|Respondent||Mr. Alain Robert|
|Date of Decision||01.12.2003|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cegetel v. Mr. Alain Robert
Case No. D2003-0799
1. The Parties
The Complainant is Cegetel, Paris La Defense, France, represented by Cabinet Ores, France.
The Respondent is Mr. Alain Robert, Marseille France.
2. The Domain Name and Registrar
The disputed domain name is <7cegetel.com> and is registered with BookMyName SAS.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2003. On October 9, 2003, the Center transmitted by email to BookMyName SAS a request for registrar verification in connection with the domain name at issue. On October 13, 2003, BookMyName SAS 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, billing, 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 October 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondents default on November 7, 2003.
The Center appointed William Lobelson as the sole panelist in this matter on November 17, 2003. 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.
The language of proceedings is English.
4. Factual Background
The Complainant is well known in France as a major telecommunication operator, offering in particular under the brand "LE 7 DE CEGETEL" telephone services to individuals and companies.
It owns a number of French and Community registered trademarks for "CEGETEL" on the one hand and "LE 7" or "LE 7 AUTOMATIQUE" on the other hand.
The Complainant has found out the existence of the domain name <7cegetel.com>, registered on June 19, 2003, with the Registrar "BookMyName" by Mr. Alain Robert, the Respondent.
On July 7, 2003, the Complainant asked a bailiff to witness that the domain name was owned by the Respondent, and that it pointed towards an active web site dedicated to a direct marketing business. The said web site does not refer at any moment to the name "7Cegetel", but to brand "Declic-Marketing" that apparently is used in relation to a service of access to e-mails data base for the purpose of forwarding "spams".
On July 18, 2003, the Complainant sent a cease-and-desist letter to the Respondent via e-mail (as the Respondent failed to identify its postal address in the Registration Agreement of the domain name), seeking an amicable transfer of the disputed domain name.
In a response dated July 23, 2003, the Respondent declined to transfer the domain name for free, explaining that the registration of domain names is not regulated, that the principles applicable to general trademark law would be irrelevant, that many domain names corresponding to protected trademarks are not owned by the trademark owners (giving precise examples such as "www.france2.com") and that the jurisprudence would be favorable to him. The Respondent, after having declared that a Tribunal would not accept the Complainants claim, suggested to study a proposal from the Complainant for purchasing the domain name.
The Complainant then filed the Complaint with the Center on October 9, 2003.
After being notified the same, and even though the Center notified his default on November 7, 2003, the Respondent sent an e-mail to the Complainants attorney on November 24, 2003, in response to an e-mail notification from the Center dated November 17, 2003, which was copied to him. The Respondents message was copied to the Panelist. This message was forwarded by the Respondent's attorney to the Center, along with short comments and the whole was transmitted by the Center to the Panelist on the same date.
Paragraph 10(b) of the Rules provides that:
"In all cases, the Panel shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case"
Even though the Respondents response was issued belatedly and notwithstanding the fact that this response would not comply with the formal requirements of the Rules (drafted in French and not addressed to the Center), the Panel is of the opinion that it should be taken into account in the present case.
Deciding otherwise would amount to treating the Respondent as being in default and that would not be a fair trial.
The said response is written in French, but the parties in the proceedings are French, as well as the Panel, and all of them can therefore read and understand the Respondents communication. Accordingly, the Panel is satisfied that the "principe du contradictoire" is respected.
The content of the Respondents message dated November 24, 2003 directed to the Complainants attorney is as follows (as translated by the Panel).
All of this is bullshit !
Go and take a look at France2.com and France3.com and http://www.whitehouse.com.
Register your domain names in .fr or .tm.fr and change your web staff !
And what about filing cegetel7.com in China ???
And cegetelfrance.com, cegetel-france.com.
In brief, I am a fair player, I let you register the domain names hereafter and I propose the purchase of the name :
7cegetel.com for only : 1500 EUR !
Wouldnit be cheaper than a trial ?
I await your response.
5. Parties Contentions
The Complainant sustains that the disputed domain name <7cegetel.com> is confusingly similar to its registered trademarks "Cegetel" and "Le 7", as well as its own domain names <cegetel.com>, <cegetel.fr> and <le7.fr>; that the Respondent has no legitimate interest in the domain name for he was not authorized to register or use it, nor does he otherwise uses the name Cegetel in the course of business; that when the disputed domain name was registered, the Complainant was already very well known in France under the brand Cegetel which therefore can be considered as notorious; that the Respondent being based in France, he could not ignore the existence and fame of the mark Cegetel; that the domain name is used in relation with an active web site intended to mislead the public and distract the Complainants goodwill; that the domain has been filed and is used in bad faith because it can be deducted from the correspondence of the Respondent that he acquired the disputed domain name with the intent to speculate and offer it for sale to its legitimate proprietor; also because it is used to point towards a web site intended to promote the Respondents own business through an undue benefit from the Complainants goodwill, reputation and fame; the Respondents business is related to sending spams, which could affect the good reputation of the Complainant; that the registration of the disputed domain name prevents the Complainant from legitimately using it; and that the Respondent could not ignore the Complainants trademarks rights when he registered the disputed domain name.
The Respondent did not reply to the Complainants contentions in due time, but as explained above, he has presented some arguments to justify its refusal to comply with the Complainants requirements and also in response, although indirectly, to the Complaint, through its e-mail communications of July 23 and November 24, 2003.
Those arguments deserve to be taken into account.
The Respondent rejects the Complainants arguments on the ground that trademark law would have nothing to do with the registration process of domain names and that, according to him, a domain name can be registered by anybody even when the registrant is not the owner of the corresponding trademark.
The Respondent offers to sell the disputed domain name to the Complainant for a price of 1500 EUR.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns a number of trademarks registered in France and with the OHIM for "CEGETEL", "LE 7" and "LE 7 AUTOMATIQUE".
The disputed domain name is <7cegetel.com>.
The disputed domain name is not therefore identical to any of the cited Complainants trademarks.
But the said domain name does clearly appear confusingly similar to some of the Complainants trademarks.
In particular, the trademark "CEGETEL", the distinctiveness of which is not questionable, is entirely reproduced within the domain name <7cegetel.com>. The addition of the digit "7" before the name "Cegetel" and the suffix ".com" behind it must be regarded as irrelevant as they do not create a wording having a meaning of its own and causing the earlier mark "CEGETEL" to lose its individuality within the domain name. There is no doubt that the predominant element within the disputed domain name is "cegetel" which remains distinctive per se and clearly isolable within the combination "7cegetel.com".
The public, when reading or listening to the domain name shall legitimately be led to believe that this domain name is a derivation of the trademark "Cegetel", both having a common origin and being owned by the same company.
The domain name <7cegetel.com> is therefore considered as confusingly similar to the Complainants trademark Cegetel and the Panel is satisfied that the requirement of Paragraph 4(a)(i) of the Policy is fulfilled.
The Panel does not therefore find it useful to examine whether the disputed domain name is confusingly similar to the other trademarks invoked by the Complainant.
B. Rights or Legitimate Interests
The Respondent has not brought any element tending to justify his registration of the domain name <7cegetel.com> or showing that he would have some rights or any legitimate interest in it.
The Complainant has stressed that it never granted any authorization to the Respondent to use its trademarks. This is not contested by the Respondent.
And the Panel, from the various factual elements submitted along with the Complaint, including the communications of the Respondent, is convinced that the Respondent has no legitimate interest in the domain name.
The Bailiffs affidavit drawn up on July 7, 2003, revealed that the disputed domain name was used by the Respondent to enable Internet users to access its web site. But the Panel observes that the domain name <7cegetel.com> pointed towards a web site within which there was absolutely no reference whatsoever to a trademark, service mark or any other commercial message relating to "7Cegetel", or even "7" or "Cegetel". The said web site refers to a service identified as "Déclic-Marketing". It is therefore established that the Respondent does not make any legitimate use of the brands "7cegetel", "7" or "Cegetel" in the normal course of business.
Consequently, and being emphasized that the name "7Cegetel" is absolutely not necessary for, nor descriptive of the services offered by the Respondent on its web site, the Panel is satisfied that the Respondent has no rights nor any legitimate interest in the domain name <7cegetel.com>.
C. Registered and Used in Bad Faith
Registration in bad faith
It shall be emphasized that, when registering the domain name, the Respondent did not mention in the Registration Agreement his address, and it is suspected that this was done on purpose in order to hinder his identification and the possible notification of cease-and-desist letters or writs. This appears to the Panel as first hint of bad faith.
The Complainant is very well known in France under the name "Cegetel", and it has also widely promoted one of its services "Le 7 de Cegetel" very actively in France for a number of years, from the date when the telecommunications market was deregulated in France and the major public telephone operator lost its monopoly. The Complainant then offered, and still offers, a competing telephone service for individuals and companies, the particulars of which being that its customers must dial the digit 7 instead of the usual 0 when dialling a phone number.
Advertising campaigns for the mark "Le 7 de Cegetel" have been spread all over press, TV, radio and Internet in France.
The Respondent being based in France, it is very unlikely that he was not aware of the combined use of the trademarks "Le 7" and "Cegetel" by the Complainant.
It also worth underlining that the Respondent in its communications does seem to admit that he was aware of the trademark rights of the Complainant: in his e-mail dated July 23, 2003, and again in his last e-mail of November 24, 2003, he invites the Complainant to register its trademarks as domain names in ".fr" or ".tm.fr" and he also refers explicitly to other very well known trademarks (the names of some French TV channels) to explain that the corresponding domain names can be freely registered by anybody without interfering with the principles of Trademark Law. In his first communication, the Respondent indicates that the jurisprudence does not prevent such type of behaviours, thus implying that he is aware that some Tribunals have already decided on such cases. If so, and if the Respondent really examined the jurisprudence relating to such matters, he then knew very well that "cybersquatting" is always severely punished by French Courts.
Hence, the Panel is convinced that when he registered the domain name <7cegetel.com>, the Respondent could not ignore the earlier Complainants rights vested in this name and, in the very unlikely event that he would not have been aware that his behaviour was regarded as unlawful by jurisprudence, made himself guilty of reprehensible carelessness for having neglected to verify whether the registration as a domain name of a third partys mark was lawful or not.
The registration of the disputed domain name must therefore be regarded as being tainted with bad faith.
Use in bad faith
As established by the Bailiffs affidavit dated July 7, 2003, the Respondent was, at this date, using the disputed domain name to point towards a web site within which a brand or trade name "Declic Marketing" was promoted, namely a service of offering e-mail addresses for the purpose of so-called "direct marketing" or "spamming".
The web site of the Respondent does not contain any reference to the brands "7cegetel", "7" or "Cegetel".
The Respondent does not at any moment justify the use of any of these marks in the course of its business.
Taking into account the notoriousness in France of those marks, owned by the Complainant, the Panel suspects the Respondent to have used in bad faith the domain name <7cegetel.com> in order to unduly benefit at no cost from the reputation and goodwill of the Complainants trademarks in order to attract customers to his web site.
It is also clearly established from his e-mail of July 23, 2003, and even more explicitly from his last e-mail dated November 24, 2003, that the Respondent intends to speculate over the domain name, as he offers to transfer the same to the Complainant in counterpart for the payment of a price that, evidently, exceeds the effective cost of registration of a domain name (1500 EUR).
And the Panel observes that the Respondents web site is no longer accessible through the disputed domain name and suspects that the Respondent deactivated the link after being notified the Complaint, thus tacitly admitting his wrongdoings.
Anyway, use of a domain name does not necessarily imply that the domain name points towards an active web site (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Even though the disputed domain name is not active at the present time, in the sense that it does no longer points towards a web page, the Panel considers that the Respondent keeps on using the disputed domain name fraudulently, as it withholds the said domain name and only proposes to release it against payment of money, thus interfering with the Complainants legitimate right to use the domain name. Such a passive holding, furthermore coupled with blackmail, must be regarded as a fraudulent use of the domain name.
The Panel is therefore convinced that the disputed domain was used by the Respondent in bad faith when the Complaint was filed and is still used in bad faith at the present time.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <7cegetel.com> be transferred to the Complainant.
Dated: December 1, 2003