intentions at time of registration. The fourth does not, but the preponderance of panelists nonetheless construe it as calling for a bad faith intent at time of registration. To do otherwise would open up the Policy to a far wider category of cases than it was ever intended to cover.’
Accordingly, the question for the Panel is: is it more likely than not that the Respondent registered the Domain Names in his own name and using his own money with a view at some time in the future to disadvantaging the Complainant or with a view to unfairly exploiting the situation in some other way to his own advantage?”
In the Blemain case the scale tipped in favour of the complainant because there was no Response. Here all the evidence before the Panel, primarily by way of contemporaneous correspondence attached to the Response, shows the Respondent at the time of registration of the disputed .com and .net domain names was a willing participant in the Complainant’s Internet enterprise and that, at the time of the second series of registrations, was hoping to conclude a business partnership with the Complainants. If, as appears likely, the .com and .net domain names were registered in the names of both the Respondent and Safiag, with the latter’s Paris address, it can hardly be said they were registered in bad faith. The subsequent change upon renewal (not itself an act of registration) is not inconsistent with a desire for administrative compliance since, as the Complainants point out, joint ownership is not allowed.
In UVA Solar GmbH & Co K.G.v. Mads Kragh, WIPO Case No. D2001-0373, in the context of a distributorship, it was held that [good faith] registration of a domain name can lose its bona fides if the registrant subsequently breaches one of the terms upon which the registrant was authorized [by the trademark owner] to register it. See also, to like effect, Exel Oyj v.KH Trading, Inc, WIPO Case No. D2004-0433. This Panel does not consider that distributorships fall into any special category and prefers the reasoning in Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No.D2001-0782:
“If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith”.
See also Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology, WIPO Case No. D2000-0026; Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005 and Yoomedia Dating Ltd. v. Newcomer, WIPO Case No. D2004-1085.
Taking into account the Complainants’ assertion that all of the disputed domain names were registered by the Respondent acting as the Complainants’ Internet service provider, it is not surprising and not indicative of bad faith that the DNSs were those of the Respondent and that the Respondent was listed as the administrative and technical contact.
The Complainant draws an analogy with paragraph 4(b)(iii), saying bad faith should be found where registration was primarily for the purpose of disrupting the business of the Complainants even though they are not competitors of the Respondent. However, there is no evidence any of the disputed domain names was registered primarily for any disruptive purpose.
Accordingly, the Panel is not prepared to make a finding of bad faith registration and use in the circumstances of this case.
The Complainants have failed to establish this element of their case.
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Date: May 16, 2007