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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Raymond Weil S.A. v Datoo Abbas
Case No. D2001-0597
1. The Parties
The Complainant is Raymond Wiel SA a Swiss corporation with its principal place of business at Lancy, Switzerland. The Complainant is Marie, Lucien et Nathalie Tissot, attorneys-at-law of La Chaux-de-Fonds, Switzerland.
The Respondent is Datoo Abbas of Lakemary, Florida, U.S.A. The Respondent is represented by Mr. Carlos M. Colombo of Zimmerman, Shuffield, Kiser & Sutcliffe, P.A. of Orlando, Florida, U.S.A.
2. The Domain Name and Registrar
The domain name at issue is <raymondweil.net >. The domain name is registered with Network Solutions Inc (‘the Registrar’) of Herndon, Virginia, USA. The name was registered with the Registrar on April 9, 2000.
3. Procedural History
The Complaint submitted by Raymond Weil SA was received on April 25, 2001, (electronic version) and April 26, 2001, (hard copy) by the World Intellectual Property Organization and Mediation Center ("WIPO Center").
On April 26, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:
- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
- Confirm that the domain name at issue is registered with the Registrar.
- Confirm that the person identified as the Respondent is the current registrant of the domain name.
- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
- Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") was in effect.
- Indicate the current status of the domain name.
By email dated April 27, 2001, the Registrar advised WIPO Center as follows:
- It had received a copy of the Complaint from the Complainant.
- It is the Registrar of the domain name registration <raymondweil.net>.
- The Respondent is shown as the "current registrant" of the domain name as well as being the administrative and billing contact.
- The UDRP applies to the registration.
- The disputed domain name registration is currently in ‘active’ status.
The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from the Registrar that the domain name in question is in licensed status indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Registrar’s Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on May 3, 2001, transmitted by post-courier, facsimile and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on May 17, 2001 (electronic) and May 21, 2001 (hard copy).
WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence. The Panelist duly advised acceptance and forwarded to the WIPO Center a statement of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On May 23, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by June 5, 2001.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The complainant is a company registered on the Commercial Register of Geneva since April 18, 1975. Its business is trading in horological goods. One of the company’s founders was Mr. Raymond Weil of Geneva, President of the Board. The company has remained a family company of which Mr. Raymond Weil has been President.
The Complainant is owner of the International Trademark RAYMOND WEIL No. 446233 registered on July 11, 1979 and duly renewed on July 11, 1999. This trademark is registered in some 40 countries. The mark covers and is used for goods in Class 14, i.e. watches, watch-movements, watch-cases, watch-dials, watch-parts, etc.
RAYMOND WEIL products are distributed in over 100 countries, as appears from the guarantee certificate stating the list of Raymond Weil distributors throughout the world. The list of Raymond Weil sole distributors or Raymond Weil retailers is also available on the internet.
The Respondent has no rights or interests in the mark granted to him by the Complainant. The Complainant’s lawyers sent a "cease and desist" email to the Respondent on February 20, 2001. On March 8, 2001, Respondent replied. He declined to transfer the name to the Complainant "as we are planning to launch some products which are not registered by your client. "As per the law no one can force anyone to sell the domain name as it is against the law. Yes we will not use the name in connection with your client’s products and will not harm any of their products".
On March 8, 2001 Complainant’s U.S. attorneys received a letter from "Tim Dickerson, CMC, Vice-President" enclosing a copy of a registration certificate for a business, purportedly given by some authority in Somalia. The letter asserted that Respondent "et al" had been carrying on business activity since registration in Somalia on August 4, 1975. This letter was not mentioned by the Complainant as it should have done in its Complaint.
5. Parties’ Contentions
The domain name <raymondweil.net> registered by the respondent is identical to the Trademark and to the Trade name RAYMOND WEIL.
There is an obvious risk of confusion between the domain name <raymondweil.net> and the trademark RAYMOND WEIL, the internet user connecting to this website is likely to believe that an official website of Raymond Weil had been accessed.
Respondent has neither registered, nor used the name RAYMOND WEIL as a trademark and is unknown under this name. The Respondent has demonstrated his intention to launch in the future goods under the name RAYMOND WEIL. In expressing an interest in selling goods under the trademark RAYMOND WEIL, the respondent shows that he intends to take profit of the renown of trademark RAYMOND WEIL for achieving financial gains and his dealings will likely raise a likelihood of confusion with the trademark RAYMOND WEIL to the consumers. The domain name registrant intentionally attempts to attract for financial gain, internet users to his website by creating a likelihood of confusion with the Complainant’s mark. In mentioning in his email that it is not possible to force him to sell his domain name, but in expressing thanks for the interest given by Raymond Weil SA and in providing his name and address, the Respondent implies that he would be disposed to sell the domain name to the petitioner.
In refusing to assign the domain name to the Complainant, without having demonstrated an interest worthy of protection in the use of the concerned domain name, the defendant has acted in bad faith.
Based on the documents submitted in support of this Response and the facts contained herein, this Panel should find that the Respondent has a legitimate interest in the domain name.
The Respondent has continuously conducted business in Somalia since 1975 under the name "Raymondweil Traders". Specifically, in 1975, Raymondweil Traders was registered with the government of Somalia. Exhibit "C" dated August 1975, is a registration certificate authorizing Raymondweil Traders to perform activities in wholesale trade, sandals, dry cell batteries, crockery and related items. Invoices were attached to an affidavit showing activities from 1981 through 1990. As deposed in the affidavit from the Respondent, a director of Raymondweil Traders, the company has and continues to conduct business in Somalia under the registered trade business "Raymondweil Traders". This evidence also establishes that Respondent has been commonly known by the name even if no trademark has been acquired.
The Respondent has no intent to divert consumers or to tarnish the trademark. Respondent is not even remotely engaged in the watch business, nor does it intend to compete with the Complainant. The Complainant has not submitted any documentation showing an intent to divert consumers. Rather, the Complainant misconstrues an email sent by the Respondent as its sole evidence in support of this allegation.
The Complainant fails to prove bad faith on the part of the Respondent. The Complaint makes unsupported conclusions in an attempt to prove bad faith. For example, on page 8 of the Complaint, the Complainant states:
"In refusing to assign the litigious domain name to the complainant, without have demonstrated an interest worthy of protection in the use of the concerned domain name, the defendant has acted in bad faith."
The Complainant draws this conclusion from one email that it misconstrues as implying a bad faith course of action by Mr. Datoo. The Complainant also assumes and supposes that based on the information that Complainant has, the Respondent has acted in bad faith and has no legitimate reasons for the use of the name. On March 28, 2001, counsel for the Complainant in the United States, was provided with 1975 registration documentation pertaining to the business in Somalia.
The Complainant has failed to disclose the above information to the Panel in its Complaint. The burden is on the Complainant to prove the facts. The Complainant’s conclusions and speculative arguments are incorrect and unsupported by evidence.
The Complaint has failed to address the "bad faith use" of the domain name. There is no evidence or significant discussion in the Complaint showing that the Respondent ever used this domain name in bad faith. The closest that the Complaint gets to even addressing this point is a vague reference to the March 8, 2001 email by the Respondent in which he states that he plans to engage in business over the internet. No actual use in bad faith is ever discussed or proven in the Complaint because there simply is no bad faith intentions on the part of the Respondent in either registering or using the domain name illegally.
The Respondent, having used and registered the name Raymondweil Traders in Somalia in 1975 and continuing to do business in that location to the present, has a legitimate, bona fide reason for registering the domain name <raymondweil.net>. The Respondent has never offered or attempted to profit from the Complainant from the purchase of the domain name.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- That the Respondent has no legitimate interests in respect of the domain name; and
- That the domain name has been registered in bad faith.
The Respondent does not (and could not sensibly) challenge the proposition that the disputed domain name is identical to the Complainant’s marks. The Panel so holds.
The Complainant gave the Respondent no rights or legitimate interests in the disputed domain name. That finding can sometimes be sufficient for the Complainant to discharge the initial evidential burden. Paragraph 4(c) of the Policy indicates that a Respondent can demonstrate rights or legitimate interests in the domain name. Thus:
(i) before any notice to you of the dispute, your use of or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly direct customers or to tarnish the trademark or service mark at issue.
The Panel now considers the material provided by the Respondent with reference to this criterion of the Policy.
In his affidavit, Respondent claims to be a director with knowledge of Raymondweil Traders in Somalia, which entity was established by his father in 1975. He says that his grandfather suggested the name when American and Western powers were regarded there as super-powers and admired by Somalians. In an effort to boost the business in Somalia and to give an international flavor to the company, businesses there preferred Western names. A Mr. Raymond of the New York Times was allegedly renowned in Somalia and the French Philosopher Weil was also already famous. A unique name, combining "two top personalities of the era", seemed appropriate.
Since 1975, Raymondweil Traders has imported and exported plastic sandals, crockery, household products, cotton yarns and batteries. It registered the domain name to expand its business. A business with an internet connection enjoys a special status in Somalia. An annexed photocopy certificate purports to be a Certificate of Registration as a Foreign Trader issued on April 7, 1975 by the Somali Ministry of Commerce. A certificate dated April 7, 1990 purports to have been issued by the local Government of Hamar permitting wholesale trade in sandals, dry cell batteries, crockery and related items (translated into English). There are also annexed to the affidavit translated documents relating to banking matters, and import licenses in 1989 and invoices in 1981, 1982, 1988, 1990 plus a photograph of premises with a sign "Raymondweil Traders", P.O. Box 771, Muqidisho".
However, the Panel finds as significant:
(a) There is no evidence of any trading activity being carried on by Raymondweil Traders in Somalia since 1990.
(b) It is well known in the world community that in the 1990s, the nation of Somalia suffered greatly from civil insurrections, invasions and near anarchy.
(c) The Respondent made no mention that he was running a business in Somalia under the name Raymond Weil when he received the "cease and desist" letter. Rather he implied he was going to use the website for unspecified types of trading. One would have thought that he should have mentioned any legitimate trading enterprise then. To be fair, the Complainant was told of the Somali connection on March 8, 2001.
(d) There is no evidence to show:
(i) The legal status of the alleged Somali business, in particular whether it is a corporation with a separate legal personality from its directors and shareholders.
(ii) The exact nature of the Respondent’s connection with the Somali business at the time of the domain name registration and later. For example, there is no evidence of his financial stake in the business and how it is that he, a resident of the United States, has any day-to-day involvement with a business in Somalia. Mr. Dickerson’s letter, referred to earlier refers to Respondent "et al" carrying on the Somalia business.
The Respondent’s whole claim invites a degree of skepticism. The way the name Raymondweil was allegedly chosen seems far-fetched. It seems just too coincidental that the Somali venture was started with this name in the same year as the Complainant started business. It is hard to see how the ‘Raymond’ and the ‘Weil’ referred to would have been household words or ‘top personalities of the era’ in a developing African nation in the 1970s.
The affidavit of the Respondent does not specifically speak of business activities of the Somali business since 1990. It says "Since 1975, Raymondweil Traders has engaged in business activities under the name Raymondweil Traders in Somalia as evidenced in the attached invoices and other documentation in support of our Response". No document after 1990 is exhibited. One also wonders why, if it was prestigious for a Somali trader to go on to the internet, Respondent registered a top-level domain name instead of one with a Somalia suffix.
Accordingly, the Panel considers that the Respondent has not demonstrated that he comes within paragraph 4(b) of the Policy. At best, there is proof that there may have been a business in Somalia operating until 1990 using the Raymond Weil name. There is no proof that this business is the same legal entity as the Respondent or that he personally is known by the disputed domain name. Nor is there proof that the business was operating at the time of the domain name registration. Accordingly, the second criteria is proved to the Panel’s satisfaction.
Paragraph 4(b) of the Policy states:
"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have 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 your web site or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The fame of the Complainant’s mark and brand is clearly established worldwide as a symbol of quality watch-making. In these circumstances bad faith registration can be assumed.
The domain name must create a real danger of confusion with the Complainant. Persons searching the internet will assume that the name has some connection with the Complainant or is endorsed by it. There is no suggestion that the Respondent did not know of the Complainant and its marks at the date of registration of the name. There is a suggestion of using the site for commercial gain. Even if the products on the site sold are not watches, there will inevitably be a danger of confusion with the Complainant. Nor is there any evidence of use of the name, other than the Respondent’s vague statements of intention in his email in reply to the "cease and desist" letter. Non-use of a website can be an indication of bad faith use. Taking all these factors into account, the Panel is prepared to infer that the third criterion has been established.
The Panel accordingly decides:
(a) That the domain name registered by the Respondent is identical or confusingly similar to the trademark to which the Complainant has rights; and
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) That the Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <raymondweil.net> be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: June 5, 2001