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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Domisys SAS v. Wachter Consulting Inc.

Case No. D2008-0767

1. The Parties

The Complainant is Domisys SAS, Saint Herblain, France, represented by Lionel Revello, France.

The Respondent is Wachter Consulting Inc., Panama City, Panama.

2. The Domain Name and Registrar

The disputed Domain Name <matйriel.net> (<xn--materiel-dya.net>) is registered with Dynadot LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2008. On May 16, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On May 17, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Complaint was originally submitted in French. The language of the registration agreement is English, and the Complainant did not furnish evidence of an agreement with the Respondent to proceed in French. Therefore, in response to a notification by the Center that the Complaint was administratively deficient (see Rules for Uniform Domain Name Dispute Resolution Policy, paragraph 11), the Complainant filed an amended complaint in English on May 22, 2008.

The Center verified that the Complaint together with the amended 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 May 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2008. The Response was filed with the Center on June 20, 2008.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 26, 2008. 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 is a French company established in Nantes in October 1998. According to the Complaint and the relevant registrar’s WHOIS database, since January 1999 the Complainant has operated a French-language website at “www.materiel.net” through which it sells computers, computer peripherals, and other electronics products. The Complainant owns French national trademark number 01 3 086 049 for the mark MATERIEL.NET, which was registered on March 1, 2001.

The Respondent, a Panama company, registered the Domain Name on May 24, 2006. The Respondent describes its business as “identifying and registering freely available generic dictionary word domain names and building e-commerce websites offering links to eBay auctions of relevant items” through the eBay Partner Network (EPN). As described in the Response and on eBay’s website at “www.ebaypartnernetwork.com”, the EPN is a “profitable affiliate marketing” program that allows third parties such as the Respondent to establish websites that redirect users to relevant pages on an eBay auction website or on an eBay partner’s website. eBay pays the website operator a commission for resulting bids, purchases, or registrations.

The website associated with the Domain Name is headed “matйriel.net”. It displays photographs and descriptions (in French) of laptop computers, computer peripherals, and various consumer electronic products. A visitor clicking on one of these products is taken to a French-language eBay website (in the “.fr” top-level domain) displaying new and/or used versions of the product currently available at auction. Many of these same products are also available from the Complainant through its website at “www.materiel.net”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its MATERIEL.NET trademark and that the Respondent has no right or legitimate interest in using a confusingly similar Domain Name to divert consumers to competing sources of the same products sold by the Complainant. The Complainant contends that this conduct also reflects bad faith on the part of the Respondent.

B. Respondent

The Respondent argues that the Domain Name is simply a generic French word, and that the Respondent is making a bona fide commercial use of the Domain Name in linking Internet users to relevant eBay auction pages in exchange for a commission. The Respondent denies any intent to exploit the Complainant’s trademark and concludes, “Complainant’s allegation of confusion is a natural occurrence when a business chooses to brand itself using a generic dictionary word that has meaning in the category of goods or services that the business operates in.” Any confusion, in the Respondent’s view, results from the Complainant’s weak mark and not from any intent to trade on the Complainant’s reputation.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules,

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

A. Late Filing of Response

The Response was filed a day late. The Respondent sent an email to the Center explaining this partly as a result of its difficulty in opening electronic files transmitted by the Center.

The Panel finds that the one-day delay did not significantly impede the proceedings or prejudice the Complainant. Accordingly, the Panel accepts the Response as filed.

B. Identical or Confusingly Similar

The Complainant owns a registered trademark, MATERIEL.NET, with the word “materiel” spelled without an acute accent mark over the letter “e”. Thus, the trademark represents either a slight misspelling of the French word “matйriel”, or alternatively the English word “materiel”, borrowed from French but without the accent mark.

The test of confusing similarity under the first UDRP element is an objective comparison between the Domain Name and the Complainant’s trademark, in appearance, sound, meaning, and overall impression, to at least a part of the Internet public. See, e.g., Hertz System, Inc. v. Jeff Park, WIPO Case No. D2007-1120 (and cases cited therein); Referral Experts LLC v. Integrated Medical Solutions Corporation, WIPO Case No. D2007-0231.

Here, the distinctive element of the Domain Name, “matйriel”, differs from the distinctive element of the trademark, “materiel”, only in displaying the acute accent over the letter “e”, as the word is commonly spelled in French. This makes the Domain Name, which is an International Domain Name (IDN) using a character (the accented “e”) not found in the ASCII character set, a distinct URL that is not identical to <materiel.net> for purposes of Internet addressing.¹ However, the Domain Name is similar to the trademark in appearance, sound, meaning, and overall impression.

Accordingly, the Panel finds that the Domain Name is confusingly similar to the trademark for purposes of the first element of the Complaint.

C. Rights or Legitimate Interests

The Respondent does not claim a relationship with the Complainant or dispute the Complainant’s assertion that it has not authorized the Respondent to use the MATERIEL.NET mark.

The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:

“(i) before any notice to you of the dispute, your 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; 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’s website is clearly commercial, and although it is headed “matйriel.net”, the Respondent does not claim that it is known by that name. The Respondent argues, rather, that it is in the legitimate business of registering “generic dictionary word domain names” and using them to link website visitors to relevant pages on the French eBay auction website, in exchange for a commission from eBay. Whether or not this constitutes a “bona fide offering of goods or services” within the meaning of paragraph 4(c)(i) (which at least some UDRP panels have viewed as contemplating an offering of goods and services by the Respondent itself – see, e.g., Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings, WIPO Case No. D2005-1277), the list of legitimate interests found in paragraph 4(c) of the Policy is not exclusive. Using a generic domain name to advertise relevant products offered by third parties can in some cases represent a legitimate commercial use of the domain name. See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (and cases cited therein). As the panel in Shirmax Retail Ltd. v. CES Marketing, Inc., AF-0104 (e-Resolution) concluded,

“Where the domain name and trademark in question are generic — and in particular where they comprise no more than a single, short, common word — the rights/interests inquiry is more likely to favor the domain name owner. The ICANN Policy is very narrow in scope; it covers only clear cases of ‘cybersquatting’ and ‘cyberpiracy,’ not every dispute that might arise over a domain name. See, e.g., Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24, 1999)."

Similarly, the respondent in The Landmark Group v. Digimedia L.P., FA285459 (NAF), registered “large numbers of dictionary words” and received revenue from pay-per-click advertising links, at least some of them related to the generic nature of the domain name. The panel in the circumstances of that case held that, “as long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this business model is permitted under the Policy.”

Media General Communications, supra, identified factual circumstances in such cases that support a finding of legitimate interest:

- the respondent regularly engages in the business of registering and reselling domain names, and/or using them to display advertising links;

- the respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;

- the domain name in question is a “dictionary word” or a generic or descriptive phrase;

- the domain name is not identical or confusingly similar to a famous or distinctive trademark; and

- there is no evidence that the respondent had actual knowledge of the complainant’s mark.

Several of these factors apply in the current proceeding. The Respondent here is clearly in the business of registering generic domain names, in several languages, and using them to link to eBay auction pages in the appropriate language. Examples include the domain names <lcd-monitors.com> (English), <cartesgraphiques.com> (“graphics cards” in French), <hydraulikpumpen.com> (“hydraulic pumps” in German), and <subastaspc.com> (“PC auctions” in Spanish). The Domain Name is similarly a dictionary word in French signifying “equipment” and often used in connection with computer hardware and peripherals and other electronic products. (See, e.g., the French Wikipedia category listings published at “www.fr.wikipedia.org/wiki/Catйgorie:Matйriel_informatique”). Moreover, the Respondent uses the Domain Name in connection with auctions of precisely that category of products.

Further, the record does not indicate that the Respondent had actual knowledge of the Complainant’s mark, and the Complainant has not demonstrated that the mark is so well known internationally that persons in Panama or elsewhere in the Americas, for example, would likely have been aware of it. Moreover, the mark itself is not highly distinctive. It is unlikely that the French word “matйriel” could have received trademark protection in France for the categories of goods described by that dictionary word. The mark seemingly consists of a misspelling of that French word (or a correct spelling of an English word), with “.net” appended, suggesting an Internet-based business. The Domain Name is the correctly spelled French word, and so, to the extent that the trademark is distinctive for its misspelling, the Domain Name does not emulate that arbitrary, distinctive element.

Thus, it would appear that the Respondent may have a well-founded claim to a legitimate interest in the generic Domain Name – unless the Complainant establishes that the Domain Name was, more likely than not, registered and used for its trademark rather than generic value. That possibility is better addressed below in connection with the third element of the Complaint.

D. Registered and Used in Bad Faith

The Complainant argues that the Respondent’s intent was to mislead Internet users for commercial gain, creating confusion as to source or affiliation and diverting Internet users to a website selling competing products. The Policy, paragraph 4(b), gives a non-exhaustive list of circumstances indicating bad faith, including the following, which closely tracks the Complainant’s allegation:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”

As discussed above, in connection with the second element of the Complaint, the record suggests that the Respondent chose the Domain Name for its generic value as a dictionary word in French, to link Internet users to a French-language eBay auction website for computer and electronics equipment, consistent with the sense of the Domain Name. The Complainant has not established the likelihood that its MATERIEL.NET trademark, featuring a slightly misspelled version of the French word “matйriel”, was so well-established and widely known that the Respondent must in the circumstances have had the mark in contemplation when it registered the Domain Name. Moreover, the Respondent has registered and similarly employed other generic words and phrases in French and other languages, and the Complainant and Panel have not discovered UDRP or judicial proceedings in which the Respondent was found to have targeted trademarks in pursuing its eBay partnership business.

Thus, the Respondent’s explanation of its business, and its choice of the generic Domain Name, is on balance credible and refutes the Complainant’s inference of bad faith. The Panel finds, therefore, that the Complainant has not on the present record established the second and third elements of the Complaint.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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W. Scott Blackmer
Sole Panelist

Dated: July 10, 2008

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¹ This IDN Domain Name is encoded in Punycode as <xn--matriel-dya.net>, so that it can be processed as a network host name in the more limited ASCII character set. (See Wikipedia article on “Punycode” at http://en.wikipedia.org/wiki/Punycode.) Thus, typing the Domain Name into a web browser produces the Respondent’s website but with <xn--matriel-dya.net> appearing on the address line, and the Registrar’s WHOIS database displays the Domain Name as <xn--matriel-dya.net>.