WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dassault Systèmes v. Francis Raynald Grenier and Cadmos LLC
Case No. D2002-0049
1. The Parties
The Complainant in this administrative proceeding is Dassault Systèmes, 9 quai Marcel Dassault, BP 310, F-92156 Suresnes Cedex, France.
The Respondents are Francis Raynald Grenier and Cadmos LLC, CP 47039, Sillery, Quebec G1S 4X1, Canada and 930 chemin St-Louis, Sillery, Quebec G1S 1C7, Canada.
2. The Domain Name and Registrar
The domain name in dispute is <catia.info>.
The Registrar with which the domain name is registered is eNom Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on January 25, 2002, by e-mail and on January 18, 2002, in hardcopy. The Center acknowledged receipt thereof on January 23, 2002.
On January 24, 2002, the Center sent the corresponding Request for Registrar Verification in connection with this case to eNom Inc. On that same date the Registrar's verification response confirmed that the Registrant was one of the Respondents, Francis Grenier, with the administrative contact being the other, Cadmos LLC, and that the domain name <catia.info> was in "lock" status.
On February 5, 2002, after having verified whether the Complaint was satisfying the formal requirements, the Center notified by e-mail and courier the Commencement of Administrative Proceeding to the Parties, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
On February 25, 2002, the Respondents filed their Response with the Center by e-mail, the hard copy of which was received on March 4, 2002.
On March 11, 2002, 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, after the latter had signed and forwarded to the Center on March 8, 2002, a statement of acceptance and declared his impartiality and independence in this matter.
Transmission of the file to the Sole Panelist was made on March 11, 2002, by e-mail and registered post, hard copy of which was received by the undersigned few days later.
4. Factual Background
The Complainant developed a Computer Aided Design (CAD) software, known as "CATIA". This is a 3D software product used to simulate the production process, from the initial concept to the end product in service. CATIA, in the automobile industry, is used by more than half of the world’s car makers, whilst, in the aerospace industry, the major aircraft manufacturers use this product; in the rail industry, the world’s two largest locomotive manufacturers use CATIA.
The Complainant is the owner of the following CATIA's trade marks around the world (Complainant's Annex A8) :
- French trade mark CATIA No. 1695145, registered on September 25, 1981, renewed two times, valid until September 23, 2011 for classes 9, 16 and 42;
- U.S. Federal trade mark CATIA No. 1274136, registered on April 17, 1984, for classes 9, 16 and 42;
- Canadian trade mark CATIA No. TMA280159, registered on June 10, 1983, for classes 9, 16 and 42;
- Swedish trade mark CATIA No. 191284, registered on May 4, 1984, for class 42;
- United Kingdom trade mark CATIA No. 1165118, registered on November 21, 1981, for class 9;
- United Kingdom trade mark CATIA No. 1165119, registered on November 20, 1981, for class 16;
- United Kingdom trade mark CATIA No. 1281283, registered on October 1, 1986, for class 42;
- IR trade mark CATIA No. 466057, registered on November 27, 1981, renewed on December 13, 2001, for classes 9, 16 and 42;
- Japan trade mark CATIA No. 2047559, registered on May 26, 1988, for class 9 and National Class 11C01.
In addition, the Complainant is the owner of <catia.com>, registered since July 28, 1995, and of <catia.org>, registered since January 19, 2000 (Complainant's Annex A9).
It is not disputed that the Complainant's trade marks have been used significantly since CATIA was first commercialized on October 1, 1981, and has been publicized around the world (Complainant's Annex A10).
The Complainant discovered that its trade mark CATIA had been registered under the ".info" domain name and therefore contacted the Respondents in order to point out its trade mark rights to the disputed domain name.
The Respondents informed the Complainant that it considered its intended use of the domain name <catia.info> as legitimate and in particular that it's non lucrative information website would not constitute unfair competition towards the Complainant's trade mark CATIA (Complainant's Annex A3).
Failing the Complainant's attempts to resolve the matter amicably, by offering to pay for the registration of an alternative domain name of the Respondent's choice, the Complainant sent a formal letter before action, requesting the Respondent to cease all use of the disputed domain name and to transfer the domain name within eight days of the receipt of the letter (Complainant's Annex A6). As the Complainant did not hear positively from the Respondents, it filed the current complaint.
5. Parties’ Contentions
The Complainant essentially submits the following :
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is identical to the Complainant's various trade marks CATIA and visitors to the Respondents' intended CAD information website may perceive this site as being authorised by the Complainant, particularly as the Complainant's trade mark CATIA identifies one of the most well-known CAD products in the world.
(ii) The Respondents have no rights or legitimate interests in respect of the domain name.
The Respondents' rights and legitimate interests to register a domain name for the purposes of creating a website offering information on CAD products do not extend to using the established non generic trade mark rights of the Complainant as the basis for the disputed domain name.
(iii) The domain name was registered and is being used in bad faith, because:
- it has been registered in bad faith because the Complainant's trade mark CATIA was known to the Respondents prior to registration of the disputed domain name, indeed it was deliberately chosen to identify the Respondents' intended CAD product information website;
- the fact that the disputed domain name is not currently being used, accompanied with the fact that the Respondents knew of the Complainant's trade mark CATIA, and the fact that an alternative domain name which did not infringe the Complainant's trade mark right could have been registered, justifies an inference of bad faith use in addition to bad faith registration.
The Complainant requests therefore the Administrative Panel appointed in this administrative proceeding to issue a decision that the disputed domain name be transferred to the Complainant.
The Respondents submit mainly that they :
- never admitted that their use of the disputed domain name would be for a website regarding CAD in general, but rather for a non official support of the software CATIA and a short summary of the use of CAD;
- are aware of a registration of the trade mark CATIA in Canada and France but deny the submission that ownership of a website generates trade mark rights;
- agree that the disputed domain name <catia.info> is identical to the Complainant's various CATIA trade marks;
- possess legally the rights on Complainant’s trade mark for an informative, non-competitive use;
- are not intending to use the disputed domain name with an offering of goods or services in competition with Complainant’s trade mark;
- cannot be viewed as a competitor because they will be offering an informative source about Complainant’s product.
The Respondents request that the Administrative Panel reject Complainant’s requested remedies and relief.
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; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Administrative Panel has to 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.
A. Identity or Confusing Similarity
There is, indeed, identity between the Complainant's trade mark "CATIA" and the domain name <catia.info>. This is even admitted by the Respondents themselves in their Response.
The Complainant has established, in the Sole Panelist's view, its rights in the trade mark CATIA with numerous registrations for such a name, in particular in Canada (see Complainant's Annex A8). Likewise, such a case is also acknowledged by the Respondents in their Response.
This first requirement is therefore met. The Respondent's legal contention that ownership of a website does not generate trade mark rights is misplaced; Paragraph 4(a) (i) of the Policy only refers to rights in trade or service marks, not to the ownership of a website.
B. Rights or Legitimate Interests of the Respondent
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As mentioned above, the Complainant has established – and that is not disputed by the Respondents - that the trade mark CATIA has been known in various countries, among which Canada, for a significant period of time. Furthermore, the Complainant has not granted any license or otherwise permitted the Respondents to use such a trade mark or to apply for any domain name incorporating the said trade mark.
The Respondents, by submitting that they are not intending to use the disputed domain name with an offering of goods or services in competition with Complainant’s trade mark, exclude a potential right to or legitimate interest in the domain name in dispute, as provided for by Paragraph 4(c) (i) of the Policy.
Furthermore, the Respondents do not deny the fact that they have not been commonly known by the domain name in dispute within the meaning of Paragraph 4(c)(ii) of the Policy.
When contending that they "possess legally the rights on Complainant’s trade mark for an informative, non-competitive use", the Respondents seem to rely on Paragraph 4(c) (iii) of the Policy mentioned above.
In this respect, the Complainant has cited various authorities inter alia Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020; Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869 to deny such a right to or legitimate interest in the domain name in dispute.
It is the Sole Panelist's finding that the said authorities are relevant in that case, at least as far as the principles set out therein are concerned.
Several other decisions have been rendered on that same issue, among which are Bridgestone Firestone, Inc. and al. v. Jack Myers, WIPO Case No. D2000-0190, Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299 and Migros Genossenschaftsbund v. Centro Consulenze Kim Paloschi, WIPO Case No. D2000-1171.
From the reading of those decisions, it flows that the exercise of "free speech" rights for criticism and commentary may be considered as a valid defence (see A. APPLETON and K. TROLLER, "Domain Name Arbitrations: A Review of Selected Decisions", in Bulletin of the Swiss Arbitration Association, ASA, No. 4, 2000, p. 735) that a respondent may raise, but this does not go without any limitation. As pointed out by the Administrative Panel in the Monty and Pat Roberts case cited above regardless "…as to the truth or falsity of the allegations of Respondent in so far as they relate to the quality or characteristics of Complainant's services […] the right to express one's views is not the same as the right to use another's name to identify one's self as the source of those views. One may be perfectly free to express his or her view about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one's self as the New York Times or Time Magazine" (WIPO Case No. D2000-0299, at p. 9).
Likewise, in the Migros case mentioned above, the Administrative Panel held that even if it is "admitted that the aim of the website was to serve as a discussion forum, it is of the opinion that the exercise of the right of free speech does not require the use of Domain Name identical to the trademark of the Complainant. Respondent could have easily chosen a Domain Name which would indicate clearly to the public that the site is not Complainant's official website, but a discussion forum on Complainant's activities" (WIPO Case No. D2000-1171, at p. 5).
In the same way, a Sole Panelist recently ruled - whilst expressing himself on the bad faith issue - that "whilst the Respondent is free to express his own opinion about the Complainant and its work he is not free to suggest that he is, in fact, the Complainant or somehow associated with the Complainant through the use to which he has put the Domain Name" (Women on Waves Foundation v. Chris Hoffman, WIPO Case No. D2000-1608, at p. 4).
Admittedly, the Respondents chose such a domain name identical of the Complainant’s trade mark CATIA for providing information on the Complainant's landmark product CATIA, thus, misleading consumers on the source of said information.
As a result, the Respondents' defence based on Paragraph 4(c) (iii) of the Policy shall be therefore denied and the undersigned considers that the Complainant has discharged its duty to prove the second requirement of Paragraph 4(a) (ii) of the Policy.
C. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name 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 of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
On the bad faith registration of the domain name, the Sole Panelist accepts the Complainant's argument, that the Respondents was aware, at the time of the registration of the domain name in dispute, of the Complainant's trademark rights on CATIA. This is particularly true since, at the outset and deliberately, the Respondents have admitted to be willing to disseminate information on that well-known software product for its "support" thereof and to provide "an informative source about Complainant’s product".
The Complainant did not submit in this administrative proceeding that the Respondents may have not behaved in the manner described in Paragraph 4(b)(i), (ii) or (iv) of the Policy. It argues, instead, that Respondents' behaviour should be appraised under Paragraph 4(b)(iii). The Sole Panelist fails to see, clearly, on the basis of the evidence filed and submissions made any deliberate intent from the Respondents to disrupt the Complainant's business.
However, other factors such as the fact that the Respondents rejected the Complainant's attempts to resolve the matter amicably, by offering to pay for the registration of an alternative domain name of the Respondents' choice (Complainant's Annex A3), suggest bad faith use of the domain name <catia.info> within the general meaning of Paragraph 4(b) of the Policy.
All three elements being therefore present in this matter, according to Paragraph 4(a) of the Policy, transfer of the domain name <catia.info> in favour of the Complainant shall be, therefore, ordered.
In light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondents is identical to the corresponding trademarks of the Complainant, that the Respondents have 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 Respondents.
Accordingly, pursuant to Paragraph 4(i) of the Rules, the Sole Panelist requires that the registration of the domain name <catia.info> shall be transferred to the Complainant.
Dated: March 25, 2002