Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Millennium Broadcasting Corporation, New York, NY, USA ("Complainant") represented by Cheryl L. Davis, Menaker & Herrmann LLP. The Respondent is Publication France Monde, Levallois-Perret, II ("Respondent") represented by Eric Dupont, Markplus International.

The domain name at issue is "iciparis.org", registered with Network Solutions.

The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Tyrus R. Atkinson, Jr. Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 2, 2000; The Forum received a hard copy of the Complaint on October 6, 2000.

On October 6, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "iciparis.org" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On October 13, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 2, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to postmaster@iciparis.org by e-mail.

The Response, dated October 30, 2000 was duly received and made part of the record.

On November 8, 2000 Complainant filed "Complainantís Additional Response." By documents dated November 9, 2000, Respondent filed "Respondentís Additional Written Statement" and Complainant filed "Complainantís Second Additional Statement".

On November 8, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant registered the domain name ICIPARIS.COM with Network Solutions, Inc. on February 9, 1999. The domain name was attached to a website. The website was constructed to provide English-language information in North America highlighting European (mostly French) attractions and culture.

In May of 1999 Complainant received a letter from Respondent objecting to Complainantís registration of ICIPARIS.COM based upon Respondentís French Trademark "ICIPARIS".

Several letters were exchanged between counsel for Complainant and counsel for Respondent regarding this matter.

On August 8, 2000, Complainant received from a United States Marshall court papers from a proceeding entitled Publications France Monde, S.A. v. Millennium Broadcasting Corporation and Network Solutions, Inc.(NSI) filed in the Tribunal de Grande Instance de Nanterre, in France.

On August 21, 2000, Respondent registered the domain name ICIPARIS.ORG with Network Solutions, Inc.

The domain name ICIPARIS.ORG is almost identical and confusingly similar to ICIPARIS.COM. Respondent has no rights or interests in ICIPARIS.ORG because the ICIPARIS mark has not been registered in the United States. Respondentís registration of the domain name prevents Complainant from reflecting the mark in a corresponding domain name and disrupts Complainantís business. For these reasons, and because Respondent filed a lawsuit in France, Respondent has acted in bad faith.

In Complainantís Additional Written Statement it is shown that the District Court of Nanterre ordered the domain name "ICIPARIS.COM" to be transferred to Respondent effective October 24, 2000 and that the transfer was made by Network Solutions, Inc. in compliance with the order of the French court.

Complainant in its Second Additional Written Statement requests oral argument by telephone conference.

B. Respondent

Respondent is the owner of the well-known French Trademark Registration "ICI PARIS" since 1983. Respondent operates a famous magazine, distributed since 1945 in France and other countries under the name "ICI PARIS".

By decision of the District Court of Nanterre (France) dated June 22, 2000, the domain name ICIPARIS.COM was found to constitute an infringement to Respondentís Trademark ICI PARIS, and the domain name ICIPARIS.COM has been returned to Respondent by Network Solutions, Inc.

Respondent was justified in registration of the domain name ICIPARIS.ORG .

1. Complainant registered the domain name ICIPARIS.COM on February 9, 1999.

2. In May of 1999, Respondent informed Complainant by letter of Respondentís French Trademark and Tradename and demanded that ICIPARIS.COM not be used by Complainant.

3. Respondent is owner of French Trademark Registration "ICI PARIS".

4. Respondent operates a French magazine titled "ICI PARISí which has been distributed in France and other countries, including the United States, since 1945 with annual distributions of 500,000 copies.

5. Respondent registered the domain name ICIPARIS.ORG on August 21, 2000.

6. Oral argument requested by Complainant is denied. There shall be no in-person hearings by teleconference unless it is determined in the discretion of this Panel and as an exceptional matter that such hearing is necessary for deciding the complaint. see ICAAN Rules for Uniform Domain Name Dispute Resolution Policy, Rule 13. No hearing is necessary for deciding this Complaint.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

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

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

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

Complainant and Respondent concede that the domain names ICIPARIS.COM and ICIPARIS.ORG are identical or confusingly similar. But in addition to this, Complainant must show that it has rights in the domain name. Complainantís sole contention as to such rights is that it registered the domain name ICIPARIS.COM. Complainant has not yet begun to use the domain name in commerce. The website is in the development stage. Respondent opposes Complainantís assertion of trademark rights in ICIPARIS.COM, arguing that registration of a domain name is insufficient to establish common law trademark rights. To establish trademark rights in a domain name it takes more than mere registration. See Sampatti.com Ltd v. Chetan Rana, AF-0249 (eResolution July 31, 2000), see also Powarchute Incorporated v. Buckeye Industries, AF-0076 a, b, c, d (eResolution May 30, 2000). Complainant failed to carry the burden on this issue.

Respondent is the holder of a French Trademark Registration No. 1,675,917 filed in September of 1983 for ICI PARIS, as well as an International Trademark Registration No. 575,732 for ICI PARIS. Complainant contends that Respondent has no registered trademark in the United State for ICI PARIS, and thus while having rights in France it has no rights in the United States. Complainant must show that Respondent has "no rights or legitimate interests in respect to the domain name." ICAAN Uniform Domain Name Dispute Resolution Policy, Sec. (4)(a)(ii). Respondent may contest any such showing by illustrating that "before any notice of the dispute," Respondentís "use of the domain name or a name corresponding to the domain in connection with a bona fide offering or goods or services" or Respondent has "been commonly known by the domain nameÖ" ICAAN Uniform Domain Name Resolution Policy, Sec. (4)(c)(ii)(iii). Complainant has not shown that Respondent has no rights or legitimate interests in the domain name. Respondent has clearly demonstrated that it has rights and legitimate interests in the domain name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000); Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000). Complainant cannot prevail on this issue.

Complainant contends that Respondent registered the domain name in bad faith because Respondent sought to prevent Complainant from reflecting the mark in a corresponding domain name and to disrupt Complainantís business by hindering Complainantís ability to the term ICIPARIS on the Internet. Further, Respondent is accused of acting in bad faith by commencing litigation in France. By registering ICIPARIS.ORG, Respondent in no manner prevented Complainant from using the domain name ICIPARIS.COM. Complainant contends that it is bad faith on part of Respondent to first agree to resort to a determination of this dispute under ICAAN procedures, and thereafter register the domain name ICIPARIS.ORG and commence a proceeding in a French court to transfer the domain name ICIPARIS.COM. The question of which party should hold the domain name ICIPARIS.COM is not the issue in this proceeding. "All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceedings provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available." ICAAN Uniform Domain Name Dispute Resolution Policy, Sec. (5).

It is not bad faith to resort to a court of competent jurisdiction for independent resolution before the mandatory administrative proceeding provided for in the ICANN Policy is commenced. ICANN Uniform Domain Name Dispute Resolution Policy, Sec. (4)(k).

It is not within the jurisdiction or authority of this Panel to decide whether the court resorted to was one of competent jurisdiction, or one to which Complainant was subject to jurisdiction. Many allegations in the pleadings go to the authority of the French court and the legitimacy of its judgment. Those contentions are beyond the scope of this proceeding. Those issues are not before this Panel for decision.

Consideration of the decision of the French court as it relates to the domain name ICIPARIS.COM is not necessary to the determination of this case nor does the decision of the French court make this proceeding moot. The Panel declines to give any consideration to the decision of the French court as it relates to any issue in this case. This proceeding is decided entirely on ICAAN Policy and procedures.

Complainant must prevail on all three elements in order to obtain the relief requested. Complainant failed to prove the first two elements. Complainant cannot prevail even if this element is proved. However, no bad faith as to the registration of the domain name ICIPARIS.ORG has been sufficiently shown. It is unnecessary to decide any issues of bad faith relating to the transfer of the domain name ICIPARIS.COM. Complainant cannot prevail on this element.

Complainantís demand that the domain name ICIPARIS.ORG be transferred from Respondent to Complainant, or in the alternative cancelled, is denied.