Comexpo Paris v. Visiotex S.A. [2000] GENDND 1055 (11 September 2000)

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World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Comexpo Paris, 55 Quai Alphonse Le Gallo, 92100 Boulogne Billancourt, France, represented by Anne Vaisse, Vaisse & Associés, 51 Avenue Montaigne, 75008 Paris, France, hereinafter the "Complainant".

Respondent is Visiotex S.A., 1250 Hallandale Blvd. #502, Ft. Lauderdale, FL 33009, U.S.A., and P.O. Box 24216, Tel Aviv, IL, 61241, Israel, hereinafter the "Respondent".

The domain name at issue is "foiredeparis.com", hereinafter referred to as the "Domain Name". The registrar is Network Solutions, Inc.

The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s complaint on July 21, 2000 (electronic version) and July 14, 2000 (hard copy). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is July 27, 2000.

On July 19, 2000, the Center transmitted via email to Network Solutions Inc. a request for registrar verification in connection with this case. On July 21, 2000, Network Solutions Inc. transmitted via email to the Center, Network Solutions’ Verification Response, confirming that Respondent is Visiotex, that the administrative and billing contact is Paule Arfi from Visiotex, and that the technical and zone contact is CWTel.

Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on July 27, 2000, to Respondent and to Network Solutions, Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, facsimile and e-mail, in accordance with the following contact details:

Golan Eitan
CWTel inc.
1250 E. Hallandale Blvd # 502
Ft. Lauderdale
FL 33009
United States

The Center advised that the Response was due by August 15, 2000. However, no Response was submitted. Accordingly, the Center issued a Notification of Respondent Default on August 18, 2000.

On August 18, 2000, in view of the Complainant’s designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist.

Having received on August 23, 2000, Mr. Geert Glas’ Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

The Administrative Panel shall issue its Decision based on the complaint, the evidence presented, the Policy, the Rules and the Supplemental Rules.

The complaint is based on the registration of the trademark "Foire de Paris" which is a French trademark registered by the "Comité des Expositions de Paris" on November 16, 1978, for a ten year period under the number 1 186 834 at the INPI, the French Trademark office. This registration was renewed in 1988 for a ten year period under the number 1 496 893 and again in 1998 for a ten year period under same number.

This trademark consists of the name which is used for an exhibition and sales fair featuring various products and services which is organized each year, since the beginning of the 20^th century, in an exhibition hall open to the public in Paris, first by the "Comité des Expositions" and now by Complainant.

In addition, the "Comité des Expositions de Paris" has registered the French trademark "Foire internationale de Paris" on March 25, 1988, for a ten years period under number 1 623 228 at the INPI, which registration was renewed in 1998 for a ten years period.

As per an agreement which came into force on July 29, 1999, between the "Comité des Expositions de Paris" and Complainant, all these registrations were assigned to Complainant.

There is no relation between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has he otherwise obtained an authorization to use Complainant’s trademarks.

According to the annexes to the complaint, the Domain Name resolves to a web page with obvious pornographic content. On September 4, 2000, the Panel checked on the Domain Name and it resolved to a different web page indeed displaying pornographic content. However, later on when the Panel tried again, the Domain Name resolved to an "under construction" web page.

Complainant contends that Respondent has registered the Domain Name which is identical to Complainant’s "Foire de Paris" trademarks and that Respondent has no rights or legitimate interests in respect of the Domain Name, since Complainant never licensed Respondent to use the trademark.

- it is clear that Respondent is in bad faith since the famous annual event of the "Foire de Paris" is a typical regional event in Paris since the beginning of the 20th century and is very famous in France.

- the trademark "Foire de Paris" is so well known in France and so typical insofar as it is necessarily connected to said event and to Complainant that it cannot be lawfully used for other purposes than those belonging to Complainant.

- the Domain Name has not resolved to a web site or other online presence until very recently, apparently early July 2000. Until then, the Domain Name "foiredeparis.com" was said to be "under construction".

- the pages of this very recent web site show that the use thereof is made in a way which is very detrimental to Complainant, as free sex videos are proposed and naked women are shown, which seriously harms the image of Complainant since the public is lead to believe that Complainant is engaging in unlawful activities, and takes advantage of the fame of the Complainant and of its mark.

- another illustration of the Respondent’s bad faith is shown by examples of other web sites used for same activities and under some domain names which are used in the same parasitical way or which are notoriously official names in France.

- Since Respondent has no rights or legitimate interests in respect of the Domain Name, it has been registered in bad faith.

- the Domain Name was, in fact, registered in order to prevent the owner of the trademark form reflecting the mark in a corresponding domain, and is now used for a web site so as to create a confusion with the Complainant’s mark, the registrant making an unfair and unlawful use of the Domain Name. According to the paragraph 4 (b) (ii) of the Policy, this shall be taken as an evidence of registration and use in bad faith, the Respondent having engaged in a pattern of such conduct.

Consequently, Complainant requires the transfer of the Domain Name registration.

Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the Domain Name registered by the Respondent is identical to the trademark in which the Complainant has right; and,

(2) that the Respondent has no legitimate interests in respect of the Domain Name; and,

In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark "Foire de Paris" of Complainant.

Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks.

By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4, c of the Policy, any rights or legitimate interests in the Domain Name.

The Administrative Panel therefore finds that Respondent does not seem to have any legitimate right or interest in the Domain Name.

Several facts have to be taken into consideration when assessing the absence/presence of bad faith in this matter:

1. "Foire de Paris" is a trademark owned by Complainant. However, it also simply means "Fair of Paris" or "Exhibition of Paris". Therefore, these terms also have a generic meaning since they refer to a fair or exhibition taking place in Paris, without however identifying as such a specific fair or exhibition. A relevant question is thereby to what extent this trademark has acquired through its use, a distinctive power. This point is however a genuine trademark issue that cannot be resolved within this proceeding.

2. It appears that the Domain Name has resolved to various web sites over time. The Panel has seen two different versions of the web site plus an "under construction" page.

3. Respondent did not file any Response, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the Domain Name.

4. It appears that the addresses given by Respondent do either not exist, or that Respondent does not reside there. Indeed, postal documents show that the letters sent by Complainant to Respondent bounced back.

5. Respondent has registered many different domain names, most of which are connected to the same web page with pornographic content, and some of which resolve to an "under construction" web page, as far as the Panel could determine. Contrary to Complainant’s assertion, those domain names, however, do not seem to incorporate trademarks, as far as the Panel could verify. For example, Respondent registered following domain names: starnues.com, voyancedirecte.com, dvdfirst.com, parderriere.com, vualatv.com, viesexuelle.com, cafesexy.com, beaucul.com, sexogratos.com, seinsnus.com, dvdsalopes.com, tvachat.com, dvdeducation.com, vocabulaire.com, ordredesavocats.com, republiquefrancaise.com, eaudefrance.com, fetedelamusique.com, hotdor.com, produitsdefrance.com, terresainte.com, villedeparis.com, etc…

It is unclear whether Respondent knows of Complainant’s "Foire de Paris" trademark.

The arguments invoked by Complainant in this respect are not totally convincing. Indeed, Complaint asserts that the "Foire de Paris" is a typical regional event in Paris since the beginning of the 20th century and is very famous in this country only. Furthermore, Complainant stresses that the trademark "Foire de Paris" is so well known in France and so typical insofar as it is necessarily connected to said event and to Complainant. While this fact could lead to a presumption of bad faith in case the Domain Name had been registered by a French citizen or company, this same presumption cannot automatically be made vis-à-vis a US/Israeli registrant as is the case here.

It is not unlikely that the facts described hereabove would be considered to constitute a trademark infringement by a civil court. The question this Administrative Panel needs to address is however not whether the Respondent is merely infringing Complainant’s trademark but whether he has registered and used the Domain Name in bad faith.

For the reasons already indicated, the Administrative Panel is not sufficiently convinced that such bad faith is and was indeed present when the Domain Name was registered and used afterwards.

The fact that Respondent registered a considerable amount of domain names and linked a major part of it to the same web site can be an indication of bad faith. However, Respondent used domain names which are a mere combination of generic terms in the French or English language or at least names which do not constitute prima facie trademarks to do this.

In the same way, Paragraph 4, a., (ii) of the Policy provides that shall be evidence of the registration and use of a domain name in bad faith the fact to have registered a domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided however that the registrant has engaged in a pattern of such conduct. In this case, such a pattern cannot be found, since the various domain names do not, as far as the Panel could determine, incorporate trademarks.

In light of the foregoing, the Administrative Panel decides that the Domain Name "foiredeparis.com" registered by Respondent is identical to the trademark of Complainant, that Respondent has no right or legitimate interest in respect of the Domain Name, but that Respondent’s Domain Name may not have been registered and may not be being used in bad faith.

Accordingly, pursuant to Paragraph 4, i of the Policy, the Administrative Panel denies the request that the registration of the Domain Name "foiredeparis.com" be transferred to Complainant.

Generic Top Level Domain Name (gTLD) Decisions

Comexpo Paris v. Visiotex S.A. [2000] GENDND 1055 (11 September 2000)

World Intellectual Property Organization