WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Previsite SA v. JP Herreveld
Case No. D2007-1675
1. The Parties
The Complainant is Previsite SA of Suresnes, France, represented by Alexandre Bouteau, of Paris, France.
The Respondent is JP Herreveld of Malaga, Spain.
2. The Domain Name and Registrar
The disputed domain name, <previsit.com> (the “Domain Name”), is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2007. On November 16, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 23, 2007. 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 November 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2007. The Response was filed with the Center on November 28, 2007.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 11, 2007. 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.
Having read the papers, the Panel issued a Procedural Order to the Complainant on December 13, 2007 seeking sight of the trademark registration certificate for the trademark in which the Complainant claimed rights. The Panel also indicated that if the Complainant wished the Panel to take into account the French language documents exhibited to the Complaint, it would be helpful to the Panel to have English translations.
The Complainant responded on December 14, 2007 providing a copy of the registration documents for two trademark registrations, which are referred to below. The Complainant also explained that the French language documents were simply exhibited to demonstrate that the parties were in contractual relations prior to registration of the Domain Name.
The Panel gave the Respondent the opportunity of filing a further submission, but the Respondent elected not to do so.
4. Factual Background
The Complainant is a company incorporated in France. It is engaged in the creation and supply of software for the real estate industry. In particular it supplies software enabling real estate agents to provide online virtual tours (i.e. video tours) of the properties they are advertising for sale and rent on their websites.
The Complainant claims to be the proprietor of French Trademark registration No. 97/700201 dated November 28, 1997 for the mark PREVISITE (word). The registration certificate was not exhibited to the original Complaint and the certificate supplied in response to the Procedural Order shows the registrant to be not the Complainant, but a company named P.L.G. S.A.
With the response to the Procedural Order the Complainant provided documentation relating to another French Trademark registration, namely a device mark registered in colour, the principal element of which is the word, “PREVISIT”. The registration is No. 05/3359138 dated May 9, 2005 and is held in the name of the Complainant.
Fortunately for the Complainant the Panel was able to deduce from the documentation for the above-mentioned registrations that the registrants hold the same French registration number. Clearly, the registrants are one and the same entity. The Complainant was known as PLG S.A. in 1997.
The Complainant is also the proprietor of the domain names, <previsit.net> and <previsite.com>. The Complainant’s site at “www.previsite.com” features sample virtual tours and describes the Complainant’s service offering as follows:
“Our mission is to provide media groups, vertical software and marketing specialists with the means to create enhanced rich visual content in all markets resulting in more relevant searches for consumers and better qualified leads for advertisers.”
In September 2000, a decision was issued in Veuve Clicquot Ponsardin, Maison Fondée en 1772 –v- Herreveld WIPO Case No. D2000-0776 in which the Respondent was held to have registered the domain name, <veuvecliquot.com>, in bad faith.
In October and November, 2001 the parties entered into agreements relating to a product of the Complainant known as Solution Image Interactive. The Respondent signed the agreements as representative of the Belgian company contracting with the Complainant (by then known as Previsite S.A.).
On August 25, 2002 the Respondent registered the Domain Name, a domain name, which he claims was originally registered by the Complainant, but which the Complainant allowed to lapse.
In 2005 the parties corresponded over the Domain Name and the domain name, <previsite.be>. In relation to the latter, the Respondent acknowledged that he registered that domain name for the benefit of the Complainant, but in relation to the Domain Name, he stated that he registered it for the benefit of his own personal real estate business in Spain. He refused to transfer the Domain Name to the Complainant.
On March 1, 2006, the Complainant’s representative wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights and demanding transfer of the Domain Name.
The Domain Name is connected to the Respondent’s SotoHomes real estate website featuring inter alia virtual tours of a selection of the properties advertised, being properties for sale/rent in Sotogrande.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its PREVISIT and PREVISITE registered trademarks and that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that the Respondent is not known by any name corresponding to the Domain Name and has no trademark registration of the name. The Complainant states that it has not granted the Respondent any permission to use the Domain Name.
The Complainant further contends that the Domain Name was registered in bad faith and is being used in bad faith in that it was registered with the intention of disrupting the Complainant’s business, it being used to offer virtual visits to the sites featured on the Respondent’s website.
B. Respondent
The Respondent starts by pointing out that he was only able to register the Domain Name because the Complainant allowed it to lapse.
The Respondent does not deny the existence of the Complainant’s trademark rights in respect of the word mark PREVISITE. His response in relation to the PREVISIT (device) mark produced by the Complainant in response to the Procedural Order appears in the quote (below) from the Response. He claims that ‘previsite’ and ‘previsit’ have identical meanings, the latter being an English word, which is appropriate for his English language website.
He says that his previous company, which no longer exists, was the Complainant’s official distributor in Belgium from 2001 to 2003. He says that he registered the domain name, <previsite.be>, in 2001 with the authority of the Complainant. He accepts that there is a brand issue in relation to that name and has made it available to the Complainant, but the Complainant has taken no steps to complete the transfer. As to the Domain Name he says that:
“the provided documentation showed that complainant had registered the PREVISIT brand name on 9/5/2005, which was long AFTER the operational usage of PREVISIT.COM and nearly 3 years after I had registered the domain name”
The Respondent states that he has used virtual tours on his real estate website since 2003, but only to enhance his real estate service, not in order to sell virtual tours. As such he says that he is in a completely different business from the Complainant. Accordingly, he claims that his use of the Domain Name has been for a bona fide offering of commercial services.
The Respondent denies that he registered or is using the Domain Name in bad faith. He reiterates that the Complainant allowed its registration of the Domain Name to lapse and that his use of it does not compete with the Complainant’s activities.
The Respondent objects to the Complainant’s citation of the decision involving his registration of the <veuvecliquot.com> domain name, contending that it is purely with a view to blackening his character and has nothing to do with this dispute.
The Respondent objects to a number of other aspects of the Complaint, but the Panel does not feel the need to recite them as they are not aspects upon which the Panel will rely.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
The Respondent does not dispute the Complainant’s trademark rights. The issues for the Respondent are how far those rights extend and from what date. The Respondent appears to take the view that the PREVISITE trademark registration is materially different from the Domain Name, because it is French whereas the Domain Name is English, although he admits that they have the same meaning. He claims that the PREVISIT registration is immaterial because it post-dates the registration of the Domain Name.
For the purposes of paragraph 4(a)(i) of the Policy one trademark right is sufficient and the Panel is content to deal with this issue by reference to the PREVISITE registration. Manifestly the Domain Name (absent the generic domain suffix) is very similar to the Complainant’s PREVISITE trademark and the Respondent’s case is that they have the same meaning in French and English.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
It is not in dispute that the Respondent registered the Domain Name knowing of the Complainant’s rights to the mark PREVISITE and knowing that the Complainant’s mark is a reference to online visits to real estate properties.
The Respondent argues that the Complainant’s rights were at that time restricted to the French version of the word and that the Domain Name, which had been vacated by the Complainant (i.e. allowed to lapse), is an English word having the same meaning, but appropriate for use by the Respondent, the Respondent’s website being an English language site. The Respondent claims that his use of the name is different from that of the Complainant, because while both refer to virtual tours, the Complainant sells the technology for virtual tours, whereas the Respondent merely uses them to enhance his site.
In fact ‘previsit’ is not an English word. It is not a dictionary word. It is a made up word suggesting something prior to a visit. On both parties’ sites online video tours are offered of the properties featured.
Knowingly adopting a very close variation of somebody else’s trademark, knowing and intending that it will have an identical meaning and then using it for the very commercial purpose for which the trademark was created (i.e. virtual tours of real estate properties) cannot constitute a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent places much reliance on the fact that the Domain Name was previously registered in the name of the Complainant, but allowed to lapse. The suggestion is that in permitting the Domain Name registration to lapse, the Complainant had left the Respondent free to register it for himself irrespective of the Complainant’s trademark rights.
The Panel has not been told what led the Complainant to allow the registration to lapse. Maybe it was a clerical error. Whatever the reason, there is nothing before the Panel to suggest that the Complainant consented to anyone else adopting it.
The Respondent also stresses that his site is concerned with real estate in Spain, which he says is a different geographical area from the Complainant’s site. However, both sites are English language sites and the Respondent’s site is clearly directed to anyone in the English-speaking world.
The fact that the Complainant charges for its virtual tour technology, whereas the Respondent provides virtual tours on its website without charge is not a material distinguishing factor. Both parties use virtual tours to advertise and enhance their service offerings.
The Complainant is known as “Previsite”. A company with which the Respondent was previously associated was, prior to registration of the Domain Name, the Complainant’s Belgian distributor. The Respondent is not known by the Domain Name or any name corresponding to the Domain Name nor, for the reasons given, is the Panel prepared to accept his commercial use of the Domain Name as a bona fide offering of services.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Panel is satisfied that this was an unjustifiable, opportunistic attempt by the Respondent to take advantage of the Complainant’s trademark rights to his own commercial benefit.
The Panel is aware that what the Respondent has done does not fall clearly within any of the instances of bad faith registration and use set out in paragraph 4(b) of the Policy, but it is well-established that that paragraph does not constitute an exhaustive list of what constitutes bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy.
The Complainant and the Respondent are both engaged in the real estate business, the Complainant as a supplier to that industry and the Respondent as a realtor. The Respondent had been associated with the Complainant prior to registering the Domain Name and knew of the Complainant’s rights in respect of the PREVISITE mark.
The Panel is satisfied that the circumstances described above are likely to result in significant disadvantage (if not disruption) to the Complainant’s business and damage to the integrity/distinctiveness of the Complainant’s trademark. The Respondent is deriving an unjustified commercial benefit on the back of the Complainant’s rights. When the Respondent registered the Domain Name he was aware that this was likely to be the result and must be taken to have intended it.
The fact that the Respondent has previously been found to be in possession of an abusive registration under the Policy, namely the domain name, <veuvecliquot.com>, is not of any direct relevance to the instant case, but it does show that the Respondent is not averse to opportunistic behaviour when it suits him.
The Panel finds that the Domain Name was registered in bad faith and is being used in bad faith.
7. Decision
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, <previsit.com>, be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Dated: January 1, 2008