Sociйtй pour l’Oeuvre et la Mйmoire d’Antoine de Saint Exupйry – Succession Saint Exupйry – D’Agay v. Perlegos Properties
Case No. D2005-1085
1. The Parties
Complainant is Sociйtй pour l’Oeuvre et la Mйmoire d’Antoine de Saint Exupйry - Succession Saint Exupйry - D’Agay, St-Raphaлl, France, represented by Grьnig & Binimelis Asociados, Spain.
Respondent is Perlegos Properties, Santa Clara, United States of America.
2. The Domain Name and Registrar
The disputed domain name <thelittleprince.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2005. On October 14, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On October 17, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as 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 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 October 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 9, 2005.
The Center appointed Torsten Bettinger as the sole panelist in this matter on November 24, 2005. 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.
The Panel executed a Procedural Order on December 16, 2005, requesting that the Complainant submits the Respondent’s response to the Complainant’s cease and desist letter of October 10, 2001, as well as the agreement between Complainant and Respondent mentioned on page 10 of the Complaint.
Complainant replied to the Procedural Order on December 20, 2005.
4. Factual Background
Complainant is the “Sociйtй civile pour l’œuvre et la mйmoire D’Antoine de Saint Exupery-Succession Saint Exupery-D’Agay”, which purports to represent Antoine de Saint Exupйry, the famous French author and pilot. Complainant is authorized by the successors of Saint Exupery to be the sole owner and the manager of the intellectual property rights in Saint Exupery’s work, as well as intellectual property rights related to the writer’s work and his name.
Antoine de Saint Exupйry is the author of the novel “Le Petit Prince” (English: “The Little Prince”) which has been published in 1943 and has become most famous novel worldwide.
Complainant is the owner of the French registered trademark “Le Petit Prince”, a European Community Trademark “Le Petit Prince” and various international and national trademarks “Le Petit Prince” in the United States and other countries.
Respondent registered the domain name <thelittleprince.com>, but is not using it.
In 2001 the Complainant sent a letter to the Respondent
requesting the transfer of the domain name. The Respondent did not reply to
the Complainant’s request.
5. Parties’ Contentions
Complainant submits that (1) the domain name <thelittleprince.com> is identical to the Complainant’s mark in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.
In reference to the element in paragraph 4(a)(i) of the Policy Complainant asserts that the domain name <thelittleprince.com> is confusingly similar to the Complainant’s mark as “The Little Prince” is a literal translation of the mark “Le Petit Prince”.
In reference to the element in paragraph 4(a)(ii) of the Policy, Complainant argues that the Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized by the Complainant to use the Complainant’s marks or to use the English title of Antoine de Saint Exupйry’s famous novel which is still protected by copyright law.
In reference to the element in paragraph 4(a)(iii) of the Policy, Complainant asserts that the title “The Little Prince” has been widely used throughout the world and is particularly well-known in the United States. Complainant therefore contends that Respondent was aware of or had constructive notice of the Respondent’s rights in the famous title “The Little Prince” at the time it registered the domain name.
Complainant concedes that Respondent has not used the domain name for an active website and argues that passive holding of a domain name equates with active use of a domain name.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
A. Identical or Confusingly Similar
The test of confusing similarity under the Policy
is confined to a comparison of the disputed domain name and the trademark alone,
independent of the products for which the domain name is used or other marketing
and use factors, such as the Sleekcraft factors – AMF Inc. v. Sleekcraft
Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark
infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan
Macesic, WIPO Case No. D2000-1698
, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty,
Ltd., WIPO Case No. 2001-0110, Dixons
Group Plc v. Mr. Abu Abdullaah, WIPO Case
No. D2001-0843, AT&T Corp. v. Amjad Kausar, WIPO
Case No. D2003-0327, BWT Brands, Inc. and British Am. Tobacco (Brands),
Inc. v. Van R.. Whting, WIPO Case No. D2001-1480;
Britannia Building Society v. Britannia Fraud Prevention, WIPO
Case No. D2001-0505).
The disputed domain names do not incorporate Complainant’s mark “Le Petit Prince” but the English translation of Complainant’s trademark “The Little Prince”. The Panel thus finds that there is no phonetic similarity between the disputed domain name and Complainant’s trademark.
However a semantic similarity between a trademark and a domain name can also
exist if the trademark and the domain name contain word elements of different
languages if a considerable part of the public understands the meaning of the
translation. See e.g. Compagnie Generale Des Etablissements Michelin - Michelin
& Cie. v. Graeme Foster, WIPO Case
No. D2004-0279. The Panel observes that Complainant’s registered trademark
is identical with the English translation of Complainant’s trademark and
title “Le Petit Prince” and that the English title “The Little
Prince” of Saint Exupйry’s novel is well known in the English speaking
The Panel thus finds that the disputed domain name is confusingly similar to the trademark in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and Respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the Respondent may lack a legitimate interest in the domain name.
Complainant showed that the Respondent has neither a license nor any other permission to use the trademark or the title of Saint Exupйry’s novel “Le Petit Prince” which is still under copyright protection. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name <thelittleprince.com>.
Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Before notice to the Respondent of the dispute, there is no evidence of its use, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Further, nothing in the record suggests that Respondent is making a legitimate non commercial use of the domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
The fact that the Respondent has chosen not to submit a response is particularly relevant to the issue of whether the Respondent has registered and is using the domain name in bad faith. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules. This Administrative Panel finds no exceptional circumstances for Respondent’s failure to submit a response. The Panel draws from this failure the following two inferences:
(i) Respondent does not deny the facts which the Complainant asserts, and
(ii) Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts.
Nevertheless, the Panel still has the responsibility
of determining which of the Complainant’s assertions are established as
facts, and whether the conclusions asserted by the Complainant can be drawn
from the established facts (see, Inter-IKEA Systems B.V. v. Hoon Huh,
WIPO Case No. D2000-0438).
Under paragraph 4(b) of the Policy, Complainant may demonstrate that the domain name was registered and is being used in bad faith by showing any of the following circumstances, in particular but without limitation:
(i) circumstances indicating that the Respondent has registered or acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the Complainant who is the owner
of the trademark or service mark or to a competitor of that Complainant, for
valuable consideration in excess of its out-of-pocket costs directly related
to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner
of the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that it has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The Panel notes that Complainant has provided little
direct evidence to satisfy any of the above four criteria, nor has it presented
evidence that the domain name at issue is used by the Respondent as required
by paragraph 4(a)(iii) of the Policy. However, in a number of cases, and in certain
circumstances, mere passive holding has been held to constitute use of the domain
name in bad faith, (see Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003; Jupiters
Limited v. Aaron Hall, WIPO Case No. D2000-0574).
The Panel has considered whether, in the circumstances of this particular case, the passive holding of the domain name by the Respondent would amount to the Respondent acting in bad faith. The Panel concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) Complainant’s trademark is identical to the English translation of Saint Exupйry’s famous novel “Le Petit Prince” which is widely known in the English speaking world. It therefore appears that the Respondent has registered and used the domain name <thelittleprince.com> in order to create an association with the mark or title as a means of attracting users to his future website;
(ii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name. Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate and constitute an infringement of Complainant’s rights. In light of these particular circumstances, the Panel concludes that Respondent’s registration and passive holding of the domain name, in this particular case, satisfies the requirements of paragraph 4(a)(iii) of the domain name being registered and used in bad faith by the Respondent.
The Panel therefore concludes that also the requirement
of paragraph 4(a)(iii) of the Policy has been met.
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, <thelittleprince.com>, be transferred to the Complainant.
Dated: January 2, 2006