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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Leon Constantin Consulting Inc. and Constantin Associes v. Jean-Louis Vorburger
Case No. D2003-0233
1. The Parties
The Complainants are Leon Constantin Consulting Inc. of New York, New York 10022, United States of America and Constantin Associés of Levallois-Perret, CEDEX-France. The Complainants' representative is Maitre Audrey Yayon-Dauvet, France.
The Respondent is Jean-Louis Vorburger of Pennsylvania, United States of America. The Respondent's representatives are Caro & Associates of, White Plains, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <constantin.com>, is registered with Network Solutions Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2003. On March 25, 2003, the Center transmitted by email to Network Solutions Inc. a request for registrar verification in connection with the domain name and issue. On March 27, 2003, Network Solutions Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for the Policy (the "Rules") and the WIPO Supplemental Rules for the Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on April 2, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2003. The Response was filed with the Center on May 6, 2003.
The Center appointed Mr. Clive Duncan Thorne as the sole panelist in this matter on May 20, 2003. The Panel finds it as properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel notes that on May 19, 2003, the Complainants' Representative filed what it described as "The Response Draft by the Complainant following the Response" and an additional exhibit with the Center. The Panel has looked at this document but is not prepared to admit it for the purpose of its consideration of the parties' submissions. The Panel therefore proceeds on the basis only of the Complaint and Response.
4. Factual Background
The Complainants, which are a US and French entity, belong to the Constantin Group which is apparently one of the world's leading accounting, auditing, management consulting and tax advisory advisors for the largest and most reputed groups, government bodies as well as SME and other professional services and organisations. The Group has been present in France since 1936, and in the USA since 1952. It has two main centres of operation, one based in France and another in New York. Together, the Constantin Group ranks as one of the largest American and French accounting firms.
The Complainants assert that the name "Constantin" is well known to the majority of decision makers in financial centres. The Complainants state that it is a "reference" of reliability, professionalism and respect of ethics. It has acquired a strong image of professionalism and discretion in the audit profession, merger and acquisition audits and in statutory audits. It also ranks among the top operators worldwide and operates in most economic sectors such as aircraft, aerospace, automotive, electronics industries, financial institutions, insurance companies. At annex 7 to the Complaint is a detailed profile of the Complainant Group.
The Complainants have two relevant registered trademarks for the mark "Constantin". A US trademark number 2206371 in class 35 filed on September 13, 1996, registered on December 1, 1998, and a French trademark filed on November 24, 1997, number 97705653 in classes 35 and 42. Copies of the certificates for registration are annexed at annex 9 to the Complaint.
The Complainants also assert that within the United States in the light of their long and extensive use of the name Constantin (since 1973) they have common law rights in the USA. The Complainants also adduce evidence that they own a number of domain names including <groupe-constantin.com>, <groupeconstantin.com>, groupeconstantin.fr", <groupe-constantin.fr>. A website is maintained under the address "www.groupeconstantin.com". Details are set out in annexes 12 and 13.
The Respondent has since 1984, been a partner and equity owner in Constantin Associates, a United States accounting firm which is located in New York City and which is also a member of the Constantin Group. According to the Respondent, the Constantin Group is comprised of several firms which operate under the same trade name but which are independently owned. Thus the Constantin Group is not a legal entity but rather a collective name for all of the firms which use the name Constantin and which are contractually related to one another.
According to the Respondent, the driving force behind the complaint is a Mr. Jean-Francois Serval who is the minority partner of the Complainant Constantin Associes. He is also apparently the majority owner of the Complainant, Leon Constantin Consulting Inc.
It is clear to the panel from the submissions of both parties that in addition to the current Complaint there is a supervening partnership dispute between the parties relating to the rights of the Respondent and the Complainants within the Constantin Group.
The Complainants emphasise in particular a service agreement dated January 1, 1990, between Constantin Associates (represented by the Respondent) and Leon Constantin Consulting Inc. (a copy of which is annexed at annex 15 to the Complaint). The Complainants draw attention particularly to paragraph 4 of the agreement which provides:
" the list of clients and goodwill will belong to LCC, Inc. exclusively (emphasis added)…"
There has also been correspondence between the parties which is annexed to the Complaint and to the Respondent. In particular, the panel takes note of a letter dated March 6, 2003, from the Respondent (annex VI to the Complaint) in which the Respondent in response to a letter from the Complaints' Representatives states:
"I believe that the facts that you indicate are wrong. With full authority and with the knowledge of all parties, I registered the domain name "constantin.com" on February 11 ,1996, well before Constantin Associés and Leon Constantin Consulting Inc. begun (sic) their trademark registration in France and in the United States. In fact, Leon Constantin Consulting, Inc. obtained its registration only on December 1, 1998.
In addition it needs to be noted that Constantin Associates has been using the Constantin name for many years before that, with the full knowledge of all parties."
The Panel also notes that there are currently proceedings in the Supreme Court of the State of New York between Mr. Serval and the First Complainant as Plaintiffs and the Respondent as Defendant. Details of this litigation are set out in annexes 11 and 12 to the Response.
5. Parties' Contentions
The Complainants submit:-
1. That the domain name <constantin.com> is confusingly similar to the trademarks "Constantin" in which the Complainants have rights.
The Complainants rely upon the US and French trademark registrations referred to above and submits that the only distinctive element of the domain name is the word "Constantin" which is strictly identical to the Complainants' trademarks.
2. The Respondent should be considered as having no rights or legitimate interest in respect of the domain name <constantin.com> that is the subject of the Complaint for the following reasons:
(i) the Respondent, while a partnership linked to the Constantin Group, registered the domain name without authorisation;
(ii) the Respondent was aware of the existence of the Complainant's rights in the marks "Constantin";
(iii) the Complainants rely upon the provisions of the service agreement of January 1, 1990, and the terms of paragraph 4 referred to above.
(iv) it asserts that the domain name was purchased on August 7, 2000, and not February 11, 1996, as asserted by the Respondent.
3. The domain should be considered as having been registered and used in bad faith for the following reasons:
(i) that the Respondent is "vicariously" in breach of the amended service agreement of January 1, 1990, as a partner of Constantin Associates;
(ii) the Respondent's behaviour is "obvious bad faith" because:
(a) the Respondent has no prior right and no authorisation given by the Complainants concerning the Constantin trademarks;
(b) the Respondent could not ignore the Complainants' prior rights;
(c) the Respondent's intention to create a likelihood of confusion with the Complainants' trademarks and website;
(d) the Respondent has obviously registered the domain name and maintained an old version of the official website for the purpose of misleading internet users by causing confusion as to its source of content;
(e) the Respondent's bad faith is further evidence led by the response of the letter of March 6, 2003;
(f) the domain name is only a tool in the Respondent's hands used for his own personal but not legitimate interests.
In his Response, the Respondent submits:
1. that it is the Complainants' illegal actions not the Respondent's legitimate use of the domain name which is the cause of confusion in this matter. He asserts that he has a right to the domain name <constantin.com> and that the registration of the domain name was made not only with the Complainant's full knowledge and consent but also in the actual physical presence of the Complainants' President and Director, Mr Serval;
2. the Respondent submits that he registered the domain name and built and maintained the website in order to advertise the Complainants' company, of which Mr Vorburger was himself a majority partner and equity holder.
The Respondent points out:
1. the Respondent has rights and a legitimate interest in respect of the domain name and relies on the fact that the domain name was registered on February 11, 1996, before the first trademark application was made by the Complainants (i.e. the US trademark application on September 10, 1996);
2. the domain name has not been registered and is not being used in bad faith. In summary he relies on the grounds that the Complainants had full knowledge of the registration of the domain name and that his use of the domain name has been to further the activities of Constantin Associates.
3. the Respondent also stresses that the Complainants and the Respondent are not competitors but are members of the same group of companies which has offices both in France and in the United States. The Respondent registered the domain name in order to further the company, not in order to disrupt its business and his carrying on of the maintenance of the website has not in fact disrupted the Complainants' business.
The Respondent requests:
1. that the Complainant be dismissed;
2. that the Panel make a finding of reverse domain name highjacking;
3. that the domain name <groupeconstantin.com> be cancelled; and
4. that the panel make a finding that a complaint was brought in bad faith.
6. Discussion and findings
In order to succeed in its complaint, the Complainant has the burden of proof under paragraph 4(a) of the Policy of showing:-
(a) that the domain name <constantin.com> is confusingly similar to the trademark Constantin in which the Complainants have rights;
(b) the Respondent has no rights or legitimate interests in respect of the domain name <constantin.com> which is the subject of the Complaint;
(c) the domain name is registered and is being used in bad faith by the Respondent.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The Panel finds for the reasons stated in the Complaint that the Complainants have trademark registrations for the mark "Constantin" in France and the United States. The Panel is also prepared to accept that the Complainants have, for the reasons stated in the Complaint, common law trademark rights in the USA.
The Panel does not, however, accept that what appears to be the submission of the Complainants (as is shown by correspondence between the parties) that the Respondent did not register the domain name until August 2000. The Panel accepts the submissions of the Respondent that the domain name in dispute was purchased on February 11, 1996. In reaching this conclusion, the Panel has considered the evidence exhibited at annexes 3, 4 and 5 to the Response and in particular the invoice addressed to Leon Constantin & Co., in respect of registration of the domain name <constantin.com>, dated April 1, 1996, at annex 3. It follows therefore that the domain name pre-dates the filing of the Complainants' registered trademarks relied upon.
In the Panel's view this finding does not mean that the Complainants have failed to prove this element of the policy. The Panel having accepted that the Complainants have common law trademark rights in the United States finds that the disputed domain name, <constantin.com> is identical or confusingly similar to such common law trademark rights.
B. The Respondent has no rights to a legitimate interest in the domain name
Having considered the submissions of both parties, it appears to the Panel apparent that the Respondent is able to adduce evidence which goes someway to establish that he has rights to and legitimate interests in the domain name.
In particular, the Panel has taken into account:-
1. the fact that in February 1996, the Respondent registered the domain name with the full authority and knowledge of all relevant parties;
2. the fact that the domain name is apparently being openly used by Constantin Associates from May 1998, as is demonstrated by the promotional material set out at annex 5 to the Response;
3. the fact that the Respondent has apparently built and maintained the website in order to advertise the Complainants Group. The Respondent asserts, and there is no evidence to the contrary that he has kept the website as up to date as practical at all times and that all staff members of Constantin Associates in New York use the name "@constantin.com" as their business email address.
The Complainants take a different view and rely upon the January 1, 1990, Service Agreement as evidence to the effect that the Respondent is restricted from registering any trademark or domain name, a fact of which he was "perfectly aware". Moreover, the Complainants assert that the Respondent's statement is false and that the Respondent has not made use or demonstrable preparations to use the domain name in connection with the bona fide offerings of goods or services.
The Panel is not in a position to test the truth or falsity of the relative submissions of the parties. The Panel is conscious of the fact that at the heart of the complaint is a commercial dispute between the parties which in part, at least, may have to be resolved by the litigation in the New York courts referred to above. The Panel has sympathy with the comments of the Respondent to the effect that the WIPO administrative procedure is intended primarily to deal with disputes involving cyber-squatting and that this is not a cyber-squatting case but rather a business dispute between partners. Therefore the case does not properly belong in this forum.
The Panel adopts the remarks cited in Thread.com LLC -v- Jeffrey S Poploff , WIPO Case No. D2000-1470 and which is set out at annex 16 to the Response:- "to attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is at its core misguided if not a misuse of the Policy".
In summary, with regard to this element the Panel finds that the Complainants have not satisfied the Panel that the Respondent does not have any rights or legitimate interest in respect of the domain name in dispute.
C. The Domain Name Should be Considered as having been Registered and Used in Bad Faith
Having found for the Respondent in respect of rights and legitimate interests in
the domain name it is not necessary for the panel to consider this element.
7. Reverse Domain Name Hijacking
The Respondent invites the Panel to make a finding of reverse domain name hijacking. The Panel has considered this issue. It considers that the rights of the parties are bound up in a complicated commercial partnership dispute which may be the subject of determination by a court in the future. In these circumstances, the Panel does not consider that it is in a position to make a finding of reverse domain name hijacking.
8. The Domain Name <groupeconstantin.com>
The Respondent requests that under Rule 15(e) the Panel makes an order that the domain name <groupeconstantin.com> be cancelled. No evidence has been specifically addressed to this issue by the Respondent and an application to cancel this domain name has not been properly brought through the Administrative Procedure under the Policy. The Panel is therefore not prepared to deal with this request by the Respondent.
For all the foregoing reasons and in accordance with paragraph 4(i) of the Policy and 15 of the Rules the Complaint is denied.
Clive Duncan Thorne
Dated: June 2, 2003