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 names at issue are: "luxurychannel.com", luxurychannel.net", "theluxurychannel.com" and "theluxurychannel.net" (hereinafter "the Domain Names").

The registrar of the other domain names is Network Solutions Inc., 505 Huntmar Drive, Herndon, Virginia 20170- USA (hereinafter "NSI").

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 D2000-0695)
July 28, 2000	Notification of Complaint and Commencement of Administrative Proceeding (Case D2000-0695)
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 "luxury channel", Complainant filed on April 6, 2000, with the Office for Harmonization in the Internal Market (Trademarks and Designs) an application for a verbal Community Trademark.

A copy of the receipt of this application is enclosed with the complaint.

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".

5.1 Complainant

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

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

The Domain Names are not used as websites by Respondent, which holds numerous domain names with the sole intention of selling them.

Notwithstanding that the application for the Community Trademark "the luxury channel" was made after registration of the hereto similar domain names, Complainant maintains that it used this sign prior to the registration of the disputed domain names, although there is no evidence to this in Complainant’s file and that it holds copyrights on this sign.

5.2 Respondent

Respondent considers that the Domain Names at issue should not be transferred to Complainant since the registration of the Trademark "the luxury channel" was sought by Complainant after proper registration by Respondent of said disputed domain names. Respondent added also that the slogan "the luxury channel" has been used by Complainant only recently as a lead-in to Complainant’s domain name "wishline.com".

Respondent declares also 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 Luxurychannel.com, "luxurychannel.net", "theluxurychannel.com" and "theluxurychannel.net".

6.2.1 Identity or Confusing Similarity

According to articles 6 and 9, paragraph 3, of the Council Regulation (EC) No. 40/94 of December 20, 1993, on the Community Trademark, rights to a Community trademark are conferred only from the date of publication of registration of the trademark at issue.

Considering that Complainant attached to its complaint only a receipt of filing of a request for a Community Trademark, the Administrative Panel assumes that the registration of the trademark "the luxury channel" has not yet been published.

Consequently, Complainant actually has no rights to the trademark "the luxury channel". There is thus no need to analyze the prima facie similarity between the sign "the luxury channel" and the domain names "luxurychannel.com, "luxurychannel.net", "theluxurychannel.com" and "theluxurychannel.net".

Since paragraph 4(a) of the Policy requests evidence of identity or confusing similarity solely between a trademark or a service mark and the domain name at issue, the statements of Complainant that it holds copyrights on or has made prior use of this sign (which, moreover, have not been established) are not germane to the present procedure.

The administrative Panel therefore finds that Complainant has not established the conditions of paragraph 4(a) of the Policy.

Considering that the three conditions provided under paragraph 4(a) of the Policy must cumulatively be established by Complainant, and that complainant fails on the first condition, one need not further examine whether Respondent has any rights or legitimate interests in respect of these domain names, and whether the latter were registered and used by Respondent in bad faith.

In light of the foregoing, the Administrative Panel decides, that Complainant’s request to transfer the domain names "luxurychannel.com", "luxurychannel.net", "theluxurychannel.com" and "theluxurychannel.net" is denied.

Benoit Van Asbroeck
Sole Panelist