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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Anti Flirt S.A. and Mr. Jaques Amsellem v. WCVC
Case No. D2000-1553
1. The Parties
The Complainants are: Anti Flirt S.A., a French company with registered office at 85, Boulevard de Strasbourg 75010, Paris, France (hereinafter "Anti Flirt"), and Mr. Jacques Amsellem, with address at 19, Avenue Paul Doumer 75016 Paris, France.
The Respondent is WCVC, a non-specified entity with offices at 2929 North Central Avenue #2100, Phoenix, Arizona, 85012, USA.
2. The Domain Name and Registrar
The disputed domain name is "antiflirt.net".
The Registrar of the disputed domain name is Network Solutions, Inc., with business address in 505 Huntmar Park Drive, Herndon, Virginia, 20170-5139, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
3.1 Complainants initiated the proceeding by filing a Complaint via certified mail, return receipt requested, on November 7, 2000, received by the WIPO Arbitration and Mediation Center ("WIPO") on November 10, 2000. The Complaint was submitted to WIPO in electronic form on December 16, 2000. Payment by Complainants of the requisite filing fees was made by wire transfer on October 20, 2000.
3.2 On December 14, 2000, WIPO transmitted a Request for Registrar Verification to the Registrar, Network Solutions. On December 18, 2000, Network Solutions replied to WIPO confirming that the domain name antiflirt.net had been registered with them and providing all other relevant information.
3.3 On January 1, 2001, since Network Solutions had informed WIPO that the domain name holder had not submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrant (NSI) for adjudication of disputes concerning or arising from the use of "antiflirt.net", WIPO sent to Complainants a Notification of Complaint Deficiency requesting Complainants to submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts at the location of the domain name holder's address, as specified in Rules, Paragraph 1 and Paragraph 3 (b)(xiii). On January 3, 2001, Complainants cured the deficiency by submitting to the jurisdiction of the courts at the location of the domain name holder's address.
3.4 On January 9, 2001, WIPO transmitted notification of the Complaint and commencement of the proceeding to Respondent via e-mail, fax and mail address. Both the e-mail and the fax proved to be incorrect or at least not working. However, by sending the Complaint to the mail address shown in the domain name’s registration data in Registrar’s Whois database, WIPO followed the procedure provided under Paragraph 2(a) of the Rules to meet the fundamental due process requirements. Yet, the Respondent failed to file a response, and on February 1, 2001, WIPO notified the Respondent Default.
3.5 On February 8, 2001, WIPO invited the undersigned to serve as Panelist in this administrative proceeding and on the same date the undersigned transmitted by fax the executed Statement and Declaration to WIPO. On February 14, 2001, Complainants and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. Absent exceptional circumstances a decision on the present case had to be decided within February 28, 2001.
In accordance with Paragraph 11(a) of the Rules, the Panel finds that the language of the proceedings is English. The Panel also finds that, in the light of the foregoing, the Panel was properly constituted and appointed in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
4.1 In the Complaint, the following statements are made.
Anti Flirt is a French company whose Chief Executive Officer is Mr. Jacques Amsellem. Mr. Jacques Amsellem founded Anti Flirt in 1981, and holds 90% of its capital. These statements are in part confirmed by the abstract of the certificate of registration of Anti Flirt with the French Registrar of Commerce of Companies, attached to the Complaint as Exhibit 5.
ANTI-FLIRT was registered as trademark, either in the name of Anti Flirt, or in the name of Mr. Jacques Amsellem, in twenty-seven countries. In most countries the trademark is registered for goods in classes 3, 16, 18, 20, 24, 25 and 28, while in some cases it only covers goods in class 25. These trademarks are attached as Exhibit 3 to the Complaint and are as follows:
Date of registration
Number of registration
3, 16, 18, 20, 24, 25, 28
International trademark concerning the countries enumerated below:
3, 16, 18, 20, 24, 25, 28
3 and 18 suppressed
only 18 and 25
Declaration of Intent of Use 07/23/2005
752.249; TMA 451.834
(trademark ANTI-FLIRT [KATAKANA])
HEI 4-152032; 3.044.960
The goods listed in the registration certificates of these trademarks are the following:
- class 3: soaps, perfumes, essential oils, cosmetics, hair lotion, toothpaste;
- class 16: paper, cardboard and products in these materials, plastic-wrapping materials;
- class 18: leather and materials imitating leather, trunks and suitcases,
umbrellas, parasols and canes, whips and saddlery goods;
- class 20: furniture, mirrors, frames;
- class 24: fabrics and textile goods, blankets, table cloths;
- class 25: clothes, shoes, hats;
- class 28: games and toys.
Several kinds of clothes are marketed under the ANTI-FLIRT trademark. Complainants have enclosed as Annex 4 the ANTI-FLIRT Paris Summer 2000 catalogue.
Mr. Jacques Amsellem is also the owner of the following domain names:
Complainants and Respondent are completely unrelated to one another. More specifically, Respondent is not the Complainants' licensee, nor have Complainants authorized the use of the ANTI-FLIRT mark by Respondent.
Respondent registered the domain name "antiflirt.net" on October 5, 1999. The Whois search results are attached to the Complaint as Exhibit 1.
4.2 As Respondent failed to submit a response, none of the aforementioned facts have been contested.
5. Parties’ Contentions
Complainants state that the domain name "antiflirt.net" is identical or confusingly similar to the ANTI-FLIRT trademark as the only difference lies in the fact that "the first element of the domain name is not hyphenated and in the addition of the suffix ".net"." Such minor differences are insufficient to exclude a likelihood of confusion between the domain name and the trademark at issue.
Complainants state that ANTI-FLIRT is a well known trademark and company name all over the world. Anti Flirt sells goods in several countries and Respondent could not ignore it.
Complainants further state that:
- Respondent was aware of the reputation of Anti Flirt and wished to prevent Complainants from reflecting the ANTI-FLIRT trademark in a corresponding gTLD domain name, in order to obtain a compensation to allow Complainants to use the disputed domain name.
- Respondent certainly aimed at selling, renting or otherwise transferring the domain name registration to Anti Flirt for valuable consideration in excess of the costs borne to obtain said registration;
- "antiflirt.net" does not resolve into an active web site or other on-line presence. Respondent does not even have a proper e-mail address, which shows that Respondent actually does not do electronic business and does not use electronic media. In spite of the searches they have conducted, Complainants have not been able to determine Respondent's activity.
In view of the above Complainants request the Panel to order the transfer of the disputed domain name.
Respondent failed to submit any Response.
6. Discussion and Findings
6.1 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following conditions:
1. that the Domain Name registered by Respondent is identical or confusingly similar to the trademark or service mark in which Complainant has rights; and
2. that Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. that the Domain Name has been registered and is being used in bad faith.
6.2. The Panel finds that the Domain Name "antiflirt.net" is confusingly similar to the Complainants’ trademark ANTI-FLIRT. Indeed, the only difference between the domain name and the trademark is that in the trademark the two terms ANTI and FLIRT are separated by a hyphen and that the domain name ends with the gTLD ".net". This addition is irrelevant since it is functional to domain names. As such it is not capable of conferring distinctiveness to the domain name with respect to the trademark. As already stated in other decisions (Club Mйditerranйe v. Yosi Hasidim, WIPO Case No. D2000-1350; Gateway,Inc.v. Pixelera.com, Inc., WIPO Case No. D2000-0109 Ticketmaster Corporation v. Dimitri Prem, WIPO Case No. D2000-1550), the addition or deletion of a hyphen is not per se sufficient to avoid likelihood of confusion, since it does not substantially modify the visual, phonetic and conceptual similarities between the involved trademark and domain name. Thus, the Panel is satisfied that the first condition is met.
6.3. The Panel finds that Complainants have proved that Respondent has no rights or legitimate interests in the Domain Name. The issue is whether Complainants have satisfactorily demonstrated that Respondent has no rights or legitimate interests in the Domain Name "antiflirt.net", in a situation where the Respondent is in default.
Under, Paragraph 4(a) of the Policy "[I]n the administrative proceeding, the complainant must prove that each of these three elements are present" (emphasis added). Under Para 3(b)(ix)(2) of the Rules, "[T]he complaint shall (...) describe, in accordance with the Policy, the grounds on which the complaint is made, in particular, (…) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint (…)." Finally, Paragraph 4(c) of the Policy lists certain circumstances under which Respondent may be considered to have rights or legitimate interests in respect of a disputed domain name.
The Panel believes that providing evidence of a negative circumstance is a quite complicated task. Accordingly, the Panel believes, in line with other prior decisions, that it is sufficient that Complainant shows a prima facie evidence of a lack of rights or legitimate interests in order to shift the burden of proof on Respondent (Intocast AG v. Lee Daeyoon, WIPO Case No. D 2000-1467; Cellular One Group v. COI Cellular One, Inc., WIPO Case No. D 2000-1521).
Complainants state that Respondent is not a licensee of Complainants and that it has not been authorized to use the Domain Name. Furthermore, according to Complainants, "antiflirt.net" does not give rise to an active web site or in any other on-line presence. In Complainants’ opinion, since Respondent does not have a proper e-mail address, it does not perform any e-business nor does it use any electronic media. Complainants further state that despite all the searches they carried out, they were not able to determine which is Respondent’s activity.
The Panel finds such arguments to be convincing. Furthermore, although there is no requirement to use a domain name after its registration, where, as in the case at issue, the Domain Name does not lead to an active web site, it may also be concluded that Complainants proved that Respondent did not use - before any notice of the dispute - the Domain Name in connection with a bona fide offering of goods and services (Paragraph 4(c)(i) of the Policy), and that the Respondent is not making a legitimate noncommercial or fair use of the domain name (Para 4(c)(ii) of the Policy).
It is the Panel's opinion based upon the powers conferred by Paragraph 10(d) of the Policy ("[T]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence"), that Complainants have provided a prima facie evidence of Respondent's lack of rights or legitimate interests in the Domain Name "antiflirt.net".
It would normally be the Respondent's task, now that it is charged with its burden of proof, to disprove the Complainants' statements. However, Respondent defaulted. Although default ought not to be considered sufficient to establish that Respondent lacked rights or legitimate interests in the disputed Domain Name, the Panel believes that it is a reasonable inference that were the Respondent concerned with or had it had a right or legitimate interest in the Domain Name, it probably would have filed a response to demonstrate such right or legitimate interest.
Therefore, in the light of Complainant's assertions and considering the rights conferred to the Panel under Paragraph 14(b) of the Rules ("[I]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate"), it is an appropriate inference that the lack of reply is indicative of Respondent's lack of rights or legitimate interests in the Domain Name.
The Panel finds that Complainants have met the burden of proof in showing Respondent's lack of rights or legitimate interests in the Domain Name at issue.
6.4. The Panel finds that Complainants did not meet the burden of proof that the Domain Name "antiflirt.net" was registered and is being used in bad faith.
Once again, the issue is whether Complainants have satisfactorily demonstrated that Respondent registered and is being using "antiflirt.net" in bad faith, in a situation where the Respondent is in default.
Under Paragraph 4(b) of the Policy for the purpose of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a Domain Name in bad faith:
(i) circumstances indicating that 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, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 Respondent’s web site or location or of a product or service on Respondent’s web site or location.
Complainants allege that ANTI-FLIRT is well known both as a trademark and as a company name all over the world. Anti-Flirt sells goods in several countries and Respondent could not ignore it. Complainants further allege that Respondent registered the Domain Name "antiflirt.net" in the light of Anti Flirt’s reputation, in order to prevent Complainants from reflecting the ANTI-FLIRT trademark in a corresponding domain name, thus obtaining a compensation for allowing Complainants to use the disputed Domain Name. According to Complainants, Respondent certainly aimed at selling, renting or otherwise transferring the domain name registration to Anti Flirt for a valuable consideration exceeding the costs directly related to the disputed Domain Name.
The Panel believes that were the evidence provided by Complainants sufficiently convincing that the ANTI-FLIRT trademark is renown in the US (where Respondent is located), the Panel could have reasonably inferred that Respondent was aware of Complainants earlier trademark rights at the time of the registration of the Domain Name. Such an awareness would make it credible Complainants' allegations that Respondent's acted in bad faith when it applied for the registration of the Domain name "antiflirt.net" (cf. Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. v. Steven Shiekman, WIPO Case No. D2000-1375).
However, the Panel cannot ignore that the evidence submitted to prove Respondent's bad faith is insufficient to ascertain the presence of Respondent's bad faith in the registration and use of the Domain Name, even taking into account Respondent's default. In particular, the only evidence supported by documents in the Complaint is: (1) the fact that Anti-Flirt is a French company incorporated in 1981, and operating in the field of the manufacture and sale of ready-to-wear and clothing in general; (2) the fact that Complainants own the ANTI-FLIRT trademark in 27 countries including the United States where - according to the relevant certificate of registration - the use in commerce started in 1987, and (3) the fact that the ANTI-FLIRT trademark is used to identify clothing apparels in the Paris-Summer 2000 catalogue. The Panel finds that such evidence does not confirm Complainants' allegations that both the trademark and the company name ANTI-FLIRT are well known all over the world. From the foregoing circumstances, the Panel may only draw the inference that use must have been made of the ANTI-FLIRT mark since no one would lightheartedly undertake the cost and effort of registering a trademark in so many countries unless such registrations are instrumental for the protection of good will and investments related to such trademark" (see F.lli Claudio e Carlalberto Corneliani S.p.A. v. Corantos S.r.l., WIPO Case No. D 2000-0759 cited above) However, while such use might have been held a sufficient evidence that the ANTI-FLIRT mark and company name perhaps are well known in their country of origin (France), the same conclusion cannot be reached as to the international renown of the mark and company name, which is necessary in the case of the Domain Name at issue which was registered by an entity residing in Arizona, United States. Therefore, in the Panel's view, Complainants failed to provide a prima facie evidence that the ANTI-FLIRT trademark and company name are well known in the United States and particularly in Arizona where the Respondent is located. Although the Panel may be satisfied that the ANTI-FLIRT mark is used in the United States, in the absence of any further specification as to the extent of such use, penetration in the market, amount of advertising, and any other relevant information, the Panel cannot infer that said mark is well known in this country, and in Arizona in particular and thus it cannot be inferred that Respondent registered "antiflirt.net" being aware of Complainants' earlier trademark rights. Accordingly, the Panel cannot reach the reasonable conclusion that Respondent registered the disputed Domain Name in bad faith.
Furthermore, Complainants allege that Respondent certainly aimed at selling, renting or otherwise transferring the Domain Name for a valuable consideration in excess of the costs directly related to the Domain Name. The Panel did not find in the Complaint any support for this statement. Complainants have not proved that Respondent was aware of the Complainants’ mark prior to acquisition of the Domain Name. From the summary of the facts included in the Complaint, it does not appear that Complainants challenged the Respondent's Domain Name registration and use before the filing of the Complaint. Accordingly, there is no evidence that had the Respondent been requested to do so, it would have claimed a valuable consideration to transfer or cancel the Domain Name at issue.
Finally, the Panel cannot infer the existence of a bad faith registration solely from the fact that Respondent registered a Domain Name corresponding to a registered trademark in the Respondent's country. ANTI FLIRT consists in the combination of two words having a common and highly recognizable meaning in English speaking countries such as the US, since the term ANTI derives from the Latin and is a prefix meaning "against or opposed to; preventing or counteracting; opposite or contrary to" (Random House Webster’s Dictionary, Third Edition, 1998), and the term FLIRT means "flick; to move in a jerky manner; to move erratically; to behave amorously without serious intent; etc." (Merriam Webster's Collegiate Dictionary, Tenth Edition, 1996). The overall meaning of ANTIFLIRT is therefore clearly understandable by an English speaking individual.
As far as a Respondent's bad faith in the use of the disputed Domain Name is concerned, since Complainants failed to prove bad faith in the registration of the Domain Name, the Panel believes that it is not necessary to evaluate whether or not Complainants have provided evidence for the Panel to conclude that "antiflirt.net" is being used in bad faith.
In the light of the foregoing, the Panel believes that Complainants failed to satisfactorily prove that the third condition of Paragraph 4(a)(iii) of the Policy is met.
Based on its finding that Complainants have not established that Respondent registered and use the Domain Name "antiflirt.net" in bad faith, pursuant to Paragraph 4 (i) of the Policy and Paragraph 15 of the Rules, the Panel denies the request that the Registrar, Network Solutions, Inc. be required to transfer to the Complainants the domain name " "antiflirt.net".
Dated: February 28, 2001