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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BSA v. Eric R. Hilding
Case No. D2000-0320
1. The Parties
Complainant is BSA, avenue Charles 11 bis, 75007 Paris, France, and represented by Inlex Conseil, patent and trademark attorney, rue Pierre Charron, 75008 Paris, France, hereinafter the "Complainant".
Respondent is Eric R. Hilding, P.O. Box 1700, Morgan Hill, CA 95038-1700, U.S.A., represented by John H. Midlen, Jr., Esq., Midlen Law Center, 7618 Lynn Drive, Chevy Chase, MD 20815-6043, U.S.A., hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is "president.com", hereinafter referred to as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s complaint on April 21, 2000 (e-mail) and April 25, 2000 (hard copy). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is May 2, 2000.
On April 28, 2000, the Center transmitted via e-mail to Network Solutions Inc. a request for registrar verification in connection with this case. On April 30, 2000, Network Solutions Inc. transmitted via e-mail to the Center, Network Solutions’ Verification Response, confirming that the Respondent is the registrant and the administrative contact and that the billing contact is Roy Engehausen.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on May 2, 2000, to the Respondent (firstname.lastname@example.org) and to Roy Engehausen (email@example.com) Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, facsimile and e-mail. The postal address used for Respondent was as follows:
P.O. Box 1700
Morgan Hill, CA 95038-1700
The Center advised that the Response was due by May 22, 2000, and received the Response on this date.
On May 26, 2000, in view of the Complainant’s designation of a single panelist, the Center invited M. Geert Glas to serve as a panelist.
Having received on May 29, 2000, M. Geert Glas’ Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Geert Glas was formally appointed as the Sole Panelist. The Projected Decision Date was June 13, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the Response, the evidence presented, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The complaint is based upon trademark registrations for the verbal and figurative trademark "Prйsident". A non-exhaustive list of such trademark registrations filed throughout the world by Complainant is enclosed as Annex D of the complaint.
These trademarks include, among others:
Prйsident (France) No. 1020452 September 8, 1977
Prйsident (France) No. 96656488 December 20, 1996
Prйsident (France) No. 92423231 June 18, 1992
Prйsident (U.S.A.) No. 1710205 August 25, 1992
It appears from an e-mail sent on April 30, 2000, by Network Solutions Inc. to the Center, that Respondent is the registrant of the Domain Name, having as address Hilding Communications, P.O. Box 1700, Morgan Hill, CA 95038-1700, U.S.A. Respondent registered the Domain Name on January 26, 1995. There is no relationship between Respondent and Complainant and Respondent is not a licensee of Complainant, nor has he otherwise obtained an authorization to use Complainant’s marks.
According to Respondent, he only uses the Domain Name for e-mail purposes.
5. Parties Contentions
Complainant contends that Respondent has registered the Domain Name which is identical to Complainant’s trademarks, that Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is used in bad faith, since the only purpose of this registration was to register the Domain Name in order to resell it at the highest possible price.
Consequently, Complainant requires the transfer of the Domain Name registration to the Complainant.
Respondent invokes the generic character of the term "president" and therefore the absence of any absolute rights on this term as a domain name.
Accordingly, Respondent requires that the remedy sought by Complainant be denied.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical to the trademark in which the Complainant has right; and,
(2) that the Respondent has no legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and is being used in bad faith.
The Domain Name is "president.com".
"Prйsident" is a registered trademark of the Complainant.
In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark "Prйsident" of the Complainant. Indeed, with regard to the fact that the character "й" cannot be a part of a domain name, the only possibility to reflect the term "Prйsident" in a domain name is by using the term "president".
b. Registration and Use in Bad Faith
According to Complainant, Respondent has registered the Domain Name for the sole and unique purpose of selling it for profit. However, it appears that it has rather been Complainant who has been trying to convince Respondent to sell the Domain Name. Indeed, while Respondent registered the Domain Name already on January 26, 1995, the first contact between the parties only took place four years later, at the initiative of Complainant. Although Respondent did not exclude the sale of the Domain Name a priori, he did not seem to be very interested in such transaction either. In his e-mail of June 19, 1998, (Annex J to the complaint) Respondent refuses to transfer the Domain Name to Complainant, stating that the best solution would be for Complainant to register the term "president" in another TLD. He also adds:
"The only other options for resolution of this matter that I can think of would be one of the following:
- For me to pay your client to "go away"
- For your client to pay me to "go away"
Option #1 above does not interest me, so please let me know if you see any other options which have not been considered."
The Administrative Panel is of the opinion that this does not constitute a case as described in Section 4, b, (i), of the Policy. There are no other facts or circumstances which can be considered indicative of a registration and use in bad faith by Respondent.
In conclusion and in view of the above, the Administrative Panel finds that Complainant has failed to establish that Respondent has registered and used the Domain Name in bad faith.
c. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks.
According to Complainant, Respondent "purely and simply reproduced, in a strictly identical manner, the PRESIDENT trademark", "could not under any circumstances have been unaware of the existence and use of the PRESIDENT trademark, since it was already solidly rooted in the United States, at the moment of Eric R. HILDING’s reservation of the domain name" and that Respondent "never provided any information concerning the exploitation of the PRESIDENT symbol". Therefore, since Respondent "was not using the PRESIDENT symbol, was exercising no activity under the PRESIDENT name, had no PRESIDENT trademark registered under his name in, France or in the United States", and "had no site attached to or exploited under the domain name PRESIDENT.COM", he has no right nor legitimate interest in the Domain Name.
According to Respondent, the term "president" is generic and therefore does not confer to Complainant any rights. In addition to that, the very same term is also registered and owned as a trademark by an impressive number of entities. Respondent is actively using the Domain Name albeit for e-mail purposes only.
In the absence of any evidence that the Domain Name was registered and has been used in bad faith, it is not necessary for the Panel to consider whether Respondent does have a right or legitimate interest in the Domain Name.
In light of the foregoing, the Administrative Panel decides that the Domain Name "president.com" registered by Respondent is identical to the trademark of Complainant. There is however no evidence that Respondent registered and has been using the Domain Name in bad faith.
Accordingly, the Administrative Panel denies the Complaint. Respondent shall not be required to transfer the registration of the Domain Name "president.com" to Complainant.
Dated: June 13, 2000