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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

L’Air Liquide v. MIC

Case No. D2001-1246

 

1. The Parties

The Complainant is L’air Liquide, a joint stock liability company for the study and operation of Georges Claude’s processes, established under the laws of France, with its head offices at 75 Quai d’Orsay, 75231 Paris Cedex 07, France.

The Respondent is MIC, 15 5th Street, Closter, New Jersey 07624 USA.

 

2. The Domain Names and Registrar

The domain names at issue are <suezairliquide.com> and <suezairliquid.com>.

The disputed domain names are collectively referred to as the Domain Names.

The Registrar for the Domain Names is BulkRegister.com, Inc., 10 East Baltimore Street, Suite 1500, Baltimore, Maryland, 21202 USA.

 

3. Procedural History

A Complaint was filed pursuant to the Uniform Domain Name Dispute Resolution Policy adopted on August 26, 1999, ("the Policy") by the Internet Corporation for Assigned Names and Numbers ("ICANN") and in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, approved on October 24, 1999 ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (‘the Supplemental Rules").

WIPO Arbitration and Mediation Center ("the Center") received the Complaint from the Complainant on October 15, 2001, in hardcopy and on October 18, 2001, by email with appropriate fee payment. The language of correspondence is English.

The Center sent an Acknowledgement of Receipt of the Complaint to the Complainant on October 19, 2001, in accordance with the Rules, paragraph 4.

On October 19, 2001, the Center sent a Request for registrar verification of registration data in accordance with the Rules, paragraph 2(a) and 4 to Bulkregister.com. Inc. The Registrar confirmed the receipt of a copy of the Complaint, that it is the Registrar of the domain names in dispute, that the domain names are registered to the Respondent’s name and that the service agreement under which the registration was made implemented the Policy.

On October 22, 2001, the Center confirmed that the formal requirements were met.

On October 24, 2001, a Notification of Complaint and Commencement of Administrative Proceedings was sent to the Respondent by postal service and received on October 26, 2001. Having reviewed the email, facsimile and postal service correspondence, the Panelist is satisfied that the Center discharged its responsibility under paragraph 2(a) of the Rules.

The Respondent did not submit a Response by the due date. On November 15, 2001, the Center issued a Notification of Respondent Default to the Complainant by facsimile and by email.

On November 27, 2001, Thomas H. Webster was appointed as Sole Panelist ("the Panelist") and in accordance with Rules, paragraph 7, submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

The Center transmitted to the parties a Notification of Appointment of Administrative Panel and in accordance with the Rules, paragraph 8, the Projected Decision Date was determined to be December 11, 2001.

The Panelist is satisfied that the Complaint was filed in accordance with the Policy, the Rules, and the Supplemental Rules and that the Panel was properly constituted.

 

4. Factual Background

Unless otherwise indicated, the following is taken from the Complaint and is accepted as true in the circumstances of this case.

The Complainant is L’air Liquide, a French company founded in 1902 and global provider of industrial and medical gases and related services, with 125 subsidiaries in 60 countries. Its trade name is AIR LIQUIDE.

The Complainant owns the French trademarks "AIR LIQUIDE" registered under no. 93 451 236 on January 19, 1993, and "AIR LIQUIDE" registered under n. 95 571 348 on May 12, 1995, for further classes of goods and services. It also owns trademarks in the USA of "AIR LIQUIDE", registered under n.1 930 459 on October 31, 1995, and "AIR LIQUIDE", registered under n. 2131613 on January 27, 1998, for further classes of goods and services. All trademarks have been duly renewed.

The French Company "Suez Lyonnaise Des Eaux" is a company that conducts worldwide activities in the fields of energy, water, waste management and communications.

This corporation owns the French trademarks "SUEZ" registered under n. 1 433 219 on September 7, 1987, that has been duly renewed.

In the first quarter of 2001, Suez Lyonnaise Des Eaux approached Air Liquide to explore possibilities of merger which were rejected in early March 2001.

The parties did not proceed with the merger.

Suez Lyonnaise Des Eaux has not joined in these proceedings. However, it has confirmed that it has not authorized the Respondent to use its trademark "Suez" and that it supports the complaint.

The Respondent registered the domain name <suezairliquid.com> on March 7, 2001, and <suezairliquide.com> on March 8, 2001.

The Complainant sent a cease and desist letter to the Respondent on May 15, 2001, but received no reply.

In support of the Complaint Suez Lyonnaise Des Eaux submitted a letter dated September 11, 2001.

The administrative and technical contact for MIC is Mr. Syed Hussain. Mr. Syed Hussain was also the administrative and technical contact for CPIC Net, a company at the same address as the Respondent.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following arguments with respect to this case (all quotations are from the Complaint unless otherwise indicated):

(i) The Respondent’s domain names are identical or confusingly similar to a trademark in which the Complainant has rights

" [T]he overall impression left by the disputed domain names is that they are each confusingly similar with the registered AIR LIQUIDE trademarks. Indeed, when considering the components of the disputed domain names and whether they should be considered perplexing to a customer or potential customer, it appears that:

* "airliquide" is the longest and most characteristic component of the combination:

* by suggesting a joint venture or merger, the disputed domain names induce the customer to believe that it belongs to a joint venture of both companies or to one of them, more likely SUEZ which could be deemed to still be contemplating its future use in case the merger talks would resume. Indeed, the press coverage on the rejection of the merger by the Complainant, reported on many occasions the conviction and hope voiced by SUEZ that it could convince AIR LIQUIDE of the logic of a tie-up even after SUEZ proposal was turned down."

"Therefore, the disputed domain names are composed of two elements which are identical to famous trademarks owned by the independent companies which conducted merger talks in 2001 and the overall impression produced by the disputed domain names is confusingly similar to the Complainant’s trademarks and business name".

(ii) The Respondent has no rights or legitimate interests in respect of the domain names

"[T]he terms "AIR LIQUIDE" and "SUEZ" are not descriptive words in which the Respondent might have an interest…AIR LIQUIDE never consented to the use by MIC and/or by Syed Hussain of its trademarks, tradename and corporate name, especially in slightly altered version. From the letter sent by SUEZ it appears that SUEZ did not give its consent either to the Respondent to use its trademarks and tradename…the Respondent has no rights or legitimate interest in respect of the domain names…"

(iii) The Respondent’s domain names have been registered and are being used in bad faith

"…Respondent registered the disputed domain names a couple of days after Complainant officially turned down the merger approach of the SUEZ company, probably because the SUEZ company was still hoping to convince the Complainant to merge…The registration of two almost identical domain names reveal an intent to capitalize on their future sale."

"It appears that Respondent has not opened any website using the disputed domain names as part of their URL…and failed to answer the cease and desist letter sent by post and email by Complainant. There is no evidence that the Respondent has had any intent to use the disputed domain names in connection with legitimate and bone fide business activities. "

"Finally it appears that Mr. Syed Hussain and a company CPIC Net which he represented, as he represents MIC in this case, have been the losing Respondents in prior similar WIPO proceedings where the panelists ordered the transfer of domain names consisting of names of companies which had just merged or were talking of…in the present case the Respondent failed to offer to sell the disputed domain names to the complainant because the merger failed and thus their "market value" was not so interesting."

"So, pursuant to article 4 (b) and (c), the timing of the contested registrations, the silence of Respondent and its past pattern of conduct show that :

* the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademarks, for valuable consideration;

* the domain names were registered in order to prevent the owners of the respective composing trademarks from reflecting the mark in a corresponding domain name, as previously done in similar cases."

B. Respondent

The Respondent did not provide a Response.

 

6. Discussion and Findings

The Complainant must show that all of the three elements are established in accordance with the Policy paragraph 4(a).

(i) The Respondent’s domain names are identical or confusingly similar to a trademark in which the Complainant has rights

The domain names have two components. The Complainant has trademark rights to one of those components.

In WIPO Case No. D2000-0433 Time Warner Inc. and Emi Group plc. v CPIC Net, CPIC had registered 5 different combinations of the trademarks Warner and Emi following the first press announcement of the merger. The Panelist found that the dissimilarities in the registered domain names did not preclude finding likelihood of confusion and the overall impression left suggested the name belonged to the Complainants and would inevitably result in consumer confusion. The Panelist ordered transfer to Time Warner Inc.

The Complainants in that case were both Time Warner and EMI Group plc. In this case, the Complainant is L'Air Liquide although it has a letter of support from Suez Lyonnaise Des Eaux.

The issue is however whether these domain names are confusingly similar to the Complainant's trademarks.

The Panelist accepts that Air Liquide is a famous trademark due to the activities of the group that owns the trademark. Therefore, the only issue is whether the addition of the word "Suez" – which in and of itself is a famous trademark – changes the domain names into ones that are not confusingly similar.

In WIPO Case No. D2001-0051 Yahoo! Inc. v. Yahoo-Asian Company Limited the Panelist held that domain names including <yahooasian.com> were confusingly similar to the Yahoo trademark because the additional word "asian" did not detract from and may well reinforce the strong association with Yahoo.

That case concerned of course a geographical description and not another famous trademark. However the Panelist feels bound to reach a similar conclusion. Air Liquide is strongly associated with the Complainant. The addition of another famous trademark would not weaken that association as most internet users would presumably assume that the name was authorized by the entity or entities holding both trademarks or, as the Complainant has suggested, by a joint venture of the two companies.

Therefore, the overall impression is likely to cause confusion to a customer or potential customer with the trademarks in which the Complainant has rights. Accordingly the Panelist considers that the disputed names are confusingly similar to the Complainant’s trademark.

(ii) The Respondent has no rights or legitimate interests in respect of the domain names

There is no evidence that the Respondent is using the domain names in connection with offering bone fide goods or services. "SUEZ" and "AIR LIQUID" or "AIR LIQUIDE" are not names by which the Respondent is known and the Respondent is not making any legitimate non-commercial or fair use of the Domain Names.

Accordingly the Panelist considers that the Respondent has no rights or legitimate interest in respect of the domain names.

(iii) The Respondent’s domain names have been registered and are being used in bad faith

In this case the Panelist has no difficulty in finding that the domain names were registered in bad faith.

First, the registration of a famous trademark as a domain name suggests, in the absence of an explanation from the Respondent, that the registration has been made in bad faith. Moreover, this inference is stronger given the pattern of conduct that Mr. Syed Hussain has apparently engaged in with respect to domain names. And the inference is reinforced by the timing as the domain names were registered at approximately the same time as the merger discussions between the Complainant and the Suez Lyonnaise Des Eaux Group.

In WIPO Case No. D2000-1566 Logica plc and Logical UK Limited v CPIC Net it was established that CPIC was the owner of 50 well known domain names. Mr. Syed Hussain was asked if he was seeking more than the costs of registration. He answered "of course". Similarly, in another prior proceeding of WIPO Case No. D2001-0326 Olivetti S.p.A. v Mr Syed Hussain, Mr. Syed was ordered to transfer the domain names in dispute following a telephone conversation where the Respondent indicated the intention to sell the domain name for a cost in excess of out-of-pocket expenses.

The Panelist finds that Mr. Syed's actions can be imputed to the Respondent because Mr. Syed is the administrative contact for the Respondent and there is no evidence that the Respondent has a real separate corporate existence.

Therefore, in the Panelist’s view, by registering the Domain Names on the date following the press release the Respondent had in mind the purpose of selling or otherwise transferring the domain name registration for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. A pattern of conduct is established on the evidence of prior WIPO proceedings that the domain name has been registered in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.

With regard to use of the domain name, it appears that the Respondent has simply held rather than activated the domain names. However, it has been held in a series of WIPO decisions that the passive holding of a domain name and failure to commercialize are factors to consider in deciding whether a domain name has been used in bad faith. (See WIPO Decision D2000-0003 Telstra Corporation v. Nuclear Marshmallows for example).

In view of the above and in accordance with the Policy paragraphs 4 (b) (i) and (ii), the Panelist finds that the Respondent registered and used the Domain Names in bad faith.

 

7. Decision

In accordance with the paragraph 4(i) of the Policy and paragraph 15 of the Rules and prior authority, the Panelist has decided that the Domain Names are confusingly similar to the Complainants’ trademarks, that the Respondent has no rights or legitimate interests in respect of the domain names and the Respondent’s domain names have been registered and are being used in bad faith.

 

The Panelist accordingly requires the Respondent to transfer the domain names to the Complainant.

 


 

Thomas H. Webster
Sole Panelist

Dated: December 12, 2001

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-1246.html

 

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