WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fiducial, Inc v. Serge Bourlionne.
Case No. D2000-1044
1. The Parties
The Complainant in the administrative proceeding is Fiducial, Inc., having its head office at 450 Park Avenue, New York, NY 10022, represented by Anne Napolitano, hereinafter the "Complainant".
Respondent is Serge Bourlionne, 7 Rue du Port, Creteil, Val de Marne, 94000, France, hereinafter the "Respondent".
2. Domain Names and Registrar
The domain names at issue are "fiducial.net" and "fiducial.org", registered on April 19, 2000, hereinafter referred to as the "Domain Names". The registrar is GANDI.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s complaint on August 14, 2000 (hardcopy). The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules) on August 23, 2000. Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is August 28, 2000.
The Center transmitted via email to GANDI a request for registrar verification in connection with this case and GANDI replied on August 25, 2000, confirming in its verification response that the registrant is Serge Bourlionne and confirming the contact details.
The Center transmitted on August 28, 2000, to the Respondent Notification of Complaint and Commencement of the Administrative Proceeding.
The Center advised that the Response was due by September 16, 2000, and no response was submitted after that date. Accordingly, the Center issued a Notification of Respondent Default on September 25, 2000.
The Administrative Panel issued an Interim order on November 15, 2000 requesting the parties to clarify by November 22, 2000 the following:
For the purpose of complying with paragraph 11 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the Panel asked the parties in which language the registration agreements for the domain names at issue have been concluded, as this could not be determined from the case documentation as the registrar was not able to confirm the language in which the registration agreement was signed which could have been signed in English or in French language;
For the purpose of clarifying whether or not the Complainant complies with the requirements of paragraph 4(a)(1) of the Policy the Panel invited the Complainant to provide documentary evidence of the rights it has on the trademark which are the basis of the Complaint.
The Interim Order was issued in English and in French language.
Respondent provided an answer to the Interim order sent by E-mail to the Center on November 20, 2000, mentioning that the language of the procedure is not important to him.
Consequently the Panel considers that the language of the procedure complies with paragraph 11 of the Rules as English can be considered as the agreed language for the procedure.
Respondent also indicated that he previously proposed to the company "FIDUCIAL" the transfer of the Domain Names for $1,500 to be given to a charitable organization to be selected by "FIDUCIAL".
The Panel points out that such information was not requested by virtue of the Interim order and that Respondent has not timely answered the Complaint as noted by the Center in the Notification of Respondent Default on September 25, 2000.
Consequently, the Panel shall not consider this remark as being part of the procedure, which, in addition, is not supported by any documentary evidence.
Complainant answered the Interim order providing additional documentation and explanation of the rights it claims to have on the trademarks which are the basis of the Complaint.
The Administrative Panel shall issue its Decision based on the Complaint and the evidence presented by the Complainant, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
Complainant is Fiducial, Inc., a Delaware Corporation. Complainant presents itself as being a wholly owned subsidiary of a French holding company called Fiducial SC, based in Paris and acting as a major accounting firm in France for over 12 years. Complainant provides documentary evidence of the fact that Fiducial SC owns 1,000 fully paid shares of Fiducial, Inc.
Complainant mentions that the French holding company Fiducial SC created the Company Fiducial, Inc., i.e. the Complainant, in 1998 and mentions that Complainant has conducted business operations under the Fiducial name since April 1998 in the United States. Complainant provides evidence of its incorporation in the United States under the name of Fiducial, Inc. and provides evidence that another Company called Fiducial Triple Check, Inc., which Complainant claims to be indirectly owned by Complainant, is conducting business in the US.
The Domain Names were registered on April 19, 2000.
Complainant mentions that it has filed a trademark application with the United States Patent and trademark Office ("USPTO") on July 21st, 2000, seeking protection for the name Fiducial as a service mark in the United States, but does not provide documentary evidence of this.
Complainant provides a copy of a renewal certificate of a trademark registered in France by the holding company Fiducial SC: French trademark n°1.561.555, filed in November 23, 1989 and renewed for 10 supplementary years in 1999.
Complainant provides no other documentary evidence of trademark ownership.
Complainant provides evidence that Respondent was previously an employee and later a partner in the holding company of Complainant, and that Complainant and Respondent were engaged in a litigation concerning a completely different matter which was settled between the parties. Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained an authorization to use Complainant ’s trademarks or the holding company trademarks.
The Domain Names are not used and resolve to a web page mentioning that the Domain Names are "parked".
5. Parties Contentions
Complainant contends that Respondent has registered the Domain Name which is identical to the service mark "Fiducial" in which Complainant claims to have rights, that Respondent has no rights or legitimate interests in respect of the Domain Names and that bad faith in registration and in use of the Domain Names is established in light of the prior relations of the parties and of the absence of use of the Domain Names.
Consequently, Complainant requires the transfer of the Domain Names registrations.
Respondent has not provided any valid response within the period granted for its response to the Complaint.
In its answer to the Interim order Respondent mentions that it accepts without any reservation the transfer of the Domain Names.
6. Discussion and Findings
The Policy, the Rules and the Supplemental Rules do not contain any provision allowing this Panel to order transfer of the Domain Names based on mutual agreement of the parties which shall be arranged between the parties with the registrar of the Domain Names.
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and,
(2) that the Respondent has no right or legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and is being used in bad faith.
Additionally, the Rules for Uniform Domain Name Dispute Resolution Policy, Paragraph 3(viii), require that Complainant shall: " Specify the trademark(s) or service mark(s) on which the complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used (Complainant may also separately describe other goods and services with which it intends, at the time the complaint is submitted, to use the mark in the future.);". Also, Paragraph 3(xv) of the Rules requires that Complainant shall "Annex any documentary or other evidence, including a copy of (…) any trademark or service mark registration upon which the complaint relies (… )".
The Domain Names are "fiducial.net" and "fiducial.org".
The only documentary evidence provided with respect to trademarks is a trademark registered by the holding company of the Complainant (i.e. the French company Fiducial SC). The Complainant (i.e. the Delaware corporation Fiducial, Inc.) provides no documentary evidence that it is a licensee of this trademark or that it is the owner of a trademark itself in which it has rights prior to the registration of the Domain Names.
Complainant mentions that it has filed an application with the USPTO on
July 21, 2000. The filing date of the alleged trademark is posterior to the registration of the Domain Names. In addition, no documentary evidence is provided as to the existence of the filing of such trademark.
Complainant mentions that it possesses common law rights to the "Fiducial" service mark in the United States based upon prior use in commerce but does not provide documentary evidence of such rights.
It is outside of the scope of the authority of the Panel, which is Administrative in nature, to determine whether or not a corporate name used by a US company is or is not eligible to protection as a trademark in the US according to common law rules based on the evidence provided, which in addition mainly relates to another company indirectly owned by Complainant.
In view of the above, the Administrative Panel finds that the Complainant has failed to prove that it has rights in the documented trademark.
The Administrative Panel draws the attention of the parties to the fact that requirement of paragraph 4(a)(1) would have been undoubtedly met if the Complaint had been brought by the French holding company Fiducial, SC, which is the owner of the documented trademark.
Consequently, the Administrative Panel cannot rule that the Domain Names registered by the Respondent are identical or confusingly similar to a trademark in which the Complainant has rights.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks.
Respondent is not using the Domain Names, which are only "parked".
Respondent has not timely answered the Complaint and thus has provided no evidence against the prima facie case that the Respondent registered the said Domain Names with no rights or legitimate interests.
Under these circumstances, the Administrative Panel finds that Respondent has no legitimate interest in the Domain Names.
c. Registration and Use in Bad Faith
Complainant has proved that Respondent knew the existence of the trademark "Fiducial" prior to registration of the Domain Names, which is actually the name of the company in France in which Respondent worked in the past.
Though the Domain Names are not being used, and in view of the factual background of the relations of the parties, the Administrative Panel finds that there are sufficient indications that absence of use does constitute in the present case a bad faith use of the Domain Names.
In conclusion and in view of the above, it is the Panel’s opinion that Respondent did register, and has been using the Domain Names in bad faith.
In light of the foregoing, the Administrative Panel decides that no trademark in which the Complainant has rights has been provided supporting the fact that the Domain Names registered by the Respondent are identical or confusingly similar to such trademark, that Respondent has no right or legitimate interest in respect of the Domain Names and that Respondent registered and has been using the Domain Names in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Administrative Panel denies the request that the registration of the Domain Names "fiducial.net" and "fiducial.org" be transferred to Complainant due to absence of documentary evidence.
Dated: November 29, 2000