Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Slumberland France a French corporation, place of incorporation in Mulhouse (France), RCS Mulhouse 382.286.904 (previously named Epeda Merinos Holding EMH and result of the merger of Matelas Merinos SA and Epeda SA), 11 rue du 17 novembre, 68100 Mulhouse, France. The Complainant’s Representative is G. Kiesel Le Cosquer/ B. Dejardins; Cabinet Plasseraud; 84 rue d’Amsterdam, 75440 Paris cedex 09, France. Telephone: (33) 01.44.63.41.11; Fax: (33) 01.42.80.01.59, e-mail: info@plass.com. The Respondent is Chadia Achouri, 3 Place Ile de beauté, 06300 Nice, France. Telephone: (33) 04.93.55.15.09, e-mail: luigi@infonie.fr. Without representative in the administrative proceeding.

The dispute concerns the domain name Epeda.com. The Registrar with which the domain name is registered is Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

3. Procedural History

A Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on March 22, 2000, by e-mail and on March 24, 2000, in hardcopy. On March 23, 2000, the acknowledgement of receipt of the Complaint and a request for Registrar verification were sent. The answer to that request was received from Network Solutions on March 24, 2000.

On March 27, 2000, the notification of the Complaint took place and the administrative proceeding began. On the same date the compliance with the formal requirements of the Policy, Rules and Supplemental Rules was checked. The payment in the required amount to the Center has been made by the Complainant.

On March 27, 2000, the Respondent replied by e-mail that he would not object to transfer without conditions the domain name to the Complainant and confirmed that point in a letter dated March 29, 2000 sent both to the Complainant and the Center.

On April 4, 2000, the Center informed the parties that if the Complainant, given the above letter, were in the process of reaching an agreement with the Respondent, a suspension of the case for a maximum of 30 days could be requested.

On April 12, 2000, the Complainant’s authorized Representative informed the Center that he was still waiting for his client’s instructions concerning a possible suspension of the case.

On May 2, 2000, the Complainant’s authorized Representative requested the suspension of the administrative proceeding, and the suspension of the same until June 1, 2000 was notified on May 3, 2000.

On May 29, 2000, the Complainant’s authorized Representative informed the Center that the Respondent had not yet transferred the domain name Epeda.com and that the Complainant requested the re-institution of the proceedings.

The sole Panelist accepted his appointment on May 30, 2000, and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

On June 2, 2000, the sole Panelist received from the Center the hard copy of the file.

This dispute is within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement pursuant to which the domain name was registered incorporates the Policy. The domain name was registered on February 11, 1999.

As the language of the domain name registration agreement is the English language and as the Complainant has filed his complaint in English, the proceeding will be led in English, according paragraph 11 (a) of the Rules, although the Respondent expressed himself partly in French in the documents of the file.

The decision is issued within the time-limit fixed by June 13, 2000.

The following facts are not contested:

(a) The Complainant has rights on the following trademarks:

International:

EPEDA MULTISPIRE, La fermeté et le plaisir n° 554.311 (France, Benelux, Monaco, Switzerland) (1990).

EPEDA MUTIFLEX, n° 503.720 (France, Germany, Austria, Benelux, Spain, Italy, Liechtenstein, Monaco, Portugal, Switzerland, Yugoslavia) (1986).

EPEDA MULTIPLUS n° 503.719 (France, Germany, Austria, Benelux, Spain, Italy, Liechtenstein, Monaco, Portugal, Switzerland, Yugoslavia) (1986).

BONNE NUIT MON EPEDA n° 627.031 (France, Benelux, Monaco, Switzerland) (1994).

Finland:

EPEDA n° 137.608 (1995).

Norway:

EPEDA n° 168.445 (1995).

United Kingdom:

EPEDA n° 1.426.777 (1990) (renewed).

Ireland:

EPEDA n° 141.657 (1990) (renewed).

France:

ULTIMA D’EPEDA n° 97/705.622 (1997).

EPEDA MULTIKIT n° 97/687.901 (1997).

BONNE NUIT MON EPEDA n° 94/520.490 (1994).

EPEDA MULTIPLUS n° 1.337.041 (1986) (renewed).

EPEDA MULTIFLEX n° 1.337.043 (1986) (renewed).

EPEDA RECORD n° 1.337.042 (1986) (renewed).

These trademarks have been and are used and the products and services designed are essentially: furniture, notably bedding articles (except for bed linen), bed cases, mattresses (class 20) (see Annex D of the Complaint).

(b) The Respondent has registered on February 11, 1999, the domain name "EPEDA.COM".

(a) Complainant

The word " Epeda", registered alone or with another term is distinctive in connection with the products designed and is eligible in itself for protection.

In accordance with Rules para.3, (b), (ix), the grounds on which the complaint is made are the following:

I. The domain name "Epeda.com" is identical and is therefore obviously confusing with the prior trademarks "Epeda", trademarks in which the Complainant has rights.

II. As the trademarks are the property of the Complainant, the Respondent who has neither prior rights on the Complainant’s trademarks nor any legal link with the Complainant, should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint.

III. The domain name "Epeda. com" was registered in bad faith as the Respondent works in a store that sells case beds and mattresses , is a specialist in the bedding field and thus could not ignore the existence of the trademarks "Epeda" which are well-known in France and Europe.

(b) Respondent

In his letter dated March 29, 2000, the Respondent admitted to have filed the domain name "Epeda.com" to federate in a web site various bedding manufacturers. He indicated that he has abandoned this plan and fully recognizes the rights of the Complainant on the domain name "Epeda.com". He added that he has given instructions to the technical contact: Iwebgroup to allow the transfer of the above domain name for the benefit of Epeda/Slumberland company.

Paragraph 15 (a) of the Rules instructs the Panel as to the principles the 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 seems applicable".

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

(a) 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,

(b) that the respondent has no rights or no legitimate interests in respect of the domain name; and,

(c) the domain name has been registered and used in bad faith.

1. Identity or similarity

The prior trademarks of the Complainant "Epeda" in their distinctive part are identical to the domain name "Epeda.com" of the Respondent. In addition, the Complainant has for several decades successfully been using the Epeda mark in the area of bedding articles and it can be said that "Epeda" is a well-known mark in the sense of art.6 bis of the Paris Convention.

2. Rights or legitimate interests of the Respondent in respect of the domain name.

The Complainant has not licensed or otherwise permitted the Respondent to use the mark "Epeda" or to apply for any domain name incorporating the mark. This fact is not contested by the Respondent in his letter of March 29, 2000.

Thus the Panel concludes that the Respondent had no right or legitimate interest to register a domain name consisting of the trademark of a third party.

3. Registration and use in bad faith

The Panel finds that there is no clear evidence of the Respondent’s registration and use of the domain name "Epeda.com" in bad faith according to the circumstances described in Paragraph 4, b, i-iv of the Policy. Nevertheless the Complaint will be accepted for the following reason.

4. Respondent’s assent to the Complaint

In his Response (e-mail dated March 27, 2000, and letter dated March 29, 2000), the Respondent alleges a misunderstanding and declares that the domain name "Epeda.com" "remains obviously the property of the Complainant, Epeda/Slumberland company, which can operate the migration towards any IP adresses of his choice, at any time and without any conditions".

In a separate handwritten document, dated March 30, 2000, the Respondent expresses a formal waiver to any claim on the said domain name.

Under these circumstances an amicable settlement could be envisaged on May 2, 2000, the Complainant’s Representative requested the suspension of the administrative proceeding until June 1, 2000.

On May 29, 2000, the Complainant’s Representative informed the Center that the Respondent had not transferred the domain name "Epeda.com" in the extension of time granted and requested the re-institution of the suspended proceeding.

For the above reasons, the Panel decides as follows:

In light of the foregoing, the Administrative Panel decides that the domain name registered by the Respondent is identical to the trademark in which the Complainant has rights, and that the Respondent has no right or legitimate interest in respect of the domain name at issue. The Panel also decides that there is no necessity determining whether the Respondent’s domain name has been registered and is being used in good or bad faith, because the Respondent has agreed in his Response to transfer the said domain name.

In addition, the Panel finds that the Respondent has not transferred the said domain name in the extension of time permitted by the suspension of the proceeding.

Accordingly, pursuant to Paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel requires that the registration of the domain name "Epeda.com" be transferred to the Complainant: Slumberland France company.

Christian Le Stanc
Sole Panelist

Dated: June 10, 2000