WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Flammarion SA v. Lee Ha-won
Case No. D2000-0132
1. The Parties
The Complainant is Flammarion SA, société anonyme, with headquarters in Paris at 26 rue Racine, 75006 Paris, France.
The Respondent is Lee Ha-won, of Korea, whose address is 11f Sungwong b/d, 141 Samsung-dong, Seoul, 135-090, Korea.
2. The Domain Name and Registrar
The domain name in dispute is flammarion.com. The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") has provided documentation showing:
(a) the Center received Flammarion SA’s Complaint on March 8, 2000 (electronically), and March 10, 2000 (hard copy with exhibits);
(b) on March 13, 2000, a Complaint Deficiency Notification was addressed to the Complainant. The Center and the Complainant had several electronic mail exchanges regarding the submission of the corrected Complaint. The Center informed the Complainant that the deadline to submit the corrected Complaint was April 27, 2000;
(c) on April 26, 2000, the corrected Complaint was sent to the Center by electronic mail, and the hard copy of the corrected Complaint was received by the Center on May 8, 2000.
The formal date of the commencement of the Administrative Proceeding is May 11, 2000.
In accordance with paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center found that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules, and further that the payment in the required amount to the Center has been made by the Complainant.
The Panel accepts the above findings of the Center and further finds:
(a) The Complaint was properly notified to the Respondent in accordance with the Rules, paragraph 2(a) on May 11, 2000, advising the Respondent that the formal date of the commencement of the Administrative Proceeding is May 11, 2000, and that a response must be received by the Center within twenty calendar days, that is by June 1, 2000.
(b) A Response from the Respondent was forwarded to the Center by electronic mail on May 27, 2000, and a hard copy with exhibits was received by the Center on May 31, 2000. The Response declares a copy had been forwarded to the Complainant by electronic mail.
(c) Acknowledgement of receipt of the Response was forwarded to the Complainant and to the Respondent on May 31, 2000.
(d) The Administrative Panel was constituted of Joan Clark, Q.C., who had previously submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(e) The case file was transferred to the Administrative Panel on June 5, 2000.
(f) On June 14, 2000, the Panel forwarded to the Center a request, pursuant to Rule 12 of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, that the Complainant provide further statements and/or documents with respect to Sections 4(a)(ii) and (iii), 4(b) and 4(c) of the Policy, such further statements and/or documents to be supplied within two weeks. The Panel also forwarded to the Center a request that the Respondent provide further statements and/or documents responding specifically to the statements and/or documents provided by the Complainant in accordance with the aforementioned request, such statements and/or documents to be provided by the Respondent within the following two weeks.
(g) On June 15, 2000, the Center forwarded to the Complainant and the Respondent the Panelist’s request for further statements and/or documents, the deadline for Complainant to submit same being June 29, 2000, and the deadline for the Respondent to respond being July 13, 2000.
(h) No further statements and/or documents were received by the Center following the transmission of the Panelist’s request to the Complainant and the Respondent.
4. Factual Background and Parties’ Contentions
(a) Trademark of the Complainant
The Complainant asserts that it is the owner of the trade-mark FLAMMARION, registered January 3, 1986, and that the trade-mark is used for multimedia, CD-Rom, edition of books, games, toys, advertising, communication, education, entertainment and "any other business". The Complainant has produced as an exhibit the "Titre officiel de marque" of FLAMMARION, registered January 3, 1986, being an international registration registered with the World Intellectual Property Organization.
(b) The Complaint
The Complaint states that the Flammarion company was created in 1875 by Ernest Flammarion to run a bookshop, that it became a publishing house the following year, and that in 1882 it settled in its present address at 26 rue Racine in Paris, where it has remained to this day. The Complaint further states that its catalogue includes an impressive list of important French authors, including Emile Zola, Montpassant, Alphonse Daudet and many others including modern authors, and that it is the third most productive French group with nearly 1,600 new titles per year.
The Complaint provides extensive evidence of the use of the trademark FLAMMARION and its importance to the Complainant, in France and abroad where it distributes its books in about thirty countries. The Complaint further states that the domain name flammarion.com is essential for the Flammarion group (including the Complainant), as constituting a gate for the group, including all the activities (publication, distribution, bookshop) on the internet, in France and abroad.
The Complaint states that the Respondent has no right to the domain name and further states that the Respondent "doesn’t belong to the company Flammarion", by which we understand the Respondent is not associated with the Complainant in any legal manner.
The Complaint further states that the Respondent registered the domain name flammarion.com in bad faith and has not responded to the electronic mails which Complainant sent to him to inform him that FLAMMARION was a registered trade-mark.
Annex B to the Complaint includes copies of correspondence by electronic mail:
(a) from email@example.com to the Complainant dated October 12, 1999, referring to the Domain Name Registration Agreement with Network Solutions, Inc. recently created. This letter required a form of agreement, which indicated the Complainant as the organization using the domain name flammarion.com and other data, to be sent by electronic mail to firstname.lastname@example.org.
(b) from "Domain Registration Role Account" (email@example.com), to Sylvie.firstname.lastname@example.org, dated December 11, 1999, concerning flammarion.com , stating that modifications to the domain name registration had been completed and that if additional changes needed to be made, a Domain Name Registration Agreement modification should be completed and forwarded to hostmaster@networksolutions .com. The domain name was flammarion.com, registered in the name of Flammarion Inc., and the last updated record was stated to be December 10, 1999. We understand from the nature of the correspondence that Sylvie Moreel is a person within the Complainant company.
There is no evidence that the Domain Name Registration Agreement or a modification thereof was sent by electronic mail or otherwise to email@example.com. Nevertheless, it is clear that at least as early as October 12, 1999, the Complainant had applied to Network Solutions, Inc. to register the domain name flammarion.com. From the correspondence, it also appears that the Complainant had become the registrant of the domain name flammarion.com as of December 10, 1999 but was required to file a Domain Name Registration Agreement modification with Network Solutions. Since the Respondent was able subsequently to register the same domain name flammarion.com with the same registrar, we can only assume that the registration (or application to register) of the Complainant was allowed to lapse or was not completed.
(c) The Response
The Response does not dispute any of the assertions of the Complaint regarding ownership and extensive use of the trade-mark FLAMMARION, save to say that the name "Flammarion" is not known in Korea as a special trade or service mark.
The Response states that the Respondent registered the domain name flammarion.com "in connection with a bona fide offering of services for the purpose of our new internet "Tourism" business in Korean language not disrupting the business of the Complainant".
The Respondent states that it registered the domain name flammarion.com with Network Solutions, Inc. on February 7, 2000. The Respondent further states that its new internet business is concerned with tourism only for Korean tourists, especially for new couples’ honeymoons, that the web site would be constituted only in the Korean language, and that the preparation commenced in March 2000 has not been finished.
The Respondent further states that the domain name flammarion.com was selected by a recommendation of the Respondent’s colleague because the name "is accurate for the concept of our business and we could not anticipate any interrupting reason of using this domain name". No further explanation is given as to why the domain name is "accurate for the concept" of Respondent’s business. There is no evidence "flammarion" has any meaning in the Korean language.
The Respondent further states that, even if the domain name were related to the trade-mark of the Complainant, there is no reason for the Respondent to be considered as being in bad faith for commercial gain because, according to the Respondent, it has the priority rights and legitimate interest in the domain name for a bona fide offering of services.
As annexes to its Response, the Respondent has attached letters he received from Sébastien Greppo of the Complainant and from Céline Falk also of the Complainant, which letters shed some light on the confusion which has reigned in this matter.
In the electronic mail letter of February 15, 2000, from Céline Falk to Respondent, Céline Falk stated that the Respondent became the new registrant of flammarion.com on February 7, "in strange circumstances" and continued: "Anyway there was a misunderstanding with Network Solutions concerning the billing contact of this domain name, that’s why you were able to have it".
By an electronic mail of February 20, 2000, from Sébastien Greppo to Respondent, Sébastien Greppo stated he was disappointed to know that the Respondent "had recently taken the flammarion.com address" and further stated "for some reason we missed the internic renewal notice, we were not able to renew in time and our address was lost. There was a flammarion.com web site which is now inaccessible." Sébastien Greppo then asked the Respondent’s price so the Complainant could have the domain name back. No replies appear to have been made by the Respondent to these two letters forwarded on behalf of the Complainant.
5. Discussion and Findings
Pursuant to paragraph 4 (a) of the Policy, the Complainant must prove each of the following in order that the Respondent be required to submit to a mandatory administrative proceeding:
(i) The domain name in issue is identical or confusingly similar to the Complainant’s trademark or service mark, and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.
(a) Identity or confusing similarity to a trademark or service mark in which the Complainant has rights
The Complainant alleges that flammarion.com is identical to the Complainant’s trade-mark FLAMMARION.
The Panel finds this to be true.
The requirement of paragraph 4(a)(i) of the Policy has therefore been met.
(b) Rights or legitimate interests in the domain name
On February 15 and February 20, 2000, the Complainant forwarded to the Respondent letters objecting to the latter’s registration of flammarion.com, advising that the Respondent was not allowed to use this domain name, warning him of a recourse to the WIPO Arbitration and Mediation Center, and even enquiring as to the Respondent’s price for relinquishing the domain name to the Complainant.
The Respondent asserts that preparation of his web site under flammarion.com was commenced in March 2000, and was not finished when the Response was written on May 27, 2000.
Accordingly, by February 15, 2000, date of the first notice to him by the Complainant of the dispute, the Respondent had not commenced use of the domain name or even commenced preparations to use it in connection with a bona fide offering of goods or services.
There is no evidence that the Respondent has been commonly known by the domain name, or that he intends to make a legitimate non-commercial use of it without intent for commercial gain; on the contrary, the domain name was registered by the Respondent "for the purpose of our new internet business".
The Panel finds that the evidence indicates the Respondent has no rights or legitimate interests in respect of the domain name flammarion.com.
The requirement of paragraph 4(a)(ii) of the Policy has therefore been met.
(c) Bad faith
The Panel finds no reason has been shown as to why the Respondent adopted the domain name flammarion.com, except for its association with the name and/or trademark of the Complainant.
The Panel dismisses the Respondent’s contention that the domain name is "accurate for the concept" of the Respondent’s business.
Furthermore, the Respondent implicitly concedes that the domain name may be associated with the Complainant by stating:
"Even if this domain name is related to the trade mark of society "Flammarion", there is no reason for us to be considered or threatened as a bad faith for commercial gain made by arguments of the Complainant because we have the priority rights and legitimate interest in this domain name nevertheless for a bona fide offering service in accordance with Policy 2(a)(b)(c) on our behalf provides as Annex [D]."
As indicated above, the Panel has found that the Respondent has no rights or legitimate interests in respect of the domain name, and therefore the Respondent’s reliance on "priority rights" and "legitimate interests" fails.
The Panel finds that by acquiring a domain name which is identical to a well-recognized trademark and the name of an established business, and which is an unusual word, there being no evidence of its having a particular meaning in the Korean language, the Respondent has registered this domain name in bad faith.
In addition to finding that the domain name has been registered in bad faith, the Panel finds that it is being used by the Respondent in bad faith.
As succinctly expressed in the decision in WIPO Case D2000-0003 (Telstra Corporation Limited v. Nuclear Marshmallows) the concept of a domain name "being used in bad faith" is not limited to positive action. Inaction, or a passive holding of a domain name registration can, in some circumstances, constitute using a domain name in bad faith. The examples of registration and use in bad faith set forth in paragraph 4(b) of the Policy are not limitative and include some cases of inaction, where the domain name is not being actively used on an active, functioning web site.
In the present case, the Respondent’s holding of the domain name registration and his failure to transfer it to the Complainant prevent the Complainant from registering its own well-known trade-mark as its domain name, and are tantamount to a use of the domain name in bad faith. While the Respondent has indicated that his purpose is not to disrupt the business of the Complainant, this will be the natural consequence of his registration of the domain name. Even if the Respondent were to restrict his future use of the domain name to a site in the Korean language for Korean honeymooners (which there would be no binding requirement for him to do), persons who access the site to obtain information about the Complainant and its business would be frustrated and the Complainant and its business would suffer accordingly. This is the logical consequence of the continued registration of the domain name in the name of the Respondent for which he must be held accountable and to be acting in bad faith.
(1) The Panel decides, in accordance with the Uniform Domain Name Resolution Policy, paragraph 4:
(a) that the domain name in dispute is identical with the registered trademark of the Complainant;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that it has been registered and is being used in bad faith.
(2) The Panel accordingly requires that the domain name flammarion.com be transferred forthwith to the Complainant.
Dated: July 31, 2000