WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maisons du Monde SAS v. Spacessence Limited t/a Maison du Monde
Case No. D2011-0956
1. The Parties
The Complainant is Maisons du Monde SAS of Vertou, France, represented by Artlex II, France.
The Respondent is Spacessence Limited t/a Maison du Monde of London, the United Kingdom of Great Britain and Northern Ireland, represented by Martin Helme, United Kingdom of Great Britain and Northern Ireland (“UK”).
2. The Domain Name and Registrar
The disputed domain name <maisondumonde.com> is registered with Ascio Technologies Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2011. On June 6, 2011, the Center transmitted by email to Ascio Technologies Inc. a request for registrar verification in connection with the disputed domain name. On June 8, 2011, Ascio Technologies Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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”).
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 June 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2011. The Response was filed with the Center on July 3, 2011.
On June 17, 2011, the Center acknowledged receipt of a supplemental filing from the Complainant. On July 13, 2011, the Center received a supplemental filing from the Complainant in reply to the Response. On July 19, 2011, the Respondent sent a supplemental filing to the Center.
The Center appointed Richard Hill as the sole panelist in this matter on July 21, 2011. 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 disputed domain name was registered by the Respondent in July 2000.
The disputed domain name was used by the Respondent as of its registration to offer furniture for sale. The Respondent also operates, as of the year 2000, brick-and-mortar stores in the UK offering furniture for sale.
5. Parties’ Contentions
The Complainant alleges that it is a French company created in 1996, whose activity is the design, manufacture and sale of furniture and related items of various styles. The Complainant’s products are marketed under its trademark MAISONS DU MONDE via the Internet and its network of 180 brick-and-mortar stores in France, Belgium, Italy and Spain. The Complainant’s revenues were some 268 million Euros in the year 2009.
The Complainant states, and provides evidence to show, that it owns various registered trademarks for the name MAISONS DU MONDE, the first registration dating to May 1999. Through extensive use around Europe, the Complaint’s mark has become well-known in connection with home decorative goods.
The Complainant alleges that it uses the web site “www.maisonsdumonde.com” to promote and sell its products. It also owns numerous domain names in various gTLDs and ccTLDs starting with the strings “maisonsdumonde”, “maisons-du-monde”, “maisondumonde”, and “maison-du-monde”.
According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s mark.
Further, says the Complainant, the Respondent owns no brand, no trademark, and no priority rights in the name MAISON DU MONDE and it has not been licensed or otherwise been permitted to use the Complainant’s trademark.
The Complainant states (and provides evidence to show) that in 2006 it filed a European Community trademark (CTM) application for the mark MAISONS DU MONDE. The Respondent filed notices of opposition against that application. In 2009, the relevant authority rejected both oppositions and the rejection was not appealed. In 2006, the Respondent filed a UK trademark application for the mark MAISON DU MONDE. The Complainant filed a notice of opposition against this application. In 2010, following the decision regarding the CTM, the company that was party to those proceedings was dissolved and its website was closed. Consequently, the UK Intellectual Property Office decided that the Respondent’s application for the UK trademark MAISON DU MONDE was deemed withdrawn.
According to the Complainant, the website at the disputed domain name was inactive as of 2010. Prior to that, the disputed domain name was not used in connection with a bona fide offering of goods or services. The Respondent has actually made an illegitimate use of the disputed domain name, with intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s mark.
The Complainant alleges (but does not provide evidence to prove) that the Respondent selected and used the disputed domain name because it is confusingly similar to the Complainant’s mark. Its intent and actual use was to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
The Complainant states that it first became aware of the Respondent’s website, and its offer of furniture on that website, in 2006. The Complainant contacted the Respondent in order to assert its trademark rights and to try to negotiate and amicable solution regarding the disputed domain name. The Respondent proposed to sell its entire business and its domain name to the Complainant for UK pounds 10 million. The Complainant considered that that sum is unreasonable and excessive. The Complainant goes on to provide further details of the communications between the parties regarding this matter, but the Panel will not summarize those allegations in any detail because it considers that, for the reasons given below, they are not relevant for the present case.
The Complainant alleges (and provides evidence to prove) that the Respondent registered in the UK various companies whose names are similar to the denomination of various famous companies. It does not allege, however, that the Respondent registered domain names that are similar to the names or trademarks of those famous companies.
According to the Complainant, in 2006 the Respondent sold via its website at the disputed domain name furniture similar to that sold by the Complainant. The website also displayed a large banner promoting “free delivery to France”, with prices shown in Euros. There is no legitimate reason why the Respondent, who is based in London, UK, would have included such a banner on its website other than to benefit from the Complainant’s reputation in France by soliciting customers there. Further, following the breakdown of negotiations between the parties, the Respondent’s website was modified to be more similar to the Complainant’s website. Further, in 2008, the Respondent reproduced on its main website page one of the pictures of the Complainant’s catalog, and this without authorization.
In an unsolicited supplemental filing, the Complainant states that the Respondent reactivated its website immediately after the present Complaint was filed, and this only in order to lead the Panel to think that it has a real activity whereas it hasn’t.
In an unsolicited rebuttal of the Response, the Complainant presses its case, stating that it registered its first two domain names <maisons-du-monde.com> and <maisons-du-monde.fr> in 1999, and that it sold furniture since 1996.
However, the Complainant does not effectively rebut the Respondent’s allegation that the Respondent did not know of the Complainant or of its business when it first registered the disputed domain name, and this because the Complainant was a small French company at that time.
The Respondent does not effectively contest that the disputed domain name is similar to the Complainant’s mark.
According to the Respondent, at the time of registration of the disputed domain name, the Complainant was unknown outside France. Only now is it known in France, Belgium, Italy and Spain where it has opened stores in the last few years. In 1996, the Complainant’s product offer was primarily gifts and accessories, but not furniture. Even today, this continues to be the majority of their product offer in their brick-and-mortar stores, and much of the Complainant’s product range still concentrates on non-furniture products.
The Respondent alleges (but does not provide evidence to show) that the Complainant only offered furniture for sale gradually after 1996 and only started developing its website in 2004. The Complainant’s furniture sales business on the web only started to take off in 2006.
The Respondent states that his product offering has not changed significantly since 2000, when he first started selling furniture in brick-and-mortar stores, and via the Internet, through the disputed domain name which was registered at the same time, together with <maisondumonde.co.uk>.
Further, says the Respondent, when the disputed domain was registered in 2000, the Complainant was a small company in France and had no more claim to use the disputed domain name than anybody else in any country other than France where it had successfully received trade name protection in its home territory.
The Respondent goes on to provide his version of the discussions between the parties that started in 2006. As stated above, the Panel will not summarize those discussions in any further detail because it considers that they are not relevant for the present case.
The Respondent states (and provides evidence to prove) that the authority that rejected his opposition to the Complainant’s CTM application found that “one of the few undisputed points in the proceedings is the fact that the presented evidence is sufficient to prove that the opponent has actually used the name Maison Du Monde in the course of trade”, in particular in the UK, primarily in the London area.
The Respondent alleges that the Complainant is attempting to engage in reverse domain name hijacking.
In an unsolicited surrebuttal, the Respondent presses his case, in particular regarding the alleged reverse domain name hijacking.
6. Discussion and Findings
Before proceeding to analyze the three elements of the Policy, the Panel will first rule on the admissibility of the unsolicited supplemental filings. According to 12 of the Rules, the Panel may request, in its sole discretion, further statements or documents from either of the Parties. However, the Panel did not request the supplemental filings which, in its opinion, add little to the case file that is of value. Nevertheless, in accordance with 10 of the Rules, the Panel decides to admit all the unsolicited supplemental filings.
As a further preliminary remark, the Panel notes that many of the allegations made by the parties are outside the scope of the Policy and concern issues that should be, if the parties so wish, submitted to the competent national courts, in particular with regard to allegations of passing off, unfair competition, and copyright infringement.
It must not be forgotten that domain name registration is basically a “first come, first served” process and that the purpose of the Policy is not to adjudicate between parties who have some legitimate interest in using a particular domain name, but only to correct cases of obvious cybersquatting. The legislative history of the Policy is well summarized in the Final Report of the WIPO Internet Domain Name Process, available at:
Paragraph 153 of that Report states, in pertinent part:
“The scope of the procedure would be limited to cases of abusive registrations (or cybersquatting), as defined below, and would not be available for disputes between parties with competing rights acting in good faith.”
And paragraph 172 states, in pertinent part:
“The cumulative conditions of the first paragraph of the definition make it clear that the behavior of innocent or good faith domain name registrants is not to be considered abusive. For example, a small business that had registered a domain name could show, through business plans, correspondence, reports, or other forms of evidence, that it had a bona fide intention to use the name in good faith.”
As indicated above, the parties are engaged in a complex dispute involving a number of allegations, and involving the use of the tradename MAISON DU MONDE which, according to the Complainant, is confusingly similar to its mark MAISONS DU MONDE.
The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., WIPO Case No. DAU2005-0004 stated:
“[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes. The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.”
Similarly, in the present case, the parties raise issues involving trademark and unfair competition law that can only be properly considered and settled by the competent national courts.
A. Identical or Confusingly Similar
It is clear that the disputed domain name is confusingly similar, in the sense of the Policy, to the Complainant’s trademark.
B. Rights or Legitimate Interests
Under paragraph 4(c)(i) of the Policy, a Respondent can demonstrate rights or legitimate interests ― in the sense of the Policy ― in a domain name if before any notice of the dispute, the Respondent used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
Both parties present the same evidence to the effect that the Respondent used the disputed domain name, and a name corresponding to that domain name, to offer furniture for sale via the Internet and brick-and-mortar stores well before the present dispute. So this fact is not contested.
In order to show that the Respondent does not have rights or legitimate interests in the sense of the Policy the Complainant would have to prove that the Respondent’s use of the disputed domain name in 2000 was not bona fide. And indeed the Complainant does assert that the Respondent first registered and used the disputed domain name in order to take advantage of the Complainant’s mark and goodwill.
But the Complainant does not present any evidence to support this allegation, which is denied by the Respondent. The Respondent states that the Complainant was not sufficiently well-known in 2000 to have come to his attention. The Complainant does not rebut this key point in its unsolicited rebuttal. In accordance with paragraph 10 of the Rules, and by analogy with paragraph 14(b) of the Rules, the Panel infers from the Complainant’s silence on this point that indeed it was not very well-known in 2000.
An examination of the history of the Complainant’s domain name <maisonsdumonde.com> and of the Respondent’s domain name <maisondumonde.com> through The Wayback Machine at “www.archive.org” supports this inference. The archives show that the Respondent’s domain name was used to sell furniture as of 2000, while the Complainant’s web site was apparently not active until 2006.
Thus the Panel holds, on the basis of the arguments and evidence submitted to it, that the Respondent did engage in a bona fide offering of goods in 2000 and that therefore, under the Policy, he has a legitimate interest in the disputed domain name. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; see also K2r Produkte AG v. Jeremie Trigano, WIPO Case No. D2000-0622; see also Funskool (India) Ltd. v. funschool.com Corporation, WIPO Case No. D2000-0796.
C. Registered and Used in Bad Faith
The Complainant presents arguments to the effect that, as of 2006, the Respondent may have engaged in activities that are contrary to various national laws. As indicated above, such allegations are best pursued in detail in national courts.
Under the Policy, the Complainant must prove not only that the Respondent is now using the disputed domain name in bad faith, but also that he first registered the domain name, in 2000, in bad faith.
As noted above, the Complainant does indeed allege that, but does not provide adequate proof, and the Respondent has convincingly responded to the allegation.
The Panel holds that the Complainant has failed to satisfy its burden of proving that the Respondent registered the disputed domain name in bad faith in the sense of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:
“Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The Respondent invokes this provision when it requests the Panel to find that the Complainant is using the Policy in a bad faith attempt to deprive a registered domain name holder of a domain name. The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993:
“Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.”
These conditions are confirmed in Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151 and Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224 (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, WIPO Case No. D2000-0565.
In the present case, the Complainant knew that the Respondent was offering furniture for sale in 2000 when the Respondent first registered the disputed domain name, and the Complainant did not present any evidence showing that that business was not bona fide back in 2000. Further, the Complainant did not rebut, in its unsolicited rebuttal, the Respondent’s allegation to the effect that his activities were perfectly legitimate back in 2000. After having received the Response, the Complainant should have known that its case was insupportable under the Policy.
While the Panel does take good note of the Complainant’s allegations concerning the situation since 2006, it has no choice but to apply the Rules and to find Reverse Domain Name Hijacking, for the reasons explained above.
The Panel does wish to note, in addition, that the Response and the Respondent’s unsolicited submission were unnecessarily lengthy because they included certain allegations (not summarized above) and hundreds of pages of exhibits that were not relevant for the present case.
For all the foregoing reasons, the Complaint is denied. The Panel finds that the Complainant has attempted to engage in Reverse Domain Name Hijacking.
Dated: July 28, 2011