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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Magneti Marelli Motopropulsion France S.A.S. v. Mopex S.A.
Case No. D2003-0187
1. The Parties
The Complainant is Magneti Marelli Motopropulsion France S.A.S., Nanterre, France, represented by Guylene Kiesel Le Cosquer, Cabinet Plasseraud, in Paris, France.
The Respondent is Mopex S.A., Saint-Quentin, France, represented by Stephen H. Sturgeon, in Rockville, USA.
2. The Domain Name and Registrar
The disputed domain name <velosolex.com> is registered with Network Solutions Inc.
3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") was submitted to the WIPO Arbitration and Mediation Center ("the Center") on March 6, 2003.
On March 7, 2003, the acknowledgement of receipt of the Complaint was sent.
On March 7 and 12, 2003, the Center made an initial request for Registrant verification.
On March 11, 2003, the Center sent a notification for Complaint deficiency. The Complaint was amended the same day.
On March 12, 2003, the Notification of the Complaint took place and the administrative proceeding began.
On April 15, 2003, a Response was received from the Respondent and the acknowledgement of receipt of Response was sent.
On April 28, 2003, the notification of an appointment of the sole Panelist to both parties took place. The administrative Panel, consisting of a single member, Mrs. Isabelle Leroux was appointed. Mrs. Leroux has filed a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel understands that the requisite fees have been paid.
No interim orders have been made by the Panel.
As the language of the domain name registration agreement is the English language and as the Complainant has filed its complaint in English, the proceeding will be conducted in English, pursuant to paragraph 11(a) of the Rules.
The decision is issued within the time limit fixed by May 12, 2003.
4. Factual Background
The Complainant is Magneti Marelli France S.A.S., a French corporation.
The company Solex, which changed its name on 1994 to Magneti Marelli France was founded in the beginning of the twentieth century as a manufacturer of bicycles, mopeds, accessories and spare parts. On May 31, 2001, Magneti Marelli France partially brought its assets (including the trademarks SOLEX and VELOSOLEX) from Magneti Marelli Motopropulsion France S.A.S.
The name and mark Solex is famous internationally and the Complainant’s bicycles and mopeds are sold in many countries under the famous Solex brand. It represents the iconic French economical bicycle. Several million bicycles and mopeds have been sold throughout the world and more specifically in Europe.
Complainant owns trademark and service mark registrations for the marks Solex and Velosolex in numerous countries in several classes and in particular in classes 4, 7, 9, 11, 12 and 25. In the documents submitted by the Complainant, there are recurring references to vehicles, means of transport by land, air or water, and engines.
These registrations include national registrations, for example France where Complainant and Respondent are located, and international registrations, the earliest dated 1910.
On September 22, 1997, Magneti Marelli France granted a non-exclusive trademark license to the company JIANGXI HONGDU MOPED CO LTD, represented by Mr. Dominique Chaumont, who is also the Chairman of the Board of Directors of the company MOPEX S.A., the Respondent, as stated in the certificate of registration of the latter that is provided by the Complainant. This license agreement was signed for duration of three years and since September 22, 2000, has no longer been applicable.
On April 25, 2001, seven months after the ending of the above-mentioned license agreement, the Respondent registered the domain name <velosolex.com>.
5. Parties’ Contentions
Complainant contends that:
The domain name <velosolex.com> is identical and is confusingly similar to the Complainant’s Solex and Velosolex trademarks.
The addition of the word "velo", which means "bicycle" in the French language, as a prefix to the Complainant’s marks "Solex", makes the disputed domain name confusingly similar to the Complainant’s marks.
The Respondent is not commonly known by or acquired any trademark or service marks in the <velosolex.com> domain name. Furthermore, its right to use and to exploit the Complainant’s trademarks, granted within the above-mentioned license agreement ceased in September 22, 2000.
In this particular context, the Respondent had perfect knowledge of Complainant’s famous Solex and Velosolex marks when registering the domain name <velosolex.com> seven months after the ending of this license agreement.
The Respondent had no authorization from the Complainant to register the domain name <velosolex.com>.
The Respondent has not used the <velosolex.com> domain name in connection with a bona fide offering of goods and services. As indicated in the website "velosolex.com", the name of the Respondent’s competing mopeds is "Black’n Roll", which also corresponds to a trademark hold by the Respondent.
The registration of the domain name was made on April 25, 2001, and as of the filing date of the Complaint, a website specialized in mopeds is accessible by using the domain name <velosolex.com>.
The Respondent is not making a legitimate non-commercial or fair use of the <velosolex.com> domain name without intent for commercial gain to misleadingly divert consumers or to tarnishing the trademark at issue.
The Respondent’s offer for Complainant to purchase the domain name clearly shows that the Registrant has registered and is using the <velosolex.com> domain name for commercial gain.
There is no evidence that shows that the Respondent has taken any positive action in relation to the <velosolex.com> domain name, other than exploiting it with bad faith, to benefit of the notoriety of the Complainant in order to market its own products, called "Black’n Roll", without any link with the Complainant’s trademarks.
The Respondent replied to the Complainant’s contentions on April 14, 2003.
It considers that Complainant has not proven that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It refers to the issue of the Complainant’s trademark with respect to the words velosolex and solex, which are currently in litigation. Accordingly, such issues are in the nature of complex trademark disputes, which are not properly the types of issues determined by this expedited UDRP proceeding.
It also denies the fact that Complainant has proven that Respondent did not have a legitimate interest in the domain name <velosolex.com>.
For many years (since April 25, 2001, which is the date of the domain name registration), Respondent has demonstrably used the domain name for the marketing of its products. It has not only prepared to utilize the domain name, but has also engaged in considerable active use of the domain name in connection with its bona fide business activities.
Finally, the Respondent considers that Complainant has failed to prove that Respondent had bad faith both at the time of registration and in the current use of the domain name concerned.
6. Discussion and Findings
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 in accordance with the Policy, these Rules and any rules and principles of law that it seems applicable".
Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:
(i) that the domain names registered by the Respondent are identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and,
(ii) that the Respondent has no rights or no legitimate interests in respect of the domain names; and,
(iii) that the domain names have been registered and used in bad faith.
A. Identical or Confusingly Similar
The Complainant’s trademarks Solex and Velosolex are well-known throughout the world. The Complainant is currently the owner of various trademarks, including nominative trademarks, available in France and in other various countries (in Europe, Africa, America, Asia) such as the United States of America. In this country, for instance, a word mark "Solex", filed in 1911 and registered under the number 85655, was assigned to the Complainant in 2002.
The disputed domain name <velosolex.com> is made up of the Complainant’s trademarks.
The addition of the prefix "velo", which means "bicycle" in French and is descriptive for certain products as indicated in trademark filings, to the mark "Solex", does not affect the attractive and distinctive power of the word Solex and its individuality.
The name "velosolex" is consequently confusingly similar to the registered trademarks Solex.
B. Rights or Legitimate Interests
The Registrant of the domain name at issue has not alleged any facts or elements to justify prior rights or legitimate interests in the said domain name.
The Complainant does not appear to have licensed after the ending of the license agreement signed on September 22, 1997, (ceased in September 2000) with the company JIANGXI HONGDU MOPED CO LTD or otherwise authorized the Respondent to use its trademarks or to apply any domain name incorporating the trademarks. The only company, which is currently licensee of the Complainant, is the company IMPEX HUNGARIA S.A.R.L.: an exclusive license was granted for five years on January 1, 2001, for cycles and mopeds for the whole world.
The Respondent only uses the domain name in connection with the promotion of its own product, a moped called "Black’n Roll", which makes no reference to the name "velosolex", except in its domain name.
In its Response, the Respondent has failed to demonstrate that it has rights or legitimate interest in the domain name.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy to register a domain name consisting of the well-known trademarks of a third party.
C. Registered and Used in Bad Faith
The Policy (paragraph 4(b)), indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith.
The bad faith of the Respondent is established by the following elements:
- The Complainant’s trademarks are well known and the Respondent was aware of Complainant’s rights to these well-known trademarks at the time of registering the domain name <velosolex.com>. Previous Panels have held that the awareness of a Complainant’s mark at the time of registration of a disputed domain name that is confusingly similar to that mark is evidence of bad faith (see The Channel Tunnel Group Ltd v. Powell, WIPO Case No. D2000-0038, and Sony Kabushifi Kaisha also trading as Sony Corporation v. Sin, Eonmok WIPO Case No. D2000-1007).
- The Respondent refers to a "complex trademark dispute in court proceedings" but it produces no document relating to such proceedings. Thus, no element proves that the trademark issues in this case are particularly "complex" (as mentioned by the Respondent) and not of a nature that can be "adjudicated in an expedited UDRP proceeding".
- The Respondent has used the domain name concerned in order to attract for financial gain Internet users by creating a likelihood of confusion with the Complainant’s trademarks. The disputed domain name links to a website that appears to be created for the sole purpose of promoting a moped sold by the Respondent under its own trademark "Black’n Roll", manufactured and marketed by the Respondent with various mentions such as "She has come back to France. After many remarkable trips around the world, the most popular moped ever made in the world is finally being made in France, again". So, the domain name is used by the Respondent to direct traffic to its site for commercial gain.
This website also refers to the moped "S3800", the "good old S3800 is still the same, only better", whereas the iconic model of the Complainant is also called "3800", corresponding to a black bicycle. The domain name is <velosolex.com>, but otherwise the home page and other pages are dedicated to displaying advertisements to moped sold by the Respondent under its own mark. Clearly, the disputed domain name is being used intentionally to attract users to these other sites, and thus is evidence of bad faith. (see Big Dog Holdings, Inc. v. Frank Day, NAF Case No. FA0093554).
- Such bad faith is further exacerbated in this case because Respondent uses the disputed domain name to promote the same kind of products (mopeds), but under other trademarks, than those offered by the Complainant.
Thus, the Panel concludes that the domain name was registered and is being used in bad faith.
For the above reasons, the Panel decides as follows:
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <velosolex.com> be transferred to the Complainant.
Date: May 12, 2003