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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autovallere Spa v. Fadi Francis, SIAG Travel
Case No. D2003-0325
1. The Parties
The Complainant is Autovallere Spa, of Turin, Italy, represented by Buzzi, Notaro & Antonielli d'Oulx of Italy.
The Respondent is Fadi Francis, Siag Travel of Cairo, Egypt.
2. The Domain Names and Registrar
The disputed domain names <rallyedespharaons.com> and <rallyedespharaons.net> are registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 25, 2003. On April 28, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On April 29, 2003, Go Daddy Software transmitted by email to the Center its verification response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution 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 May 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2003.
The Center appointed Peter G. Nitter as the sole panelist in this matter on June 13, 2003. The Panel finds that it was 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.
4. Factual Background
The trade mark Rallye des Pharaons and Device is protected under French registration No. 1 418 864 of February 2, 1987 (renewed on January 24, 1997), and International registration No. 538165 of April 27, 1989. These registrations cover goods and services included in classes 03, 04, 09, 12, 14, 16, 18, 25, 28, 35, 41 and 42.
The Complainant acquired the ownership of the above trade mark Rallye des Pharaons and Device by means of a regular assignment from the original proprietor, Mr. Jean-Claude Morellet Fenouil. This assignment was recorded both against the French registration No. 1 418 864 (recordal of August 20, 2002, published on national BOPI No. 2002-38) and the International registration No 538165 (recordal of September 6, 2002, published on WIPO’s Gazette No. 18/2002).
In summons filed on November 8, 2002, a company named SAE SIAG Touristic Investments Hotels Management, challenged the validity of both the French and International registration of the trade mark RALLYE DES PHARAONS on account of non use before the Court of Paris, France (Tribunal de Grande Instance). In the summons, the plaintiff – SAE SIAG Touristic Investments Hotels Management, which may be related to the Respondent Fadi Francis, Siag Travel – admits 1) to have taken part in the organization and running of RALLYE DES PHARAONS races in the past; 2) to have filed the trade marks PHAROS RALLY and RALLY DES PHARAONS in Egypt and demands the forfeiture of both French and International registration for trade and service mark RALLYE DES PHARAONS acquired by the Complainant. The Panel has not been presented any details of such challenge to the Complainant’s trade mark, and it sees no reason to suspend or terminate this proceeding in accordance to Rules, paragraph 18(a).
The mark Rallye des Pharaons rose to fame among rallies’ organizers, racers, amateurs and enthusiasts in the eighties and nineties when a series of editions of a race competition Rallye des Pharaons in the Egyptian deserts took place. In 1991, the race competition RALLYE DES PHARAONS had become so well known and acquired such a reputation as to have more participants than the famous race Paris-Dakkar.
The Respondent co-operated as a local correspondent of Mr. Morellet, the previous owner of the trade mark, to the running of at least two editions of the RALLYE DES PHARAONS race.
5. Parties’ Contentions
The disputed domain names correspond and therefore are confusingly similar to Complainant’s trade and service mark and are being purposely used by the Respondent within the same scope as that protected under the above cited registrations, i.e., among others, the organization and running of motor races and rallies.
The Respondent has no rights or legitimate interest in the mark RALLYE DES PHARAONS and, consequently, no apparent reason and good faith in registering and handling the corresponding domain names <rallyedespharaons.com> and <rallydespharaons.net>.
Evidence of bad faith registration and use of the above domain names by the Respondent is established by the following facts; first, the mark RALLYE DES PHARAONS is no doubt well known in the relevant circles, and it is inconceivable that Respondent or any person behind it was not aware of this fact, above all as it had been part in the organization and the running of at least two editions of the related motor event by co-operating with the mark’s former proprietor. Second, by virtue of the reputation acquired by the mark RALLYE DES PHARAONS, the public of the relevant circles – who would be willing to take part to the motor race, of which a new edition is being organized since late 2001, to take place this year – would associate the entity owning the domain names with the owner of the trade mark. Third, use and registration of the above domain names by unauthorized third parties – such as the Respondent – result in a misrepresentation and a false and illegal association with the Complainant and the rights, interests and goodwill that the Complainant acquired with the mark RALLYE DES PHARAONS, as well as in passing off, trade mark infringement and fraud.
The Respondent did not reply to the Complainant’s contentions.
6.Discussion and Findings
Paragraph 4(a) of the Policy lists three tests, which a complainant must satisfy in order to succeed. The complainant must satisfy that:
(i)The 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 such domain name; and
(iii)The domain name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has trade mark rights in the trade mark RALLYE DES PHARAONS and Device according to French Registration No. 1418864 and International Registration No. 538165.
The relevant part of the disputed domain names is rallyedespharaons. The Panel finds that this part of the domain name is confusingly similar to the Complainants trade mark according to the above trade marks since RALLY DES PHARAONS is the dominating element in those marks.
B. Rights or Legitimate Interests
The Respondent has not replied.
The Complainant has not licensed or otherwise permitted the Respondent to use its trade mark or to apply for, or use, any domain name incorporating this trademark. Although the elements of the trade mark are descriptive, the composition must be considered to be an invented term, and as such is not one which a trader would legitimately choose unless seeking to create an impression of an association with the owner of the trade mark.
The lack of legitimate interest is also supported by the previous relationship, which has existed between the Respondent and the previous owner of the trade mark.
Therefore, the Panel finds that the Respondent has no rights or legitimate interest in the domain names.
C. Registered and Used in Bad Faith
The Panel has considered Complainants assertions and evidence with regard to the Respondent’s registration and use of the domain names in bad faith. By not submitting a response, the Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain names at issue in bad faith.
The Respondent has registered domain names that are identical to the trade mark of Complainant, which is of a distinctive and complex character. The Respondent also had a business relationship with the previous owner of the trade mark prior to its registration of the contested domain names. The Panel thus finds that the trade mark was known to the Respondent when registering the domain names at issue.
As the Panel has concluded under Paragraph B above, the Respondent does not have any legitimate rights or interests in using the domain names at issue.
Given the nature of the domain names, the absence of any bona fide use of them since their registration, and the previous business relationship between the parties, the Panel concludes that the domain names were registered in bad faith to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name or otherwise disrupt the business of a competitor.
These are circumstances, which constitutes evidence of registration and use of a domain name in bad faith pursuant to Paragraph 4(b) of the Policy.
The Panel therefore finds that the Respondent has registered and used the domain names at issue in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the domain names, <rallyedesharaons.com> and <rallyedespharaons.net> be transferred to the Complainant.
Peter G. Nitter
Dated: June 26, 2003