The Complainant is the Société nationale des télécommunications: Tunisie Telecom of Tunis, Tunisia represented by Cabinet Faleh & Laribi-Avocats, Tunisia.
The Respondent is Ismael Leviste of Tel Aviv, Israel.
The Disputed Domain Name <tunisietelecom.com> (the “Disputed Domain Name”) is registered with Dotster, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2009. On November 13, 2009, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On November 13, 2009, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
By email of November 19, 2009, the Center notified the Complainant that the language of the registration agreement relating to the Disputed Domain Name was in English and requested the Complainant (given that the Complaint was filed in French) to provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in French; or to submit the Complaint translated into English; or to submit a request for French to be the language of the administrative proceedings. On November 24, 2009, the Complainant submitted the Complaint translated into English and provided explanations for French to be the language of the administrative proceedings. The Respondent did not react to the submission of the Complainant. The issue of the language of proceedings will be analyzed below (under 4).
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 November 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 21, 2009.
The Center appointed Jacques de Werra as the sole panelist in this matter on December 29, 2009. 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.
The registrar confirmed that the language of the registration agreement for the Disputed Domain Name is English.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complainant initially filed its Complaint in French. On November 19, 2009, the Center issued a notice regarding the applicable language of proceeding. The Complainant then submitted a request that French shall be the language of the proceeding, to which the Respondent has not replied.
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the panel has discretion to decide otherwise, having regard to the circumstances of the case. The panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties, taking into consideration matters such as command of the language, time, and costs. It is important that the language finally chosen by the panel for the proceeding is not prejudicial to the parties in their ability to articulate the arguments for the case. International Data Group, Inc. v. Lingjun, WIPO Case No. D2004-0398.
The Complainant, upon being notified by the Center that the language of the registration agreement is English, has submitted the Complaint in English and has simultaneously mentioned the reasons why French should be the language of the proceeding, to which the Respondent has not replied. The Complainant has particularly argued that even though the Respondent is domiciled in Israel the phone number indicated in the WhoIs information relating to the Respondent would be a French cell phone number. It has also argued that Israel would be notably (“francophile”) and that its population would be composed from people from North African countries (Algeria, Morocco and Tunisia) which are French speaking and finally that the Disputed Domain Name contains French words which confirms that the Respondent knew the French terms for designating the Complainant and used them in the Disputed Domain Name. However, the Panel is not convinced that these elements are sufficient to derogate from the rule that the language of the proceedings shall be the language of the registration agreement and to choose French as the language of the proceedings, noting also that because the Complainant itself has submitted the Complaint in English.
On this basis, the Panel decides that English shall be the language of the proceedings.
The Complainant is the long-standing telecommunication company of Tunisia. It is identified by its trade name TUNISIE TÉLÉCOM as specifically provided by the relevant Tunisian law (art. 1 of the law n° 95-36 of April 17, 1995 which created the national telecommunication office). The Complainant was subsequently privatized (pursuant to the Tunisian law n° 2004-30 of April 5, 2004), whereby the company remained identified as “Tunisie Télécom” (pursuant to art. 1 of the law n° 2004-30 of April 5, 2004).
The Complainant is the holder of a word and design trademark the verbal element in roman characters of which is TUNISIE TELECOM, which was registered with the Tunisian industrial property agency under number ET060386 on August 11, 2007 for telecommunication services in class 38 (“the Trademark”).
The Complainant has registered various domain names <tunisietelecom.tn>, <tunisietelecom.net.tn> and <tunisietelecom.com.tn>. It has also entered into an agreement with a French company for the sale and distribution in Europe and North America of its services under the name “Unlimited Number Tunisie Telecom”, whereby the French company registered on behalf of the Complainant the following domain names: <www.tunisietelecom.info>, <www.tunisietelecom.eu>, <www.tunisietelecom.be>, <www.tunisietelecom.co.uk>, <www.tunisietelcom.de>, <www.tunisietelecom.fr>, <www.tunisietelecom.es> and <www.tunisietelecom.it>.
The Disputed Domain Name was registered on May 20, 2001. It does not resolve to an active webpage.
The Complainant first claims that the Trademark is well-known not only in Tunisia but also in the whole world so that the reproduction of the Trademark in a domain name leads to confusion in the mind of the public, who immediately and spontaneously associates the name “Tunisie Telecom” with the services provided by the Complainant.
As a result, using the words “Tunisie Telecom” in a domain name violates the legal right of the Complainant because it causes confusion in the mind of the public so that the Disputed Domain Name makes everybody thinks that it is a site which legally belongs to the Complainant.
The Complainant further alleges that there is a similarity resulting from an identical reproduction of the verbal element of the Trademark in the Disputed Domain Name.
The Complainant also claims that the Respondent has no right in the Disputed Domain Name and that he does not conduct any bona fide commercial activities in connection with the Disputed Domain Name. Furthermore, the Respondent does not have any legitimate interest since it has neither a bona fide activity related to the Trademark nor obtained any authorization or license to use it.
The Complainant also notes that the Disputed Domain Name does not point to any active Internet site so that it is not related to any bona fide offer of service, and that the Respondent has not started any serious preparation for this since the registration of the Disputed Domain Name in May 2001. The Respondent is furthermore not known by the Trademark or by the Disputed Domain Name, and does not use it at all which confirms the lack of interest in respect of the Disputed Domain Name.
The Complainant finally alleges that the registration of a domain name containing a mark which the party making such registration could not be unaware that the mark belongs to a third party constitutes a registration in bad faith. The bad faith is characterized in this case by the fact that the Respondent could not be unaware - with the help of the Internet – of the existence of the well-known sign or the reputation and the rights attached to the Trademark of the Complainant.
The Complainant also claims that it has been established that the Disputed Domain Name was registered for the purpose of benefitting from the confusion between the Disputed Domain Name and any right of the Complainant and that such registration was intended only to impede the Complainant from peacefully enjoying its rights.
The Complainant finally claims that the Respondent has not published online any website in connection with the Disputed Domain Name since May 2001 and that bad faith may be evident in case where the relevant domain name is linked to an inactive site.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding. Thus, for the complainant to succeed, it must prove all of the three elements under the Policy:
(i) the respondent's 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 respondent's domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant is the legitimate owner of the Trademark and that the Dispute Domain Name is identical to the verbal element in roman characters of the Trademark.
On this basis, the Panel finds that the Disputed Domain Name is confusingly similar to the Trademark. Therefore, the Complainant has established that the condition of paragraph 4(a)(i) of the Policy is met.
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights or legitimate interests of a respondent in a domain name:
(i) before any notice was given to the respondent of the dispute, the respondent used, or demonstrably made 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 though it has not acquired any trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name.
The Complainant asserts that the Respondent has neither rights nor legitimate interests in the Disputed Domain Name. It also argues that the Respondent has not been licensed, or otherwise permitted in any way by the Complainant to use the Trademark and to register any domain name incorporating it.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or a legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In this case, the Panel is satisfied that the Complainant has made the required prima facie showing so that the burden has shifted to the Respondent. In this respect, the Panel notes that the Respondent which has not responded in these proceedings and which is not actively using the Disputed Domain Name has not brought any evidence or indication showing its use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Panel also notes that the passive holding of the Disputed Domain Name in this case does not constitute a legitimate use of such domain name. See Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483.
Therefore, the Panel is satisfied that the Respondent lacks rights or legitimate interests in the Disputed Domain Name under the Policy. The Panel thus concludes that the condition of paragraph 4(a)(ii) of the Policy has been established by the Complainant.
Based on the uncontradicted statements of the Complainant, the Panel accepts that the Trademark is distinctive as identifying the Complainant as this particularly results from the relevant Tunisian regulations which provide that the Complainant is identified by the trade name TUNISIE TÉLÉCOM (this initially resulted from art. 1 of the law n° 95-36 of April 17, 1995 which created the national telecommunication office), whereby such trade name is quasi-identical to the Disputed Domain Name (the only difference consisting in the accents which are not present in the Disputed Domain Name).
The Panel is also convinced that the Trademark is known as designating the Complainant and that the choice of the Disputed Domain Name was made by the Respondent with the Complainant and the Trademark in mind and for no other reason. In this respect, the Panel notes that the Disputed Domain Name was registered (in 2001) a few years before the Trademark of the Complainant was itself registered (2007). However, the Panel also notes that the registration of the Disputed Domain Name took place several years after the time when the Complainant started to use and to be publicly known by its trade name TUNISIE TÉLÉCOM (which formally resulted from art. 1 of the law n° 95-36 of April 17, 1995 which created the national telecommunication office).
The Panel is thus of the opinion that the Respondent registered the Disputed Domain Name in order to create an association with the Complainant and with the Trademark for the purpose of attracting users to its website. The Panel further notes that the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the Disputed Domain Name. On this basis, the registration of the Disputed Domain Name which incorporates a distinctive trademark and which has no connection to the owner of the relevant trademark and was not authorized to do so and had no legitimate purpose to use the trademark is a strong indication of bad faith. See Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry Succession Saint Exupéry-D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085.
Based on the foregoing, the Panel finds that the Respondent registered the Disputed Domain Name and is using it in bad faith so that the requirements of paragraph 4(a)(iii) of the Policy are met.
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 name <tunisietelecom.com> be transferred to the Complainant.
Jacques de Werra
Dated: January 11, 2010