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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Patisfrance S.A. v. Paris Gourmet of New York

Case No. D2006-0074

 

1. The Parties

The Complainant is Patisfrance S.A., Rungis, France, represented by Cabinet Fidal, France.

The Respondent is Paris Gourmet of New York, Carlstadt, New Jersey, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <patisamerica.com> and <patisfrance.com> are registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint (in French language) was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2006. On January 18, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On January 19, 2006, Network Solutions, LLC 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. In response to a notification by the Center that the Complaint was administratively deficient as regards the language of the administrative proceedings, the Complainant filed an amended Complaint in English by email on February 3, 2006, hardcopy of which was received by the Center on February 6, 2006. 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 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2006.

The Center appointed Christophe Imhoos as the Sole Panelist in this matter on March 8, 2006. 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.

In the meantime, the Center had sent an email to the Respondent on March 3, 2006, noting that the Complaint had been notified in French in electronic form, but nevertheless advising that the hard copy of the Complaint in English had been sent on the date of notification by courier. As pointed out by the Center, the Panel is satisfied that the Respondent did receive, with the Notification of Complaint and Commencement of Administrative Proceeding, the appropriate documents timely.

 

4. Factual Background

The Complainant designs, produces and distributes products intended for sale in the “Bakery-Viennoiserie-Pastry” sector and has been selling its products and services in France and the USA for more than ten years.

The Complainant registered the following trademarks (Annex 3 to the Complaint):

- on March 18, 1987, the French trademark “Patisfrance” No. 1 444 304, renewed on February 18 1997;

- on April 8, 1987, the French trademark “Patisfrance” No. 1 402 443, renewed on February 18, 1997;

- on January 5, 1998, the French trademark and logo “Patisamerica” No. 98 711 566.

The Complainant owns the website and domain name <patisfrance.net>.

 

5. Parties’ Contentions

A. Complainant

The Complainant’s arguments are the following.

(i) The domain name is identical or confusingly similar to a trade or service marks in which it has rights.

Such a requirement is met as the domain names are identical to the trademarks covering the products and services owned by the Complainant.

(ii) The Respondent has no rights or legitimate interests with regard to the domain name.

The Complainant entered into a distribution agreement with the Respondent on December 31, 1991, followed by a second exclusive distribution agreement on January 1, 1999, whereby the former granted an exclusive licence to the latter for the use of the trademarks “Patisfrance” and “Patisamerica”.

On June 23, 2003, the Complainant informed the Respondent of its decision not to renew the January 1, 1999 agreement which was terminated on December 31, 2003. The Parties eventually made mutual concessions and entered into a settlement agreement on June 28, 2004 whereby, in particular, the Respondent undertook to assign to the Complainant all of its rights to the trademarks as well as to the websites “www.patisfrance.com” and “www.patisamerica.com”; to this end, the Respondent had to sign deeds of assignment of said trademarks and websites in order to carry out the assignment without delay (Annex 4 to the Complaint).

However, the Respondent refused to transfer the domain names for the websites referred to in the settlement agreement.

Since the conclusion of the aforementioned settlement agreement, the Respondent has no rights or legitimate interests with regard to the domain names at issue.

Moreover, it appears that the website “www.patisamerica.com” is not used (Annex 5 to the Complaint). The Respondent therefore does not use this domain name.

(iii) The domain name was registered and is being used in bad faith.

In light of the business relationship that existed previously between the Complainant and the Respondent, the latter could not be unaware of the Complainant’s rights to the trademarks PATISFRANCE and PATISAMERICA. The Complainant duly performed all of the commitments made pursuant to the June 28, 2004 agreement whilst the Respondent refused to perform its obligation with regard to the transfer of the domain names, which is evidence of bad faith use of the domain names in question.

Moreover, it appears that the registration of the domain name <patisfrance.com> was due to expire on November 16, 2005; however, the Respondent renewed the registration of this domain name on September 12, 2005, which clearly shows its bad faith with regard to the registration of the domain name (Annex 6 to the Complaint). Likewise, the Respondent renewed the registration of the domain name <patisamerica.com> on July 8, 2004, namely several days only after the settlement agreement had been signed, this also showing bad faith. Moreover, no website is operated under this name (Annex 5 to the Complaint), which proves that the Respondent refuses to transfer it with the patent aim of harming the Complainant.

In light of the foregoing, it is clear that the Respondent cannot claim that, after the date of signature of the settlement agreement, it was not aware that it no longer had any rights to the websites at issue. The Respondent deliberately disrupted the Complainant’s business operations and attempted to attract Internet users to a site to which the rights had been assigned on June 28, 2004.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to paragraph 4(a) of the Policy.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the trademarks PATISFRANCE and PATISAMERICA with various registrations for such names (see Annex 3 to the Complaint).

The Complainant also submits conclusive evidence that its trademarks PATISFRANCE and PATISAMERICA are confusingly similar to the domain names <patisamerica.com> and <patisfrance.com> respectively.

For the above reasons, the Panel finds that the disputed domains are confusingly similar to Complainant’s trademarks, the “.com” extension being of no relevance as far as this first element is concerned.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (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 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.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 or Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867).

As already said, the Complainant has established that the PATISFRANCE and PATISAMERICA trademarks have been known for a significant period of time (see Annex 3 to the Complaint).

As mentioned in its Complaint, the Complainant did grant licenses permitting the Respondent to use the domain names incorporating the said trademarks. However, the Complainant submits prima facie evidence – not disputed so far by the Respondent – that the licences related to the use of the domain names in question were reverted to the Complainant in June 2004 pursuant to a settlement agreement (Annex 4 to the Complaint).

Under these circumstances and absent evidence to the contrary, the Panel considers that the Respondent has not any further rights or legitimate interests in respect of the disputed domain names by virtue of the said agreement.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:

(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you [the Respondent] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.

As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the domain name in issue.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Complainant has submitted prima facie evidence, absent evidence to the contrary, that the Respondent did not transfer the domain names <patisamerica.com> and <patisfrance.com> to the Claimant as per the plain terms of the June 2004 settlement agreement (Annex 4 to the Complaint);

The Complainant also submitted prima evidence that the Respondent renewed the domain names in questions (Annex 6 to the Complaint) despite the settlement agreement.

Although the domain name <patisamerica.com> does not lead to an active site (Annex 5 to the Complaint), this may be characterized as bad faith use according to previous administrative panels decision that held that passive use of a domain name constitutes bad faith registration and use under certain circumstances (see e.g. Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

However, the issue in this instant case is whether the renewal of the registration of those domain names amount to a registration for the purposes of determining whether domain name was registered in bad faith.

While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name does not amount to registration for the purposes of determining bad faith; registration in bad faith must actually occur at the time the current registrant initially took possession of the domain name (see e.g. Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI) WIPO Case No. D2001-0782; PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338).

The issue of whether renewal of a registration made in bad faith can convert a name originally registered in good faith to a name registered in bad faith was, in particular, addressed head-on in Weatherall Green & Smith v. Everymedia.com, WIPO Case No. D2000-1528. The Panel in that case found no evidence that the original registration was obtained in bad faith. The Panel did find that the registration was renewed in bad faith and that at the time of the renewal the domain name was being used in bad faith. However, even in light of this finding, the Panel did not find a violation of the UDRP, concluding that “a registration of a domain name that at inception did not breach Rule 4(a)(iii) but is found later to be used in bad faith does not fall foul of Rule 4(a)(iii)”. The Panel also relied on the Report of the WIPO Internet Domain Name Process (April 30, 1999) which states that the Report was not intended to extend the definition of abusive registration “to include domain names originally registered in good faith”. The authors of the Report could have extended their understanding of the UDRP to cover registrations obtained in bad faith either at the time of the original registration or at the time of renewal. It chose not to do so. Similarly, the Policy could have been drafted to address both bad faith registration and bad faith renewal. It does not, referring only to a registration having been obtained in bad faith (Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI) WIPO Case No. D2001-0782).

In the instant case, the Complainant does not contend that the registration of <patisamerica.com> and <patisfrance.com> was made in bad faith. As regards renewal thereof, even if it may considered that this was made in bad faith, this does not alter the fact the domain names in questions were initially registered in good faith, absent arguments and evidence to the contrary. As bad faith did not actually occur at the time the registrant took possession of the domain names at stake, the Complaint must be therefore denied, for lack of bad faith registration.

The Complaint is denied due to lack of evidence of bad faith registration. The decision is of course not in any way meant to prejudge or influence an eventual national court proceeding between the parties, which would be conducted under different procedural and substantive rules.

 

7. Decision

For the foregoing reasons, the Complaint is denied.

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Christophe Imhoos
Sole Panelist

Dated: April 4, 2006