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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Mrs. Agnиs Troublй v. Agnieszka Bisikirska

Case No. D2008-0791

 

1. The Parties

1.1 The Complainant is Mrs. Agnиs Troublй, of Paris, France, represented by Nathalie Boksenbaum, France.

1.2 The Respondent is Agnieszka Bisikirska, of Wroclaw, Poland.

2. The Domain Name and Registrar

2.1 The disputed domain name <agnesbi.com> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2008. On May 21, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 23, 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.

3.2 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”).

3.3 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 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2008. The Response was filed with the Center on June 14, 2008.

3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on June 24, 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

4.1 The Complainant is a fashion designer and retailer. She sells men’s, women’s and children’s clothing as well as leather goods, jewellery, watches and other fashion accessories and cosmetic products. These products are sold in 190 stores worldwide that trade under the “Agnиs b.” name. The Complainant also sells her products on the Internet from a web site that operates from the <agnesb.com> domain name.

4.2 The Complainant is the owner of numerous registered trade marks, many of which incorporate the text “Agnиs b.” in some form or other. These include:

(a) international registration no. 482198 for the text AGNES B. dated January 18, 1984; and

(b) international registration no. 626306 dated October 12, 1994 in the following form:

4.3 The Respondent is a Polish individual whose full name is Agnieszka Bisikirska. She is an actress and a singer who has previous used the name Agnes in connection with her activities.

4.4 The Domain Name was registered by the Respondent on January 11, 2008. It has been used since that date to direct Internet users to a page on Myspace Music. That page gives a description (albeit at times in somewhat garbled English) of the Respondent’s career, and displays pictures from TV appearances, videos of her performing her songs and “official digital sleeves” for her record releases.

4.5 This web site continues to operate at the time of this decision.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant refers to her business and claims that as a consequence of this and her “many music, cinema and art activities”, she is “renowned around the world” and “one of the most significant symbols of French fashion and culture”.

5.2 She maintains that the Domain Name is confusingly similar to her AGNES B trade marks because it reproduces the terms “Agnes” and “b” and the addition of the letter “i” “does not erase the strong similarity that exists”.

5.3 On the issue of rights or legitimate interests, the Complainant contends that the Respondent has no trade mark and there “is no evidence that the designation agnesbi has a relationship to the Respondent or there is any reason that she has to legitimately adopt that term.” She also contends that the Respondent is not authorised to use the Complainant’s marks and is not making “fair use” of the Domain Name.

5.4 On the issue of bad faith, the Complainant contends that the Respondent “a professional in the music creation …, could not ignore that the registration and use of the disputed domain name would violate [the] Complainant’s rights.” The Complainant also makes reference to a refusal to respond to a letter before action sent by the Complainant’s lawyers.

5.5 The Complainant also appends a French language printout from a Google search that shows that when “www.agnesbi.com” is typed into Google there is a reference to “www.agnesb.com”, but that there are then links to online pages “related to www.agnesbi.com”. From this the Complainant contends that “by exploiting music pages, the Respondent is knowingly passing off on Complainant’s trade marks and renown in order to attract Internet users for commercial gain and therefore clearly falls within the example given in the Policy’s article 4.b.iv”. According to the Complainant, the Respondent “has deliberately sought to create such confusion”.

B. Respondent

5.6 The Response takes the form of an electronic submission. The English of that submission is difficult to follow. However, at heart the Respondent contends that the Domain Name represents her artistic “nick name” that she claims to have “used for years on stage”. It is said to derive from her first name “Agnieszka” and the first two letters of her family name “Bisikirska”.

5.7 She also claims to be “registered in SUISA(CH) as the composer “Agnes B.”

5.8 The Respondent maintains that she has “never heard [about] this company [i.e. the Complainant]” and that as far as she is aware this “company” “does not exist in Poland”. She claims to have travelled in connection with her work and although she is familiar with the “huge names in fashion”, such as “Chanel, Versace, Dior, Kenzo, Klien [and] YSL”, she denies any knowledge of the Complainant’s business.

5.9 The Respondent claims that she chose the Domain Name because “agnesb.com was busy” and that “though I am Agnes B. too so I searched for this address too”.

5.10 The Respondent also makes a number of comments to the effect that she is involved in a different business sector to the Complainant. She also asks that the case be put before the Polish courts where she feels that she will have “chance to fight about my rights”.

6. Discussion and Findings

6.1 The Panel has reviewed the submissions filed by the parties. In the light of this material, the Panel finds as set out below.

6.2 Under the Policy the Complainant must satisfy the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

6.3 The Panel will consider each of these requirements in turn.

A. Identical or Confusingly Similar

6.4 This aspect of this case is quite straight forward. As has already been described, the Complainant is the owner of a registered trade mark for the words AGNES B. alone. The difference between the Domain Name and that mark is simply the addition of the letter “i” and the “.com” TLD. The Panel therefore holds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

6.5 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.6 The Complainant contends that the there is “no evidence that the designation agnesbi has a relationship to the Respondent”. A moment’s thought makes it clear that this is simply not the case. There is no suggestion, and the Complainant does not contend, that there is no real person with the name “Agnieszka Bisikirska”. There are obvious similarities between that name and the Domain Name.

6.7 However, the existence of these similarities is not of itself sufficient to provide the Respondent with rights or legitimate interests for the purposes of the Policy. The question is whether the Respondent chose to adopt the Domain Name because of those similarities or because of any association that the Domain Name may have with the Complainant.

6.8 Ultimately, for the reasons that are set out in greater detail under the heading of “bad faith” below the Panel in this case concludes that the Complainant has failed to prove on the balance of probabilities that it was with the Complainant’s business and reputation in mind that the Domain Name was registered. In the circumstances, the Complainant has failed to make out the requirements of paragraph 4(a)(ii) of the Policy.

6.9 There is an additional point that is worthwhile making clear in this decision. Among the examples of “rights or legitimate” interests in paragraph 4(c) of the Policy are the following:

“(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;”

6.10 In this case the Respondent has used the name “Agnes Bi” for her Myspace Music page and there is no suggestion that this page is anything other than genuine. However, an analysis of whether the first of these factors applies in this case adds very little. The reason is that if this Domain Name was registered for the purpose of taking advantage of the Complainant’s reputation in the name “Agnes B.”, the fact that she then used that Domain Name to further a genuine singing career would not of itself provide her with a “right or legitimate interest”.

6.11 The Panel is also far from convinced that the second of these two factors can be said to apply in this case. Again, as is described in greater detail under the heading of bad faith below, it is questionable to what extent the Respondent has used the term “Agnes Bi” (as opposed to simple “Agnes”) for her activities and there is virtually no evidence before the Panel that this name was used prior to the registration of the Domain Name in January 2008. As a consequence, the Panel is not prepared to hold that the Respondent has been “commonly known” by the name embodied in the Domain Name.

6.12 Accordingly, the question of rights and legitimate interests therefore resolves to the same question that in this case determines the issue of bad faith; namely whether and to what extent the Respondent by adopting the Domain Name did so with the Complainant in mind.

C. Registered and Used in Bad Faith

6.13 Notwithstanding the somewhat confusing manner in which it is put, the Respondent’s case is reasonably clear. She contends that she chose the Domain Name because it comprises the terms “Agnes” and “Bi” and that this is (or is at least a direct derivation of) her name. She also expressly contends that she chose this Domain Name without knowledge of the Complainant. If these claims are correct, the Respondent will succeed.

6.14 It is convenient first to address the question of the Respondent’s knowledge. The Complainant contends that she and her business is “very famous world wide”. The difficulty is that there is no evidence before the Panel as to the extent of that fame. We are told that there is a network of 190 “Agnиs b.” stores through out the world, and in particular Europe, Asia and the United States of America. However, there is no evidence before the Panel as to the extent of the sales and advertising activities of that business in these various territories. Significantly, given the fact that the Respondent is Polish, there is no evidence before the Panel from which the Panel could reasonably conclude that the Respondent as a Pole would be more likely than not to know of the Complainant’s activities¹.

6.15 The Complainant contends that she “gets involved in many music, cinema and art activities and is also renowned around the world for such implication in this business”. The contention appears to be that the Complainant’s involvement with the world of music and cinema and the fact that the Respondent is a singer and an actress, means that the Respondent must have been aware of the Complainant’s activities. However, once again virtually no evidence has been brought before the Panel to support that contention. The Complainant enclosed with her Complaint print outs of a number of web site pages. These describe the Complainant’s involvement (through her production company “Agnиs B. Productions”) with the films “Love Streams” and “Mr. Lonely”. There is also a print out of a page from the Complainant’s own web site which appears (although this is far from clear) to give details of a small number of albums the music for which is accessible on that web site. However, there is no further description of what the Complainant’s involvement in the music and film businesses actually involves and there is no explanation as to why that involvement would more likely than not have come to the Respondent’s attention.

6.16 That is not to say that the Respondent’s position is not without its own difficulties. First, whilst she claims that “Agnes Bi” is her name (or adopted name), it would appear that she has only adopted this precise version of her name with the registration of the Domain Name in January 2008. A copy of the Myspace Music web page to which the Domain Name resolves is enclosed with the Complaint and the Panel has visited that web page in the course of preparation of this decision². From this it would appear that whilst the Respondent has released a number of songs, she has used the name “Agnes” alone (and not “Agnes Bi”) in connection with these releases. She also provides on that web page a description of her appearances as an actress on television and her appearance as a contestant on “Idol” (which appears to be a reference to the Polish version of the international “Pop Idol” television franchise). However, there is nothing either in the Response or on the Myspace Music web page to suggest that the Respondent used anything other than her full name “Agnieszka Bisikirska” in connection with these activities. The Respondent also claims to have registered the name “Agnes B.” with SUISA(CH) (i.e. the Swiss royalty collecting society for songwriters, composers and music publishers). However, “Agnes B” is different to “Agnes Bi” and she also produces no evidence of this registration nor does she describe when exactly she adopted this name.

6.17 Second, there is the fact that the Respondent positively admits that she initially attempted to register <agnesb.com> instead of the Domain Name, but could not do so because it was already taken. Of course, the reason why it was taken is that it was being used by the Complainant for her own activities. In the circumstances, it is to say the least somewhat curious that the Respondent says she checked the availability of the <agnesb.com> domain name, but she did not also check out how that domain name was being used.

6.18 Nevertheless, the Panel concludes that the Complainant has in these proceedings ultimately failed to prove on the balance of the probabilities that the Respondent registered the Domain Name with knowledge of the Complainant’s use of the “Agnиs B.” name.

6.19 Even if the Complainant had so succeeded, there is also the fact that here showing knowledge is not of itself enough. To succeed under the bad faith element of the Policy in this case the Complainant must also show that the Domain Name was registered with the intention of taking some unfair advantage of the reputation that the Complainant had developed in her trade marks. The Complainant contends that the Respondent is knowingly using the Complainant’s trade marks and reputation “in order to attract internet users for commercial gain” and that her activities “clearly fall within the example given in the Policy’s article 4.b.iv.” However, this is ultimately little more that assertion on the part of the Complainant.

6.20 The words of Article 4(b) of the Policy sets out a non-exhaustive list of factors that indicate bad faith. Sub paragraph (iv) refers to:

“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.”

6.21 In a case where a respondent has no obvious connection with the term or terms incorporated in a domain name it is often possible to infer from a combination of the respondent’s knowledge of the complainant’s mark and the commercial use being made of the domain name that the respondent is engaged in activity falling within the scope of article 4(b)(iv) of the policy. However, in the circumstances of this case the Complainant’s task is far harder. She must convince the Panel on the balance of probabilities that notwithstanding the similarities that exist between the Domain Name and the Respondent’s name, that the Respondent registered that Domain Name not with those similarities in mind but because of the similarities that exist between the Domain Name and the Complainant’s mark.

6.22 The Panel believes the Complainant has in this case failed to do that. The only evidence offered in this respect is a print out of a French language search on Google against the term “agnesbi”. The search results take the form of four references to the Respondent’s use of the Domain name but at the top of the search results are to be found the words “Essayez avec cette orthographe: www.agnesb.com”, i.e. the French language equivalent of “Did you mean: www.agnesb.com”. The fact that Google’s software thinks that those typing in the text “www.agesbi.com” may have intended to type in “www.agnesb.com” instead is scant basis upon which to found the argument that it must therefore have been because of similarities with the AGNES B mark or the <agnesb.com> that the Domain Name was registered.

6.23 Against this has to be set the facts that the Respondent has used the name “Agnes” in place of her first name “Agnieszka” for some time and “Bi” is an obvious contraction of her surname “Bisikirska”. It is therefore not implausible that she would choose to adopt the name “Agnes Bi” in connection with her activities. There is also nothing on the Respondent’s Myspace Music page that would suggest that she has in any way sought to capitalise on the Complainant’s reputation in the world of fashion. The page contains no fashion related content.

6.24 There is one last point that needs to be addressed. The Complainant refers to the fact that the Complainant’s lawyer sent a letter before action to the Respondent and the Respondent did not reply. This is said to indicate bad faith.

6.25 There are indeed a number of previous decisions under the Policy in which panels have held this to be a factor that points towards a finding of bad faith. Nevertheless, it all depends upon the circumstances of the case. The Panel does not consider that in this case any great significance ought to be read into the fact that the Respondent, who is an individual, failed to respond to a letter from French lawyers in English, which is obviously not the native language of the Respondent. In any event, the Panel also notes that the letter was somewhat ambiguous. It did not clearly state that proceedings might be started under the Policy nor allege bad faith registration. It instead simply referred to the Complainant trade marks (without actually identifying them), alleged “infringement” and stated that if the Respondent did not comply with the Complainant’s demands then the Complainant’s lawyer “would be obliged to recommend to my clients to take all the necessary steps to take all the necessary steps to immediately introduce any appropriate action against you”. Accordingly, little can be read in terms of bad faith into the apparent failure by the Respondent to explain at that stage why she registered the Domain Name.

6.26 In the circumstances, the Complainant has failed to make out the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Matthew S. Harris
Sole Panelist

Dated: July 7, 2008

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¹ The Panel has also looked on the list of stores on the Complainant’s web site and notes that she does not appear to have a store in Poland.

² As to the legitimacy of having conducted this limited independent investigation, the Panel refers to paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.