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and Mediation Center
ADMINISTRATIVE PANEL DECISION
MEDIATIS S.A. v. Packalo S.A.RL. Cyberger and Stan Virgiliu
Case No. D2007-0312
1. The Parties
The Complainant is MEDIATIS S.A., Paris, France, represented by Cabinet Schmit-Chrйtien-Schihin SNC, France.
The Respondents are Packalo S.A.RL. Cyberger, Paris, France; and Stan Virgiliu, Bucharest, Romania.
2. The Domain Name and Registrar
The disputed domain name <mediatis.mobi> is registered with EuroDNS S.A..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2007. The Complaint mentioned the company Packalo S.A.R.L. as Respondent. On March 5, 2007, the Center transmitted by email to EuroDNS S.A. a request for registrar verification in connection with the domain name at issue. On the same day, EuroDNS S.A. transmitted by email to the Center its verification response indicating a “Name” Virgiliu Stan, along with that of a “Company” Packalo S.A.R.L. Cyberger as the listed registrant, and providing the contact details for the administrative, billing, and technical contact. On March 13, 2007, the Center therefore asked the registrar to “confirm whether the Registrant of the domain name is ґStan Virgiliu` or ґPackalo Sarl Cyberger` or both”. On the same day, the registrar confirmed that its record showed the holder as Stan Virgiliu. As a consequence, on March 14, 2007, the Center wrote to the Complainant to request it to amend the Complaint and add “Stan Virgiliu” as Respondent.
In the same message, the Center also noted that the Complaint had been filed in French, although the language of the registration agreement was English. Therefore, the Center asked the Complainant either to demonstrate the existence of an agreement relating to the language of the proceedings, or to file a request seeking that French be designated as the language of the proceedings.
On March 19, 2007, the Complainant sent an amended Complaint to the Center. It also requested that French be designated as the language of the proceedings, based on the following elements:
- the Complainant sent a cease and desist letter, in French, to the Respondent on October 30, 2006. Following this letter, the parties had a telephone conversation, in French, about the matter.
- The Respondent, Packalo S.A.R.L., is a French company.
- Packalo S.A.R.L.’s manager, a certain Mr. Youcef El Achraoui, is a French citizen.
- The Complainant is a French company.
- The registrar is based in Luxembourg, where French is an official language.
On March 14 and 19, 2006, Mr. Virgiliu sent an e-mail to the Center and asked to receive all communications in English. He stated that the domain name was his property and that Packalo S.A.R.L. only provided a registration address service. He mentioned that he is a Romanian citizen, doing temporary business in France. He disputed the Complainant’s allegation that he had a telephone conversation with its representative. According to Mr. Virgiliu, it is another person who spoke in his name.
Following this exchange of e-mails, the Center sent all communications to the parties related to this case in both languages, English and French. It is therefore for the Panel to determine the language of the proceedings, in accordance with paragraph 11 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) (see below, Section 6).
The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “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 March 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 15, 2007. The Response was filed with the Center on April 14, 2007.
The Center appointed Fabrizio La Spada as the sole panelist in this matter on May 3, 2007. 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.
On June 5, 2007, the Center informed the Parties that the Panel has fixed a new decision due date on June 11, 2007, in light of the circumstances of the case.
4. Factual Background
The Complainant is the owner of several registered trademarks, including the following:
- Community Trademark MEDIATIS (fig.), no. 003200243, filed on May 28, 2003 in international classes 9, 16, 36 and 38.
- French trademark MEDIATIS LE CREDIT QUI VOUS PRETE AUSSI DE L’ATTENTION (fig.), no. 033227881, filed on May 28, 2003 in international classes 9, 16, 35, 36 and 38.
- French trademark LES IDEES SIMPLES MEDIATIS (fig.), no. 063418878, filed on March 27, 2006 in international classes 35 and 36.
- Benelux trademark MEDIATIS, LE CREDIT QUI VOUS PRETE AUSSI DE L’ATTENTION (fig.), no. 0710891, filed on February 8, 2001 (priority based on French trademark) in international classes 9, 35, 36 and 38.
- Benelux trademark MEDIATIS LE CREDIT QUI VOUS PRETE AUSSI DE L’ATTENTION (fig.), no. 0747161, filed on May 28, 2003 (priority based on French trademark) in international classes 9, 16, 35, 36 and 38.
- Benelux trademark MEDIATIS VIVE LE CREDIT! (fig.), no. 0785781, filed on June 5, 2005 in international classes 9, 16, 36, 38 and 42.
The Complainant, which was registered on January 16, 1961, with the French register of companies, is also the owner of the corporate name “Mйdiatis”, as well as of 15 domain names including the name “mediatis”, such as <mediatis.com>, <creditmediatis.com>, <mediatis.be>, <mediatis.fr>, <mediatis.org>, etc.
The Respondent registered the domain name on October 20, 2006. On October 25, 2006, the domain name was active and resolved to a website containing links to credit companies and services. All links were in French.
On October 30, 2006, the Complainant sent a letter to the Respondent, in French, requesting the transfer of the domain name. Between December 5, 2006 and March 12, 2007, the parties exchanged e-mail correspondence. The parties did not reach any agreement concerning the dispute.
5. Parties’ Contentions
Concerning the first test under the Policy, the Complainant contends that the domain name is identical or confusingly similar to trademarks in which it has rights. In addition to producing copies of the trademark registrations for the trademarks set out under Section 4 above, the Complainant alleges that the MEDIATIS trademark is highly distinctive. It points out in this respect that the domain name is identical to such distinctive element.
Concerning the second test under the Policy, the Complainant submits that the Respondent has neither rights nor legitimate interests in the domain name. According to the Complainant, the Respondent is not known under the “mediatis.mobi” name. In addition, the Complainant contends that in the correspondence exchanged prior to the filing of the present proceedings, the Respondent never alleged that it benefited from any prior right on the “mediatis” name. The Complainant also mentions that by using the domain name to direct users to a website containing links to competitors of the Complainant, the Respondent used the domain name in connection with a bad faith offer of financial products and services.
Finally, concerning the third test under the Policy, the Complainant submits that the Respondent could not reasonably ignore the existence of the MEDIATIS trademark. According to the Complainant, which relies on poll reports, MEDIATIS was known by 50% of the French population in 2005, and by 57% in October 2006. In this respect, the Complainant produces numerous documents showing that significant publicity is undertaken for the MEDIATIS trademark (e.g., about 1600 television commercials in 2006, more than 500 press advertisements, more than 10000 posters, etc.).
According to the Complainant, the Respondent intentionally registered the domain name in order to benefit from the Complainant’s reputation by creating confusion with the MEDIATIS trademark.
The Complainant also submits that during a telephone conversation with Virgiliu, the latter proposed to sell the domain name for an amount of EUR 100,000. The Complainant acknowledges that in further e-mail correspondence, the Respondent denied having had this telephone conversation. However, the Complainant points out that Mr. Virgiliu admitted having registered more than 3000 domain names. The Complainant also stresses the fact that in an e-mail of December 6, 2006, the Respondent suggested that the Complainant could not prevail in litigation and that, if it lost, the price to acquire the domain name “will be a six to seven figures one”. According to the Complainant, this is evidence of the Respondent’s bad faith, and his intent to sell the domain name for a price exceeding his out-of-pocket expenses.
The Complainant therefore requests the transfer of the domain name.
The Respondent disputes the Complainant’s argumentation and request.
Mr. Virgiliu explains that he is a Romanian citizen, living in Romania, and has considerable experience in the IT&C domain. He further alleges that he created a company, SVN Business Consulting SRL, to develop a large mobile travel portal and registered numerous .mobi domain names related to travel. According to the Respondent, he also wanted to operate a media on-line website that should become a unique access point from the travel sites to the travel agencies.
The Respondent states that he registered the following domain names:
- For travel websites, he registered travel destination related names, such as <hawaiitravel.mobi> or <bahamastravel.mobi>.
- For the common portal, he registered a few names, such as <topdestinations.mobi>.
- For the media on-line website, he registered <mediatis.mobi>, as it was a short name, containing the word “media” and sounding well.
The Respondent also explains that he made a trademark search on the WIPO Madrid database and could not find any MEDIATIS trademark that was internationally protected. He indicates that he also made a domain name search and found that the domains <mediatis.com>, “.net”, “.info”, “.eu”, “.us”, “.ca” and “.ro” were all owned by different companies or not registered.
Mr. Virgiliu also explains that he used a French address for the registration because at the time of the .mobi “landrush”, he was traveling in France. He therefore entered into a “domain name address agreement” on July 5, 2006 with the company Packalo S.A.R.L., whereby this company agreed to allow Mr. Virgiliu to use its address for the purpose of registering .mobi domain names.
As set out above, Mr. Virgiliu disputes having had any telephone conversation with the Complainant or its representatives. He also specifically disputes having offered to sell the domain name for EUR 100,000 or any other amount.
Concerning the website to which the domain name resolved, the Respondent states that he parked the domain with the Sedo parking service. According the Respondent, Sedo is a well-known and reputed service, which automatically inserts sponsored links on each parked page. The owner of the domain name only has to select a keyword, which the Respondent selected as the domain name itself, i.e., MEDIATIS. On the issue of the presence of links to the Complainant’s competitors, the Respondent states that he does not control what kind of sponsored links Sedo connects to a keyword, as he would not have time to verify over 200 domain names.
On the first test under the Policy, the Respondent submits that the domain name is not identical or confusingly similar to trademarks in which the Complainant has rights. The Respondent contends that the Complainant’s trademarks are figurative trademarks, which protect complex designs, not just a word. According to the Respondent, the dominant elements are a red circle, two large apostrophes and the text “mйdiatis” written with an “й”, not an “e”. In addition, the Respondent points out that the word “mediatis” contains the generic name “media” and the latin suffix “-tis”. He states that he chose the name “mediatis” because he was looking for a name that would suggest “media” and “on-line advertising”, that was short, and that sounded nice.
Concerning the second test under the Policy, the Respondent submits that the domain name is a very generic media-advertising term, to which he added a suffix, and over which he has a legitimate interest. In this respect, the Respondent states that he is not interested in using the domain name in connection with the activity of the Complainant, but only in connection with media-online advertising for the travel industry.
Finally, as regards the third test under the Policy, the Respondent contends that whether or not the domain name has been registered and is being used in bad faith has nothing to do with the Complainant’s investments. In addition, he states that he did not register the domain name primarily for the purpose of selling it; it is only after the Complainant contacted him that he mentioned the possibility to sell the domain name. The Respondent alleges that he did not register and use the domain in bad faith and submits that the conditions for a finding of bad faith under the Policy are not fulfilled.
6. Language of the proceedings
In the course of the proceedings, the Complainant requested that French be designated as the language of the proceedings. On the contrary, the Respondent insisted on keeping English as such language. The Panel must therefore decide on the Complainant’s request.
Paragraph 11(a) of the Rules reads as follows:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
In the present case, and as confirmed by the registrar, the language of the registration agreement is English. Since there has been no agreement between the parties on another language, English should be the language of the proceedings, unless there exists circumstances that would require French to be chosen as the language of the proceedings.
The Panel considers that the elements on which the Complainant based its request are not in the circumstances sufficient to depart from the provision of Paragraph 11(a) of the Rules in the present case. In particular, the Panel considers that the fact that the Complainant is a French company, that the registrar is located in a country where French is one of the official languages, and that the manager of one of the Respondents is of French nationality are not decisive considerations here. In addition, in the Panel’s opinion, the mere fact that the company Packalo S.A.R.L. is a French company is in itself not sufficient to justify that French be chosen as the language of the proceedings.
The Panel therefore rules that the language of the proceedings shall be English.
According to Paragraph 11(b) of the Rules,
“The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.”
In the present case, the Complainant produced the Complaint and most of the supporting exhibits in French, without an English translation. However, the Panel considers that it is not necessary to request a translation of these documents, for the following reasons:
- Although the Respondent insisted that English be the language of the proceedings, he participated in the proceedings and produced a Response to the Complaint without requesting a translation of any documents.
- The Panel understands French and does not independently need a translation of the documents on record.
7. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in these proceedings and obtain the transfer of the disputed domain name, the Complainant must prove that each of the three following elements is satisfied:
i). The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and
ii). The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and
iii). The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy states that the burden of proof with regard to these elements lies with the Complainant.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As regards the first issue, the Complainant has provided satisfactory evidence that it is the owner of numerous trademarks consisting of or containing the word “mediatis”, registered throughout the world, including in France, Benelux and as Community Trademarks.
Concerning the second issue, the Panel finds that the domain name is confusingly similar to trademarks owned by the Complainant. Numerous prior panels have held that when a domain name wholly incorporates a complainant’s registered mark, this may be sufficient to establish confusing similarity for purposes of the Policy (See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047). In the present case, the domain name is identical to the word element of the Complainant’s Community Trademark no. 003200243. The only difference is the accent on the letter “e”, which the Panel deems to be of minimal distinguishing relevance under the first element test. The Panel also notes that the word “mediatis” is clearly the dominant element in the Complainant’s MEDIATIS (fig.) trademark, as the figurative element (a circle and one quotation mark) have by themselves little distinctiveness.
Therefore, the Panel finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
It is difficult for a complainant to prove such a negative fact. Therefore, panels have required complainants to establish at least a prima facie case under this heading. If that is made out, the evidential onus then shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (See, e.g. Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc.,
WIPO Case No. D2003-0070).
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, 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; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the domain name, for the following reasons.
First, there is no evidence that the Respondent owns any trademark, or any other right, corresponding to the domain name or to the word “mediatis”. In addition, there is no indication that the Complainant has licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks. Further, there is no evidence that the Respondent has been commonly known by the domain name at any time prior to this dispute.
In addition, when the Complaint was filed, the Respondent made no use of the domain name in connection with a bona fide offering of goods or services. The website to which the domain name resolved, although active, only consisted in a parking page, hosted by Sedo and containing sponsored links to competitors of the Complainant. This use does not qualify as a bona fide offering of goods or services. Neither does it qualify as a non-commercial or fair use of the domain name.
The Respondent stated in e-mail correspondence with the Complainant and in its Response that he intended to use the domain name as an on-line advertising portal. However, he has not produced any evidence in support of this contention. Nor has he provided any persuasive details or specifics about existing preparations to use the domain name.
Finally, the Respondent submitted in its Response that the name “mediatis” is a generic name, to which he only added a suffix. As a consequence, he submits, he has a legitimate interest over the domain name. The Panel disagrees. Indeed, in the Panel’s opinion, although the word “media” could be considered to be descriptive or generic when used in connection with media-related products and/or services, this is not the case of the sign “mediatis”, which has no particular meaning. In addition, the Respondent has not produced any evidence supporting his allegation that he was preparing (or even merely intended) to use the domain name in connection with media-related activities. On the contrary, the only use that was made of the domain name and that is documented on record is a use as a parking page, with links to providers of financial and credit services, competing with the Complainant’s activities.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the domain name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are non-exclusive (BolognaFiere S.p.A. v. Bonopera Daniele,
WIPO Case No. D2003-0295).
Paragraph 4(b)(iv) provides as an instance of registration and use in bad faith circumstances indicating that:
“(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
In the present case, the Respondent used the domain name to park it on a commercial web page, which contained links, in French, to competitors of the Complainant. The Panel considers that this is evidence of the Respondent’s intent to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website.
The Respondent explained in the proceedings that Sedo, the parking host, automatically inserts sponsored links on each parked page, based on a keyword chosen by the domain name holder. In the Panel’s opinion, the Respondent can find no excuse in the fact that the links are inserted automatically by Sedo. Indeed, as domain name owner, the Respondent is responsible for the choices he makes about how he uses the domain name, including where he parks it. This is in particular the case where, as in the present matter, the Respondent presents himself as having “considerable experience in the IT&C domain”. The Panel also notes in this respect that it is the Respondent who chose the keyword that was used by Sedo to provide the sponsored links. The Respondent alleged that it could not verify the choice of links by Sedo, because he owns too many domain names. This argument is unconvincing, especially taking into account the fact that the Respondent argued that, when he registered the domain name, he made verifications in the WIPO Madrid trademark database, as well as in several domain name registries.
In addition, as set out above, the Respondent has provided no evidence in support of his allegations that he intended to use the domain for a legitimate purpose, related to media advertising.
Therefore, the Panel finds that the Respondent registered and used the domain name in bad faith.
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 <mediatis.mobi> be transferred to the Complainant.
Fabrizio La Spada
Dated: June 12, 2007
Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0312.html
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