WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Somfy SAS v. Ms. Naama Ben Izak
Case No. D2008-0171
1. The Parties
The Complainant is Somfy SAS, Cluses, France, represented by Marie Muffat-Joly, France.
The Respondent is Ms. Naama Ben Izak, Petach Tikva, Israel.
2. The Domain Name and Registrar
The disputed domain name <somfy.mobi> is registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2008. On February 1, 2008, the Center transmitted by email to Gal Communications (CommuniGal) Ltd. d/b/a Galcomm a request for registrar verification in connection with the Domain Name at issue. On February 6, 2008, Gal Communications (CommuniGal) Ltd. d/b/a Galcomm transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details. 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 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2008.
The Center appointed Jon Lang as the sole panelist in this matter on March 17, 2008. 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
The Complainant is part of the Somfy Group which has been in existence for many years and is one of the world’s leading manufacturers of automatic controls and motors for homes and buildings. It has numerous subsidiaries around the world and Somfy products are sold under the SOMFY trademark through its subsidiaries in various countries including Israel, where the Respondent resides and also Romania where the website “www.gineri.com” to which the Domain Name resolves, appears to be based.
The Complainant is the owner of several SOMFY trademarks or which contain the word ‘Somfy’ in more than 100 countries in the world, the mark first being registered in 1969 and having been continuously used since then. Examples include international trademark SOMFY No. R448984, the Israeli trademark SOMFY (+device) No. 178863, the Israeli trademark Home Motion By Somfy No. 179354 and French trademark SOMFY No. 033217116.
Several of the Complainant’s trademarks are used in connection with the distribution of electric motors, automatic controls, software, alarms for openings, closures and solar protection in homes and buildings.
The Complainant (or related companies) is the owner of several domain names which use or contain the word ‘Somfy’, most being registered before the registration of the Domain Name, (e.g. <somfy.com> created in May 1998) and most of which link to Somfy websites promoting the group’s activities and products.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to its trademarks in which it has rights.
The Complainant also contends that the Respondent has no rights or legitimate interests in the Domain Name in that it is not licensed or otherwise permitted to use any SOMFY trademarks, nor apply for nor use Domain Name incorporating the marks; there is no relationships between the Complainant and the Respondent; and there is no evidence that the Respondent has used the ‘Somfy’ name as a trademark or that she is known by it.
Finally, by virtue of the following alleged matters, the Complainant states that the Domain Name was registered and is being used in bad faith:
- The website to which the Domain Name now resolves “www.gineri.com” (“Generi website”), and which was related in some way at the time of registration of the Domain Name to the Respondent (as evidenced by an e-mail address given at registration and revealed on the Whois database - email@example.com), concerns an associated and complementary activity, namely the development and distribution of software for window and door producers;
- The Domain Name was registered for the purposes of selling it to the Complainant for a sum in excess of the Respondent’s costs in that in response to a letter from the Complainant sent in July 2007, concerning the Respondent’s registration, an individual purportedly acting on behalf of the Respondent, telephoned the Complainant in September 2007 and asked the Complainant to consider an ‘amicable settlement’. (At some point during this time the Domain Name was linked to the “www.gineri.com” site). This exchange culminated in the individual concerned again calling the Complainant on October 30, 2007 and offering to sell the Domain Name for 1,000 Euros. In November the Complainant made a counter proposal of 500 Euros. The Respondent responded referring to an offer for the Domain Name received from a third party of 6,000 Euros and repeating the offer of 1,000 Euros. This led to a further exchange but with no change in the respective positions of the parties.
- The Complainant further alleges that the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion. The Complainant states that the Respondent registered the Domain Name after the Complainant had established rights in the Somfy trademark and presence on the Internet and makes the point that Somfy is an invented name that one would not chose unless seeking to create some suggestion of association between the Gineri website and the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that:
(i) 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.
A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
This Panel finds that the Domain Name in issue is identical to some of the trademarks in which the Complainant has rights and confusingly similar to others.
B. Rights or Legitimate Interests
There is no evidence before the Panel in this case that the Respondent has rights or legitimate interests in the Domain Name. The act of registering and then offering for sale a domain name in itself does not confer such rights, at least in the circumstances of this Complaint where there is no evidence to contradict or challenge the contentions of the Complainant. This Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith. For instance, where there is evidence that a respondent, in using the domain name, intentionally attempts to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website, this may be indicative of bad faith for the purposes of the Policy.
Given the link to the Gineri website from the Domain Name <somfy.mobi>, there is a likelihood of such confusion. Moreover, it can be assumed that there may be some commercial advantage to the Respondent in linking the Domain Name to the Gineri website, and that there might have been a pre-existing relationship between the Gineri website and the Respondent at the time of registration of the Domain Name.
The trademark SOMFY is an invented word. The Domain Name encapsulates the Complainant’s widely used mark. The Respondent in all likelihood registered the Domain Name with knowledge of the Complainant’s rights. It is difficult on the evidence available in the Complaint to assume a good faith use for the Domain Name. Given all the circumstances, including the finding that the Respondent has no rights or legitimate interests in the Domain Name, the holding out of the Domain Name for sale and the Respondent’s failure to respond and participate in this proceeding, this Panel finds, for the purposes of the Policy, that there is evidence of both registration and use of the Domain Name 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 <somfy.mobi> be transferred to the Complainant.
Dated: April 2, 2008