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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Naf Naf Company v. Naf Naf USA Company and Darsateks
Case No. D2002-0627
1. The Parties
The Complainant is Naf Naf Company, with registered office at Boulevard Foch, Epinay sur Seine, France, represented by Cabinet Lhermet La Bigne & Remy, with offices located at rue Saint Honoré, Paris, France.
The Respondent is, according to the registration made at Network Solutions, Naf Naf USA, with offices located at Merkez Mah Dik Sok, Kagithane, Istanbul, Turkey. The Respondent’s Administrative Contact is Kuzu Nesim of Darsa Dis Ticaret, with offices at Merkez Mah Dik Sok, Kagithane, Istanbul, Turkey. Additionally, Complainant adds "Darsateks" as a Respondent to the dispute. According to Complainant’s investigations, a copy of which is laid down in Annex 2 to the Complaint, Darsateks operates under the name Darsateks Tekstil Ürünleri Sanayi ve Ticarat A.S., and has its registered office at Merkez Mahallesi, Kemerburgaz Caddesi, Dik Sokak, Kagithane, Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name is <nafnaf.com>.
The Registrar of the disputed domain name is Network Solutions, Inc., with registered office at 505 Hunter Park Drive, Herndon, VA 20170-5142, United States of America, is the Registrar.
3. Procedural History
The procedural stages of the administrative proceedings are the following:
a. The Complainant initiated the proceedings by filing a Complaint, sent by mail on July 5, 2002, and in electronic format on July 18, 2002. This Complaint was filed against Naf Naf USA and Darsateks (Darsateks Tekstil Ürünleri Sanayi ve Ticarat A.S.) (hereinafter: "the Respondent"). The Acknowledgement of Receipt by the WIPO Arbitration and Mediation Center (the "Center") was sent on July 8, 2002.
b. On July 8, 2002, the Center addressed a Request for Registrar Verification to Network Solutions, in order to confirm, amongst others, that the specified domain name is registered with this Registrar and that the Respondent is the current registrant of the domain name.
c. On July 11, 2002, Network Solutions, Inc., confirmed that the domain name had been registered through its services, and that the Respondent is the current registrant of the disputed domain name. According to Network Solutions, Inc, the Respondent has submitted to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name in its Registration Agreement.
d. On July 12, 2002, the Center sent a Notification of Deficiency to the Complainant, copied to the Respondent and Stock Industrial Property Services AS. In the Notification, the Center requested the Complainant to file the Complaint in electronic form. On July 15, 2002, Stock Industrial Property Services AS informed the Center that the domain name dispute regarding <nafnaf.com> might concern one of its clients, and asked to be kept copied on communications relating to this case.
e. On July 19, 2002, the Center drafted a Formal Requirements Compliance Checklist, confirming that the Complaint met the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules").
f. On July 19, 2002, the Notification of Complaint and Commencement of Administrative Proceeding was addressed to the Respondent by the Center.
g. On August 12, 2002, the Center transmitted notification to Respondent of its default in responding to the Complaint addressed on July 19, 2002.
h. On August 20, 2002, the Panel transmitted the Statement of Acceptance and Declaration of Impartiality and Independence to the Center by fax.
i. On August 20, 2002, the notification of Appointment of Administrative Panel was sent to both Complainant and Respondent. The Center notified the Panel that, absent exceptional circumstances, the date scheduled for the Panel to render a decision to the Center, is September 3, 2002.
j. The proceedings have been conducted in English.
4. Factual Background
The Complainant submitted unofficial copies of Complainant’s trademark portfolio, a.o. including registrations of the trademark "NAF NAF" (Annex 5). The aforementioned trademarks are registered for different classes of goods and services in a variety of countries, such as South Africa, France, Germany, the Benelux, etc. For example, the trademark "NAF NAF" was registered on March 19, 1999, in France (Annex 5).
Complainant states that these trademarks are valid. The validity of Complainant’s trademark registration for "NAF NAF" has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of valid trademark registrations for "NAF NAF".
Furthermore, Complainant argues that the name "NAF NAF" has been used by Complainant as a trade name and mark for thirty years, and is a well-known and famous trade mark.
The disputed domain name was registered on February 11, 1998. According to the Registrar, Respondent Naf Naf USA is the registered owner of the disputed domain name. The Administrative Contact is, according to Network Solutions’ WHOIS database, Kuzu Nesim. According to the information laid down in Annex 2 to the Complaint, the aforementioned Administrative Contact also owns 5% of Darsateks’ shares, the second Respondent designated by Complainant.
Complainant entered into a commercial relationship with Respondent’s Administrative Contact in the course of 1995. More specifically, Complainant executed a Memorandum of Understanding (hereinafter "MOU") with Respondent’s US subsidiary on October 16, 1995, a copy of which was submitted to the Panel (Annex 6). According to the MOU, the Respondent’s US subsidiary has the intention to open two NAF NAF boutiques in California, USA, and Complainant intended to grant Respondent’s US subsidiary rights to, amongst others, Complainant’s trade mark "NAF NAF", prior to the execution of a definitive agreement.
Articles 3 and 9 of the MOU are of importance in this case, and read as follows:
"3. Use of Trademark. NAF NAF would grant to Darsatex a non-exclusive right and license during the Term (as defined below) to use the NAF NAF trademark on the Products (and only on the Products) for sale in California (and only in California). Darsatex would agree to strictly comply with NAF NAF’s "cahier des normes" and other obligations (to be set forth in the Definitive Agreement) in respect of the NAF NAF trademark (including without limitation in respect of signs on the Boutique, packaging, etc.)"
9. Term. The term (the "Term") of the Definitive Agreement would be one year. It could be renewed for one or more additional year terms upon agreement of the parties."
Complainant has thus never granted Respondent’s US subsidiary, nor Respondent, the right to register the domain name. According to Complainant, the commercial relationship between Complainant and Respondent’s US subsidiary terminated on March 24, 2000. This has never been contested by Respondent, and the Panel thus accepts as an undisputed fact that the right to register the domain name, was never granted to Respondent.
After having discovered that "NAF NAF" was registered as a domain name in the ".com" and ".net" gTLDs, Complainant claims to have opposed such registration. Despite the fact that Complainant never submitted any proof of such opposition to the Panel, proof of Respondent’s reply to Complainant’s opposition was submitted to the Panel (Annex 8). In this reply, Respondent stated, amongst others, the following:
"As for conclusion:
- For the transfer of nafnaf.com domain I am only asking for my cost of $100,000."
The Registrar confirmed, in its e-mail of July 11, 2002, that the Uniform Domain Name Dispute Resolution Policy ("the Policy") approved by ICANN on October 24, 1999, applies to the disputed domain name. This Policy requires that domain name registrants submit to a mandatory administrative proceeding through an approved dispute resolution service provider, such as the Center. Respondent has not contested that it has properly submitted to the Administrative Panel.
5. Parties’ Contentions
Complainant’s representative states that Complainant is a world famous clothing manufacturer. Complainant states it is the holder of the famous trade mark "NAF NAF" registered in many countries for different classes of goods and services. More specifically, Complainant states it holds trade mark rights, amongst others, to:
- "NAF NAF", a French nominative trademark n° 95575761 of June 6, 1995, for class 25 of the 1957 Nice Agreement (Annex 5);
- "NAF NAF", a nominative trademark registered in the United States on October 21, 1997, under n° 039793 for class 25-products (Annex 5).
The Complainant further states that the disputed domain name, registered by Respondent, is confusingly similar to Complainant’s trade mark.
Complainant also states that it entered into a commercial relationship with Respondent’s US subsidiary, Darsatex Clothing. Complainant argues that, despite this commercial relationship, Respondent has no legitimate interest in the disputed domain name, because:
- Respondent was not entitled to register the domain name in its name;
- Respondent was informed by Complainant that it should cease its use of the domain name;
- The commercial relationship between Complainant and Respondent was terminated in March 24, 2000; Complainant referred to Chantelle v Marvin Anhalt, WIPO Case No. D2001-1181, in which the Panel decided that a distributor, who no longer had a commercial relationship with a supplier, no longer had any legitimate interest in registering the domain name then in dispute.
Complainant supports the view that, by registering the disputed domain name, such registration was performed in bad faith. More specifically, the Complainant argues that this bad faith behavior can be deduced from the fact that Respondent was ready to transfer the domain name for the sum of $100,000 (Annex 8).
Complainant requests that the domain name <nafnaf.com> be transferred to Complainant.
The Respondent only replied in an undated letter to Complainant’s contentions, by stating, a.o., the following:
" … About the domain:
- I have informed you several times about nafnaf.com domain and I insisted that it would have been a good investment. You did not want to be involved in the internet business by then. I went ahead and invested in nafnaf.com spending over $100,000.
- Most important of all is that my purchasing nafnaf.com domain kept other parties from purchasing the domain. If nafnaf.com belonged to a third party they would have asked for $500,000 to $1,000,000 for the transfer.
As for conclusion:
- For the transfer of nafnaf.com domain I am only asking for my cost of $100,000.
- In order to continue my business in USA, I am asking for a new license name under Naf Naf Knits of Naf Naf USA. …"
6. Discussion and Findings
Paragraph 4(a) of the Policy distinguishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief.
These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
It is essential that the dispute resolution proceedings respect due process requirements. That means that Respondent must have received adequate notice of proceedings initiated against it, and a reasonable opportunity to respond. In the present case, the Panel considers that the Center took all the necessary steps to notify the Respondent of the filing of the Complaint and initiation of these proceedings.
The Respondent has defaulted in providing a response to the allegations of Complainant, and that allows the Panel to draw some conclusions on the basis of Complainant’s undisputed allegations.
(i) The Complainant is the owner of the trademark "NAF NAF", which follows from the exhibits submitted to the Panel as Annex 5 to the Complaint. Further, the Panel is of the opinion that this trade mark is a famous trade mark.
The domain name registered by Respondent is identical to Complainant’s registered trademark, with the exception of the added generic top-level domain name ".com".
Complainant therefore met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to the trade marks owned by Complainant.
(ii) There is no evidence on the record that indicates that Respondent has any rights or legitimate interests in the disputed domain name. Indeed the Respondent registered the domain name whereas he only would have been entitled to use the trade mark of Respondent "on the Products (and only on the Products) for sale in California (and only in California)." (Annex 6)
Furthermore, Respondent is not commonly known as an individual, business or organization by the domain name.
The Respondent has not engaged in any action that shows it has a legitimate interest and the MOU was never confirmed by any agreement that the Panel is aware of.
In light of the aforementioned, the Panel decides that the Respondent has no rights or legitimate interests in the disputed domain name.
(iii) Considering the third element, the registration and use in bad faith, the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (paragraph 4(b)). For example, the use of a domain name for the purpose of selling, renting, or otherwise transferring the domain registration to the Complainant who is the owner of a trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name, is considered use in bad faith.
In response to Complainant’s opposition to cease the use of its registered trade mark "NAF NAF", Respondent states "For the transfer of nafnaf.com domain I am only asking for my cost of $100,000.". The Panel assesses that Respondent did not document its out-of-pocket costs that it would have paid for the registration of the disputed domain name, which is identical to Complainant’s registered trade mark. The Panel further is of the opinion that $100,000 greatly exceeds such out-of-pocket costs.
Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith.
The Complainant has thus established the three elements necessary to conclude that Respondent has engaged in abusive domain name registration.
Based on its findings that the Respondent has engaged in an abusive registration of the domain name <nafnaf.com> within the meaning of Paragraph 4(a) of the Policy, the Panel directs the Registar to transfer the domain name.
Dated: September 3, 2002