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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Civile du Forum des Halles de Paris v. French Xpressions, Inc.
Case No. D2001-0821
1. The Parties
The Complainant is Société Civile du Forum des Halles de Paris, a company organized under the laws of France, with its principal place of business at 5 boulevard Malesherbes, 75008 Paris, France.
The Respondent is French Xpressions, Inc., a company organized under the laws of Canada, with its principal place of business at 5124 Montclair Drive, Mississauga, ON L5M 5A6, Canada.
2. The Domain Name and Registrar
The domain name at issue is <forumdeshalles.com> (the "domain name"). The Registrar is Tucows.com – Domain Direct, at 96 Mowat Avenue, Toronto, ON M6K 3M1, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by hardcopy on June 22, 2001, and by email on July 2, 2001. The Center acknowledged that it had received the Complaint on June 29, 2001.
On June 29, 2001, the Center sent to the Registrar a request for verification of registration data. On May 4, 2001, the Registrar confirmed: 1) that <forumdeshalles.com> was registered with the Registrar; 2) that the current registrant of <forumdeshalles.com> is French XPRESSIONS, Inc., 5124 Montclair Drive, Mississauga, ON L5M 5A6, Canada; 3) that the Administrative, Technical and Billing Contact are: Guirguis, Chris, 5124 Montclair Drive, Mississauga, ON L5M 5A6, Canada, email: email@example.com, [telephone number:] [+1] 905 828 5922; 4) that the Uniform Domain Name Dispute Resolution Policy applies to the domain name; and 5) that the domain name is currently on hold.
On July 10, 2001, the Center verified that the Complaint had complied with all formal requirements, including payment of the fee.
The Center forwarded the Complaint to the Respondent with copies to ICANN and to the Registrar by email, by fax and by post/courier on July 10, 2001. The Center formally notified the Respondent that the Complaint satisfied 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"); that payment of the required sum had been made by the Complainant; and that an administrative proceeding had been commenced against the Respondent. A deadline of July 29, 2001 was fixed for the Response.
No Response was submitted to the Center. Accordingly, the Center issued a Notification of Respondent Default to both parties on August 8, 2001.
On August 15, 2001, the Center notified the Parties that an Administrative Panel composed of a single member, Dr. Kamen Troller, had been appointed and that the Panelist had duly submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. Absent exceptional circumstances, the Panelist was required to forward its decision to the Center in accordance with Paragraph 15 of the Rules by August 29, 2001.
The Panel examined all notifications of the Center, and the Complaint, and finds that they comply with the formal requirements of the Rules and Supplemental Rules, and that the Administrative Panel was properly constituted.
4. Factual Background
A. The Complainant
The Complainant, la Société Civile du Forum des Halles de Paris, exploits the "Forum des Halles", which is a large commercial center in Paris.
Complainant has registered the trademark "Forum des Halles" as follows (the "Trademark(s)"):
- French trademark registration No. 1536787, filed on June 16, 1989 and renewed on December 16, 1999 (Complainant’s Exhibit C);
- French trademark registration No. 99808206, filed on August 17, 1999;
- Community trademark registration No. 001333442, filed on October 5, 1999 and registered on August 9, 2001;
The Panel has searched on the Whois information databases of several domain name registrars, and found that the domain name <forumdeshalles.net> is registered by a company named Unibail Management, 5 boulevard Malesherbes, 75802 Paris Cedex 08, France, and that the domain name <forumdeshalles.fr> is registered by a company named Forum Des Halles Multimedia, 5 boulevard Malesherbes, 75008 Paris, France. There are currently no websites under said domain names. Given the fact that Unibail Management and Forum Des Halles Multimedia have their addresses at the business place of Complainant, the Panel concludes that it is highly probable that these companies are affiliates of Complainant.
B. The Respondent
Respondent, French Xpressions Inc., holds a website at "www.frenchxpressions.com", where it sells online products and services for gift occasions and provides gift-giving ideas through the Internet.
Respondent registered the domain name <forumdeshalles.com> on December 18, 1999. Currently, when accessing the website under the domain name, the Internet user is informed that the site cannot be opened. No contents are available.
C. Correspondence between the parties
On March 24, 2000, and on April 21, 2000, Complainant informed Respondent’s Administrative Contact by email, ordinary letter and registered letter that it is the owner of the trademark "Forum des Halles", and requested Respondent to transfer the domain name to Complainant (Complainant’s Exhibits E).
On May 2, 2000, Respondent answered to the Complainant:
"We received your email not too long ago and had no chance to reply. We plan to use the domain name "forumdeshalles.com" for an online Canadian ecommerce site." (Complainant’s Exhibits E).
On June 16, 2000, Complainant summoned Respondent (at that time existing under the name "Internet Max"), as well as Respondent’s Administrative Contact, Mr. Chris Guirguis, before the Tribunal de Grande Instance of Paris. Complainant requested that the Court: (i) establish judicially that, with the registration of the domain name <forumdeshalles.com>, Respondent has infringed Complainant’s Trademarks and has usurped Complainant’s company name; (ii) prohibit Respondent from further using Complainant’s Trademarks and company name; (iii) order Respondent to pay damages to Complainant; and (iv) order Respondent to transfer the domain name <forumdeshalles.com> to Complainant. In its judgment of January 23, 2001, the Court ruled that Respondent, by registering the domain name <forumdeshalles.com> without the consent of Complainant, had committed an act of infringement and had usurped Complainant’s company name. The Court prohibited Respondent to register any new domain name containing the designation "FORUM DES HALLES" or any domain name that could cause confusion with said designation. However, the Court stated that it could only deliver judgements that were enforceable in France and could therefore not order the transfer of the infringing domain name, which was registered in the United States.
On July 2, 2001, being the date on which the Complaint was filed by email, Respondent sent an email to Complainant, the content of which is set out at point 5.B. below. Respondent argued primarily that it had the right to use the name "forumdeshalles", because it holds the trademark "forumdeshalles.com" in Canada, and because it had incorporated that name to use it for its company in Canada.
By email of July 10, 2001, Complainant answered as follows [sic]:
"We would like to point out that when you have registered your domain name "forumdeshalles.com", you had no right to register it, since you had not registered any trademark.
Forumdeshalles.com application for registration of the trademark forumdeshalles.com is therefore evidence that you are acting in bad faith.
Besides, we have noted that Forumdeshalles.com’s application for registration of the trademark Forumdeshalles.com in Canada has not been examined. It is therefore incorrect to say that you "hold" a trademark in Canada, which has not been registered, and that you have "every right to use it"."
5. Parties’ Contentions
A. The Complainant
Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy are applicable to the disputed domain name. More precisely, Complainant submits that:
1) The domain name <forumdeshalles.com> is identical to Complainant’s Trademark;
2) Respondent has no rights or legitimate interests in the domain name, because: Respondent is not a licensee of Complainant and is in no way authorized to use Complainant’s Trademark; Respondent does not own any trademark including the words "Forum des Halles"; Complainant is the sole owner of the Trademark and is the only one authorized to use said Trademark; and Respondent has no link of any nature with Complainant;
3) The domain name was registered and is being used in bad faith, because Respondent has acquired the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding name. Complainant contends that Respondent has engaged in a pattern of such conduct, because it has registered other famous trademarks to the prejudice of the owners of such trademarks. As an example, Complainant cites WIPO Domain Name Dispute Case No. D2000-0013  in relation to the domain name <sizesunlimited.com>.
Complainant also contends that, by pretending it planned to use the domain name, Respondent intentionally attempted to attract Internet users to its website in order to create a likelihood of confusion with the Complainant's Trademark as to the source or affiliation of this website.
In addition, Complainant states that bad faith of Respondent is also demonstrated by the facts that: (i) Respondent deliberately refused to take into account the several complaints sent by Complainant; (ii) Respondent never explained to the Court of Paris why it has registered the domain name; and (iii) Respondent has tried to confuse both Complainant and the French Court, first, by changing the registrant's name (Complainant was first known under the name Domain Impact, then under the name Internet Max, and finally under the name French Xpression) and, second, by changing of registrar (the first registrar was Register.com, the second registrar was Tucows.com).
Complainant requests the Administrative Panel to issue a decision that the domain name be transferred to the Complainant.
B. The Respondent
No Response was submitted.
However, immediately upon receipt of the Complaint, the Respondent sent to the Complainant an email (hereinafter referred to as the "Answer") with the following content:
"We have received the several complaints you mailed to us, as well as your emails.
In response to your accusations and the case you filed with WIPO, we wish to let you know that we hold the trademark for "forumdeshalles.com" in Canada, and therefore have every right to use the name in Canada. Please do some research and check the Canadian Intellectual Property Organisation website, or view our trademark registration directly at "http://strategis.ic.gc.ca/SSG/1055/trdp100528900e.html"; as well, we incorporated the name "ForumDesHalles.com" to use for our company in Canada, as I believe we mentioned to you before.
The domain name was by no means used in bad faith by our company. We had, and still have no intention to damage your corporation’s reputation by registration the domain name for our company. This has actually cause [sic] us damage by preventing the launch of our site until now. If you want to get online with your own domain name, I suggest you register (if you haven’t already) "forumdeshalles.fr", as that is the TLD you are entitled to, being in France.
I believe this would both save us a lot of trouble and money, and would help your corporation recuperate and lost time/earnings [sic].
Please let me know by email how this situation develops, I trust that you will choose the wisest and least costly decision, by letting us use our domain name for the purpose for which it was registered, and using any other domain name (such as .fr or .net) for your own purposes." (Respondent’s email of July 2, 2001).
6. Discussion and Findings
Pursuant to Paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present:
(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
(a) Identical or confusingly similar to a trademark
The only difference between the domain name and the Trademark is that the domain name has ".com" at the end. The addition of the designation ".com" is non-distinctive because it is a gTLD required for registration of a domain name .
The Panel concludes that the Complainant satisfies the requirements of paragraph 4(a)(i) of the Policy.
(b) Rights or legitimate interests
Paragraph 4(c) of the Policy defines the circumstances required for the Respondent to demonstrate "rights to and a legitimate interest in the domain name". The Respondent is only required to demonstrate any one of the following circumstances (in particular and without limitation) to prove its rights to or legitimate interest in the domain name:
(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 misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to Paragraph 4(c)(i), Respondent stated in its email of May 2, 2000 to Complainant that it planned to use the domain name for an online Canadian e-commerce site (Complainant’s Exhibit E). However, Respondent does not allege nor submit credible evidence that the domain name has ever been used in connection with a bona fide offering of goods or services. The domain name does not appear to have been used for an active website, nor has any evidence been introduced showing preparation for use .
With respect to Paragraph 4(c)(ii), Respondent has stated in its Answer that it "holds" the trademark "forumdeshalles.com" in Canada and that it "incorporated the name "ForumDesHalles.com" to use for [its] company in Canada". The Canadian Intellectual Property Organization’s website at "http://strategis.ic.gc.ca/SSG/1055/trdp100528900e.html" lists a company named ForumDesHalles.com, 5124 Montclair Dr., Mississauga, L5M 5A6, Ontario, [Canada] as the registrant of the trademark application "ForumDesHalles.com" No. 1055289 for operation of an e-commerce enabled website retailing a variety of items and wares. It does not appear, however, that the Canadian Intellectual Property Organization has registered the trademark. Respondent filed the Canadian trademark application on April 18, 2000, after the registration of the domain name <forumdeshalles.com>, and immediately after Respondent had received Complainant’s warning letter of March 24, 2000. Therefore, the Panel believes that Respondent has filed the Canadian trademark application in bad faith. Also, except from the fact that "ForumDesHalles.com" is indicated as the registrant of the Canadian trademark application, the Panel could not find any evidence that a company existed under that name. In the light of these circumstances, the Panel finds that there is not sufficient evidence that Respondent has been commonly known by the name "forumdeshalles". Therefore, Paragraph 4(c)(ii) of the Rules is not applicable.
With respect to Paragraph 4(c)(iii), there is no evidence in the record that Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Under these circumstances, and taking into account the Respondent’s failure to file a formal Response, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
(c) Bad faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in bad faith as well as registration in bad faith.
Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances which shall be evidence that the registration and use of a domain name is 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 website 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 website or location or of a product or service on your website or location.
The Complainant relies on both the second and the forth elements, alleging, first, that Respondent registered the domain name <forumdeshalles.com> in order to prevent Complainant from reflecting the Trademark in a corresponding name, and, second, that the domain name was registered and used in bad faith because Respondent intentionally attempted to attract Internet users to its website, in order to create a likelihood of confusion with the Complainant's Trademark as to the source or affiliation of this website.
In its Answer, Respondent has denied Complainant’s allegations by saying that it did not have the intention to damage Complainant’s reputation by the registration of the domain name.
Complainant, or one of its affiliates, owns gTLD domain name <forumdeshalles.net> and ccTLD <forumdeshalles.fr>. The Panel finds that Respondent’s registration of <forumdeshalles.com> cannot be considered as preventing Complainant from reflecting its mark in a corresponding domain name, and that there is no evidence that Respondent has engaged in a pattern of such conduct. In fact, Complainant has only provided evidence of the registration by Respondent’s Administrative Contact of the domain name <sizesunlimited.com> . This cannot, in itself, give rise to evidence that Respondent has "engaged in a pattern of conduct". The Panel finds that bad faith criteria of paragraph 4(b)(ii) of the Policy are not fulfilled.
The Panel also does not agree with Complainant’s allegation that Respondent intentionally attempted to attract Internet users to its website in order to create a likelihood of confusion with Complainant's Trademark. Although Respondent has announced in its email of May 2, 2000 that it planned to use the domain name for an online Canadian e-commerce site, it has been established that Respondent has never exploited a website with content under that name. Therefore, the Panel finds that bad faith criteria of paragraph 4(b)(iv) of the Policy are not fulfilled.
However, in the case at hand, the following circumstances lead the Panel to conclude that Respondent has nevertheless registered and used the domain name in bad faith:
a) Respondent listed the domain name for sale with Greatdomains.com, a company that specializes in selling domain names for more than out-of-pocket expenses. No price is listed for the disputed domain name - instead the phrase "Place an Offer" appears. Had the Respondent merely sought out-of-pocket expenses, these expenses would have been listed. The Panel finds that by seeking an offer on Greatdomains.com, Respondent is holding out for more than out-of-pocket expenses. This should come as no surprise given the likely value of this domain name to Complainant. It is not necessary that there be evidence of a specific offer to Complainant (or its competitors) . Although Respondent has not directly contacted the Complainants to sell the domain name, use of the services of a third party vendor, Greatdomains.com, is sufficient. This is a clear example of bad faith within the meaning of paragraph 4(b)(i).
(b) The domain name was registered on December 18, 1999. Respondent does not seem to have actually used the domain name. It may be expected that a bona fide registrant would establish his good faith by preparing and using a site in a way which leaves no doubt that he does not intend to take any undue (commercial or otherwise economical) advantage of a trademark’s reputation. In the present case, Respondent has not made any effort to prove his good faith - to the contrary, by offering the domain name for sale, Respondent showed that it had no personal interest in the domain name, except to obtain some financial advantage.
(c) Respondent does not seem to have any relation with the commercial center Forum des Halles, nor with Complainant. Respondent has filed its application for the Canadian trademark "ForumDesHalles.com" only after it had registered the domain name and after it had received a warning letter from Complainant. Neither does Respondent submit any credible evidence that it had established an enterprise bearing the name "forumdeshalles" or any similar name before the registration of the domain name or Complainant’s warning letter.
(d) Respondent has failed to file a formal Response and to demonstrate any good faith use .
(e) Respondent has changed its registrant's name (first, Domain Impact, then Internet Max, and finally French Xpression) and the registrar of the domain name (first Register.com, then Tucows.com). This suggests that Respondent tried to confuse Complainant and the courts.
(f) The Panel cannot conceive any plausible actual or contemplated active use of the domain name by Respondent that would not violate or infringe the Complainants’ trademark rights, or would otherwise be legitimate.
Based on the above, the Panel finds that Complainant has satisfied its burden of proof with respect to bad faith registration and use of the domain name.
The Panel decides that:
1) the disputed domain name is identical to the trademark "Forum des Halles" in which the Complainant has rights;
2) the Respondent has no rights or legitimate interest in respect of the domain name; and
3) the domain name has been registered and is being used in bad faith by the Respondent.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires that the Registrar, Tucows.com, Inc., transfer the domain name <forumdeshalles.com> to the Complainant.
Dated: August 29, 2001
1. See: The Avenue, Inc. and United Retail Incorporated v. Chris Guirguis doing business as Lighthouse Web Design and/or Cannibal, and Sam Guirguis (D2000-0013) – Complainant’s Exhibit G.
2. See: Gateway, Inc. v. James Cadieux (D2000-0198); The Journal Newspapers, Inc. v. DomainForSale 980dollars (FA95395) and Konkinklijke Philips Electronics NV v. Ramazan Goktas (D2000-1638).
3. See: Judgment of January 23, 2001 rendered by the Tribunal de Grande Instance de Paris, p. 6 (Complainant’s Exhibit D).
4. See: The Avenue, Inc. and United Retail Incorporated v. Chris Guirguis doing business as Lighthouse Web Design and/or Cannibal, and Sam Guirguis (D2000-0013) – Complainant’s Exhibit G.
5. See: The Journal Newspapers Inc. v. DomainForSale 980dollars (FA95395).
6. See: Pharmacia & Upjohn AB v. Dario H. Romero (D2000-1273), at p.6; Telstra Corporation, Ltd. v. Nuclear Marshmallows (D2000-0003), at p.8.