WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CEGETEL v. Sonia Garcia Gonzalez-Herrero
Case No. D2004-0999
1. The Parties
The Complainant is CEGETEL, Paris La Defense, France, represented by Cabinet Dreyfus & Associés, Paris, France.
The Respondent is Ms. Sonia Garcia Gonzalez-Herrero, Madrid, Spain.
2. The Domain Name and Registrar
The disputed domain name <segetel.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2004. On November 29, 2004, the Center transmitted by E-mail to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On November 29,2004, Wild West Domains, Inc. transmitted by E-mail to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 9, 2004 (by E-mail) and December 13, 2004 (hardcopy). The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 December 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2005. The Response was filed with the Center on December 31, 2004.
The Center appointed Dr. Massimo Introvigne as the sole panelist in this matter on January 10, 2005. 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
It is beyond dispute that Complainant is the largest private French fixed telecommunications operator, that it is well-known as “Cegetel”, that the pronunciation in French of its trade name is “Segetel”, and that it is the owner of a number of trademark registrations including the word CEGETEL, dating back at least to 1997.
Respondent registered <segetel.com> on May 3, 2004. On January 18, 2005, the corresponding Web site was still very much a work in progress, and was not ready for navigation, particularly by in-experienced or average Internet users. On June 15, 2004, Complainant’s attorneys sent their first warning letter to Respondent; no amicable solution was however reached. Respondent wholly owns the share capital of a Spanish limited liability company known as Segetel Telecom S.L., incorporated on August 11, 2004.
5. Parties’ Contentions
Complainant claims that the trademark CEGETEL is well-known throughout Europe and the world. It is normally pronounced as “Segetel” even outside France. Respondent could not have reasonably ignored such a famous trademark, and registration can only have occurred in bad faith. The use made of the domain name is also in bad faith. Not only does Complainant rely on previous decisions on “passive holding”; it also emphasizes that there is actually a Web site corresponding to the domain name, and it can attract Internet traffic which would otherwise reach Complainant’s own Web site “www.cegetel.com”.
Respondent vigorously argues that CEGETEL and “Segetel” are different, and that only in France CEGETEL is pronounced as “Segetel”. She claims that she created the name “Segetel” in good faith, based on her initial (SE for Sonia and GE for Garcia) and the common suffix TEL for telecommunication services. She has incorporated a Spanish limited liability company known as Segetel Telecom S.L., and plans to use in the future the domain name in good faith for selling cellular telephones and related services, and performing other legitimate activities associated with this company.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel believes that the trademark CEGETEL and “Segetel”, although not identical, are confusingly similar. Although the suffix TEL is indeed common for telecommunication services, CEGE- and SEGE- are phonetically so close that confusion is likely. Additionally, CEGETEL is a very large and famous company, and most consumers (e.g. because they have heard its name mentioned on television or radio news) are aware that its correct pronunciation is “Segetel”, even if they do not speak French. Respondent admits herself that the suffix TEL in “Segetel” refers to an intended use in the telecommunications and telephone field, thus adding to the likelihood of confusion with CEGETEL. The Panel also relies on relevant European Union and Spanish (as well as other domestic) laws’ provisions about famous trademarks, and that the fact that a trademark is famous (as defined by these provisions) has been repeatedly considered as relevant by Panels for evaluating similarity under the Policy (see e.g. Ferrari S.p.A. v. Pierangelo Ferrari, WIPO Case No. D2001-1004).
B. Rights or Legitimate Interests
The way used by Respondent in order to prove that she has a legitimate interest on the domain name looks quite suspicious to this Panel. While it is true that she has incorporated a limited liability company (of the minimum possible size and cost) in Spain known as Segetel Telecom S.L., this has only happened after she had received a warning letter by Complainant’s attorneys and negotiations with them had failed. It would be a different matter if Respondent had firstly created a company known as Segetel, had not been challenged by Complainant, and had started using the trademark for some kind of activity, and had secondly registered a domain name, thus being noticed and attacked by Complainant. It would still be a matter of possible dispute if Respondent had registered the domain name at first, and then incorporated a company, all before being challenged by Complainant.
But things went the other way round. Respondent did not care to use the word “Segetel” in connection with any activity whatsoever until after it received a warning letter from Complainant’s attorneys, and subsequent negotiations failed. At this stage, she proceeded to incorporate a company, without using “Segetel” for legitimate commercial activities to this date. All circumstances lead to the impression that the company Segetel Telecom S.L. was incorporated for the main purpose of pre-constituting a defense of legitimate interest and good faith in these proceedings and in future legal proceedings, if any.
Obviously, the chronology is crucial here. If this defense was admitted, it would be very easy for any Respondent, after it has received a warning letter by the legitimate owner of the corresponding trademark, to incorporate a small and not too expensive company, whose trade name would include the core part of the contested domain name, then claim a legitimate interest based on the ownership of a trade name. That Respondent moves within this kind of strategy seems to be confirmed by the fact that there is no evidence that the incorporated limited liability company has carried out any commercial activity to date. Nor does Respondent really “use” the domain name for the company’s business, and her Web site does not even refer Internet users to the name and address of the company. This Panel concludes that Respondent has no legitimate rights or interests in the domain name <segetel.com>.
C. Registered and Used in Bad Faith
This Panel is also generally suspicious of defenses where the registration in good faith is based on acronyms or quasi-acronyms. With some fantasy, every name infringing a well-known trademark can be explained away as an acronym. “Sonia”, “Garcia” and “telecommunication services”, and their initials, may have been combined together in hundred different ways without creating a domain name confusingly similar with CEGETEL. The fact that Respondent claims to be herself active in the telecommunications and telephone field in Spain, a neighbor country to France, makes it virtually impossible that she had never heard of CEGETEL (pronounced “Segetel”), one of the largest telephone companies in Europe and the largest private fixed telephone company in France. States of mind can never be really ascertained, and guessing about states of mind is not what the Policy asks Panelists to do. They should judge in terms of probability and likelihood, and it is at least very likely that Respondent decided to use “Segetel” because it would easily be confused by consumers in the field of telecommunications and telephones with the famous trademark CEGETEL, or at least suggest an association with it. As such, registration occurred in bad faith.
Respondent’s Web site, although not easy to navigate, seems to deal with telecommunications and telephones, thus creating an obvious confusion with Complainant, its trademark, and its Web site “www.cegetel.com”. Further use with a stronger emphasis on telephones and related services, as announced by Respondent herself in her response to the Complaint, would only make things worse, attracting Internet users willing to reach Complainant, but misled by the confusing similarity of the two trademarks (or simply mistyping), to Respondent’s Web site and services. The Panel concludes that the domain name is used today in bad faith, and that the use described by Respondent as likely to occur in the future would also be a use in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <segetel.com> be transferred to the Complainant.
Dated: January 18, 2005