WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Jean Heitz v. Yanal Hajmahmoud
Case No. D2008-0837
1. The Parties
The Complainant is Jean Heitz of Germigny L’Eveque, France, represented by Novagraaf France SA, of France.
The Respondent is Yanal Hajmahmoud of New Jersey, United States of America (“USA”).
2. The Domain Names and Registrars
The disputed domain names <argiletzamerica.com>, <argiletzcanada.com> and <argiletzus.com> are registered with Melbourne IT trading as Internet Names Worldwide (“Melbourne IT”). The disputed domain name <argiletzusa.com> is registered with Netfirms, Inc (“Netfirms”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on May 30, 2008, and in hardcopy on June 10, 2008. The Center transmitted requests for registrar verification by email to Melbourne IT and Netfirms on May 30, 2008.
Melbourne IT replied by email on June 5, 2008, confirming that the domain names <argiletzamerica.com>, <argiletzcanada.com> and <argiletzus.com> were registered with it, that the Respondent was the current registrant of these domain names, that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to these domain names, that these domain names would remain locked during this proceeding, and that the registration agreement was in English and stated that the registrant submitted to the jurisdiction of the courts as provided in the Policy. Melbourne IT also supplied the contact details on its Whois database in respect of these domain names, but noted that it had not been sent a copy of the Complaint by the Complainant.
Netfirms replied by email on June 10, 2008, confirming that it was the registrar for <argiletzusa.com> and that the Respondent was the registrant. The Center asked Netfirms by email on June 11, 2008, to confirm that <argiletzusa.com> had been put under Registrar lock for the purposes of the proceedings and that it was set to expire on February 1, 2009. Netfirms so confirmed by email of June 12, 2008.
The Center verified that the Complaint satisfied the formal requirements of 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 12, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was July 2, 2008. The Response was filed with the Center on July 2, 2008.
The Center appointed Jonathan Turner as the sole panelist in this matter on July 10, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the case file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant supplies clay-based health and beauty products under the mark ARGILETZ. The Complainant has registered ARGILETZ as his trademark in numerous countries; some of these registrations date back to 1970. The Complainant promotes his products under this mark through a website at “www.argiletz.com”.
The disputed domain names <argiletzusa.com> and <argiletzus.com> were registered on February 1, 2006, and February 28, 2006, respectively. The disputed domain names <argiletzcanada> and <argiletzamerica> were registered on March 4, 2008.
As at May 21, 2008, the disputed domain names <argiletzamerica.com>, <argiletzcanada.com> and <argiletzus.com> resolved to a website which displayed the banner, “This site is under construction”, followed by a selection of links mostly in French and relating to health and beauty. As at the same date, the disputed domain name <argiletzusa.com> resolved to a holding page which identified the registrar, Netfirms, and contained a banner stating, “Welcome to the Home page of the future website for argiletzusa.com.”
The Complainant’s representative sent a cease and desist letter to the Respondent regarding <argiletzus.com> on February 11, 2008. Following a reminder, the Respondent replied by email on March 26, 2008, stating “Yes. I own the domain ‘www.argiletzus.com’. However, if you are interested to have it, we could discuss the issue”.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to his registered trademarks ARGILETZ.
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain names, pointing out that the Respondent is not linked to the Complainant in any way, does not act on its behalf, and has not been given any authorization by the Complainant to use its mark ARGILETZ. The Complainant adds that the Respondent has not been commonly known by the name “Argiletz”.
The Complainant notes that he supplies his products under his trademarks in many countries, including the USA and Canada through his distributor in Canada, and submits that the Respondent could not make legitimate non-commercial or fair use of the disputed domain names. The Complainant alleges that the Respondent was aware of his trademarks and registered the disputed domain names solely for the purpose of including these trademarks in these domain names.
Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith. The Complainant repeats his allegation that the Respondent must have been aware of his trademark and draws attention to the multiple registrations made by the Respondent of domain names incorporating his trademark. The Complainant also draws attention to the correspondence mentioned above. The Complainant further alleges that the Respondent is profiting from confusion between the domain names <argiletzamerica.com>, <argiletzcanada.com> and <argiletzus.com> and the Complainant’s trademarks by obtaining click-through commissions on the links, some of which are connected to websites of the Complainant’s competitors.
The Complainant requests a decision that the disputed domain names be transferred to him.
The Respondent claims that he is the owner of a small company called Argiletz Limited Partner, based in New Jersey, USA, which specializes in transferring famous artworks onto stone. He contends that this business is not and will not be related to beauty products or clay products.
He states that Argiletz is the name of a Goddess in the Circassian culture and a symbol of prosperity. He adds that his first name is also a name of a God in the Circassian culture and a symbol of reliability. He says that the choice of “Argiletz” as a company name was related to a deep spiritual belief.
According to the Respondent, when he wanted to reserve a domain name for his company two years ago he found that <argiletz.com> was already registered by a French company and he therefore chose the domain names <argiletzusa.com> and <argiletzus.com>. He later registered <argiletzamerica.com> and <argiletzcanada.com> to prevent any problem in the future.
He promises that he will never use his websites to promote any product or misuse them in a way that could harm the Complainant’s business and states that the existing web pages are the responsibility of the registrars. He annexes a screenshot of what he claims to be a page of his website at “www.argiletzus.com” which does not contain any sponsored links.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the disputed domain names are identical or confusingly similar to a mark in which he has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith. Each of these requirements will be considered in turn below.
A. Identical or Confusingly Similar
The Panel finds that each of the disputed domain names is confusingly similar to the Complainant’s registered trademark ARGILETZ. Internet users familiar with this brand would obviously assume that these domain names identify websites promoting the Complainant’s products in the USA and Canada. The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
On its evaluation of the evidence in this proceeding, the Panel finds that the Respondent has not used or made demonstrable preparations to use any of the disputed domain names or any corresponding name in connection with a bona fide offering of goods or services.
The Response does not go so far as to state that the Respondent’s alleged company trades under the name “Argiletz” and if any such implication was intended, it is wholly unsubstantiated by any evidence of any actual business under any such name. It is also belied by the unexplained failure of the Respondent to use the domain names <argiletzusa.com> and <argiletzus.com> for his company’s alleged business for over two years after registering them.
Similarly, the Panel finds that the Respondent has not been commonly known by any of the disputed domain names.
It is not suggested that the Respondent is making non-commercial use of any of the disputed domain names. Any use made by the Respondent of the disputed domain names has not been fair, but rather has been such as to take unfair advantage of the Complainant’s trademark incorporated in them from click-through commissions on sponsored links.
There does not appear to be any other basis on which the Respondent could claim to have a right or legitimate interest in respect of the disputed domain names.
The Panel concludes on the evidence that the Respondent does not have any rights or legitimate interests in respect of the disputed domain names, and that the second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
On the evidence, the Panel finds that the Respondent registered the disputed domain names without justification and with knowledge of the Complainant’s trademark incorporated into them.
The Panel also finds that the Respondent is using three of the disputed domain names to attract Internet users to his website through confusion with the Complainant’s trademark for commercial gain in the form of click-through commissions on the sponsored links. The web page without links annexed to the Response appears to have been doctored or at any rate to be unrepresentative, and the Respondent’s reliance on this misleading evidence appears to constitute further evidence of his bad faith.
The Panel regards the Respondent’s reply to the Complainant’s representative’s cease and desist letter as an invitation to discuss the sale of the domain name <argiletzus.com>. The Panel considers that this is evidence that the Respondent acquired the disputed domain names primarily for the purpose of selling them at a profit to the Complainant or one of his competitors.
In the circumstances, and on its evaluation of all the evidence, the Panel finds that the disputed domain names were registered and are being used in bad faith. The third requirement of the Policy is satisfied.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain names, <argiletzamerica.com>, <argiletzcanada.com>, <argiletzus.com> and <argiletzusa.com>, be transferred to the Complainant.
Dated: July 21, 2008