[Indexed as: Sporoptic Pouilloux SA v. Wilson]
[Indexed as: buyvaurnetsunglasses.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No.: D2000-0265
Commence: 6 April, 2000
Judgement: 16 June, 2000
Panel Member: Dr. Massimo Introvigne
Domain name-Domain name resolution policy-Cybersquatting-Bad faith Registration Bad faith Use - Ghost domain name-Rights and Legitimate Interests-Confusion
Complainant is owner of the trademark VUARNET, a famous trademark in the field of sunglasses. Respondent registered disputed domain name well after trademark rights for VAURNET were acquired by Complainant. Domain name registered by Respondent has no known connection with any activity or trade carried out under the trade name or trademark VAURNET. Respondent did not answer Complainants call for a voluntary cancellation of domain name. Complainant claims that Respondent registered and is using disputed domain name in bad faith. Respondent is in default.
Held: Name Not Transferred
Domain name registered by Respondent enhances likelihood of confusion with Complainants trademark and is therefore evidence of bad faith of Respondent.
There was no evidence of any rights or legitimate interests of the Respondent in the disputed domain name.
Domain name was registered in bad faith as Respondent was aware that VUARNET was a trademark associated with the sale of Complainants sunglasses. Under the Uniform Policy disputed domain names must be registered and used in bad faith for transfer of domain name to complainant. Complainant did not present evidence that the domain name was being used in Internet or e-mail activity. The Panel also could not find any evidence to that effect. Since domain name is registered but is not being used in any way, the Panel could not find any bad faith use.
Policies referred to:
Uniform Domain Name Dispute Resolution Policy Adopted August 6, 1999
Statutes referred to:
Rules for Uniform Domain Name Dispute Resolution Policy
Reports referred to:
Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy of October 24-25, 1999
Cases Referred to:
World Wrestling Entertainment Inc. v. Michael Bosman WIPO Case No. D99-0001
1. The Parties
Complainant is Sporoptic Pouilloux S.A. ("Complainant"). Respondent
is Mr. William H. Wilson ("Respondent").
2. The Domain Name and Registrar
The domain name the subject of this Complaint is buyvuarnetsunglasses.com.
The Registrar is Network Solutions, Inc. The remedy sought by Complainant
is transfer of the domain name buyvuarnetsunglasses.com to Complainant.
3. Procedural History
On April 6, 2000 (by e-mail) and April 10, 2000 (in hard copy), Complainant
submitted to the WIPO Center a Complaint under the Uniform Policy and the
Uniform Rules. The Panel agrees that payment was properly made, that the
Center rightly assessed the Complaints compliance with the formal requirements;
that Complaint was properly notified in accordance with paragraph 2 (a)
of the Rules. On May 23, 2000, Respondent was declared in default. The
Panel agrees that it was properly constituted and that Panelist submitted
a Statement of Acceptance and Declaration of Impartiality. The Panel also
acknowledges that no other proceedings are pending before any Justice Court.
4. Factual Background
Complainant is the owner of the trademark VUARNET, registered in a
number of countries and specifically in the United States for sunglasses.
VUARNET is a well-known trademark and corresponds to the name of the former
Olympic ski champion Mr. Jean Vuarnet. That VUARNET is a famous trademark
in the field of sunglasses is beyond dispute.
Respondent, Mr. William H. Wilson of San Pedro (California), has registered
its domain name buyvuarnetsunglasses.com, without dispute, well after trademark
rights from the name VUARNET were acquired by Complainant, and has no known
connection with any activity or trade carried out under the trade name
or trademark VUARNET. Complainants U.S. counsel wrote a letter of demand
to Respondent on October 20, 1999, calling for a voluntary cancellation
of the domain name. The letter was left unanswered, despite a number of
reminders.
5. Parties Contentions
A. Complainant
a. Complainant claims that it is owner of the well-known and largely
used VUARNET trademark for a number of products, including (but not limited
to) sunglasses.
b. Complainant claims that the domain name buyvuarnetsunglasses.com
has been registered by Respondent in bad faith. Respondent could not ignore
Complainants trademark rights, nor has Respondent any rights or legitimate
interests in respect of the domain name.
c. Complainant claims that the domain name buyvuarnetsunglasses.com
has been, or is being, used by Respondent in bad faith.
B. Respondent
a. Respondent is in default and, accordingly, has no challenged the
conclusions of Complainant.
6. Discussion and Findings
A. General Principles
Under paragraph 4 (a) of the Policy, the Panel should be satisfied
that:
(i) the domain name is identical or confusingly similar to a trademark
or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of
the domain name;
(iii) the domain name has been registered in bad faith;
(iv) the domain name is being used in bad faith.
It is important to note that there are in fact three numbers (i),
(ii), (iii) of paragraph 4 (a), but requirements are in fact four rather
than three. It is not enough to prove that a domain name has been registered
in bad faith. It should also be the case that it is being "used in bad
faith".
In order to understand that both registration and use in bad faith
are required, it is important to read paragraph 4.5 of the Second Staff
Report on Implementation Documents for the Uniform Dispute Resolution Policy
of October 24-25, 1999. It reads as follows "Several comments (submitted
by INTA and various trademark owners) advocated various expansions to the
scope of the definition of abusive registration. For example: a. These
comments suggested that the definition should be expanded to include cases
of either registration or use in bad faith, rather than both registration
and use in bad faith. These comments point out that cybersquatters often
register names in bulk, but do not use them, yet without use the streamlined
dispute-resolution procedure is not available. While that argument appears
to have merit on initial impression, it would involve a change in the policy
adopted by the Board. The WIPO report, the DNSO recommendation, and the
registrars-group recommendation all required both registration and use
in bad faith before the streamlined procedure would be invoked. Staff recommends
that this requirement not be changed without study and recommendation by
the DNSO (¼)".
From this Staff Report it is clear that, although this may seem unfortunate,
not all activities of the cybersquatters may fall under the Policy. When
cybersquatters register names "but do not use them", the Dispute Resolution
Procedure is not available.
Accordingly, whether or not a contested domain name is "used" is of
crucial importance.
Another provision whose interpretation may be necessary in this case
is Rule 15 (a), reading as follows: "A Panel shall decide a Complaint on
the basis of the statements and documents submitted and in accordance with
the Policy, these Rules and any rules and principles of law that it deems
applicable". This has been interpreted, in a number of previous cases,
with a certain latitude. Even when Complainants and Respondents have failed
to describe exactly how the contested domain name is used, Panels have
often accessed the Internet by themselves in order to verify this point.
B. Confusion with Complainants Trademark
The Panel finds that Complainant has established that it is the owner
of the trademark VUARNET for sunglasses. The validity of its trademark
is beyond dispute. Respondents domain name combines three words: "buy",
"vuarnet" and "sunglasses". The combination, if anything, enhances the
likelihood of confusion with the trademark VUARNET as used for sunglasses,
and evidences the bad faith of Respondent, who obviously tries to pass
himself off as a legitimate source for VUARNET sunglasses.
C. Respondents Absence of Rights or Legitimate Interests in the Domain
Name
There is no evidence that Respondent has any right or legitimate interest
whatsoever in respect of a domain name including the well-known trademark
VUARNET, or any association between the trademark VUARNET and sunglasses.
On this point also, Complainant prevails.
D. Registration in Bad Faith
The very choice of an association of the words "buy", "sunglasses"
and "vuarnet" shows that Respondent, when registering the domain name,
was perfectly aware that VUARNET was a trademark associated with the sale
of Complainants sunglasses. The Panel concludes that the domain name has
been registered in bad faith.
E. Use: Statements and Documents Submitted by Complainant
Complainant states that the domain name is being used in bad faith.
There is little doubt that, should the domain name be "used", such use
would be in bad faith. However, Complainant does not offer any evidence,
or document, that the domain name is being, or has been, "used". As mentioned
before, a look at previous cases decided under the Policy confirms that
Panels usually explore the Internet by themselves in order to have a better
idea of whether and how a domain name is used. Accordingly, this Panel
did not rely only on the statements and documents submitted by Complainant,
but verified the "use" or absence thereof, by itself. First of all, by
simply and repeatedly accessing the World Wide Web, the Panel ascertained
that the domain name buyvuarnetsunglasses.com is not currently active on
the Web. This was, in the Panels opinion, not enough in order to conclude
that the domain name is not "used", since the Policy does not mention "use
on the Web" but simply "use". There are forms of use on the Internet different
from use on the Web. For instance, e-mail may be managed under a domain
name even without a presence on the Web. In order to show that an e-mail
service is active under the domain name buyvuarnetsunglasses.com, it is
not enough to send an e-mail to [email protected] without
receiving an error message. This is not, from a technical point of view,
sophisticated enough, since the e-mail may remain stalled in the sending
server, or "get lost in the Internet". It is however possible to ascertain
through a NS look-up and other means whether the DNS associated with the
domain names includes a MX type record i.e. whether there is a machine
capable to manage e-mail under that domain name. It is not suggested, here,
that the Panel was requested to perform these checks (that the Complainant
may have easily performed itself). However, given the peculiar circumstances
of the case and the Panels persuasion that it is not prevented by Rule
15 (a) from having a look at the Internet by itself, the Panel performed
a number of different searches and concluded that there is (or was at the
time of its check) no Internet-accessible e-mail management under the domain
name buyvuarnetsunglasses.com.
F. Respondents Use of the Domain Name: Conclusions
As mentioned earlier, under Paragraph 4 (a) (iii) of the Policy, as
evidenced by the Second Staff Report of October 24, 1999, both registration
and use in bad faith are required. Registration alone, without use, is
not enough. "Use" is not necessarily use on the Internet. For instance,
an earlier decision under the Policy (World Wrestiling Entertainment, Inc.
v. Michael Bosman, WIPO Case No. D99-0001) found that an offer to sell
the domain name "for valuable consideration in eccess of the documented
out-off pocket costs directly related to the domain name" under Paragraph
4 (b) (i) of the Policy is in itself evidence of "use in bad faith" even
when there is no use whatsoever on the Internet. Under Paragraph 4 (b)
there are a number of other relevant "patterns of conduct" by a Respondent
that may be relevant (this may include, for example, announcing or preparing
a future Internet activity, or threatening the Complainant to do it). In
our case, however, there is no evidence of any particular "conduct" by
the Respondent, other than merely registering a domain name (in bad faith)
and not answering a letter of demand. The Panel also acknowledges that
the Internet is larger than the Web. Had it found clear evidence that e-mail
is managed by Respondent under the domain name, it would have concluded
that the domain name is "used in bad faith". However, not only Complainant
did not submit any evidence of a use of the domain name for e-mail purposes
but, although the Panel went as far as possible in trying to determine
whether such is the case by itself, results were negative. The results
seem to indicate that there is, indeed, no e-mail activity under the domain
name.
In short, buyvuarnetsunglasses.com is a "ghost" domain name, registered
but not used in any way. Under Paragraph 4.5 of the Second Staff Report,
absent a change in the Policy, these cases of registration in bad faith
by cybersquatters, without any form of "use" in any sense of the word,
however deplorable, do not fall under the Policy. Other legal remedies
remain, of course, available to Complainant, and it is always possible
than in the future Complainant itself may find evidence that the domain
name is "used" by Respondent. At this stage, however, the requested relief
cannot be granted by this Panel.
It seems fair to add that Complainant did not waste its time by submitting
this case. The decision will go on record to state that the domain name
was registered in bad faith and that any use of it would necessarily be
in bad faith. The decision, when served upon the Respondent, may serve
as a warning to him not to "use" the domain name in any way. The findings
of this Panel may also assist future Panels in deciding a case that Complainant
would be free to submit again under the Policy (since circumstances of
fact will in fact no longer be the same) should Respondent start any form
of "use" of the domain name in the future.
7. Decision
Pursuant to Paragraph 4 (i) of the Policy and Rule 15 of the Uniform
Rules, this Panel orders that the domain name buyvuarnetsunglasses.com
shall remain the property of Respondent, and the relief requested by Complainant
is denied.
Domain Name Not Transferred