Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is the société anonyme MULTI THEMATIQUE, a commercial limited company organized and existing under the laws of France, having its registered offices at 48, quai du Point du Jour 92100 Boulogne Billancourt – France. Complainant is represented by Inlex Conseil, Patent and Trademark Attorneys, having their principal place of business at 68 rue Pierre Charron, 75008 Paris, France.

Respondent is MATTHEW C. HARPER, a citizen of the United States having his mailing address at P.O. Box 768 Newbury Park, CA 91319 USA. Respondent is represented by himself.

The domain name at issue is: "wishline.net" (hereinafter "the Domain Name").

The registrar of the Domain Name at issue is Tucows.com Inc., 96 Mowat Avenue, Toronto, Ontario M6K 3MI Canada (hereinafter "Tucows").

On September 14, 2000, after having receiving Benoit Van Asbroeck’s completed and signed statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel.

The procedural history prior to the appointment of the Administrative Panel can be summarized has follows :

SUBMISSION DATE	DESCRIPTION
June 29, 2000	Complaint received by e-mail
June 30, 2000	Complaint received in hardcopy
July 21, 2000	Registrar’s Verification Response (Case D2000-0694)
July 27, 2000	Notification of Complaint and Commencement of Administrative Proceeding (Case D2000-0694)
August 11, 2000	Respondent's e-mail to the Center
August 16, 2000	Center's answer to Respondent's e-mail
August 16, 2000	Respondent's request for extension of time
August 18, 2000	Center's e-mail granting an extension of time for filing Response
August 18, 2000	Respondent's e-mail to the Center
August 21, 2000	Complainant acknowledgement of the granting of time extension
August 21, 2000	Center's answer to a Respondent question
August 24, 2000	Response filed via e-mail
August 24, 2000	Acknowledgement of Response

4. Factual Background

With respect to the term "wishline", Complainant is holder of the following French trademarks:

semi-figurative Trademark No. 99/827 130 dated December 3, 1999, covering classes 38, 41 and 42;

nominal Trademark No. 99/817 493 dated October 13, 1999, covering classes 38, 41 and 42.

A copy of the registration certificates of these trademarks are enclosed with the complaint.

It appears that these trademarks are also registered or filed in numerous countries of the world, including the United States and Canada.

In 1999, Complainant bought from a third party the domain names "wishline.com" and "wishline.net". For grounds not detailed by Complainant, it has lost the domain name "wishline.net".

In December 1999, Complainant opened a website under the URL "wishline.com" and using as subtitle the term "The Luxury Channel". This is a site for selling and renting luxury products on Internet. The site is in English and apparently intended for an international clientele.

In March/April 2000, Respondent repeatedly offered to sell to Complainant the domain names "luxurychannel.com", "luxurychannel.net", "theluxurychannel.com" and "theluxurychannel.net". In the absence of response by Complainant, on April 6, 2000, Respondent registered the domain name "wishline.net" and notified to Complainant that he would return this latter domain name to Complainant provided that it purchase the other domain names at issue.

5.1 Complainant

According to Paragraph 4(b)(i) of the Policy, Complainant requests a transfer in its favour of the Domain Name since it cumulatively satisfy the grounds listed under Paragraph 4(a) of the Policy.

Respondent does not hold any trademark related to the Domain Name.

The Domain Name is not used as website by the Respondent, which holds numerous domain names with the sole intention of selling them.

5.2 Respondent

Respondent declares that he is willing to transfer the domain name "wishline.com" to Complainant.

Respondent also declares that, due to severe health problems barring him from any physical activity, he has developed a business of selling domain names.

6.1. Pursuant to paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Rules"), the Administrative Panel shall issue its decision 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 provides that a Complainant must cumulatively establish each of the following three conditions to successfully challenge a registered domain name:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

(2) that the Respondent has no legitimate interests in respect of the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

6.2. Statements of Respondent

Considering that Respondent in the conclusion of its Response has formally declared that "(he) will immediately transfer Wishline.net, the Administrative Panel is bound to follow such statement and shall as a result require that the registration of the Domain Name "Wishline.Net" be transferred to Complainant. However, for the sake of completeness, the Administrative Panel shall briefly examine whether the conditions specified under paragraph 4(a) of the Policy are satisfied here.

6.2.1 Identity or Confusing Similarity

The domain name "wishline.net" at issue is identical to Complainant’s trademarks "wishline" which, although this is not an express prerequisite of paragraph 4(a) of the Policy, was registered prior to the registration of the disputed domain name.

6.2.2 Respondent’s rights or legitimate interests in the Domain Name

According to Paragraph 4(c) of the Policy, evidence of any of the following circumstances shall demonstrate rights or legitimate interests of Respondent in the domain name at issue:

(i) before any notice was given to Respondent of the dispute, Respondent used, or demonstrably made 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; or

(ii) Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

Respondent’s response shows that he does not invoke any of these circumstances which could demonstrate his rights or legitimate interests in the Domain Name. To the contrary, it appears clearly from his contention that Respondent does not use the Domain Name as a website and that it has been registered for pressure and/or selling purposes vis-à-vis Complainant.

6.2.3 Registration and Use in Bad Faith

According to Paragraph 4(b) of the Policy, evidence of any of the following circumstances shall demonstrate a bad faith registration and use of the domain name at issue :

(i) circumstances indicating that Respondent has registered or that Respondent has 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; (...)"

As already mentioned, it appears from Respondent’s contention that Respondent registered this domain name in order to incite Complainant to buy the other domain names at issue. Indeed, Respondent indicates in his contention that "I registered "Wishline.net" to get their attention. I sent them an e.mail stating that I would return "Wishline.net" to them if they purchased The Luxury Channel.Com/Net from me". Furthermore, Respondent acknowledges that the registration and sale of domain names is his professional activity.

In view of the foregoing, the Administrative Panel finds that the three cumulative conditions provided under paragraph 4(a) of the Policy are met.

In light of the foregoing, the Administrative Panel decides that the domain name "wishline.net" must be transferred to Complainant in accordance with the ICANN rules.

Benoit Van Asbroeck
Sole Panelist