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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tйlйvision Franзaise 1 (TF1) v. Khaled Bitat
Case No. D2007-0137
1. The Parties
The Complainant is Tйlйvision Franзaise 1 (TF1), France, represented by Inlex IP Expertise, France.
The Respondent is Khaled Bitat, United States of America, represented by Sparks
Willson Borges Brandt & Johnson, PC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <ushuaiavoyages.com> is registered with Go Daddy
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2007. On February 2, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 2, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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”).
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 February 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2007. The Response was filed with the Center on February 22, 2007.
The Center appointed Alan L. Limbury as the sole panelist
in this matter on March 7, 2007. 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,
4. Factual Background
The city of Ushuaia is the capital of the Argentine province of Tierra del Fuego. It is the most southerly city in the world.
The Complainant broadcasts an international television programme under the name USHUAIA. It hold numerous registered French and International trademarks for the word USHUAIA and for stylized forms of that word in respect of virtually all the goods and services in a large number of classes, including French trademarks Nos.1525551 registered on April 21, 1989, covering, amongst many goods and services, “reservation of hotel rooms for travellers”; 99782334 registered on March 22, 1999, covering, amongst many goods and services, “arranging of tours” (in French “organisation de voyages”) and 033260299, registered on December 1, 2003, covering, amongst many goods and services “transport of people or goods; arranging of tours, cruises; escorting of travellers; air transport; tourist offices (except hotel reservations, boarding houses)” and “booking of seats (transport).” The Complainant’s international trademark No. 845073, registered on June 1, 2004, in respect of numerous goods and services including “arranging of tours, of cruises; escorting of travelers’, comprises the stylized word USHUAIA with the letters “shua” being placed in front of a small circle, reminiscent of a setting sun.
The Complainant is also the registrant of several domain names incorporating the word ushuaia, including <ushuaia.fr>, <ushuaia.com>, <ushuaia.us>, <ushuaiamagazine.com> and <ushuaiat.com>.
The Respondent registered the disputed domain name <ushuaiavoyages.com> on June 15, 2005. Prior to June 15, 2006, the domain name resolved to a website in the French language, operated by ‘Ushuaia Voyages’ of Hydra, Algeria, and which, under a depiction of a circle surrounded by curves (implying movement) behind the first letter “U” in USHUAIA, followed by the smaller word VOYAGES, offered holiday travel agency services to various destinations for “ceux qui, comme nous, ont le goыt du Voyage et de l’evasion” and offered experts in different kinds of holidays, including at the beach, at the snow or at the other end of the world (“а l’autre bout du monde”).
In response to a cease and desist letter from the
Complainant dated June 15, 2006, addressed to ‘Ushuaia Voyages’
in Algeria, that use of the website ceased and the enterprise changed its name.
In October, 2006, the Complainant’s counsel communicated with the Respondent,
seeking transfer to the Complainant of the disputed domain name. The Respondent,
writing as CEO of Landmarksoft Corp. of Colorado Springs, and after having taken
legal advice, contended that the Complainant would not have an easy time having
a claim upheld but indicated interest in voluntarily turning over the domain
name. In response to an offer of “$500 maximum” from the Complainant,
the Respondent, on November 28, 2006, stated that he had incurred considerable
legal expenses and further expenses in appraising the domain name and that “its
value is considerably higher than your offer. I am willing to turn over the
ownership of the domain name to your client for a sum of ten thousand Euros”.
5. Parties’ Contentions
The Complainant says the disputed domain name is identical or confusingly similar to its USHUAIA trademarks, the addition of the term “voyages” being totally irrelevant and having no impact on the overall impression of the dominant part USHUAIA. The extension “.com” is likewise irrelevant.
The Respondent has no rights or legitimate interests in the disputed domain name, since he is not known under the USHUAIA or USHUAIA VOYAGES trademarks and has no registered marks. The Complainant has not licensed him to use the USHUAIA marks and has no relationship with him. The Respondent used the domain name to redirect users to the French language website of a travel agency which displayed a counterfeit of the USHUAIA trademark and its circle logo. This was done with knowledge that the Complainant’s well known and internationally publicized USHUAIA trademarks covered “tourist offices” and “arranging of tours”. The suspension of the website after the first cease and desist letter demonstrates that the Complainant’s action was well founded; that the registrant has no rights; that the use was not bona fide and that the Respondent knew of the Complainant and of its USHUAIA marks.
The Respondent registered and has used the domain name in bad faith, since the Complainant’s distinctive marks and its websites are well known in France and throughout the world. The Respondent could not have ignored their existence, especially since he is a French speaking person. Prior to the first cease and desist letter, the Respondent was renting the disputed domain name to a fraudulent, counterfeiting website and was therefore intentionally diverting Internet users for his own commercial gain by creating a likelihood of confusion with respect to the source, sponsorship, affiliation or endorsement of the website. Accordingly the domain name was registered primarily for the purpose of disrupting the business of the Complainant and to attract Internet users to a competitor website.
After the second cease and desist letter the redirection
of the disputed domain name ceased and it is still inactive. To refuse transfer
yet to engage in passive use in these circumstances is cybersquatting behaviour
amounting to bad faith use: Telstra Corporation v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. It is not
possible to conceive of any plausible or contemplated active use that would
not be illegitimate: Thomas Cook UK Limited v. CHS Tech Services Limited,
WIPO Case No. D2002-0882.
The Respondent’s request for 10,000 Euros is
further evidence of bad faith: Elle Bleu, EBI v. Alfred Mitchell Inc., WIPO
Case No. D2003-0811.
The Respondent says the Complainant has failed to discharge its burden of proof as to all three elements it must establish.
In a sworn affidavit, the Respondent says he is the sole owner and President of LandmarkSoft Corp., which designs and develops websites for clients and registers domain names for their use. On June 15, 2005, he registered the disputed domain name following a request to do so from a client, Mr. Benmansour of Repere Communications. He developed the website in consultation with the client and it went live in June 2005. At the time of registration, the Respondent was unaware of the existence of the Complainant’s registered trademarks for USHUAIA and assumed that his client had chosen it because it is the name of a tourist destination. He became aware of those marks only when he received the [second] cease and desist letter. He believes Mr. Benmansour decided to abandon his planned business in order to avoid potentially lengthy and costly litigation with the Complainant.
Annexed to the affidavit is the Respondent’s email correspondence with the client, including an email dated June 26, 2006, asking, without elaboration, that the disputed domain name be taken off-line and re-directed to Landmarksoft as a sub-domain.
The Respondent contends that, under the law of many
countries, the Complainant’s mark is either unregistrable or limited in
strength because it is merely a geographic place name. Because of the relative
weakness of the mark, even small differences between the domain name and the
mark are relevant to the question of whether it is confusingly similar. The
addition of “voyages” is sufficient to remove it from the realm
of confusingly similar: Brisbane City Council v. Warren Bolton Consulting
Pty Ltd., WIPO Case No. D2001-0047.
The font used on the website created by the Respondent also acts as a distinguishing
characteristic and is likely to dispel any initial consumer confusion.
At the time of registration, the Respondent had a legitimate business reason to register the disputed domain name. The present lack of use is the result of the Complainant’s successful demands against Mr. Benmansour, whose decision not to enter a legal battle with the Complainant cannot now be used as evidence of the Respondent’s lack of legitimate interest at the time of registration.
The website content is evidence of a bona fide commercial purpose at the time the domain name was registered because the website is clearly not designed to misdirect or mislead consumers.
As to bad faith, the Respondent says the Complainant relies on (i) its mark being so famous that the Respondent must have heard of it; (ii) Mr. Benmansour’s election to shut down the website; and (iii) the Respondent’s passive holding and offers to sell.
As to (i), the Respondent says that the Complainant overstates the fame of its mark. Its earliest registration was after the Respondent left Algeria and became a resident of the United States of America. It is therefore understandable that the Respondent had not heard of the Complainant’s USHUAIA mark or any of its related programming until he received the cease and desist letter. The Complainant is not the only holder of a registered mark for USHUAIA nor of domain names containing that word. The city of Ushuaia in Tierra del Fuego is a popular tourist destination. The Respondent suggests it is more likely that the registration of the disputed domain name was to attract consumers who were interested in unusual tourist destinations rather than a bad faith attempt to create confusion among consumers familiar with the Complainant’s mark.
The Respondent refers to the various decisions regarding the application of the Policy to geographical indications incorporated in domain names and annexes a copy of the Report of the Second WIPO Internet Domain Name Process of September 3, 2001.
As to (ii), the Respondent says Mr. Benmansour’s decision to shut down the website rather than fight the Complainant is not evidence of bad faith and that the two websites are too dissimilar for the purpose to have been to disrupt the Complainant’s business.
As to (iii), the Respondent says that passive holding is not, in this case, evidence of bad faith. In stating that it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent which would not be illegitimate, the Complainant suffers from an acute lack of imagination. The Respondent’s client had the expectation of offering travel services and the Respondent had the completely legitimate purpose of fulfilling its contractual obligations with Repere Communications and Mr. Benmansour to design and launch a website. Using the name of a popular tourist destination is not so unusual in that context and the mere use of Ushuaia Voyages for that purpose is not evidence of bad faith. Once Mr. Benmansour decided to abandon his business plans in order to avoid a costly legal battle with the Complainant, the Respondent was left owning the domain name. His failure to turn it over to the first person to make a demand is not evidence of bad faith.
The Respondent made an offer to sell only in response
to the Complainant’s offer to pay his costs. Not every offer to sell a
disputed domain name should be considered evidence of bad faith: The Nasdaq
Stock Market, Inc. v. Green Angel, WIPO
Case No. D2001-1010.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a 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.
To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:
i. the disputed 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 disputed domain name has been registered and is being used in bad faith.
While geographical names are not protected as such
under the Policy, they may nevertheless qualify for protection under the Policy
as trademarks if registered as such or if shown by evidence of their use to
have become distinctive of the goods or services of a particular trader. In
this respect they may be protected as trademarks in the same way as generic
words shown to have become distinctive. It is therefore a matter of evidence
in each case as to whether a complainant has proved that the geographical name
functions as a trademark: see Mt. Eliza Graduate School of Business and Government
Ltd. v. Rom Graphics, eResolution Case No. AF-00831; Daydream Island
Resort Investments Pty Ltd. v. Alessandro Sorbello, eResolution Case No.
AF-0586 and Stadt Heidelberg v. Media Factory, WIPO
Case No. D2001-1500.
The fact that a trademark may also be a geographical
indication means that the trademark owner cannot claim exclusive use of the
mark: see Sorel Corporation v. Domaine Sales Ltd, NAF Case No. FA0102000096674.
It is therefore a matter for evidence in each case as to whether the elements
of illegitimacy and bad faith are established: see Maui Land and Pineapple
Co., Inc. v. Kapalua Land Co., NAF Case No. FA0008000095544; Bondy Way
Development Corporation and Ashburn Village Development Corporation v. Re/Max
Premier, WIPO Case No. D2000-0322;
Oshawa Centre Holdings Inc. v. M. Bharwani, eResolution Case No. AF-0820;
MAHA Maschinenbau Haldenweg GmbH & Co. KG v. Deepak Rajani, WIPO
Case No. D2000-1816 and Sorel (supra). In this regard also, the Policy
applies to geographical indications that function as trademarks in like manner
as it applies to generic words that function as trademarks.
A. Identical or Confusingly Similar
The Complainant clearly has rights in numerous registrations of the trademark USHUAIA.
Many cases have established that “essential”
or “virtual” identity is sufficient for the purposes of the Policy:
The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO
Case No. D2000-0113, Nokia Corporation v. Nokiagirls.com a.k.a IBCC,
WIPO Case No. D2000-0102; America
Online, Inc. v. Anson Chan, WIPO Case
No. D2001-0004; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City
and Cupcake Patrol, WIPO Case No. D2001-0489;
Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd.,
WIPO Case No. D2000-0995; America Online,
Inc. v. Andy Hind, WIPO Case No. D2001-0642
and The Toronto-Dominion Bank v. Boris Karpachev, WIPO
Case No. D2000-1571.
Disregarding the inconsequential extension “.com”, the Panel finds that the disputed domain name <ushuaiavoyages.com> is not identical to the trademark USHUAIA.
The test of confusing similarity under the Policy is confined to a comparison
of the disputed domain name and the trademark alone, independent of the other
marketing and use factors, such as the “Sleekcraft factors” –
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979),
usually considered in trademark infringement or unfair competition cases. See
BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO
Case No.D2001-1480; Britannia Building Society v. Britannia Fraud Prevention,
WIPO Case No. D2001-0505; Wal-Mart
Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO
Case No. D2000-0662; Koninklijke Philips Electronics N.V. v. In Seo Kim,
WIPO Case No. D2001-1195; Energy
Source Inc. v. Your Energy Source, NAF Case No. FA 96364; Vivendi Universal
v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO
Case No.D2001-1121, and the cases there cited.
Not without some hesitation given the mark at issue, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s USHUAIA trademark. The Complainant has established this element of its case.
B. Rights or Legitimate Interests
Ushuaia is a popular tourist destination. The disputed domain name <ushuaiavoyages.com> conveys the descriptive idea of tourism to Ushuaia. The Complainant’s USHUAIA mark is relatively weak since the word Ushuaia, being a geographical place name, cannot uniquely distinguish the goods or services of the Complainant. Any use of that word in a domain name must be considered in light of the nature of the activity conducted under the domain name and the motivation of the registrant: Report of the Second WIPO Internet Domain Name Process, September 3, 2001, paragraph 260.
Nevertheless, the Respondent is not known by the disputed domain name and has
not been authorized by the Complainant to use its USHUAIA mark nor to register
the disputed domain name. These circumstances are sufficient to constitute a
prima facie showing by Complainant of absence of rights or legitimate
interest in the disputed domain name on the part of the Respondent, to whom
the evidentiary burden therefore shifts to show by concrete evidence that he
does have rights or legitimate interests in that domain name: Do The Hustle,
LLC v. Tropic Web, WIPO Case No. D2000-0624;
Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor
Chandler International Limited, WIPO Case
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. The Respondent relies on the circumstances specified in sub-paragraph 4(c)(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;”
Even perfunctory preparations have been held to suffice
for this purpose: Shirmax Retail Ltd. v. CES Marketing Group, Inc., eResolution
Case No. AF-0104; Lumena s-ka so.o. v. Express Ventures Ltd.,
NAF Case No. FA00030000094375 and Royal Bank of Canada v. Xross, eResolution
Case No.AF-0133. On the other hand, use which intentionally trades on the fame
of another cannot constitute a ‘bona fide’ offering of goods or
services; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,
WIPO Case No. D2000-0847.
Despite the Complainant’s assertions, there is no evidence that the Respondent was aware of the Complainant’s USHUAIA mark when he registered the disputed domain name, in response to his client’s request. Further, the Panel does not accept that the depiction on the Respondent’s client’s website (developed by the Respondent) of a circle in association with the word Ushuaia amounted to a counterfeit of the Complainant’s mark and logo, and does not accept the implication that the former was copied from the latter, with knowledge thereof.
The Panel accepts the Respondent’s sworn evidence that he was at the time of registration of the disputed domain name unaware of the existence of the Complainant’s registered trademarks for USHUAIA and assumed that his client had chosen it because it is the name of a tourist destination. Under these circumstances and having regard to the fact that Ushuaia is a popular tourist destination, the Panel finds that the registration of the disputed domain name by the Respondent and the development for his client of a tourism-related website offering holidays “at the other end of the world” and reached via the domain name constituted use of the domain name, prior to notice of this dispute, in connection with a bona fide offering of services.
It follows that the Complainant has failed to establish this element of its case.
C. Registered and Used in Bad Faith
The Panel has already found that the Respondent was unaware of the Complainant’s USHUAIA marks when he registered the disputed domain name. Mr. Benmansour’s decision to abandon the website upon his receipt of the first cease and desist letter is not evidence that his activities and, by extension, those of the Respondent, were in bad faith. Given the events since registration, the Respondent’s failure to use the disputed domain name since Mr. Benmansour ceased using it does not constitute bad faith use.
The mere offering of a domain name for sale for more than the out-of pocket
costs directly related to the domain name does not constitute evidence of bad
faith registration and use within paragraph 4(b)(i) of the Policy. That sub-paragraph
of the Policy requires a showing that the respondent registered or acquired
the disputed domain name primarily for the purpose of selling it to the complainant
or to a competitor of the complainant for a price exceeding those costs: The
World Phone Company (Pty) Ltd v. Telaccount Inc., WIPO
Case No. D2000-1163.
Here the evidence establishes that the primary purpose in registering the disputed
domain name was to establish a tourism-related website for the Respondent’s
customer. Even if the offer in November 2006 to sell the disputed domain name
for 10,000 Euros were use in bad faith, that would be insufficient to displace
the evidence of good faith registration in June 2005: Substance Abuse Management,
Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO
Case No. D2001-0782; Teradyne Inc.Teradyne, Inc. [sic] v. 4tel Technology,
WIPO Case No. D2000-0026; Telaxis Communications
Corp. v. William E. Minkle, WIPO Case
No. D2000-0005 and Yoomedia Dating Limited v. Cynthia Newcomer / Dateline
BBS, WIPO Case No. D2004-1085.
The Complainant has failed to establish this element of its case.
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
Date: March 20, 2007