The Complainant is Commune de Tignes of Tignes, France, represented by RDLUX (Legitiname), Luxembourg.
The Respondents are Laurence and Sandrine Raymond of Val d'Isere, France, represented by Etude Mentha & Associés, Switzerland.
The disputed domain name <tignes.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2010. On January 15, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 18, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on January 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2010. The Response was filed with the Center on February 8, 2010.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on February 10, 2010. 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.
The Complainant is the territorial authority responsible for the administration of the city of Tignes, France.
On October 21, 1997, the Complainant acquired a French figurative trademark registered under the No 1583208 on February 23, 1979. This trademark was registered in all international classes, including classes from 1 to 45. This figurative trademark – a square representing an outline of a snowy mountain with blue sky in background and the word “TIGNES” in red in the foreground – was registered to support the development of the winter sports station “Tignes”, located within the Complainant territory.
The Domain Name <tignes.com> was created on November 29, 1997.
The Complainant filed a proceeding against the Respondents with the Tribunal de grande instance de Lyon (French Court). The Complainant contended that the domain name <tignes.com> registered and used by the Respondents infringed the Complainant's figurative trademark TIGNES. On September 27, 2001, the Court dismissed the Complainant's claim and judged that the registration and use of the domain name <tignes.com> did not counterfeit the Complainant's figurative trademark.
The Complainant contends:
1. The Domain Name is confusingly similar to its TIGNES figurative trademark. The TIGNES figurative trademark was registered in all international classes as is demonstrated by the official documents annexed at appendix 5 to the Complaint. The Complainant contends that the dominant textual element of a trademark shall be taken into account to determine whether the domain name is confusingly similar with the trademark. According to the Complainant, the dominant element in this figurative trademark is the word “TIGNES”, written in red and capital letters in the foreground of the trademark. Since the Domain Name is <tignes.com>, the Complainant states that the Domain Name creates a likelihood of confusion with its trademark: the concerned trademark covered different products and services classes related to the exploitation of a touristic site. The Complainant claims it used the trademark to offer and to promote touristic services and products related with the winter station of Tignes.
2. The Respondents have no rights or legitimate interests in respect of the Domain Name, having regard to the following:
- according to the WhoIs database reproduced in appendix 1, the Respondents have not been living in the city of Tignes;
- no legal database associates the Respondents with the word “Tignes”;
- there is no element showing a link between the Respondents and the word “Tignes” nor any element showing the Respondents are known under the domain name <tignes.com>;
- the sole webpages associated with the disputed domain name do not show any rights of the Respondents on the disputed domain name.
3. The Domain Name was registered and has been used in bad faith, having regard to the following:
- the Respondents live in the neighbor city of “Val d'Isère” which is the second winter station;
- the Respondents knew that the Complainant registered and used its figurative trademark with the word TIGNES and was therefore aware that the domain name <tignes.com> infringed its trademark;
- few months after the registration of the domain name, the Respondents requested the sum of 22 870 Euros to transfer the domain name to the Complainant;
- the domain name was put on sale on online platform Seda;
- the Respondents used the domain name in order to divert traffic and take advantage of the notoriety of the Complainant's trademark.
The Respondents contend:
1. With regard to the disputed domain name, the Complainant has no rights to its figurative trademark.
2. The Respondents have rights deriving from the legitimate acquisition and legitimate use of the disputed domain name, having regard to the following:
- the Respondents contend that the Complainant's allegations are unsubstantiated in these proceeding by any evidence at all;
- the Respondents are native of Tignes;
- Tignes and Val d'Isère are part of the same ski resort;
- the Respondents run the project to operate a financially self-sufficient website dedicated to the history of Tignes;
- a French Court ruled that the Domain Name <tignes.com> did not infringe the Complainant's rights.
3. The Respondents did not register, and have not used, the Domain Name in bad faith. The website <tignes.com> is dedicated to the history of Tignes and no commercial activity is related to this website. There is no advertising on this website. The Respondents claim the Domain Name was not registered for the purpose of selling it. The Respondents underline that the evidence provided by the Complainant do not prove the Respondent's intent to sell the Domain Name.
4. The Respondents contend the Complainant has been guilty of reverse domain name hijacking, evidenced by the following:
- the Complainant was well aware there was no basis for requesting a domain name transfer since the complaint had already been dismissed by a French Court;
- the Complainant did not demonstrate that it has trademark rights in the disputed domain name.
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied that the Complainant has proved this part of the complaint.
The Complainant clearly has rights in a figurative trademark containing the word TIGNES written in red and in capital letters in the foreground.
According to prior panel decisions, the dominant textual element of a trademark shall be taken into account to determine whether the domain name is confusingly similar with the trademark (e.g. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, and RuggedCom, Inc. v. James Krachenfels, WIPO Case No. D2009-0130).
In this case the dominant element in the Complainant's trademark is the word “tignes”, written in red and capital letters in the foreground of the trademark.
Since the Respondents' Domain Name is <tignes.com> and the dominant element in the Complainant's mark is the word “tignes”, the Panel's view on this part is that the Domain Name <tignes.com> is confusingly similar to the figurative trademark in which the Complainant has rights.
So in this case, the Complainant's confusing similarity argument under paragraph 4(a)(i) of the Policy succeeds and the “confusing similarity” test is met.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Respondents have established to the Panel's satisfaction to be providing information about the history of Tignes, a ski resort and city located on the French Alps, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of the Complainant. Even if the website of the Respondents has at one time in the past contained advertising relating to accommodation and vacations in Tignes, it is this Panel's view that this fact alone would not necessarily be incompatible with the Respondents using, at the date of the present decision, the disputed domain name in connection with a bona fide offering of goods or services relating to Tignes the place.
Moreover, at the date of the present decision, the website of the Respondents does not have any apparent commercial purpose, considering that it does not contain any advertising. As noted, its principal purpose at present appears to be to provide information about the history of Tignes the place.
Therefore the Panel is satisfied that the Complaint must fail under this heading.
The Complaint also fails on this ground, essentially for the same reasons which are set out in sections 6B of this decision.
Paragraph 4(b) of the Policy sets out a number of circumstances which, without limitation, may be effective for a Complainant to demonstrate that the Respondents registered and use a domain name in bad faith:
(i) circumstances indicating that [the respondent] has registered or has 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) [the respondent] has 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 [the respondent] has engaged in a pattern of such conduct; or
(iii) [the respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent] has 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 [the respondent's] web site or location.
The Complainant did not demonstrate any of the circumstances set above since the documents provided by the Complainant in order to prove the intention of the Respondents to sell the disputed domain name did not issue from the Respondents. It is the Complainant that contacted the Respondents to inquire whether they would wish to sell the Domain Name to the Complainant. In the circumstances, the Panel has no evidence from which to assess or infer that the Respondents registered and used the disputed domain name in bad faith.
The Panel's view on this part is that the Complaint shall also fail on this ground.
Under paragraph 15(e) of the Rules, a panel is obliged to state in its decision any conclusion it might reach that a complainant has brought the complaint in bad faith (for example in an attempt at reverse domain name hijacking), or was brought primarily to harass the domain name holder. “Reverse domain name hijacking” is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.
In Jazeera Space Channel TV Station v. AJ Publishing aka Aljazeera Publishing, WIPO Case No. D2005-0309, the majority of the three-member panel noted that the onus of proving that a complainant has acted in bad faith is on the respondent, and that mere lack of success of the complaint is not of itself sufficient to constitute reverse domain name hijacking.
In this case, the Respondents did not produce any such evidence and shall fail on this ground.
For the foregoing reasons, the complaint is denied. The Respondents request for a finding of reverse domain name hijacking is also denied.
Dated: February 23, 2010