Societe Generale and Fimat International
Banque v. Lebanon Index/La France DN
Claim Number: FA0208000118278
PARTIES
Complainant
is Societe Generale and Fimat
International Banque, Paris, FRANCE (“Complainant”) represented by Isabelle Leroux, of Bird & Bird.
Respondent is Lebanon Index/La
France DN, Beirut, LEBANON (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <masterunit.us>,
<sggroupe.us>, <sogelease.us> and <fimat.us>,
registered with iHoldings.com, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 15, 2002; the Forum received a hard copy of the
Complaint on August 26, 2002.
On
September 13, 2002, iHoldings.com, Inc. confirmed by e-mail to the Forum that
the domain names <masterunit.us>,
<sggroupe.us>, <sogelease.us> and <fimat.us>
are registered with iHoldings.com, Inc. and that Respondent is the current
registrant of the names. iHoldings.com,
Inc. has verified that Respondent is bound by the iHoldings.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On
September 18, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”) setting a deadline
of October 8, 2002, by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 28, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules. Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles
of law that the Panel deems applicable, without the benefit of any Response
from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the follow allegations:
The
<masterunit.us>,
<sggroupe.us>, <sogelease.us> and <fimat.us>
domain names are confusingly similar and/or identical to Complainant’s MASTER
UNIT, SG GROUP, SOGELEASE and FIMAT marks.
Respondent has no rights or legitimate interests in the <masterunit.us>, <sggroupe.us>,
<sogelease.us> and <fimat.us> domain names. Respondent registered and used the <masterunit.us>, <sggroupe.us>,
<sogelease.us> and <fimat.us> domain names in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant owns the following
International, French and United States trademark registrations:
·
MASTER
UNIT: French trademark Reg. No. 003 060
379; International trademark Reg. No. 758 627.
·
SG GROUP: French trademark Reg. No. 00 3 004.
·
SOGELEASE: French trademark Reg. No. 1403696;
International trademark Reg. No. R 433 810.
·
FIMAT: United States Patent and Trademark Office
Reg. Nos. 1,636,302 and 2,187,975.
Complainant’s trademarks are used in
association with various financial services offered by Complainant, which
operates capital and financial investment services, including brokerage
assistance for sales of futures.
Respondent registered the <sggroupe.us>, <sogelease.us> and <fimat.us> domain names May 16, 2002. Respondent registered the <masterunit.us> domain name May
17, 2002. Respondent does not actively
use the disputed domain names to resolve to a website with content. Respondent, however, did offer to sell the <masterunit.us>, <sggroupe.us>,
<sogelease.us> and <fimat.us> domain name
registrations, among other domain name registrations “consisting of trademarks
or denominations” used by Complainant, for a total of $404,500.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“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 deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to Paragraphs 5(e), 14(a) and 15(a) of the Rules and
may draw such inferences as it considers appropriate pursuant to Paragraph
14(b) of the Rules.
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2)
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain name has been registered or is being used in bad faith.
Given
the similarity between the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as
applicable in rendering its decision.
Complainant established in this
proceeding that it has rights in the MASTER UNIT, SG GROUP, SOGELEASE, and
FIMAT trademarks by proof of French and international registration and receipt
of authorized trademarks by appropriate governing entities.
The domain names registered by
Respondent, <masterunit.us>, <sogelease.us>, and <fimat.us>,
incorporate in their entirety Complainant’s MASTER UNIT, SOGELEASE, and FIMAT
marks, respectively. The domain names, <masterunit.us>,
<sogelease.us>, and <fimat.us>, contain no
distinguishing characteristics because the addition of top-level domains, such
as the country code “.us,” and an
absence of spaces are inconsequential in a Policy ¶ 4(a)(i) analysis of domain
names’ identical or confusingly similar characteristics. Hence, the <masterunit.us>, <sogelease.us>,
and <fimat.us> domain names are identical to Complainant’s MASTER
UNIT, SOGELEASE, and FIMAT marks. See
Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
In addition, Respondent’s domain name <sogelease.us>
differs from Complainant’s SG GROUP mark by the mere addition of the letter “e”
to the end of the second-level domain.
Adding letters to another entity’s mark does not differentiate a domain
name from the mark in question.
Therefore, Respondent’s domain name is confusingly similar to
Complainant’s mark. See Nat’l Geographic Soc. v. Stoneybrook Inv.,
FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to Complainant’s
“National Geographic” mark); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000)
(finding that “the addition of an ‘s’ to the end of the Complainant’s mark,
‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of
the remaining identical mark. The domain name <creampies.com> is similar
in sound, appearance, and connotation”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent communicated openly with
Complainant about the sale of the disputed domain names but did not submit a
Response in this proceeding.
Complainant asserts that Respondent has no rights or legitimate
interests in the disputed domain names as part of its prima facie
Complaint. Respondent’s failure to come
forward and challenge Complainant’s allegations allows the Panel to presume
that Respondent has no rights or legitimate interests in the disputed domain
names. The presumption is further
supported by Respondent’s decision to ignore the Complaint. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names); see
also Canadian Imperial Bank of
Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000)
(finding no rights or legitimate interests where no such right or interest was
immediately apparent to the Panel and Respondent did not come forward to
suggest any right or interest it may have possessed).
Furthermore, due to the lack of Response,
the Panel accepts all of Complainant’s allegations as true, and will draw all
reasonable inferences in Complainant’s favor.
See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
No evidence
suggests, and Respondent has not come forward to offer proof that Respondent is
the owner or beneficiary of trademarks or service marks that are identical to
the domain names. An absence of
evidence coupled with the fact that nearly all of the domain names are identical
to Complainant’s marks suggest that the only logical conclusion is that
Respondent owns no marks that are identical to the domain names. Therefore, Respondent has no rights or
legitimate interests in the domain names pursuant to Policy ¶ 4(c)(i). See CDW Computer Centers, Inc. v.
The Joy Comp. FA114463 (Nat. Arb. Forum July 25, 2002) (finding that,
because Respondent did not come forward with a Response, the Panel could infer
that Respondent had no trademark or service marks identical to <cdw.us>
and therefore had no rights or legitimate interests in the domain name).
Respondent has not used the domain names
in connection with a website. Inactive
use of a registered domain name supports a finding of lack of rights or
legitimate interests. A grace period
allows time for development before the Panel will find that a party has
passively held a domain name. Although
Respondent has held these domain names for roughly five months, Respondent has
not come forward with any demonstrable plans to use the domain names. In addition, Respondent has done nothing
more than offer the domain name registrations for sale to Complainant. Thus, Respondent’s passive holding does not
constitute use of the domain names in connection with a bona fide offering of
goods or services. Respondent has shown no rights or legitimate interests in
the domain names pursuant to Policy ¶ 4(c)(ii). See J. Paul Getty
Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000)
(finding rights or legitimate interests do not exist when one has made no use
of the websites that are located at the domain names at issue, other than to
sell the domain names for profit); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint and had made no use of the domain name in
question).
Respondent has failed to establish any
rights in marks identical to the domain names and Complainant has presented the
Panel with Complainant’s marks that are replicated in the domain names. It is reasonable to infer under these facts
that Respondent is not commonly known by the domain names. Therefore, Respondent lacks rights or
legitimate interests in the domain names under Policy ¶ 4(c)(iii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb.
Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate
interests in domain names because it is not commonly known by Complainant’s
marks and Respondent has not used the domain names in connection with a bona
fide offering of goods and services or for a legitimate noncommercial or fair
use).
Respondent offered to sell the domain
name registrations to Complainant at a price that on its face is greater than
the reasonable costs of registration. In addition, all of the domain name
registrations that Respondent offered to sell to Complainant reflect either
Complainant’s trademarks or those of Complainant’s affiliates. Respondent’s
conduct supports the finding that Respondent had the intent to gain
commercially from registering the disputed domain names. Hence, Respondent has no rights or
legitimate interests in the subject domain names pursuant to Policy ¶ 4(c)(iv). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding Respondent’s conduct purporting to sell the domain name suggests it
has no legitimate use); see also Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where the Respondent
registered the domain name with the intention of selling it).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent offered to sell its rights in
the disputed domain names and multiple other domain names to Complainant for a
price of $404,500. Since Respondent
does not actively use the disputed domain names, this price is clearly in
excess of Respondent’s out-of-pocket expenses for registration. Such conduct supports an inference that
Respondent registered the <masterunit.us>,
<sggroupe.us>, <sogelease.us> and <fimat.us> domain
names because of the value of Complainant’s marks. Therefore, Respondent’s actions constitute bad faith registration
and use under Policy ¶ 4(b)(i). See Universal City Studios, Inc. v. Meeting
Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where
Respondent made no use of the domain names except to offer them to sale to the
Complainant); see also World
Wrestling Fed’n Entmt., Inc. v. Bosman,
D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in
bad faith because he offered to sell the domain name for valuable consideration
in excess of any out of pocket costs).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the usTLD Policy, the Panel concludes that the requested relief
shall be hereby GRANTED. Accordingly, it is Ordered that the domain
names <masterunit.us>,
<sggroupe.us>, <sogelease.us> and <fimat.us> be
TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: November 11, 2002.
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