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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HCS MISCO v. Christophe CATUREGLI
Case No. D2000-1438
The Complainant is HCS Misco, a French public company, represented by Marc Delavay.
The Respondent is Mr. Christophe Caturegli, located in Marseille, France.
2. The Domain Name and Registrar
The domain name at issue is <hcsmisco.com>.
The registrar is Register.com, Inc..
3. Procedural History
The WIPO Arbitration and Mediation Center ( the Center) received the complaint by e-mail on October 27, 2000 and in hard-copy on October 23, 2000.
Supplemental filings were received by e-mail on October 27, 2000, November 14 and 15, 2000 and in hardcopy on November 20, 2000 and additional information to the factual and legal grounds on November 20, 2000 and notified the Complaint formally on November 21, 2000, the day of the commencement of the administrative proceeding.
The Complaint was filed in accordance with the requirements of the Rules and the Supplemental Rules.
Payment has been properly made and the single Panelist agrees with the Center’s assessment concerning the complaint’s compliance with the formal requirements.
The Complaint was properly notified in accordance with the Rules.
The Respondent default has been notified on December 11, 2000.
The single Panelist accepted his appointment and has submitted a Statement of Acceptance and Declaration of Impartiality and Independance to the WIPO Arbitration and Mediation Center.
The administrative panel did find that it lacks evidence in support of the trademark MISCO and asked the Complainant to support evidence that supports its rights in the trademark MISCO.
The Complainant responded to procedural order No.1 on January 18, 2001.
The date scheduled for the decision is January 29, 2001.
4. Factual Background
The complaint is based on :
- the French MISCO trademark No. 1323323 filed on July 7, 1985, in classes 9 (software) , 16 (printed products, publications), 20 (furniture) , 35 (publicity) , 41 (publication of texts and catalogs) and 42 (software programming, hardware renting), under priority of the Britsh trademark No. 1233400 for class 16, No. 1233399 for class 9 and No. 1242660 for class 20, in the name of Electrocomponents PLC, assigned to Systemax Incorporated and renewed in 1995,
- the Benelux trademark MISCO No. 413227 filed on June 26, 1985 in the name of Systemax Incorporated in classes 9, 16 and 20.
The Complainant refers to a trademark registration in New Zealand, Australia, Denmark, Ireland, Norway, Sweden, Switzerland and United Kingdom, but none of the exhibits justify these applications.
The Complainant registered the domain name <hcsmisco.fr> in 1997 that has since been regularly updated.
The Complainant registered other domain names: <hcs-misco.fr> and <misco.fr>.
On August 18, 2000, the Respondent registered <hcsmisco.com> which is on active status.
In response to the administrative panel procedural order No. 1, the Complainant submitted a letter by Systemax Incorporated, stating that HCS Misco is a wholly-owned subsidiary of Systemax Inc, which entitled it to use the trademark MISCO and to represent «its parent company in order to protect its trademarks and domain names in this case».
HCS Misco is a business-to-business mail order company selling computer products, as a subsidiary of the American Systemax Incorporated, since 1992.
HCS Misco distributes about 5 millions catalogues per year and is developping its business to approximately 100 000 active customers.
The Respondent used the <hcsmisco.com> domain name to put on line a single photograph, showing a drunk cat lying on the ground beside bottles of beer and cigarettes, with a special mention recording the number of daily connections to the website.
On October 18, 2000, the Complainant sent an e-mail to the Respondent requesting the transfer of <hcsmisco.com>.
The Respondent answered by sending five e-mails, two on October 18, 2000, two on October 23, 2000 and the last one on November 15, 2000.
On October 18, 2000, the Respondent sent two e-mails to inform the Complainant that he had received an e-mail from a university and from a company in Nice, asking for a catalogue and two or three other e-mails, by mistake.
On October 23, 2000, the Respondent is «asking for news» and announced that he was going to change the picture of the cat.
In his second e-mail on the same day, he informed the Complainant that his new e-mail address is email@example.com (his former e-mail address was firstname.lastname@example.org).
On November 14, 2000, the Respondent sent an e-mail to the Complainant : «You do not answer to my e-mails, Should I draw the conclusion that you are not interested any more in the domain name ?».
The Complainant answered, by e-mail, on the same day, asking for the transfer of the domain name <hcsmisco.com> and for the transmission of the e-mails that the Respondent had received by mistake.
On November 15, 2000, the Respondent sent an e-mail to say that :
- he can understand the frustration of the Complainant to lose around ten clients every day only because he has not reserved the domain name <hcsmisco.com>, which costs 250 francs a year,
- if the Complainant does have rights on HCSMISCO, he is not the owner of <hcsmisco.com>,
- the Complainant has to make a proposal,
- if the «exchange» can be done in these conditions, he will forward the e-mails he received, as well as the log connections (around 1000).
5. Parties’ Contentions
(i)The Domain Name is Identical or Confusingly Similar to the Trademark
<hcsmisco.com> is presented as «identical or confusingly similar» to the trademark MISCO.
(ii)The Respondent has no rights or legitimat interests in respect of Domain Name.
The Respondent is totally unknown under the domain name at issue, and has no rights or legitimate interests in respect of the name MISCO or HCS MISCO.
(iii)The Domain Name has been registered and is being used in Bad Faith
The Respondent registered the domaine name at issue to prevent the Complainant to develop his activity on the internet.
«The substitution of the .fr for the .com appears calculated to trade on Complainant’s name by exploiting the likely mistake by users when entering the URL address».
The website <hcsmisco.com> does not meet any relevant criterion of a commercial or personal nature.
On the contrary, the Respondent « contented himself with putting a single photo on line, which is in dubious taste and totally at variance with the seriousness and reputation of HCS Misco and its site hcsmisco.fr
HCS Misco has to face an «occupation» strategy, with the registration of four domain names <hcsmisco.com> , <hcs-misco.com> , <hcsmisco.net> , <hcs-misco.net>, which have been registered simultaneously.
They give access to the same website and mention the same e-mail address.
<hcsmisco.com> has been registered by the Respondent whereas the three other domain names have been registred by Namezero.com.
The Respondent knows that the Complainant is losing about ten orders per day and informed the Complainant that he will not forward the e-mails and the log connections as long as the Complainant does not repurchase the domain name.
He proposes to redirect the four domain names (<hcsmisco.com> and the three domain names in the name of Namezero.com) to the site of the Complainant.
This response confirms that the Respondent :
- is perfectly aware of the confusion between the trademark and the domain name at issue,
- increased the confusion by changing his e-mail address,
- informed the Respondent that he receives e-mails without proposing to forward them to the Complainant,
- «tries to build an e-mail database from exploiting mistake by HCS Misco customers when entering the URL address».
The Respondent has not filed any response to the Complaint and the dispute must therefore be determined on the basis of the Complainant’s assertions.
6. Discussions and Findings
According to the Uniform Domain Name Dispute Resolution Policy (UDRP), the Complainant must prove that (Paragraph 4 (a)) :
- that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights ; and
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
According to the definitions of the the Rules for Uniform Domain Dispute Resolution Policy, «Complainant means the party initiating a complaint concerning a domain name».
Whereas according to the former Network Solutions’ Domain Name Dispute Policy (February 25, 1998), the «Network Solutions may be presented with information that a domain name possibly violates the trademark rights of a trademark owner».
The UDRP does not refer to the trademark rights of the trademark owner and provides that the Complainant must have rights on the trademark.
The Complainant is not the owner of the trademark, but the licensee.
As a licensee, the Complainant has the right to use the trademark.
The Complainant had to respond an administrative panel procedural order No. 1 to submit evidence that support his rights on the trademark MISCO.
In response to the procedural order No. 1, the Complainant produced a letter from Systemax Inc, informing the Panel that «Systemax Inc owns the trademark MISCO, registration number 1323323 in France, that HCS Misco SA is a wholly-owned subsidiary of Systemax and that HCS Misco SA is entitled to use the trademark MISCO and is representing its parent company in order to protect its rights concerning its trademarks and domain names in this case».
The Complainant confirmed that he is using the trademark as a licensee and that he is a wholly-owned subsidiary of Systemax Inc.
As the Complainant is a licensee who has the right to use the trademark, who is a wholly-owned subsidiary of the trademark owner and is officially authorized to represent the trademark owner in this case, the Panel considers that he is entitled to file the Complaint and to ask for the transfer of the domain name at issue.
- To the question : the domain name is identical or confusingly similar to the trademark
Paragraph 4 (a) i of the Uniform Policy requires that the « domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights ».
The domain name at issue is confusingly similar to the trademark.
- To the question : the Respondent has no rights or legitimate interests in respect of the domain name
The fact that the Respondent answers to the transfer proposal of the Complainant proves that he was aware of the trademark rights of the Complainant and does not give any evidence of a previous right or legitimate interest in the domain name.
According to these e-mails and to the fact that he did not respond to the Complaint, the Panel concludes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4 (c) of the Uniform Policy, or of any other circumstances that could demonstrate rights or legitimate interests in respect of the domain name.
- To the question : the domain name has been regsitered and is being used in bad faith
The circumstances of the registration of the domain name at issue indicate that the domain name has been registered primarily in order to prevent the Complainant to register it and to disrupt his business for the purpose of selling the domain name registration to the Complainant for valuable consideration in excess of the costs directly related to the domain name.
The Respondent has intentionally used the domain name to attract the internet users on his website for its own interest, by creating a likehood of confusion with the trademark as the affiliation of that website.
The domain name at issue is used by the Respondent to blackmail the Complainant since :
- he knows that the Complainant has rights on the trademark, that his website is creating a confusion and that because of that confusion, the Complainant is losing about ten orders per day,
- he offered to forward the e-mails and the log connetions (about 1000) only if an agreement is reached, asking the Complainant to make a proposal.
The Panel concludes that the domain name has been registred and is being used in bad faith.
For all the foregoing reasons, the single Panel decided that the domain name is confusingly similar to the trademark, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the domain name at issue has been registered and used in bad faith.
As a consequence, the remedy requested by the Complainant is accepted and the domain name <hcsmisco.com> shall be transferred to the Complainant.
Dated: January 29, 2001