WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Matmut v. Paul Tweed
Case No. D2000-1183
1. The Parties
A. The Complainant is MATMUT, Mutuelle Assurance des Travailleurs Mutualistes, 66 rue de Sotteville, 76100 Rouen, France.
B. The Respondent is Mr. Paul TWEED, P.O. Box 391, 11121 Praha, Czech Republic.
2. The Domain Name and Registrar
A. The domain name in dispute is "matmut.com".
B. The Registrar with which the domain name is registered is Network Solutions, Inc.
3. Procedural History
A. The WIPO Arbitration and Mediation Center ("the Center") received MATMUT's Complaint on September 7, 2000, (electronic version) and September 12, 2000, (hard copy).
B. On September 14, 2000, the Center sent a request for registrar verification in connection with this case to Network Solutions. The following day, the Registrar's verification response confirmed that the Registrant was Mr. Paul TWEED and that the domain name "matmut.com" was in "active" status.
C. On September 18, 2000, after having verified whether the Complaint was satisfying the formal requirements, the Center sent to the Complainant a notification of Complaint's deficiency pursuant to Paragraph 4 (b) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), requesting the latter to cure the deficiencies contained therein; among others, the Complainant was requested to submit a complaint in the same language as the Registration Agreement, i.e. in English, in accordance with Paragraph 11 (a) of the Rules.
D. On September 25, 2000, the Center received hard copies of the English version of the Complaint from the Complainant who was further requested to submit it in electronic format in accordance with Paragraph 3 (b) of the Rules. In addition, the Complainant was requested to amend Point VIII of his complaint dealing with the courts' jurisdiction, in order to satisfy to the Rules (Paragraph 1 and 3 (b) (xiii) ) and the NSI Service Agreement 4.0 in effect in this matter.
E. On September 29, 2000, the Center received the Addendum to the Complaint, amended as requested.
F. On October 3, 2000, the Center notified by registered post and e-mail the Complaint and Commencement of administrative proceedings to the Respondent, in accordance with Paragraph 4 of the Rules.
G. On October 24, 2000, the Center issued by registered post and e-mail a Notification of default to the Respondent for having failed to submit a response in this matter.
H. On October 31, 2000, the Center proceeded with the appointment of the Administrative Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment of the undersigned as sole panelist in accordance with Paragraph 6 (f) of said Rules. Transmission of the file to the latter was made on that same day by e-mail and by registered post, hard copy of which was received few days later.
I. The Sole Panelist, noting that the amended Complaint dated September 25, 2000, did not reproduce the Remedies Sought (Paragraph 3 (b) (x) of the Rules) in its English version, whilst the French version of the Complaint filed on September 7 , 2000, and September 12, 2000, did state that the Complainant was requesting a decision ordering the transfer of the domain name in its favor, considering, in addition, that it was evident that such were the remedies requested by the Complainant in these proceedings, but also considering, in the light of the above and for sake of procedural fairness, that the Respondent should have an opportunity to comment on the Complainant's prayer for relief, issued on November 14, 2000, the following order:
1. The Complainant is requested to confirm that he requests the transfer of the domain name "matmut.com" in his favour, within as such time-limit the Center considers appropriate.
2. Upon receipt of such confirmation, as the case may be, the Respondent shall have an opportunity to make any comments within as such time limit the Center considers appropriate.
J. On November 15, 2000, the Center notified to the Parties by e-mail the Sole Panelist's Order of November 14, 2000. As a result, the Complainant was asked to answer to the Panel's Order by November 18, 2000. Accordingly, had the Respondent any comments, he was requested to let the Center know no later than November 21, 2000. Under those circumstances, it was decided that the scheduled date for the decision needed to be postponed to November 28, 2000.
K. On November 17, 2000, the Complainant invited the Center to advise the Administrative Panel that he was requesting from the latter the rendering, in these administrative proceedings, of a decision whereby the domain name "matmut.com" be transferred to the Complainant.
L. The Respondent did not make any comments in this respect.
M. The decision was forwarded by the Sole Panelist to the Center within the time limit fixed.
4. Factual Background
The Complaint is based on the French trademark No. 98 728 962 (logo) MATMUT filed on April 17, 1998, with the French Institut National de la Propriété Industrielle, for classes 16, 35, 36, 38 and 42.
The Complainant is the owner of the domain names "matmut.fr", "matmut.net" and "matmut.org".
5. Parties’ Contentions
The Complainant MATMUT submits that, being an insurance company created in 1962, his name has a direct link with his activity as a "mutualist insurer", this certifying the company brand name which has been registered since 1998.
The Complainant further submits that, having a legitimate commercial interest to hold the domain name in issue, he attempted to solve the matter amicably with the Respondent in order to have the domain transferred, but was suggested by the latter to acquire such domain name for USD 10'000.
Under those circumstances, the Complainant contends that the Respondent is unlawfully holding the domain name at stake, also considering that no site is opened and that the Complainant does neither want to have the name associated to his own trade mark to be used for grounds far-off his own activities, nor to see the domain name in dispute given to a competitor. In the Complainant's view, the Respondent is acting in bad faith when trying to resell the domain name for a prohibitive sum.
The Complainant concludes that recent case law now orders to a holder of a domain name whose denomination is one of a registered trademark, to transfer such domain name to the holder of the trademark so illegitimately borrowed, especially when such mark is pre-existing to the domain name.
The Respondent has not submitted any response.
However, in a previous e-mail to the Complainant dated June 27, 2000, submitted in these proceedings, the Respondent advised that he had properly registered the domain name in dispute and that there was nothing fraudulent thereabout, considering that "we are free to use it and open a site whenever we feel like it".
6. Discussion and Findings
Paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") sets forth three requirements which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name;
(iii) Respondent's domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceedings that each of the aforesaid three elements are present so as to warrant relief, according to Paragraph 4 (a) of the Policy.
The Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15 (a) of said Rules.
The administrative proceedings that are instituted under the ICANN Policy, Rules and Supplemental Rules are not opening a forum for adjudicating intricate questions of law under a given municipal; on the contrary they aim at eliminating various forms of flagrant misuses of the principle "first come first serve" for domain names registration (see Case No. D2000-0450, p. 4).
This matter shall be therefore determined along those lines.
A. Identity or Confusing Similarity
There is no doubt that there is similarity between the French trademark of the Complainant - at least in its verbal elements - and the characteristic elements of the domain name at stake. The difference in the top-level domain name is of no relevance in this regard (see e.g. Cases Nos. D2000-489 and D2000-0490).
B. Rights or Legitimate Interests of Respondent
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4 (c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14 (b) of the Rules (see also e.g. Cases No. D2000-0009, p. 6 and D-2000-0867, p. 6).
In addition, the Complainant has not granted any license or otherwise permitted the Respondent to use his trademark or to apply for any domain name incorporating the said mark.
Under those circumstances, the Sole Panelist is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.
C. Registration and Use in Bad Faith
Paragraph 4 (b) of the Policy provides a number of circumstances which, if found to be present by the Administrative Panel, are evidence of the registration and use of a domain name in bad faith. In particular, Paragraph 4 (b) (i) of the Policy holds that a finding of bad faith is to be made if the evidence reveals that the Respondent registered the domain name in issue primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name.
In the instant case, it is worth considering that the Respondent, in his communication to the Complainant dated June 27, 2000, clearly advised the latter that "Nevertheless, if you are interested in buying this domain name, we would be ready to sell it for $ 10.000".
Absent exceptional circumstances, the Respondent's above statement constitutes sufficient evidence, in the Sole Panelist's view, that the Respondent registered the domain name "matmut.com" primarily for the purpose of selling the domain name to the Complainant for an amount which is clearly in excess of out of pocket expenses directly related to this domain name. Such a finding is also supported by the fact that this domain name is not currently used. Furthermore, as already mentioned above, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance, which could demonstrate his good faith in the registration or use of the domain name in issue.
In light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondent is confusingly similar to the corresponding trademark of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.
Accordingly, pursuant to Paragraph 4 (i) of the Rules, the Sole Panelist requires that the registration of the domain name "matmut.com" shall be transferred to the Complainant.
Dated: November 27, 2000
Dated: November 27, 2000