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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sonatel Multimйdia SA v. Universal Computer Associates SUARL/Mamadou Kйbй

Case No. D2005-0009

1. The Parties

The Complainant is Sonatel Multimйdia SA, Dakar, Senegal, represented by Abdoulaye Diack Sall, Senegal.

The Respondent is Universal Computer Associates SUARL/Mamadou Kйbй, Dakar, Senegal, represented by E.H. Mame Gning, Senegal.

2. The Domain Names and Registrars

The disputed domain names are :

<sentoo.biz>
<sentoo.info>
<sentoo.org>
<sonatelmultimedia.com>
<sonatelmultimedia.net>

and are registered with AAAQ.com, Inc., and Abacus America Inc. d/b/a Names4Ever.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2005. On January 5, 2005, the Center transmitted by email to AAAQ.com, Inc. and Abacus America Inc. d/b/a Names4Ever a request for registrar verification in connection with the domain names at issue. On January 13, 2005, AAAQ.com, Inc. transmitted by email to the Center its verification response but did not specifically confirm that the Respondent is listed as the registrant of the relevant disputed domain names and provided contact details for a domain name (<sentel.info>) which is not one of the disputed domain names. On January 25, 2005, Abacus America Inc. d/b/a Names4Ever transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact with respect to the domain name <sonatelmultimedia.com>. In response to a notification by the Center dated January 31, 2005, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 3, 2005. 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 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 February 14, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 6, 2005. The Response was filed with the Center on March 6, 2005.

The Center appointed Christiane Fйral-Schuhl as the sole panelist in this matter on March 18, 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.

Regarding the confirmation of the registrant’s identity of the disputed domain names and of the contact details for the administrative, billing, and technical contact, the Panel is satisfied with the evidence produced by the Complainant in support of its Complaint and in any case, notes that the Respondent does not contest the fact that he is the registrant of the disputed domain names.

4. Pending Legal Proceedings

The Respondent claims that, given the existence of two pending legal proceedings, the Panel cannot rule on the Complaint submitted by the Complainant.

The Panel notes that two legal proceedings are indeed currently pending before the Senegalese Courts.

The first legal proceeding has been instituted by the Respondent against the Complainant and concerns the domain names <sonatelmultimedia.com> and <sonatelmultimedia.net>. This proceeding is in progress before the Dakar Regional Court since September 9, 2004. The Respondent claims that the Complainant has abusively used these domain names within its IP address directing to the website <sentoo.sn> while these domain names had been regularly registered by the Respondent and demands that the Complainant stops using these domain names and the payment of CFA 500,000,000 for damages.

The second legal proceeding is an appeal raised by the Respondent before the Court of Appeal of Dakar by exploits of January 18 and February 3, 2005, and concerns the domain names <sentoo.biz>, <sentoo.org> and <sentoo.info>. The Respondent challenges an ordinance of summary procedure rendered on January 13, 2005, by which the President of the Regional Court of Dakar has ordered the Respondent to stop the exploitation of the website “Sentoo.biz” available on the Internet via the addresses “www.sentoo.biz”, “www.sentoo.org” and “www.sentoo.info”.

Pursuant to Paragraph 18(a) of the Rules, “in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or to terminate the administrative proceeding, or to proceed to a decision.”

The Panel observes that, while both proceedings deal with the disputed domain names, the nature of the demands presented to the Senegalese Court by each party does not prevent the Panel from proceeding to a decision under the UDRP on the issue of whether such domain names shall be transferred or not to the Complainant.

Therefore the Panel finds it is entitled to proceed to a decision in compliance with Paragraph 18(a) of the Rules.

5. Factual Background

The Complainant is a Senegalese company established in Dakar since 1999. The Complainant trades in the telecommunication sector since 1999, and in addition, since 2001, is specialized in the sale and furniture of Internet products and services such as the development and the hosting of websites, etc. The Complainant started trading under the trade name “Telecom Plus”. Following a General Assembly of its shareholders on April 30, 2001, its trade name was changed into “Sonatel Multimedia”.

On April 3, 2000, the Complainant has registered the trademark “SENTOO”, No 40 724, with the African Organization for Intellectual Property for the exploitation and commercialization of Internet products and services. The request for registration had been made by the Complainant on March 17, 1999. Almost all services of the Complainant are sold under the “SENTOO” trademark. The Complainant is also the owner of the domain name <sentoo.sn>.

The Respondent is also a Senegalese company established in Dakar and specialized in the exploitation and commercialization of Internet products and services, such as the development and the hosting of websites, the registration of domain names, etc.

The Respondent registered the disputed domain names:

- on April 14, 2004, for <sentoo.info> and <sentoo.org>;

- on April 16, 2004, for <sentoo.biz>;

- on July 26, 2004, for <sonatelmultimedia.com> and <sonatelmultimedia.net>.

6. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names <sonatelmultimedia.com> and <sonatelmultimedia.net> are identical to the Complainant’s trade name “Sonatel Multimedia” and that the disputed domain names <sentoo.org>, <sentoo.biz> and <sentoo.info> are identical to the Complainant’s trademark “SENTOO”. The Complainant therefore alleges that given the fact that both parties work in the same sector, i.e. the telecommunication sector, and more particularly in the exploitation and commercialization of Internet products and services, this may lead to confusion in the consumers’ mind.

The Complainant also claims that the Respondent has no right on the disputed domain names, nor any legitimate interest in relation to them, because:

- “SENTOO” has been registered by the Complainant in 2000;

- “sonatel multimedia” is the Complainant’s trade name;

- the Respondent wrongfully uses the disputed domain names in order to divert consumers who think they are dealing with the Complainant.

Finally, the Complainant alleges that the disputed domain names were registered and are used by the Respondent in bad faith because:

- the Respondent could not ignore that “Sonatel Multimedia” is the Complainant’s trade name who is the first Internet access provider in Senegal;

- the disputed domain names were registered by the Respondent in order to divert the Complainant’s consumers, or to prevent him from taking back his trademark and name under the form of domain names;

- when the Complainant requested the Respondent on July 23, 2004, to stop using the trademark “SENTOO” in the Respondent “www.sentoo.biz” website, the Respondent registered three days later the domain names <sonatelmultimedia.com> and <sonatelmultimedia.net>;

- finally, the Respondent deliberately tries to attract Internet users by creating a confusion with the Complainant’s mark namely as to the source, affiliation or approbation of the Respondent’s website.

For all these reasons, the Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent contends that, regarding the disputed domain names <sonatelmultimedia.com> and <sonatelmultimedia.net>, a commercial name does not constitute an opposable exclusive right on the Internet to the holder of a domain name and regarding the disputed domain names that contains “Sentoo”, that the trademark “SENTOO” confers rights only for the products and services which it relates to on a geographically delimited territory and does not confer an international legal protection.

The Respondent further alleges that it has rightfully registered the disputed domain names according to the only applicable criterion of the registrars, that is “first come, first served” and that such registration confers to the Respondent a right of exclusive use for a determined time, except expressed authorization of use or regular transfer of this right by the registrant to a third party. The Respondent also claims that it justifies a legitimate interest by the only fact of existing on the Internet, of being able quickly to be identified and to carry out freely and suitably commercial activities. The Respondent then contends that in any case, such registration does not create any risk of confusion in the public’s mind because the Complainant is known by its internet website “www.sentoo.sn”, therefore under the Senegalese extension, and because the Respondent has mentioned on its website “www.sentoo.biz” its commercial name “Universal Computer Associates” and its physical address.

Finally, the Respondent claims that it has registered and uses the disputed domain names in good faith and recalls that in any case, it couldn’t use the domain names <sonatelmultimedia.com> and <sonatelmultimedia.net> because of technical retaliatory measures taken by the Complainant preventing the Respondent from using these two domain names.

7. Discussion and Findings

The Panel’s findings under each heading with reference to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law are the following:

A. Identical or Confusingly Similar

Pursuant to Paragraph 4(a)(i) of the Policy, the Complainant must prove that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A.1. Regarding the domain names <sentoo.org>, <sentoo.biz> and <sentoo.info>:

The Complainant has proven that it owns the trademark “SENTOO” in respect of Internet products and services.

Such trademark is included in these three disputed domain names. The suffixes <.org>, <.biz> and <.info> are incidental to domain names and cannot serve to distinguish them.

With regard to the Respondent’s contention that the trademark “SENTOO” confers rights to the Complainant only for the products and services which it relates to on a geographically delimited territory and does not confer an international legal protection, the Panel notes that the Policy does not require to demonstrate that the trademark benefits from an international protection. Whether a disputed domain name is identical or confusingly similar to a trademark or service mark is simply a question of fact which ought to be answered without reference to the countries where the trademark or service mark is operative or whether it is operative in the country of residence of the Respondent.

In any case, the Panel observes that the Complainant’s trademark “SENTOO” benefits at least from a protection in Africa and that the Respondent is a Senegalese company incorporated under the laws of Senegal.

Therefore, the Panel finds that the domain names <sentoo.org>, <sentoo.info> and <sentoo.biz> are confusingly similar to the Complainant’s trademark and as a consequence, the action brought by Complainant meets the requirement of Paragraph 4(a)(i) of the Policy.

A.2. Regarding the domain names <sonatelmultimedia.com> and <sonatelmultimedia.net>:

Pursuant to Paragraph 4(a)(i) of the Policy, the disputed domain names shall be identical or confusingly similar to the Complainant’s trademark or service mark.

Furthermore, Paragraph 3(viii) and (ix) of the Rules require the Complainant:

a. to specify the trademark(s) on which the Complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used; and

b. to describe, in accordance with the Policy, the grounds on which the Complaint is made, in particular the manner in which the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.

As already held in several Panels’ decisions (See for example Funskool (India) Ltd. v. funschool.com Corporation, WIPO Case No. D2000-0796, (November 30, 2000)), “the Policy and Rules do not leave room for extending trademarks in paragraph 4(a) of the Policy and paragraphs 3(viii) and 3 (ix) of the Rules to include trade names (which are not also used as non registered trademarks). Therefore, the Panel finds that the Policy does not apply to domain names that allegedly infringe trade names or company names.”

In the case at hand, “Sonatel Multimedia” is a trade name not a registered trademark and the Complainant does not allege that “Sonatel Multimedia” is used as a non-registered trademark. On the contrary, the Complainant indicates that almost all its products and services are sold under the trademark “SENTOO”.

Consequently, the Panel finds that the Complainant’s action regarding the domain names <sonatelmultimedia.com> and <sonatelmultimedia.net> does not meet the requirement of Paragraph 4(a)(i) of the Policy and as a result, that there is no need to assess the other requirements of Paragraph 4(a) of the Policy regarding these two domain names. Such decision does not prejudice the Complainant’s rights to protect its rights under its national laws.

B. Rights or Legitimate Interests

Pursuant to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights to or legitimate interests in the disputed domain names <sentoo.org>, <sentoo.info> and <sentoo.biz>, being specified that Paragraph 4(c) of the Policy explains how the Respondent may demonstrate its rights to and legitimate interests in the disputed domain names.

However, unlike the Respondent’s assertion, the criterion applicable to the registration of domain names is not solely “first come, first served”. Pursuant to Paragraph 2(b) of the Policy that applies to the disputed domain names as confirmed by both registrars, the registrant of a domain name shall represent and warrant that to his knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party, being specified that it is the registrant’s responsibility to determine whether his domain name registration infringe or violate someone else’s rights. Thus, the mere fact of registering a domain name does not confer per se to this registrant an exclusive right to the disputed domain names during the period of registration enforceable against any third party and in particular, against the holder of the trademark that corresponds to the disputed domain names.

Nor the need to exist on the Internet and to be quickly identified does demonstrate a legitimate interest in the disputed domain name, especially when the identification is sought through the trademark of its competitor based in the same city.

The Panel notes that the Respondent is making a commercial use of the disputed domain names and that it acknowledges in its Response that it well knows the Complainant and its Sentoo products and services. Furthermore, the Panel does not understand how the Respondent could be quickly identified through the Complainant’s trademark.

Given the fact that both parties are competitors in the same city, the Panel finds entitled to consider that such use is made with the intent to misleadingly divert the Complainant’s consumers.

Therefore, the Panel finds that the requirements of Paragraph 4(a)(ii) of the Policy are fulfilled regarding the domain names <sentoo.org>, <sentoo.info> and <sentoo.biz>.

C. Registered and Used in Bad Faith

Pursuant to Paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Respondent has registered and is using the disputed domain names <sentoo.org>, <sentoo.info> and <sentoo.biz> in bad faith.

The Complainant and the Respondent are both specialized in the exploitation and commercialization of Internet products and services. Furthermore, both parties are established in Dakar and the Respondent acknowledges in its Response that the Complainant “is known of public notoriety through its Internet site “sentoo.sn””.

As mentioned above and pursuant to Paragraph 2(b) of the Policy, when registering the disputed domain names, the Respondent has represented and warranted that to its knowledge, the registration of the disputed domain names would not infringe upon or otherwise violate the rights of any third party.

The Panel does not see how the Respondent, which is a direct competitor of the Complainant, could ignore the existence of the Complainant’s trademark at the time it registered the disputed domain names, that is in 2004, and how the use of the trademark of its direct competitor in the three disputed domain names could be considered as a fair use.

The mere fact that the Respondent has indicated its trade name and its address on its website “www.sentoo.biz” does not eliminate the likelihood of confusion in the public’s mind as to the source, sponsorship or affiliation of this website.

As a result, the Panel finds that the disputed domain names <sentoo.org>, <sentoo.info> and <sentoo.biz> have been registered and are used in bad faith by the Respondent and that the requirements of Paragraph 4(a)(iii) of the Policy are fulfilled.

8. Decision

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 names, <sentoo.org>, <sentoo.info> and <sentoo.biz> be transferred to the Complainant, and with regard to the domain names <sonatelmultimedia.com> and <sonatelmultimedia.net>, the Complaint is denied.

Christiane Fйral-Schuhl
Sole Panelist

Dated: April 1, 2005