[Indexed as: Tchin-Tchin Holdings v. Ausseil]
[Indexed as: TCHIN-TCHIN.COM]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No.: D2000-0426
Commenced: 31 May, 2000
Judgment: 17 July, 2000
Panel Member: Geert Glas
Domain name - Domain name resolution policy - Identical identity - Good faith - Complaint denied - Well known phrase - No response to letter - No intention to sell Confusingly Similar No bad faith.
Complainant is registered owner of the trademark Tchin-Tchin which is regularly used by the Complainants French subsidiary. Respondent registered domain name after complainant. There is no relation between Respondent and Complainant and Respondent is not a licensee of Complainant, nor has he otherwise obtained an authorization to use Complainants mark. Complainant, through its representative, sent a letter of formal notice to Respondent, requesting the transfer of the Domain Name. Respondent did not reply to this request.
Held: Name not transferred.
In view of the above, the administrative panel finds that the Domain
Name is identical to the trademark Tchin-Tchin of the Complainant.
Complainant did not establish that the domain name had been registered
and used in bad faith due to the fact that Respondent expressed no intentions
to sell since he did not reply to the Complainants letter requesting transfer
of domain name. The bad faith/good faith assessment cannot be made in abstracto,
without taking into account the nature and possible meaning of the Domain
Name. It should in this respect be noted that the term "Tchin-Tchin" is
well known in the French language where it is used as a drinking toast.
The 1984 edition of the "Petit Larousse Illustré", a well known
and much relied upon French dictionary indeed contains the following entry
for the word: "tchin-tchin" (translation): "Tchin-tchin" or "Tchin" used
when clinking glasses, to carry a toast. Since, there was no evidence of
bad faith on the part of the Respondent, there is no need to assess the
legitimate interests part of the test.
Policies referred to:
ICANN Uniform Domain Name Dispute Resolution Policy
Rules for Uniform Domain Name Dispute Resolution Policy
Cases referred to:
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Glas, Panelist:
1. The Parties
Complainant is Tchin-Tchin Holdings, Hammond Suddards, 7 Devonshire
Square, Cutlers Gardens, EC2M AYH London, Great Britain, represented by
Stéphanie Judicq, Cabinet Breese Majerowicz, 3 avenue de lOpéra,
75001 Paris, France, hereinafter the "Complainant".
Respondent is David Ausseil, 4 rue de Greffuhle, 75008 Paris, France,
represented by Dominique de Leusse, 52 boulevard Malesherbes, 75008 Paris,
France, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is "tchin-tchin.com", hereinafter referred
to as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the
Complainants complaint on May 12, 2000. The Center verified that the complaint
satisfies the formal requirements of the ICANN Uniform Domain Name Dispute
Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute
Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain
Name Dispute Resolution Policy (the Supplemental Rules). Complainant made
the required payment to the Center. The formal date of the commencement
of this administrative proceeding is May 31, 2000.
On May 17, 2000, the Center transmitted via email to Network Solutions
Inc. a request for registrar verification in connection with this case.
On May 19, 2000, Network Solutions Inc. transmitted via email to the Center,
Network Solutions Verification Response, confirming that the Respondent
is the registrant and that the administrative, technical and billing contact
is Oznic.com.
Having verified that the complaint satisfied the formal requirements
of the Policy and the Rules, the Center transmitted on May 31, 2000, to
the Respondent and to Oznic.com, Notification of Complaint and Commencement
of the Administrative Proceeding, via post/courier, facsimile and e-mail,
according to the following contact details:
David Ausseil
4 rue de Greffuhle
75008 Paris
France
Oznic.com
P.O. Box 761
Sunbury, VIC 3429
Australia
Tel : + 61 3 93482441
Fax : + 61 3 93481928
E-mail : [email protected]
[email protected]
[email protected]
[email protected]
The Center advised that the Response was due by June 19, 2000, and
received the Response on June 20, 2000.
On June 30, 2000, in view of the Complainants designation of a single
panelist, the Center invited Mr. Geert Glas to serve as a panelist.
Having received on June 30, 2000, Mr. Geert Glas's Statement of Acceptance
and Declaration of Impartiality and Independence, the Center transmitted
to the parties a Notification of Appointment of Administrative Panel and
Projected Decision Date, in which Mr. Geert Glas was formally appointed
as the Sole Panelist. The Projected Decision Date was July 17, 2000. The
Sole Panelist finds that the Administrative Panel was properly constituted
and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint,
the Response, the evidence presented, the Policy, the Rules and the Supplemental
Rules.
4. Factual Background
The complaint is based on a French trademark for the term "Tchin-Tchin",
filed on October 14, 1998, and bearing the number 98 754 262, a copy of
which was enclosed with the complaint. The trademark covers the products
in classes 32, 33 and 35, namely:
"Beers; still and sparkling mineral waters and other alcoholic beverages;
fruit drinks and fruit juices; cordials and other preparations for making
drinks; non-alcoholic aperitifs; soda drinks.
Alcoholic drinks (excluding beers), alcohol essences, alcohol extracts,
aperitifs, alcoholic drinks containing fruit, distilled drinks, liqueurs,
eaux-de-vie, brandies, spirits, wines, vodka, whisky, rum.
Business management, business information, organization of exhibitions
and trade shows for commercial and publicity purposes, distribution of
samples, advertising".
According to Complainant, the trademark is regularly used by Complainants
French subsidiary, which operates an alcohol and spirits retail outlet
under the trade name "Tchin-Tchin". Beverages bearing the trademark "Tchin-Tchin"
are produced at Complainants request and are marketed in its stores.
The Domain Name was registered by Respondent on May 18, 1999.
On March 24, 2000, Complainant, through its representative, sent a
letter of formal notice to Respondent, requesting the transfer of the Domain
Name. It appears however that Respondent did not reply to this request.
There is no relation between Respondent and Complainant and Respondent
is not a licensee of Complainant, nor has he otherwise obtained an authorization
to use Complainants mark.
As of this date, the Domain Name is connected to an "under construction"
page.
5. Parties Contentions
a. Complainant
Complainant contends that Respondent has registered the Domain Name
which is identical to Complainant's trademark, that Respondent has no rights
or legitimate interests in respect of the Domain Name and that the Domain
Name has been registered and is being used in bad faith.
Consequently, Complainant requires the transfer of the Domain Name
registration.
b. Respondent
Respondent invokes the principle of specialty and the principle of
territoriality, as applied in trademark law, and therefore questions Complainants
right to the Domain Name. Additionally, Respondent states that the Domain
Name was not registered in bad faith.
Accordingly, Respondent requires that the remedy sought by Complainant
be denied.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as
to the principles the Administrative Panel is to use in determining the
dispute: "A Panel shall 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."
Applied to this case, Paragraph 4(a) of the Policy directs that the
Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical
to the trademark in which the Complainant has right; and,
(2) that the Respondent has no legitimate rights or interests in respect
of the Domain Name; and,
(3) that the Domain Name has been registered and used in bad faith.
a. Identity
The Domain Name is "tchin-tchin.com".
"Tchin-Tchin" is a registered trademark of the Complainant.
In view of the above, the Administrative Panel finds that the Domain
Name is identical to the trademark "Tchin-Tchin" of the Complainant.
b. Registration and Use in Bad Faith
According to Complainant, "The holder of the domain name most certainly
proceeded with its registration in bad faith." Furthermore, Complainant
contends that "It is highly probable that the holder of the domain name
proceeded with its registration for the purpose of negotiating this domain
with the holder of a TCHIN-TCHIN trademark, the Complainant, or possibly
with the holder of another TCHIN-TCHIN trademark of greater repute than
that of the Complainant, such as that belonging to the company ALAIN AFFLELOU,
filed after the Complainants trade mark and for other unrelated products."
The Panel finds that the arguments invoked by Complainant are merely
speculative. Indeed, there is no evidence whatsoever that Respondent would
have registered the Domain Name in order to sell it to Complainant or the
owner of a different "Tchin-Tchin" trademark which would even be of a greater
repute than that of Complainant.
To the contrary, the Panel finds that Respondents failure to answer
the letter of formal notice sent to him and the request to transfer the
Domain Name contained therein constitutes an indication that he was not
interested in transferring the Domain Name.
The bad faith/good faith assessment cannot be made in abstracto, without
taking into account the nature and possible meaning of the Domain Name.
It should in this respect be noted that the term "Tchin-Tchin" is well
known in the French language where it is used as a drinking toast, much
as the term "Prosit" in the German language or the term "cheers" in the
English language. The 1984 edition of the "Petit Larousse Illustré",
a well known and much relied upon French dictionary indeed contains the
following entry for the word: "tchin-tchin" (translation):
"Tchin-tchin" or "Tchin" used when clinking glasses, to carry a toast.
Tchin-tchin!
c. Rights or Legitimate Interests
In the absence of any evidence that the Domain Name was registered
and is being used in bad faith, it is not necessary for the Panel to consider
whether Respondent does have a right or legitimate interest in the Domain
Name.
7. Decision
In light of the foregoing, the Administrative Panel decides that the
Domain Name "tchin-tchin.com" registered by Respondent is identical to
the trademark of Complainant, but that it is not established that Respondent
registered and used the Domain Name in bad faith.
Accordingly, the Administrative Panel denies the Complaint. Respondent
shall not be required to transfer the registration of the Domain Name "tchin-tchin.com"
to Complainant.
Geert Glas
Sole Panelist
Dated: July 17, 2000
Domain Name Transferred