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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

GROSBILL v. JT2M

Case No. D2006-1000

 

1. The Parties

The Complainant is GROSBILL, Paris, France, represented by Cabinet Dreyfus & Associйs, France.

The Respondent is JT2M, Tarbes, France.

 

2. The Domain Name and Registrar

The disputed domain name <grosbill.info> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2006. On August 8, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 11, 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. The Center verified that 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 August 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2006.

The Center appointed Christiane Fйral-Schuhl as the sole Panelist in this matter on September 20, 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.

 

4. Factual Background

The Complainant GROSBILL S.A., is a subsidiary of the French company AUCHAN, a worldwide leading retail group. The Complainant was founded in 1998 and is specialized in computers, digital technologies and new technologies business in France and on the Internet.

The Complainant is the owner of numerous trademarks, among which:

- French trademark GROSBILL No. 99807022, filed on August 6, 1999, and covering goods and services in classes 9, 37 and 38;

- French trademark GROSBILL.COM No. 053353528 filed on April 7, 2005, and covering goods and services in classes 9, 37 and 38;

- International trademark GROSBILL.COM No. 875846 filed on October 7, 2005, covering goods and services in classes 9, 37 and 38, and designating Benelux, Spain and Swiss;

- French trademark GROSBILL.COM No. 063403347 filed on January 13, 2006, and covering goods and services in classes 9, 16, 35, 37, 38, 39, 41 and 42.

The Complainant also owns many domain names among which <grosbill.eu>, <grosbill.ch>,<grosbill.pl>.

The Respondent registered the disputed domain name<grosbill.info> on February 12, 2006.

Before starting this administrative procedure, the Complainant sent to the Respondent a cease and desist letter on March 1, 2006, requesting that the disputed domain name be transferred to the Complainant.

By two letters of March 7, 2006, and May 10, 2006, the Respondent’s legal counsel answered that his client – the Respondent - wanted a financial counterpart. Consequently, the Complainant offered to pay 50 € on June 7, 2006.

On July 7, 2006, the Respondent answered that he would accept to transfer the disputed domain name for an amount of 5000 €.

It is in this context that the Complainant started this administrative procedure.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to the Complainant’s French and International trademarks “GROSBILL” and “GROSBILL.COM”.

The Complainant underlines that it has been held in numerous WIPO decisions that the specific top level of a domain such as “.info” shall be disregarded when determining whether the disputed domain name is identical or not, and that the addition of the top level domain such as “.info” does not remove the likelihood of confusion.

The Complainant also claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant indicates that the Respondent is not affiliated with the Complainant in any way and consequently, has never been authorized by the Complainant to use or register the Complainant’s trademarks, nor to seek the registration of a domain name incorporating the Complainant’s trademarks. Furthermore, the Complainant registered its first trademark GROSBILL in August 1999, so six years before the registration of the disputed domain name by the Respondent. Besides, the Complainant contends that the Respondent has never been commonly known in any business matters under the name “GROSBILL”, and is even not using the disputed domain name in connection with a bona fide offering of goods and services, since the domain name is currently inactive; the disputed domain name indeed redirects Internet users to the Domain Name Parking Program of AMEN France, which is a French Internet Service Provider.

Finally, the Complainant asserts that the disputed domain name was registered and is being used in bad faith by the Respondent.

According to the Complainant, given the fact that the Complainant’s trademarks are well-known, especially in France, and given the geographical location of the Respondent, that is France, it is obvious that the Respondent knew or must have known the trademark GROSBILL at the time he registered the disputed domain name.

The Complainant also considers that the disputed domain name is used in bad faith by the Respondent since the Respondent is holding this domain name passively, without running any business under this domain name, and with the intent to make a profit from its illegitimate registration, as it clearly appears in the correspondence when he offered to sell it to the Complainant for 5000 €. Finally, the registration by the Respondent of the disputed domain name prevents the Complainant from registering its own trademarks as a domain name.

B. Respondent

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

 

6. Discussion and Findings

Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in accordance with Paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

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

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

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

However, under Paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences there from as it considers appropriate”.

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

The Complainant has proven that it is the owner of the trademarks “GROSBILL” and “GROSBILL.COM” and that both trademarks are protected in particular on the French territory.

These trademarks, and in particular, the trademark “GROSBILL”, registered by the Complainant in 1999, is incorporated in its entirety in the disputed domain name <grosbill.info>. The suffix “.info” is incidental to domain names and cannot serve to distinguish them.

The Panel therefore finds that the domain name <grosbill.info> is identical to the Complainant’s trademark “GROSBILL” and as a consequence, the action brought by the Complainant meets the requirement of Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant must demonstrate that the Respondent has no rights to, or legitimate interests in the disputed domain name.

The Complainant indicates that:

(i) the Respondent is not affiliated to the Complainant and has never been authorized to use or register the Complainant’s trademark;

(ii) the Respondent is not commonly known, in the normal course of business, by the trademark, trade name or domain name “GROSBILL”;

(iii) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, since the disputed domain name is currently inactive.

The Panel observes, in the evidence produced by the Complainant, that the disputed domain name indeed redirects Internet Users to a default page which consists in a parking place of the French Internet Service Provider Amen, enabling the Panel to conclude that, at the time of the Complaint, there was no use of the disputed domain name, and in the absence of contrary evidence submitted by the Respondent, the Respondent was not commonly known by the domain name <grosbill.info>.

No Response has been submitted by the Respondent challenging the Complainant’s assertions or proving any rights or legitimate interests in the disputed domain name, while the Respondent had been given the opportunity to do so pursuant to Paragraph 4(c) of the Policy.

The Panel therefore infers from the Respondent’s silence and the Complainant’s evidence that the Respondent has no rights or legitimate interests in the domain name <grosbill.info>. The Panel therefore finds and considers that the requirements of Paragraph 4(a)(ii) of the Policy are fulfilled.

C. Registered and Used in Bad Faith

The Complainant owns the trademark “GROSBILL” since 1999. The Complainant is well-known in France. The Respondent is located in France.

Therefore, the Panel finds that the Respondent in all likelihood was aware of, the Complainant’s trademarks at the time it registered the domain name <grosbill.info>, that is on February 12, 2006, and that such registration occurred in infringement of the Complainant’s trademarks and trade name rights.

In addition, the Respondent did not file any Response that would have proven it had the right to carry out such registration.

As a consequence, the Panel finds that the registration by the Respondent of <grosbill.info> was performed in bad faith.

With regard to the use in bad faith of the disputed domain name, Complainant’s evidence shows that the default page of “www.grosbill.info” consists in a parking place of the French Internet Service Provider Amen, inferring that there is currently no positive action undertaken by the Respondent in the use of the domain name <grosbill.info> but a mere “passive” holding of that domain name by the Respondent.

As stated in the decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.D2000-0003, and confirmed in subsequent WIPO decisions, “[…] the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name “being used in bad faith” is not limited to positive action; in action is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith. […]”, such circumstances including, as held in the aforementioned decision, the fact that:

- “the Complainant’s trademark has a strong reputation and is widely known, […]”;

- “the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name”.

Furthermore, evidence produced by the Complainant shows that the Respondent offered to sell the disputed domain name for 5000 €, which is far in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name.

Finally, since the Respondent was probably aware of the Complainant’s registration of the GROSBILL and GROSBILL.COM trademarks, and has in any case been informed less than one month after the registration of the disputed domain name, of the existence of the Complainant’s rights on these trademarks by the Complainant’s counsel, the Panel cannot conceive of any plausible actual use of the disputed domain name that would be legitimate, especially when the answer of the Respondent consists in an offer to sell the disputed domain name for 5000 €.

The Respondent did not submit any Response or evidence proving that it used the disputed domain name in good faith, whereas it had been given the opportunity to do so.

Therefore, the Panel finds that the domain name <grosbill.info> was registered and is used by the Respondent in bad faith and considers the requirements of Paragraph 4(a)(iii) of the Policy to be fulfilled.

 

7. 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 name, <grosbill.info> be transferred to the Complainant.

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Christiane Fйral-Schuhl
Sole Panelist

Dated: October 4, 2006