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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DR. S.A. v. aunomdelarose.com
Case No. D2001-0666
1. The Parties
The Complainant in this administrative proceeding is DR. S.A., a French Corporation, with a principal place of business at 14, rue Daniel Stern, 75015 Paris, France.
The Respondent in this administrative proceeding is <aunomdelarose.com>, 701 Brickell Key Blvd, Suite 1408 Miami, Florida 33131, USA.
2. The Domain Name and Registrar
The Domain Name at issue is <aunomdelarose.com> (hereinafter referred to as the Domain Name).
The Registrar of the Domain Name is Network Solutions Inc., (hereinafter referred to as the Registrar).
3. Procedural History
On May 17, 2001, Complainant filed a complaint with the WIPO Arbitration and Mediation Center (hereinafter referred to as the Center). The Complaint was received by email on May 17, 2001, and in hardcopy on June 7, 2001.
On May 18, 2001, Acknowledgement of Receipt by the Center was sent to the Complainant.
On May 22, 2001, the Registrar provided the Center with the full contact details available in its WHOIS database for the Domain Name registrant and confirmed that:
- a copy of the Complaint was sent to it by the Complainant;
- it is the current Registrar of the Domain Name registration;
- the Respondent is the current registrant of the Domain Name registration;
- the Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Policy) applies to the Domain Name.
On May 29, 2001, the Center proceeded to send to the Complainant a complaint deficiency notification.
On May 29, 2001, the Center received an e-mail from the administrative contact of the Domain Name, in which the latter claimed not to own or have anything to do with the Domain Name.
The Center responded via e-mail on June 21, 2001, and indicated that the administrative contact had the obligation to communicate with the registrant.
On May 30, 2001, the Center received, via e-mail, an amendment to the Complaint, whereby the Complainant replaced the identity of the Respondent (removed the name of the administrative contact as Respondent).
On June 7, 2001, the Center and the Complainant exchanged e-mails regarding the physical notification of the complaint to the Respondent, and the difficulties associated therewith.
On June 7, 2001, the Center received an e-mail from the administrative contact of the Domain Name, in which the latter, once again, claimed not to own or have anything to do with the Domain Name.
On June 8, 2001, Complainant e-mailed second amendments to the Complaint with the Center. On May 18, 2001, acknowledgement of receipt by the Center of said amendments was sent to the Complainant on July 11, 2001. The amendments were received in hardcopy form on June 14, 2001.
On June 21 and June 25, 2001, the Center and the Complainant further exchanged e-mails.
The Center proceeded to verify that the Complaint satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the ICANN Rules) and the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as the WIPO Rules), including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on June 26, 2001.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Center's assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
On June 26, 2001, the Center informed the Respondent of the commencement of the proceedings as of June 26, 2001, and of the necessity of responding to the Complaint within 20 calendar days, the last day for sending a response to the Center being on July 15, 2001.
In a letter dated July 19, 2001, the Center informed the Respondent that it was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on the number of panelists designated by the Complainant.
On August 2, 2001, the Center issued a Notification of the Appointment of Administrative Panel and of the projected decision date to the parties.
Since, August 2, 2001, the Panel has received further communications forwarded from the Center, which basically provide further allegations and observations made by the Complainant. However, no documentation in support of these additional allegations was received by the Panel.
The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel is obliged to issue a decision on or prior to August 16, 2001, in the English language.
4. Factual Background
The Panel finds that the following uncontested and unchallenged facts appear from the Complaint and the supporting documentation submitted with the Complaint.
The Complainant has indicated that it is a French and European flower (especially roses) retailer since 1991.
Pursuant to the complimentary research conducted in the WHOIS database, proprio motu, by the Panel, it appears that the Respondent has indeed registered the Domain Name, <aunomdelarose.com> on August 27,1999, with the Registrar.
5. Parties’ Contentions
i) Contentions of the Complainant with respect to its trademark rights
The Complainant alleges that it has been a French and European flower (especially roses) retailer since 1991, and that is the legal owner of the "AU NOM DE LA ROSE" brand, registered protected across Europe. Complainant states that it owns more than 15 shops across France and Europe under this brand. Complainant also alleges that it has created, since August 4, 1999, an internet-dedicated structure, Finanet, to manage its e-commerce web site with the same brand (au nom de la rose). Complainant further alleges that it already owns the <aunomdelarose.fr> domain.
ii) Contentions of the Complainant with respect to the Identity or Confusing Similarity between the Domain Name and its Trademarks
In paragraph 12 of the Complaint, the Complainant alleges that the Domain Name is similar to its brand AU NOM DE LA ROSE and French Domain Name, <aunomdelarose.fr>.
iii) Contentions of the Complainant with respect to the Absence of Rights or Legitimate Interests of the Respondent
The Complainant alleges that the Respondent has no rights in respect of the Domain Name.
Furthermore, the Complainant alleges that the Respondent does not use the Domain Name, neither for a web site, nor for an e-mail address, since August 1999.
iv) Contentions of the Complainant with respect to the Registration and Use of the Domain Name in Bad Faith
The Complainant infers that Respondent is using the Domain Name in bad faith, by stating that Respondent's appropriation of the Domain Name may disrupt the Complainant's business.
The Respondent failed to file a timely Response with the Center (neither electronically or by remittance of a hard copy). Consequently the Panel's decision will be based solely on the evidence or lack thereof as submitted by the Complainant.
6. Discussion and Findings
Pursuant to the ICANN Policy, and as noted above, the Complainant has the burden, on the balance of probabilities, to submit evidence in order to convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent upon the Complainant to cumulatively prove:
i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights; and
ii) that the Respondent has no rights or legitimate interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
After having carefully reviewed the Complaint, as well as the annexes provided therewith, the Panel hereinafter considers each of these three elements below.
However, prior to analysing each of these three elements, the Panel deems it appropriate to make some preliminary observations.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
The word "and" is a conjunction. Consequently, the Panel shall not decide on a Complaint solely on the basis of the allegations submitted by the parties as each one having a burden must provide evidence in support of these allegations; nor is it the burden of the Panel to seek further extrinsic evidence (other than judicial knowledge) to support the parties’ allegations, as this may be disruptive of the Process. Therefore, it is not enough for a party to make allegations and it will be incumbent upon it to submit or file the appropriate documentation whenever possible to either support, sustain or challenge the allegations.
Noteworthy in the present matter, the Complainant did not provide any evidence supporting its statements except for e-mail correspondences between the Complainant (via its representative), the Respondent's administrative contact and the Center as well as a WHOIS research printout conducted on the Domain Name, <aunomdelarose.com>. While one may sometimes be tempted to act merely on natural sympathy or equity, particularly when the Respondent has failed to submit a Response, it is not within the boundaries of the Panel's mandate to do so. The Policy and Rules clearly impose a burden of proof upon the Complainant, and the Panel is of the view that these documents are in themselves not sufficient to sustain any allegation, at least as it relates to rights in a trademark. A Complainant should never assume that simply filing a stereotype generic Complaint will have the effect of relieving them of their burden, even when there is no Response filed by the Respondent. Therefore, the Panel bases its decision solely on the grounds of the supported statements in the complaint and documents submitted thereto.
The sheer lack of content and supporting documentation in the Complaint, gives the Panel no choice but to conclude that there is insufficient evidence to support the allegations that need to be proven as they relate to all three elements. Furthermore, most if not all of the statements made by the Complainant appear on their face to be either incomplete and/or not corroborated by any documentary evidence.
i) Identity or Confusing Similarity between the Domain Name and Complainant's trademark
According to paragraph 4(a)(i) of the ICANN Policy, the Complainant must prove that the Domain Name is identical or confusingly similar to its trademark, and prove that it has rights in said trademark. From the statements and evidence presented, the Panel finds that the Domain Name <aunomdelarose.com> is identical to the Complainant’s alleged mark and confusingly similar to the Complainant's e-commerce address of <aunomdelarose.fr>. However, the Complainant has failed to prove its mere allegations that it has rights, whether registered or not, in the trademark AU NOM DE LA ROSE.
While the Complainant has alleged that it is the owner of the trademark mark AU NOM DE LA ROSE, it did not provide the Panel with any kind of supporting evidence whatsoever to sustain that allegation. In fact, the only evidence presented to support the said allegation is a copy of a cease and desist letter sent to the Respondent's administrative contact, dated February 4, 2000, in which the Complainant via its representative declares that it is the owner of the filed trademark, AU NOM DE LA ROSE. This is a self-serving document emitted by the Complainant; Consequently, the Panel cannot and does not regard this document as satisfactory evidence to relieve the Complainant's burden to support its allegation that it has rights in the trademark AU NOM DE LA ROSE.
Of course, on that point, the Complainant does not need to prove rights in a registered trademark, as the Policy does not require that the Complainant must have rights to a "registered" trademark. However, in the absence of a registration, the Complainant has to be able to satisfy the Panel that it has sufficient rights, which would give rise to an action for passing off. See Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235. In that matter, as in the one presently before the Panel, the Complainant did not provide any evidence of use of the trademarks nor evidence showing substantial goodwill and reputation as well as secondary association of the trademarks with the Complainant. Simply alleging (without supporting its statements with any kind of proof) that it operates stores in France dealing in the flower retail business, and that it is exploiting a web site under the name AU NOM DE LA ROSE is not enough.
Pursuant to the above-mentioned reasons, it is the Panel's view that the Complainant did not satisfy the burden imposed upon it to prove 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.
Pursuant to the Rules, which specify that a Complainant must cumulatively establish all three elements (rights, illegitimate use, bad faith) to be successful in its complaint. The finding that the Complainant has failed to demonstrate rights in the trademark AU NOM DE LA ROSE, alone, is fatal to the Complainant’s case. Although normally, the Panel, having made the first finding, is not obligated to address the issues of legitimate use and bad faith, it has nevertheless decided to address these issues.
ii) Rights or Legitimate Interests
Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) of the Policy illustrates how a Respondent can demonstrate rights or interest in the Domain Name at issue. This paragraph sets out three non-exhaustive examples, such as:
(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 or 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 misleading divert consumers or to tarnish the trademark or service mark at issue.
In the case at hand, Complainant alleged that the Respondent was not making legitimate use of the Domain Name. The Complainant did not produce any evidence in support of its claim that the Respondent did not use the Domain Name in connection with a bona fide offering of goods and services. However, the Panel, upon conducting an Internet search for the Domain Name on a proprio motu basis concluded that the contested Domain Name resolved to an inactive web site.
Although the Panel is not required to investigate and/or research on its own initiative, it proceeded to verify the Whois database for the relevant information concerning the Domain Name, as well as verify if the Domain Name lead to an active web site. The results of this research corroborate the Complainant’s allegations that the Domain Name is not being used in a legitimate manner. In fact, the Respondent has held the Domain Name for almost two (2) years and does not seem to have used it at all.
Furthermore, in this case, as was the case in SSL International v. MarkFreeman, WIPO Case No.D2000-1080 and Altavista Company v. Grandtotal Finances Ltd. et al., WIPO Case No. D2000-0848, the Panel finds it appropriate in this regard to draw an adverse inference from the Respondent’s failure to reply to the Complaint and detail any legitimate rights or interests it might have had in the Domain Name of the type defined in paragraph 4(c) of the ICANN Policy.
Consequently, the Panel is of the view that the Complainant has satisfied its burden of showing that Respondent did not have any rights or legitimate interests in the Domain Name.
iii) Bad Faith
Pursuant to paragraph 4(a)(iii) of the ICANN Policy it is incumbent upon the Complainant to prove that the Respondent has registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the ICANN 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 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;
(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."
There has been absolutely no evidence presented by Complainant before the Panel to show that the Respondent acquired the Domain Name in bad faith (to either sell it or otherwise transfer the registration to the Complainant for a valuable consideration, etc.). Furthermore, the Complainant actually failed to expressly make the allegation that the Respondent has acted in bad faith. The only allegation that approaches this notion of bad faith (in the Complaint's section V. Factual and Legal Grounds) is the following:
"The Domain Name <aunomdelarose.com> is similar to the brand and French domain, and that may disrupt the business of DR. S.A."
The lack of commitment to actually allege bad faith in the above-mentioned inference combined with the fact that there has been no evidence demonstrating or corroborating allegations of bad faith, leaves the Panel no choice but to conclude that the burden of demonstrating bad faith has not been met.
As the circumstances referred to above are not exhaustive, and absent evidence of any of the said circumstances, it was still open to the Complainant to show evidence that the Respondent acted in bad faith, due to other circumstances. However, Complainant chose not to do so. It is trite law that bad faith cannot be presumed in the absence of any proof to the contrary. Here again the Complainant has failed.
For the foregoing reasons, the Panel concludes that:
- the Complainant has failed to meet its burden on two of the three elements, which need to be proven cumulatively, under paragraph 4(a) of the ICANN Policy.
Consequently, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel denies the remedy sought in the Complaint.
Jacques A. Léger
Dated: August 16, 2001