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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bricorama and Bricorama France v. Tropic Telecom
Case No. D2001-0483
1. The Parties
The Complainants in this administrative proceeding are:
(i) BRICORAMA, a French joint-stock company, having a registered office at 21, avenue du Maréchal de Lattre de Tassigny - 94120 Fontenay-sous-Bois - France.
(ii) BRICORAMA FRANCE, a French joint-stock company, having a registered office in ZAC Espace Saint Louis - 42300 Roanne - France.
The Respondent is TROPIC TELECOM, PO Box 584 - Helzeryia Israel 46105 - Israel.
2. The Domain Name and Registrar
The domain name in dispute is <bricorama.com>.
The Registrar with which the domain name is registered is CORE Internet Council of Registrars.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on April 3, 2001, by e-mail and on April 25, 2001, in hardcopy. The Center had acknowledged receipt thereof on April 5, 2001.
On April 20, 2001, the Center sent the corresponding Request for Registrar Verification in connection with this case to CORE. On April 23, 2001, the Registrar's verification response confirmed that the Registrant was TROPIC TELECOM and that the domain name <bricorama.com> was "on active" status.
On April 25, 2001, after having verified whether the Complaint was satisfying the formal requirements, the Center notified by e-mail, facsimile and registered post with return receipt requested the Commencement of Administrative Proceeding to the Parties, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
On May 15, 2001, the Center issued by e-mail and registered post with return receipt requested the Notification of Default to the Respondent for having failed to submit a response to the Complaint within the deadline granted.
On May 21, 2001, the Center proceeded with the appointment of the Administrative Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment of the undersigned as sole panelist in accordance with Paragraph 6(f) of said Rules, after the latter had signed and forwarded to the Center on May 17, 2001, a statement of acceptance and declared his impartiality and independence in this matter.
Transmission of the file to the Sole Panelist was made on May 21, 2001, by e-mail and registered post, hard copy of which was received by the undersigned a few days later.
The Sole Panelist forwarded his decision to the Center within the time limit fixed.
4. Factual Background
BRICORAMA has been operated and registered since June 1989, whilst BRICORAMA FRANCE has been operated and registered since June 1966. The field of activity of these companies concerns all activity of wholesale trade and retail trade, firm sale or sale on commission, as well as representation of all items, products, materials and especially those linked to odd jobs ("DIY"), leisure, to the equipment of the house and to building, etc.
The Complainants have been using the trade and service marks "BRICORAMA" for a significant period of time, in order to designate their activity and the products and services offered to the consumers.
BRICORAMA FRANCE is the owner of the French trade and service mark BRICORAMA number 1 411 011, registered on May 27, 1987, (the first registration of this trademark was made in December 11, 1969, under the number 804911) and duly renewed, to designate the goods and services in classes 1, 2, 3, 4, 6, 7, 8, 9, 11, 12, 16, 17, 19, 20, 21, 22, 24, 27, 31, 35, 36, 37, 39, 41 and 42; this French trade and service mark was recently transferred from BRICORAMA to BRICORAMA FRANCE (Complainants' Annex C).
An international trademark was registered on November 27, 1987, on the basis of the renewal of May 27, 1987, of this French trade and service mark under the number 518 143 for all the above mentioned goods and services (Complainants' Annex D). This international trademark designates Spain and Portugal and is still owned by BRICORAMA.
BRICORAMA also registered on November 28, 1974, the international trade and service mark BRICORAMA number 413 197 for the goods and services in classes 2, 6, 7, 8, 9, 11, 12, 16, 17, 19, 20, 24, 27, 42; this international trade and service mark designate the following countries: Austria, Benelux, Switzerland, Czech Republic, Germany, Algeria, Egypt, Spain, Croatia, Hungary, Italy, Liechtenstein, Morocco, Monaco, Ex Republic Yugoslav of Macedonia, Portugal, Romania, Slovenia, Slovakia, San Marino, Vietnam and Yugoslavia (Complainants' Annex E). This international trade and service mark has been transferred to BRICORAMA FRANCE and the record of this transfer is now pending before WIPO (Complainants' Annex F).
5. Parties’ Contentions
The Complainants submit the following:
(i) The <bricorama.com> domain name is identical to the Complainant's trademark "BRICORAMA".
(ii) The Respondent has no rights or legitimate interests in respect of the domain name <bricorama.com>. The trade and service marks "BRICORAMA" are extremely well-known by the public and can be considered as notorious in accordance with the provisions of the article 6 bis of the Paris Convention for the Protection of Industrial Property.
(iii) The Respondent has registered and is using the domain name <bricorama.com> in bad faith. This domain name was registered or acquired by the registrant primarily for the purpose of selling or transferring the domain name registration to the ones who are concerned, namely the owners of the French and international trademarks "BRICORAMA", BRICORAMA and BRICORAMA FRANCE.
The Complainants explain that the web site <bricorama.com>, as visited on January 29, 2001, (Complainant's Annex G), evidenced a content in French language and a link to the French web site "amazon.fr" such as to lead to confusion.
The Complainants further submit that a few weeks later, after the above-mentioned visit, they noticed a change in the web site presentation of <bricorama.com> which showed a service called "Domains Communication", describing itself as a registrar (Complainants' Annex I). The web site offered from then the reselling of the domain name <bricorama.com>.
The Complainants explain such a change by the fact that their lawyer had, since the first visit of the said web site, urged the Respondent to transfer the domain name <bricorama.com> in favor of his client (Complainants' Annex H).
The Complainants consider that such practices amount to bad faith and conclude therefore that they are entitled to the transfer of the domain name <bricorama.com> in their favor.
The Respondent has not submitted any response to the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") sets forth three requirements which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainants. Those requirements are that:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
The Complainants must prove in the administrative proceeding that each of the aforesaid three elements are present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Administrative Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.
A. Identity or Confusing Similarity
There is no doubt that there is identity between the Complainants' trade and service marks "BRICORAMA" and the domain name <bricorama.com>.
The Complainants have also established their rights in trade and service marks "BRICORAMA" with numerous registrations for such name.
B. Rights or Legitimate Interests of the Respondent
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4 (c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14 (b) of the Rules (see e.g. WIPO Case No. D2000-0009, p. 6 or WIPO Case No. D2000-0867, p. 6).
It is the Sole Panelist’s finding that the Complainants have established that the trade and service marks "BRICORAMA" have been known in Europe for a notable period of time. Furthermore, absent evidence to the contrary, the Complainants have not granted any license or otherwise permitted the Respondent to use such trade and service marks or to apply for any domain name incorporating the said trade and service marks.
Under those particular circumstances, the Sole Panelist is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.
C. Registration and Use in Bad Faith
Paragraph 4 (b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 already pointed out, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance, which could demonstrate his good faith in the registration or use of the domain name in issue.
In addition, the Sole Panelist is satisfied by the explanations provided by the Complainants in respect of the registration and use of the domain name <bricorama.com> - which, moreover, have not been disputed by the Respondent - which no doubt can be characterized as bad faith within the meaning of Paragraph 4 (b) of the Policy, in particular 4 (b) (iv).
In light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondent is identical to the corresponding trademarks of the Complainants, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.
Accordingly, pursuant to Paragraph 4 (i) of the Rules, the Sole Panelist requires that the registration of the domain name <bricorama.com> shall be transferred to the Complainants.
Dated: June 1, 2001