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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Concept & Forme SA v. Yuval Goren

Case No. D2006-1515

 

1. The Parties

The Complainant is Concept & Forme SA, Bois de Villers, Belgium, represented by Ramquet, Pricken, Sonnet & Lemmens, Belgium.

The Respondent is Yuval Goren, California, United States of America, self-represented.

 

2. The Domain Name and Registrar

The disputed domain name <stuv.com> is registered with NamesDirect.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2006. The Complaint was initially made against the two domain names: <stuv.com> and <stuv.net>.

On November 30, 2006, the Complainant transmitted by email to the Center an amended Complaint. In view of paragraph 3(c) of the Rules the amended Complaint (the “Complaint”) did not list the domain name <stuv.net> as a domain name in dispute (as this domain name was registered with a different domain name holder) and listed the domain name <stuv.com> as the sole domain name in dispute.

On November 30, 2006, the Center transmitted by email to NamesDirect a request for registrar verification in connection with the domain name at issue <stuv.com>. On November 30, 2006, NamesDirect 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 December 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2007. The Response was filed with the Center on December 24, 2006.

The Center appointed Thomas Webster as the sole panelist in this matter on January 12, 2007. 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 claims the following interests in the trademarks below:

(i) it is the owner of a Benelux descriptive mark for STUV, registration number 0650205, registered on December 1, 1999; and

(ii) on December 8, 2005, it applied for registration of the STUV descriptive mark with the European trademarks authority, application number 004774204.

The Complainant attaches copies of the above registration and application as Exhibits 5 and 6 to its Complaint.

The Complainant states that “most of the customers of [the Complainant] are established in BENELUX and in EUROPE”. (Complaint, section V(A), paragraph 2, page 7).

The Complainant also claims to be the holder of the “commercial name” of STUV, and has “reserved” the domain names ending in “.be”, “.nl” and “.eu” for the STUV mark (Complaint, section V(A), paragraph 2, page 6).

The Respondent is in the business of “high-tech consulting, in the areas of wireless communications” (Response, section III(B), page 4). The Respondent claims to have publicly used the disputed domain name for personal and business purposes for over fifteen years.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the STUV mark, aside from the trademark registration and application listed above, by alleging that it is “the holder of the commercial name “STUV”, which protection can be guaranteed on base of article 4 of the Paris Convention for the Protection of Industrial Property of March 20, 1883. [The Complainant’s] commercial activity is based on this commercial name and it has already reserved different domain names on base of theses (sic) trademarks and commercial name, under suffixes “.be”, “.nl” and “.eu”. Because of the trademarks, the commercial name and the domain names, which are registered or used before that the Respondent has registered the domain name <stuv.com>, [the Complainant] has prior right on this domain name”. (Complaint, section V(A), paragraph 2, page 6).

The Complainant also claims that “the access to the Internet via the domain name ‘stuv.com’ can only be used by one holder. At present time, this access and the exploitation of the website ‘stuv.com’ are not possible because of the squat of the respondent. By squatting of the domain name […], the Respondent prevents visitors, inside and outside Europe or Benelux, from contacting, getting information or doing business with the Complainant via this website […]. So, the Respondent is interfering with the effectivity (sic) and the visibility of the trademarks and commercial name. […] [The Complainant] may require and has to be able to use these trademarks on the Internet via the generic domain name ‘stuv.com’, even if the trademark’s protection is limited on the territory of Benelux and Europe. Because of the worldwide access to a domain name by the internet, the domain name and the website ‘stuv.com’ has to be effective and has to be accessibles (sic) from EUROPE and BENELUX’s territories, but also from outside these areas”. (Complaint, section V(A), paragraph 2, pages 6 to 7; emphasis in original).

The Complainant addresses the issue of whether the Respondent has any rights or legitimate interests in the domain name by stating that “[a]ttention will be paid to the following relevant aspects, relating to the Policy, para. 4(c):

- before any notice to the Respondent of the dispute, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name and has not acquired any trademark or service mark right or any commercial name”. (Complaint, section V(B), page 7).

With respect to whether the domain name was registered and is being used in bad faith, the Complainant contends that “[i]n accordance with Rules, para. 3(b)(ix)(3), the domain name must be considered as having been registered and used in bad faith by the Respondent. Actually, in accordance with, the Policy, para. 4(b), attention shall be paid to the fact that the domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain names registrations to the Complainant (or to a competitor of the Complainant), for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain names. (Complaint, section V(C), page 8).

The Complainant seeks the transfer of the domain name to the Complainant (Complaint, section VI).

B. Respondent

The Respondent seeks that the Complaint be denied.

With respect to whether the domain name is identical or confusingly similar to the trademarks in which the Complainant has rights, the Respondent states the following:

- “the Complainant seems to have a Benelux figurative trademark registered in 1999. This figurative trademark is only protected in the territory it was registered (Benelux) and should not limit the use of the STUV name in the United States of America. The local use of the Complainant of the STUV figure can not interfere with the use of the STUV name is (sic) other locations in the world.

- The Respondent has registered the domain <stuv.com> in year 2000 for use in the USA and as such does not conflict with the Benelux figurative trademark of the Complainant.

- The Complainant had only the .be domain registered before the Respondent registered <stuv.com>. The .nl and .eu have been registered in 2001 and 2006 respectively. The Complainant can not claim any prior use or prior right of the STUV name on a global basis.

- The Respondent is not “squatting” the domain name but is using it on a daily basis as an important email communication tool for both personal and business activities.

- The commercial activity of the Complainant is Benelux and Europe does not give it an automatic priority or ownership right of any stuv.xxx domain in the world.” (Response, section III(A), page 3; emphasis in original).

The Respondent addresses whether it has rights or legitimate interests in respect of the domain name by stating the following:

“- The Respondent is publicly using the STUV name since his marriage in 1989 as it represents the nicknames of the Respondent’s wife (ST) and the Respondent nickname (UV).

- The Respondent is known among his community and business partners by the STUV name, after using it in public for over 15 years.

- As an example for the use the Respondent has established with the STUV name […] the Respondent’s vehicle registration document from the State of California [is attached as exhibit 1 to the Response]. The Responded (sic) vehicle is licensed under the STUV name and his car carries a license plate with the STUV name.

- The Respondents (sic) has established a California business partnership, named ST International in 1999 and a Delaware Corporation name Goren Int’l in 2003. The Respondent is massively using the <stuv.com> domain for email communication for both personal and business activities since its registration in year 2000. The Respondent has about 20 email addresses and aliases under the <stuv.com> domain name and is receiving hundreds of emails per day for those email addresses.

- The Respondent business is in high-tech consulting, in the areas of wireless communications, and as such has never used the domain name to divert any customers from the Complainant or to tarnish the figurative trademark of the Complainant.

- The Respondent is not squatting the domain name but is using it extensively for both personal and business email communication purposes since its registration in 2000.” (Response, section III(B), page 4).

The Respondent denies that the domain name was registered and is being used in bad faith by alleging the following:

“- The Respondent is actively using the domain since 2000 and has never proposed to sell, rent or transfer the domain name to anybody or any entity, or to use it in any other way but for its own electronic communication needs.

- The Respondent has never heard about the Complainant (until the compliant (sic) has been filed), it does not compete with the Complainant and has never attempted to disrupt the Complainant’s business.

- Moreover, the Respondent has been contacted by [a third party, not related to this dispute] on (sic) July 2006 and was asked to sell the domain name for $4000. The Respondent has refused to sell the domain name as it is used for the Respondent own business. […] This is just another indication that the Respondent has never had any intention to sell the domain name or use it in bad faith.” (Response, section III(C), page 5).

 

6. Discussion and Findings

In order to grant the Complainant the relief which it seeks, the Panel needs to be satisfied that all of the following elements have been proven pursuant to paragraph 4(a) of the Policy:

(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 names; and

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

(i) Identical or Confusingly Similar to a trademark or service mark in which the Complainant has rights

The Complainant has rights to the Belgian trademark STUV. The domain name is identical to the trademark. Therefore, the Complainant has satisfied the first requirement of the Policy.

(ii) Rights or Legitimate Interests

Considering the Panel’s finding under the third element of the Policy the Panel does not need to decide on the second element.

(iii) Registered and Used in Bad Faith

The Complainant claims that the Respondent has registered and is using the domain name in bad faith, and that therefore, under the Policy, the domain name should be transferred to it. In particular, the Complainant claims that “the domain name [was] registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain names registrations to the Complainant (or to a competitor of the Complainant), for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain names”. (Complaint, section V(C), page 8).

However, the Complainant provides no evidence of such allegation. The Case file does not provide any evidence that the Complainant has in fact been in contact with the Respondent, or that the Respondent has contacted it or a competitor of the Complainant. It therefore does not appear from the record that there is any issue of the Respondent attempting to sell, rent or otherwise transfer the domain name to the Complainant or a competitor of the Complainant.

Further, the record contains no indiction of any other act which may give rise to bad faith under paragraph 4(b) of the Policy, such as preventing the Complainant “from reflecting the mark in a corresponding domain name” or any evidence that the Respondent “has engaged in a pattern of such conduct” (Policy, paragraph 4(b)(ii)).

Nor does the Complainant claim (or provide any evidence) that the Respondent “registered the domain name primarily for the purpose of disrupting the business of a competitor” (Policy, paragraph 4(b)(iii)).

There is also no claim or evidence by the Complainant that by using the domain name, the Respondent is “intentionally attempting to attract, for commercial gain, internet users to the Respondent’s 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 [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location”. (Policy, paragraph 4(b)(iv)).

Although the above provisions under the Policy are only a guide to proving bad faith and are not exhaustive, the Panel considers that there are no other issues raised by the Complainant which could bring its allegations within the ambit of the Policy.

In this regard, the Complainant’s claim appears to be based on the fact that, as it has a registered mark in Benelux, as well registered the STUV mark with the “.be”, “.nl” and “.eu” country code domains, then this entitles it to have exclusive rights in the “.com” generic domain. The Policy does not envisage, nor provide for this argument, unless, at least, the three elements under paragraph 4(a) are present and satisfied. This is not the case in these proceedings.

The evidence of the Respondent, however, supports the Respondent’s claim that it registered and is using the domain name in good faith. Attached to the Response is a printout of three emails. The first email is to the Respondent at email address [name]@egoren.com, dated July 4, 2006. The email is from a German lawyer who wrote that his client, who is unrelated to these proceedings, “is interested in acquiring the Internet-Domain stuv.com. Please let me know whether you are interested in selling the aforementioned domain”.

The Respondent replies to the said email on July 5, 2006, by using the <stuv.com> “domain name ([name]@stuv.com)”. The Respondent writes “Please be advised that we are not considering selling the aforementioned domain since it is used for our business”.

Later, on September 20, 2006, the same German lawyer wrote to the Respondent again and offered US$4000 for the transfer of the domain name to his client. There is no response to this email attached to the Response, but the Respondent maintains that it has “refused to sell the domain name as it is used for the Respondent’s own business”. (Response, section III(C), page 5).

The Respondent’s evidence supports its claim that it is using the domain name. As set out above, the Respondent is using the domain name to reply to emails. It has also refused to sell the domain name as it uses the domain name for its business activity. There is no evidence from the Complainant to contradict this claim.

The Complaint is silent as to whether the Respondent was aware of the Complainant prior to the commencement of these proceedings. The Respondent states that it was not aware of the Complainant prior to receiving the Complaint (Response, section III(C), page 5). Evidence that the domain name was registered “with the Complainant’s trademark in mind” must be provided in order to determine bad faith (HP Hood LLC .v. hood.com, NAF Case No. 313566 (November 9, 2004); Village Resorts Ltd. v. Steven Lieberman, WIPO Case No. D2001-0814 (August 29, 2001); Futureworld Consultancy Pty Ltd. v. Online Advice, WIPO Case No. D2003-0297 (July 18, 2003)). In the case of famous trademarks, this requirement may perhaps be met by inference. However, in the present case, the Panel is not satisfied that the Respondent, based in the United States of America, would have been aware of the Complainant or its trademark.

As a result, for the above reasons, the Complaint therefore fails as the element of bad faith is not proven.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Thomas Webster
Sole Panelist

Dated: January 24, 2007