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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FLOS S.P.A. v. Victory Interactive Media SA
Case No. D2000 0771
1. The Parties
The Complainant is FLOS S.P.A. a body incorporated in Italy having a place of business at Via Angelo Faini, No. 2, 25073, Bovezzo, Italy.
The Respondent is Victory Interactive Media SA, of Viale P. Capelli, No. 8, CH 6900, Lugano, Switzerland.
2. The Domain Name and Registrar
These Administrative Proceedings are concerned with the domain name "flos.com". The Registrar with which the said domain name is registered is Network Solutions, Inc.
3. Procedural History
The Complaint was submitted to the WIPO Arbitration and Mediation Center ("the Center") by e-mail on July 11, 2000, and was received in hardcopy on July 14, 2000.
In accordance with paragraph 4(a) of the Rules of Uniform Domain Name Dispute Resolution Policy ("the Rules") and paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 2000, the Rules and Supplemental Rules and that payment in the required amount had been paid to the Center by the Complainant.
On September 18, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceedings to the Respondent and inter alia advised the Respondent that these Administrative Proceedings commenced on September 18, 2000, that the Respondent was required to submit a Response to the Center by Saturday October 7, 2000. A copy of said Notification was sent by e-mail to the Complainant and by e-mail to ICANN and to the Registrar.
The Center received the Response from the Respondent on October 8, 2000, by e-mail and in hard copy on October 10, 2000.
On October 10, 2000, the Center sent an Acknowledgement of Receipt of Response to the Respondent and proceeded to appoint an Administrative Panel.
Having received a Declaration of Independence and Impartiality from James Bridgeman, the Center proceeded to appoint said James Bridgeman as Administrative Panel in these Administrative Proceedings and transmitted the Case File to the Administrative Panel on October 16, 2000.
This Administrative Panel is satisfied that proper procedures have been complied with and that this Administrative Panel has been properly appointed.
Having reviewed the Case File, this Administrative Panel sought translations into the language of these Administrative Proceedings, of certain documents which had been submitted as annexes to the Complaint and the Response. In the interest of fair procedures, this Administrative Panel also sought further submissions from the Parties relating to the said translations.
This Administrative Panel set deadlines for the submission of the said translations and said submissions and proceeded to consider the translations and submissions furnished within the said deadline and to determine the issues in dispute.
4. Factual Background
There are few undisputed facts in this case. It is accepted by both parties that the Complainant has over many years established a reputation in the business of industrial lighting design and is the owner of numerous registered trademarks throughout the world including the Italian registered trademark "FLOS" which was first registered by the Complainant in 1970.
Both parties have registered domain names. The Complainant has registered a large portfolio of domain names viz. "flos.it", "flos.net", "flos.no", "flos.cc", "floslighting.com", "flosonweb.com", "worldwideflos.com", "flosonline.com", "wwflos.com", "hardflos.it", "floscontract.it", "hardflos.com" and "floscontract.com", most of which are linked to the Complainant’s www site. The Respondent has also registered a number of domain names, details of which are given below, including the said domain name "flos.com" which was registered on June 28, 1996.
5. Parties’ Contentions
The Complainant seeks the transfer of the said domain name "flos.com" to the Complainant.
In support of said application, the Complainant submits that it has rights in the trademark "FLOS" by virtue of its said trademark registrations and at common law and that the said domain name "flos.com" is identical or confusingly similar to the Complainant's said trademark.
Moreover the Complainant argues that the Complainant is the world forerunner in industrial lighting design and the Complainant’s said trademark has become very well known to such an extent that it has become a famous mark and thereby entitled to protection in classes beyond those classes in which the said trademark has been registered.
Furthermore the Complainant submits that it has registered, either directly or through its agents, the said portfolio of domain names listed supra, most of which are linked to the Complainant’s www site, while others are stated to be "under construction".
As regards the Respondents rights or legitimate interest in the said domain name "flos.com", the Complainant states that although the Respondent registered the said domain name "flos.com" on June 28, 1996, the Respondent has not activated a www site at the said domain name up to the date on which the Complaint was filed and the Complainant alleges that the Respondent has no intention of so doing.
The Complainant submits that the Respondent has no valid trademark or serious non-commercial or non-profit making activity connected with either the name "FLOS" or the said domain name "flos.com" that could justify the infringement of lawful rights of the Complainant.
The Complainant submits that the "illegitimate" registration of the said domain name by the Respondent is preventing the Complainant from using its trademark in a corresponding domain name.
The Complainant has submitted that the Respondent has provided false information regarding the registration of the trademark "FLOS" by the Respondent to justify the registration of the said domain name by the Respondent. The Complainant submits that the Respondent’s statement that the said trademark was registered by one of its clients, Unitrace Ltd, Roadtown, Whickhama Cay - Tortola, BVI in Great Britain and Switzerland under the Madrid Treaty, is completely false. The Complainant submits that it has arranged for searches to be carried out by a professional company and has submitted a document which the Complainant submits is proof that no such registrations exists.
The Complainant further submits that the said domain name "flos.com" must be considered as having been registered and used in bad faith.
The Complainant submits that it is clear that the Respondent registered the said domain name "flos.com", primarily for the purpose of taking advantage of the Complainants rights and to profit from selling it to the Complainant. The Complainant states that it was entirely foreseeable that sooner or later the Complainant would have a great interest in the said domain name "flos.com" as it is the world leader in industrial lighting design and has continuously made investments to create the most sophisticated image of the company and in order to be present and use the most up to date means of advertising and communication.
Furthermore the Complainant submits that the Respondent has requested payment of money to transfer the said domain name "flos.com" to the Complainant. The parties had engaged in negotiations relating to such a sale over a period of months. Initially the Respondents sought US$ 35, 000. In the course of the said negotiations, the Complainant states that the Respondent asked for a lower sum of US$ 18,500 when the Complainant submitted that it was not willing to pay the larger sum. The Complainant submits that said requests were for sums in excess of the Respondent’s out of pocket costs directly related to the said domain name.
The Complainant submits that the Respondent is a habitual illegal trader in domain names. In support of this allegation, the Complainant submits that when the Respondent requested said payment of US$ 18,500, the Respondent offered to include in the price, another domain name which the Respondent had registered viz. "stark.com". The Complainant states that Mr. Stark is a world famous designer who works exclusively as a designer of lamps for the Complainant. The Complainant submits that the said Mr. Stark has communicated to the Respondent that he has also been the victim of the Respondent’s abusive business activity.
The Complainant further submits that the Respondent has created a number of embarrassing situations in the international world of industrial design. For instance, the Complainant states that the Respondent registered the domain name "cassina.com" and offered to sell that domain name for unjustified amounts of money to the design firm Cassina S.P.A.. The Complainant submits that the said Cassina S.P.A. refused to pay the sum requested because it realized immediately that the Respondent was acting in bad faith and felt it was being subjected to blackmail. The Complainant has furnished to this Administrative Panel, as an annex to the Complaint, correspondence from the said Cassina S.P.A. in support of this allegation.
The Complainant submits that the Respondent has attempted to acquire domain names and sell them for profit, based on the careful selection of domain names in accordance with a pre-meditated plan:
a. all the above domain names i.e. "flos.com", "stark.com" and "cassina.com" were registered by the Respondent in the month of June 1996;
b. at least two of the said domain names were registered by the Respondent on behalf of the company described by the Complainant as "its mysterious client" Unitrace Ltd.;
c. all three domain names are related and connected with the most sophisticated industrial design firms and one of the most famous designers in the world (i.e. Mr. Stark) who works for both said Cassina S.P.A. and the Complainant.
d. the Respondent has not activated www sites accessible via any of the said three domain names although they were all registered in 1996;
e. in each case, the Complainant alleges that the main goal of the Respondent in registering said domain name, was to sell each of the said domain names for an amount of money in excess of the Respondent’s out of pocket costs directly related to the said domain names;
In support of its contentions, the Complainant relies on the following decisions of administrative panels viz. Stella d’Oro Biscuit Co. Inc. v. The Patron Group Inc. (WIPO Case No. D2000-0012), World Wrestling Fed. Int. Ent Inc. v. Michael Bornam (WIPO Case No. D99-0001) and Kabushi K Toshiba v. Shan Computers (WIPO Case No. D2000-0325) and Ga Modefine SA v. Shan Computers (WIPO Case No. D2000-0306).
The Respondent makes no challenge to the Complainant’s claim to have rights in the said "FLOS" trademark or the registrations for same. The Respondent submits however that it has rights and legitimate interest in the said domain name and rejects the Complainant's submissions that the Respondent registered and is using the said domain name in bad faith.
The Respondent states that it is a Swiss based company and the leading supplier and consultant of electronic marketing services for the airline industry. The Respondent’s client list includes the Swiss Government Foreign Ministry, Air France, Swissair, Sabena, Lufthansa Group and Singapore Airlines.
The Respondent states that for the past three years, it has been developing a major project for the aviation industry which will soon be launched as a public service under the name "FLOS" being an acronym for "flight Leverage Online Surveys". The Respondent states that a start up company with the same brand will soon be founded with important partners such as McKinsey Co. and Spafax Airline Network.
Although the said start-up company has not been founded as yet, and the Respondents’ "FLOS" product admittedly does not have the same "degree of exposure" as the Complainant, nonetheless, contracts for the Respondent’s "FLOS" product have already been signed with two well-known airlines, the names of which the Respondent has furnished in the Response. The Respondent submitted that as the said contracts were confidential and so they were not annexed to the Response, they were, however, available to be shown to the Panelist on request.
The Respondent submits that it commenced its said "FLOS" project in 1997, with an extensive feasibility study. In short the project consists of survey software and an associated service which allows airlines to collect passenger opinions electronically from the aircraft's in-flight entertainment systems (IFS) and via a profiled consumer www site. The sophisticated one to one database and software return the analyzed data to the airline.
The Respondent states that the one to one broadvision technology based www site took over 34 months to develop (with certain halts due to financial problems) and will eventually be launched in early 2001, as soon as the tests with the said airlines are completed.
The Respondent states that shortly after registering the said domain name "flos.com" on June 28, 1996, the Respondent registered a Tunisian trademark on December 20, 1996, in class 38 in respect of "Telecommunications: diffusion and transmission of text, sound, images as well as sale of products via Internet" through a company called Unitrace Ltd.
The Respondent states that a copy of said Tunisian trademark registration was sent to the Complainant’s legal counsel on June 19, 2000, informing the legal counsel that a corresponding application for registration of the said trademark in Switzerland had been made.
The Respondent states that the first application for registration of the said trademark was made in Tunisia because at the time of the said application the Respondent’s Trademark Counsel was based in Tunisia and Tunisia is a member of the Madrid Treaty. The said Tunisian trademark was provisionally registered by said Unitrace Ltd. until the legal and financing issues relating to the proposed start-up company had been resolved.
The Respondent denies the allegations made by the Complainant that the said domain name had not been used as the address for a www site and states that on the contrary the said domain has been actively and constantly in use by the Respondent as an active e-mail address, since at least August 1998, and as an address for a www site at different periods during 1998, before, during and after certain trade fairs at which the Respondents were presenting their said "FLOS" project viz. in 1998, at the WAEA -World Airline Entertainment Association Conference, Durban, in the period from October 13 to October 16, 1998, and also in connection with the Respondents promotions at the WAEA - World Airline Entertainment Association Conference, Salt Lake City from September 28 to October 1, 1999.
The Respondent states that the only reason the said www sites is not active at all times is because the Respondent's said "FLOS" product is still in development and the Respondent needs to protect it from competition. Furthermore the Respondent does not want clients and potential clients to experience "down" periods.
In the year 2000, it was decided that the said start up company would be established in Switzerland under the name "FLOS". The Respondent first commissioned a search to avoid any risk of conflicting trademark problems in the required class 38. Following a positive response from the search, the Respondent decided to protect itself in Switzerland also in view of the intended establishment of the proposed start up company in that jurisdiction. The Respondent proceeded to apply for registration of the said trademark in Switzerland in class 38 with the deposit and validity date of June 23, 2000.
The Respondent therefore strongly denies that it has no kind of valid trademark and no kind of serious commercial activity connected with the name "FLOS" as has been alleged by the Complainant. The Respondent states that its commercial activity is fully operational, its domain name is active and its www site will soon be fully activated. The Respondent submits that it regrets that there are conflicting interests on this domain name, and insists that it has entered and accepted every proposal made by the Complainant to accomodate a friendly agreement on the issue from the very moment it became aware of a conflict.
The Respondent states that it never tried to sell or to enrich itself with the said domain name. On the contrary, the Respondent was first contacted by the Complainant’s legal office in August 1999, and the Complainant proposed that it would be willing to rent the said domain name for which the Complainant "would be ready to pay an adequate compensation" should the Respondent wish to "maintain ownership, subleasing the use for a determined period".
The Respondent immediately answered that it was not "willing to sell the domain name" since it planned to use it, but agreed with the Complainant’s proposal and was "willing to lease a link/banner on its domain name for an adequate fee until the Respondent would start its own service, and grant a link from its site to the Complainant’s site at a later stage".
The Respondent submits that said offer was in agreement with the Complainant's wishes since, after changing its legal counsel, the Complainant confirmed once more, on January 20,2000, that it would prefer "to define in a friendly manner the dispute" and after confirming that there was no competition between the two ventures, made a proposal to the Respondent "to create a link through its banner to its proper web page" and proposed that an adequate compensation would be defined among the parties involved.
The Respondent submits that in the course of these negotiations the Respondent maintained the position that it was acting on behalf of a client. This was done as a self protection measure in the light of the confidential nature of the Respondent’s project. The Respondent having adopted a protective and suspicious attitude and had become cautious in disclosing informatin due to some unpleasant experiences with third parties in the past.
The Respondent proceeded to argue that the financial offer made to the Complainant was adequate and appropriate.
The Respondent submits that in a further e-mail sent on March 7, the Complainant proposed once again payment of a "flat fee of US$ 2,000 yearly for the link" asking the Respondent "to consider this offer". The Respondent submits that it is important to point out that the Respondent never made such a request and that the Respondent’s proposal was well below the price put forward by the Complainant.
The Respondent submits that on March 7, 2000, the Respondent asked to see the "contract draft" which was eventually sent by the Complainant. After reading the said draft the Respondent sent a revised version to the Complainant’s legal counsel making a number of changes since it could not possible accept the proposed clauses which provided for penalties of up to US$300,000 for possible breach of contract.
The Respondent states that it was never its intention to offer the said domain name for sale and that the Respondent never sought to make money from the said domain name, but only sought to cover ongoing costs incurred by hosting the Complainant’s banner/link. The Respondent submits that it always tried to co-operate by meeting the Complainant’s requests.
The Respondent submits that the Complainant is the Party acting in bad faith. The Respondent submits that the Complainant has misrepresented the facts. The sum of US$ 35,000, which the Complainant submits was asked by the Respondent, was in fact extrapolated from the Complainant’s own offer to the Respondent. The Complainant’s draft contract offered a sum of US$ 2,000 for each year of the proposed agreement and the said proposed agreement had a 15 year term. The Complainant subsequently changed its mind and the next communication from the Complainant suggested a one-time payment.
The Respondent states that it was quite puzzled about this new proposal and made it clear once again that "by the end of the year there will be a FLOS website and service that will require a web page and address" and the Respondent's negotiator further stated: "if you now want to buy the domain we have to modify the site and other material. What price should I practice (sic)? I wouldn’t know how to price it." The Respondent's negotiator closed his letter stating: "I prefer to remain on the current base (of discussions) which I believe is adequate for both parties involved."
According to the Respondent's submissions, during the following week, in a number of phone calls to the person negotiating on behalf of the Respondent, some of which were made after business hours to a private telephone number, the Complainant’s legal counsel repeatedly requested the Respondent to sell the said domain name to the Complainant. To meet demands of the Complainant, the Respondent’s legal counsel calculated that the sum of US$ 2,000 offered by the Complainant capitalised over a 15 year term would be over US$ 35,000. The Respondent submits that the sum is precisely US$ 45,347. The Respondent then responded to the Complainant’s request by offering the alternative of modification of the Complainant’s draft leasing contract or alternatively proposing that the Complainant pay a one time fee of US$35,000.
The Complainant’s legal counsel, after having had notice that the said domain name "starck.com" had been registered by the Respondent, made contact with the Respondent and asked if the Respondent would kindly be willing to also sell the said "starck.com" domain name since the industrial designer who also bears that name was a friend of a member of the Complainant company.
The Respondent states that the said domain name "starck.com" has been registered by the Respondent in 1996, for and in the expectation of the advertising campaign for the launch of the CD-ROM on the work of the said designer Philippe Starck, which the Respondent had endeavoured to co-produce with the said designer, the European Community and the Swiss Broadcasting Company. This Domain Name was never activated as a www site and the CD-ROM production was eventually cancelled for economical reasons, but the domain was activated as an e-mail address for inquiries on the CD-ROM under the address firstname.lastname@example.org until December 31, 1999.
The Respondent is acquainted with Mr. Philippe Starck, and immediately agreed to release the name to the Complainant,provided that the Complainant would cover the out-of-pocket expenses incurred so far. The Respondent only added the bare notarisation and postal costs of US$81.50 and offered the said domain name to the Complainant for the sum of US$1,000.
The Respondent states that the Complainant continued to request the sale of the said domain name and in the course of further negotiations the Respondent decided to accept a transaction at US$18,500.
With regard to the registration of the domain name "cassina.com", the Respondent states that the Respondent registered the said domain name for an acquaintance of the Respondent a Mr. Diego Cassina and was immediately activated as an e-mail address at email@example.com. The Respondent states that the Respondent often registers family name domains as a e-mail address for friends, acquaintances and foundations. These are all hosted by the Respondent for a nominal fee. The Respondent submits that there are more than 70 firms in Italy bearing this name.
6. Discussion and Findings
Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:
(i) the said domain name in dispute 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 said domain name; and
(iii) the said domain name has been registered and is being used in bad faith.
The Complainant has satisfied this Administrative Panel that it is the owner of the trademark "FLOS" in the field of industrial lighting design. This is accepted by the Respondent also. Furthermore it is clear that the said domain name is identical to the said trademark.
This Administrative Panel must therefore conclude that the Complainant has established that the said domain name is identical to a trademark in which the Complainant has rights.
In this difficult case, there is a substantial conflict in the evidence between the Parties. This evidence relates both the question of the Respondent’s rights and legitimate interest in the said domain name and also to whether the said domain name was registered and is being used in bad faith.
The Respondent has submitted that it has rights in a trademark registered in Tunisia in class 38 for the identical trademark "FLOS". The Respondent submits that said registration was made through a company Unitrace Limited on behalf of the Respondent. Furthermore the Respondent claims to have also registered a corresponding trademark in Switzerland. On the Respondent’s submissions, the Respondent is the owner of a Tunisian and Swiss registered trademark which is also identical to the domain name "flos.com".
The Complainant's position is that the Respondent has made a claim to the ownership of trademark registrations in the United Kingdom and Switzerland corresponding to the said Tunisian registration but that said corresponding registrations have not shown up in the searches carried out on behalf of the Complainant. The Complainant has submitted a copy of the said search report to support this assertion. The said search report related to a search for applications and registrations for trademarks identical and similar to "FLOS" in class 38 in the United Kingdom up to May 3, 2000, and a corresponding search for applications and registrations in Switzerland up to April ,28, 2000. According to the Respondent, the Swiss application has a deposit and validity date of June 23, 2000. This date is later than the dates covered by the search report submitted by the Complainant but, significantly, is very soon before the date on which the Complaint was filed.
The Respondent also claims to have used the said trademark in connection with a business project related to the provision of technology to airlines which is at an advanced stage having signed contracts with a major international airline, the name of which was provided by the Respondent. This Administrative Panel requested further information from the parties including translations of the annexes to their submissions and a copy of the non-confidential parts of the Respondents said contract with said airline. Furthermore, in the interest of fair procedures, this Administrative Panel requested that the parties hereto provide comments on the additional information requested.
In the event, the Respondent submitted a document which is presented as a copy of said contract with the said airline. Although the Complainant has pointed out that the document is not conclusive evidence of the existence of said contractual relationship, in the view of this Administrative Panel the Respondent’s claim to rights in the said Tunisian trademark and the Respondent’s claim to be engaged in providing services to the airline industry are sufficient, to allow this Administrative Panel to conclude that the Complainant has not satisfied the second element of the test set out in paragraph 4 of the Policy and has not established that the Respondent has no rights or legitimate interest in the said domain name.
In reaching this conclusion, this Administrative Panel is conscious that because of the summary nature of the procedures under the Policy, the Rules and the Supplemental Rules, there are limitations on an administrative panel’s ability to test the evidence submitted in circumstances such as this case. When there is such a significant conflict in the evidence submitted, as in the present case, the evidence could be better tested in another forum.
As the Complainant’s application must therefore fail, it follows that there is no necessity for this Administrative Panel to consider the question as to whether the said domain name was registered and is being used in bad faith.
As the Complainant has failed to establish that the Respondent has no rights or legitimate interest in the said domain name, the Complainants application should be refused.
Dated: December 15, 2000