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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nabor B.V. Stanhome S.P.A., v. Organization Francisco Vicente

Case No. D2000-0757

 

1. The Parties

The Complainants in these Administrative Proceedings are Nabor B.V., a corporation organized and existing under the laws of the Netherlands with a registered office at 1077 WV, Prinses Irenestraat 59, 1007 JB Postbus 7061, Amsterdam, Netherlands; and Stanhome S.P.A., a company organized and existing under the laws of Italy with a registered office in via Zoe Fontana 200-00131, Rome, Italy.

The Respondent is Organization Francisco Vicente, 40, Octavia House, Arneway St., London SW1 P2TA, England.

 

2. The Domain Name and Registrar

The domain name in issue is "stanhome.com". The Registrar with which the domain name is registered is Register.com, Inc.

 

3. Procedural History

On July 10, 2000, the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and in hard copy on July 14, 2000. The Complaint requested a three-member panel in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules"). The appropriate fees were paid by the Complainant.

On July 13, 2000, the Center sent a Request for Register Verification to the Registrar and on July 14, 2000, the Registrar confirmed that the said domain name "stanhome.com" was registered through the Registrar, that Francisco Visconte is the current registrant of the said domain name, that the Policy is applicable to the said registration and that the registration is in active status.

On July 14, 2000, the Center sent an Acknowledgement of Receipt of Complaint to the authorized representative of the Complainant by e-mail.

In accordance with Paragraph 4(a) of the Rules and paragraph 5 of the Supplemental Rules the Center verified that the Complaint satisfied the formal requirements of the Policy, Rules and Supplemental Rules and that payment in the required amount had been made by the Complainant.

On July 20, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the " stanhome.com " domain name to the Respondent by Post/Courier (with enclosures), by facsimile (Complaint without attachments) and by e-mail (Complaint with attachments). A copy of said Notification was sent to the authorized representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and the Registrar.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on July 20, 2000, and that the Respondent was required to submit a Response to the Center on or before August 8, 2000.

On July 31,2000, the Complainant sent to WIPO two extra pages plus a new annex to be added to the original Response.

On August 7, 2000, the Center received the Response from the Respondent.

On August 21, 2000, the Complainant submitted additional material under cover of a letter dated August 20, 2000, and the Center advised the Complainant by e-mail that the submission of further documentation is not envisaged either by the Policy or the Rules and that the said additional material would not form part of the official case file, but that the Center would forward the documentation to the Administrative Panel to be appointed in the case in whose sole discretion it rests as to whether to take it into account.

On August 23, 2000, the Center proceeded to appoint this three member Administrative Panel having received Statements of Acceptance and Declarations of Impartiality from each of the members. On the same date, the case file was transferred to the Administrative Panel.

In the view of the Administrative Panel, the proper procedures were followed and this Administrative Panel was properly constituted.

 

4. Factual Background

On December 18, 1997, Stanhome Inc., a corporation organized and existing under the laws of the State of Massachussets sold, transferred and assigned to the First Named Complainant all intellectual property owned by Stanhome Inc. and necessary to the conduct of the assignor’s direct selling business throughout the world with the exception of France and with the further exception of certain rights retained in Canada, the USA and Puerto Rico.

On January 1, 1998, the First Named Complainant granted the Second Named Complainant the sole and exclusive right and license to manufacture certain products in Italy together with the sole and exclusive right and license to use in Italy the First Named Complainant's trademark "STANHOME" and the associated device or logo.

The Complainants have submitted a list of registrations for the trademark "STANHOME" registered in the name of the First Named Complainant in numerous jurisdictions throughout the world including the United Kingdom where the Respondent resides.

Arising out of these arrangements the Complainants claim to have sufficient common interest to join together in bringing these Administrative Proceedings.

 

5. Parties’ Contentions

Complainants

The Complainants request that the said domain name should be transferred to the First Named Complainant

The Complainants submit that the said domain name "stanhome.com" is identical or confusingly similar to the trademark "STANHOME" which is owned by the First Named Complainant and used under license by the Second Named Complainant. This Administrative Panel has been provided with documentary evidence supporting this assertion.

The Complainants submit that the Respondent has no rights or legitimate interest in the said domain name. In this regard, the Complainants submit that they have not licensed the Respondent to use the said trademark or to apply for any domain name incorporating the said trademark. The Complainants submit that they have prior rights in that their rights in the said trademark precede the registration of the said domain name by the Respondent. Furthermore the Complainants submit that the Respondent is not (either as an individual, business or other organization) commonly known by the name "STANHOME". The Complainants submit that the Respondent has not used the domain name in relation to any www site.

The Complainants refer to the laws of the USA and England and in particular to the decision of the Court of Appeal in England in British Telecommunications Plc v. One in a Million Ltd. and Others [1999] 1 WLR 903 and argue that the said domain name can only refer to the Complainants. The Complainants argue that any use of said domain name which is so obviously connected with what they claim to be their well known name can only suggests opportunistic bad faith on the part of the Respondent. In this regard they refer to the decisions in Veuve Cliquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Furthermore, the Complainants submit that the Respondent knew of or should have known the Complainants’ trademarks at the time he registered the said domain name given the widespread use and fame of the Complainants’ "STANHOME" trademarks. In this regard, the Complainants refer to the decision in Expedia Inc. v. European Travel Network, WIPO Case No. D2000-0137.

Finally, in their Complaint the Complainants submitted that by registering the said domain name the Respondent has prevented the Complainants from reflecting their "STANHOME" trademark in corresponding domain names.

In additional material submitted on July 31, the Complainants set out a list of the trademarks registered in the name of the First Named Complainant in numerous jurisdictions throughout the world. Furthermore, the Complainants adduced copies of email exchanges between the Respondent and a legal representative of Yves Rocher, a corporation organized under the laws of France and the sole stockholder of the First Named Complainant. The Complainants submit that these exchanges support their submissions that the Respondent has no rights or legitimate interest in the said domain name. In particular in the Respondent’s e-mail of June 2, 2000, the Respondent stated:

"I do not know if your client is still interested in having assigned the Internet Domain Name Stanhome.com… I finally decided that Stanhome does not fit in my plans. There is no reason then for keeping the name myself and preventing your client from using it. Should your client still be interested, please get back to me and we will arrange the assignment of the domain name to your client."

Furthermore, the Complainants submit that this exchange of e-mails establishes that the Respondent registered and is using the said domain name in bad faith. In the Respondent's earlier e-mail of May 8, 2000, the Respondent stated:

"When you first contacted me asking if I was willing to sell to your clients this domain name, I replied that I would have considered a reasonable offer… I feel that 10,000 USD could be valued as a reasonable amicable transactional offer for an immediate transfer of the Domain name Stanhome.com to your customer."

On August 21, 2000, the Complainants sent further additional material in the form of submissions and annexes to the Center. For reasons given below, this Administrative Panel declines to consider the content of same.

Respondent

The Respondent filed a Response on August 7, 2000, in which inter alia the Respondent made some preliminary submissions regarding the entitlement of the Complainants to join in these proceedings.

As regards the distinctiveness of the trademarks and the said domain name, the Respondent submits that the said domain name is an invented word being an acronym for "Slalom Tricks And Nautical HOME", a name which the Respondent intends to use for a www site for enthusiasts dedicated to water skiing and nautical sports. He submits that he is not commonly known by this name as the project has not yet commenced.

He further submits that he has rights and a legitimate interest in the said domain name "stanhome.com" and that it is not necessary for him to use said domain name in order to establish such rights and interest.

He further submits that he cannot be accused of having knowledge of the Respondent’s trademarks as they are not well known marks.

On the subject of whether he registered and is using the said domain name "stanhome.com" in bad faith, the Respondent argues that the Complainants have failed to meet the onus of proof. He states that he is not preventing the Complainants from using a domain name identical or similar to their trademark, nor has he registered the said domain name primarily for the purpose of disrupting the business of a competitor, and moreover the Complainants are not seen by the Respondent as competitors in any future planned use of the said domain name.

The Respondent asserts that the Complainants have failed to establish that the Respondent has registered the said domain name primarily for the purposes of selling, renting, or otherwise transferring the domain name registration to the Complainant or a competitor of the Complainant for valuable consideration in excess of the out-of-pocket costs related to the domain name. He submits that the Respondent neither approached the Complainants nor their competitors or announced that the said domain name was for sale. He stated that he did not act in bad faith because, he never approached the Complainants offering to sell the name and the Respondent never offered to sell the domain name for a price in excess of his out of pocket costs.

Turning to the additional material furnished by the Complainants, the Respondent asks that this material should be ignored as it was generated in the course of "without prejudice" negotiations. In the event that this Administrative Panel should decide to admit this additional material the Complainant submits that the documentation has been taken out of context and the Respondents have not put this correspondence into its full and proper context.

 

6. Discussions and Findings

Paragraph 4.a. of the Policy places the onus on the Complainants to establish that:

(1) the said domain name is identical to a trademark and service mark in which the Complainants have rights; and

(2) the Respondent has no rights or legitimate interest in respect of the said domain name;

(3) the said domain name was registered and is being used in bad faith.

Admissibility of Additional Material

The Complainant has established that the additional material furnished on July 31, 2000, was material which came to the attention of the Complainants’ legal advisors only after the Complaint had been filed, and because the Respondent has had the opportunity to address the issues raised and has not been prejudiced by the late filing of this additional material, this Administrative Panel has exercised its discretion to admit same.

As regards the question of whether this correspondence should be excluded because it was generated on a "without prejudice" basis, as alleged by the Complainant, this Administrative Panel notes that this was not inter partes correspondence and therefore the Respondent’s claims for exclusion cannot be sustained. In reaching this decision, this Administrative Panel is obviously not reaching any decision as to how the Administrative Panel would have dealt with inter partes "without prejudice" correspondence.

The documentation furnished on August 21, 2000, has not been admitted by this Administrative Panel as there is no provision in the Policy, the Rules or the Supplemental Rules for the Complainants to "have the last word." As the Respondent has not been given the opportunity to address these submissions this Administrative Panel must conclude that proper procedures require that the said documentation furnished on August 21, 2000, should be excluded from its deliberations. See J.P. Morgan v. Resource Marketing WIPO Case No. D2000-0035.

Identity or confusing similarity of domain name and trademarks

Having considered the submissions of and evidence adduced by the Parties, this Administrative Panel is agreed that the said domain name is identical to the Complainants’ registered trademark "STANHOME".

Respondent’s Right or Legitimate Interest in respect of Domain Name

As to whether the Respondent has any rights or legitimate interest in the said domain name, it is the view of this Administrative Panel that the Complainants have established a prima facie case that the Respondent has no such right or interest and the Respondent has failed to submit any evidence on this point. This Administrative Panel concludes that the Complainants have satisfied the burden of proof on this issue. In line with the decisions of other administrative panels in earlier disputes, this Administrative Panel would have expected the Respondent to provide some evidence to rebut the Complainants’ case. See for example the decisions in Wal-Mar t Stores, Inc. v. Walmarket Canada WIPO Case No. D2000-0150. May 2, 2000; Jordan Grand Prix Limited v. Gerry Sweeney WIPO Case No. D2000-0233, May 11, 2000; AT&T Corp. v. Tala Alamuddin, Case No. D2000-0249. May 18, 2000; Nandos International Limited v. M. Fareed Farukhi, WIPO Case No. D2000-0225, May 23, 2000; Stella D’oro Biscuit Co., Inc. v. The Patron Group, Inc. WIPO Case No. D2000-0012, February 17, 2000.

Registration and Use in Bad Faith

Having considered the submissions and evidence, this Administrative Panel is satisfied that the Complainants have established that the Respondent has registered and is using the said domain name in bad faith.

In this regard, this Administrative Panel accepts that the e-mail correspondence adduced in the additional material submitted on July 31, 2000, proves that the Respondent registered the said domain name with the primary intention of selling the domain name to the Complainants. It has further been unanimously agreed that the Complainants have made out a prima facie case that the Respondent registered the domain name to prevent the use by the Complainants of a domain name incorporating the Complainants’ trademarks.

 

7. Decision

With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules this Administrative Panel decides that the Respondent has registered the domain name "stanhome.com" identical or confusingly similar to the Complainants' trademark, that the Respondent has no rights or legitimate interest in respect of said domain name and that the Respondent has registered and used that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name "stanhome.com" should be transferred to Nabor B.V.

 


 

James Bridgeman
Presiding Panelist

Anna Carabelli M. Scott Donahey
Panelists

Dated September 7, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0757.html

 

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