Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

1. The Parties

The Complainant is MUTUELLE D’ASSURANCE DU CORPS DE SANTE FRANÇAIS – M.A.C.S.F., 20, rue Brunel, 75017 Paris, France.

The Respondent is SA CHA REBK LLC, 231 South Phillips Ave., Suite 4, Sioux Falls, SD 57104, United States of America.

2. The Domain Name and Registrar

The domain name in issue is:
macsf.com

The Registrar is Network Solutions, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center ( the Center ) received the complaint on May 17, 2000 ( hardcopy on May 22, 2000). On May 26, 2000 the Center sent a request for registrar verification in connection with this case to Network Solutions. The Center verified that the complaint satisfies the formal requirements on June 2, 2000. The notification of complaint was transmitted on June 9, 2000 and the notification of the Respondent’s default on June 29, 2000.

4. Factual Background

French trademark N° 1 383 391 ( logo) MACSF, filed December 8, 1986, renewed December 6, 1996, in class 36, covering amongst others insurances;

French trademark N° 99 825 388, MACSF, filed November 25, 1999, for class 36 covering insurances;

French trademark N° 1 383 390, MACSF NAVPS (logo), registered December 8, 1986, renewed December 3, 1996, for class 36, covering insurances.

The Complainant is also the owner of the domain name macsf.fr.

5. Discussion and Findings

Three requirements have to be met for a Panel to order the transfer of the domain name to the Complainant: identity or confusing similarity; no legitimate interest or right in respect of the domain name; the domain name was registered in bad faith and is being used in bad faith.

A. Identity or Confusing Similarity

The domain name in issue is identical in its characteristic element "macsf" to the French trademark N° 1'383'391 (in its verbal element), to the French trademark N° 99'825'388, and to one of the two acronyms in the French trademark N° 1'383'390 (MACSF NAVPS).

Overall, the domain name is different from the MACSF element only because of the top level domain name ".com", so that there is obviously a confusing similarity to the trademark and trade name of Complainant.

The Panel notes, however, that there might be a difficulty arising from the nature of the trademarks Nos 99'825'388 and 1'383'390.

Assuredly, Article L 711-1 para. 2 (a) of the French Code of Intellectual Property mentions "letters" among the examples of signs that may be registered as trademarks. French courts have upheld the validity of such trademarks as SVP 1, TBS 2 and even CD 3. A most recent treatise mentions the protection as trademark of an "acronym", i.e. "the succession of initials of a complex name (IBM, SVP), etc." 4. On the other hand, a learned writer recently stated that "a verbal trademark consists in a word which can be remembered, with or without a meaning" 5. Obviously, the acronym MACSF is difficult to utter for a native French speaker and almost impossible to remember.

Nevertheless, this Panel is not empowered to rule on the validity of a French trademark under French law, which is an issue properly to be adjudicated by the French courts in case of a litigation in this regard.

Therefore, and in the absence of any pleadings to the contrary by the defaulting Respondent, this Panel will premise its decision on the prima facie assumption that MACSF is a valid trademark, identical to the acronym of Complainant.

B. Right or Legitimate Interests of Respondent

(1) Respondent is defaulting. Therefore it is not possible to find which legitimate interests it may have to the domain name in issue.

(2) However, this Panel notes that Respondent might well have a right based on the very fact of the prior registration of the MACSF acronym. The domain names are assigned on a first come first served basis. Some exceptions are provided to this rule of priority in time, for example concerning the protection of well-known trademarks or the registration in bad faith. Nevertheless, MACSF cannot be deemed to be a well-known trademark. Therefore, it is subject to the general rule of Article 16 para. 1 TRIPS, the trademark being protected only against its use by Defendant for products or services identical or similar to those in respect of which the mark is registered and where is a likelihood of confusion; this likelihood is presumed only where both mark and goods or services are identical 6.

The same rule appears to be embedded in Article L 713-1 et seq. of the French Code of Intellectual Property (see esp. L 713-3).

(3) The Complainant registered the trademarks in issue for the international class 36, with following list, e.g. in the case of mark N° 99'825'388 "Assurances; Financial Business; Monetary Business; Real Estate Business".

The Respondent does not appear to be active in any of those areas; as is evidenced by the Enclosure E Annex 3, Père-Noël.fr to which MACSF.com is redirecting sells products of various denominations (under "errands" : Groceries, Drug Store, Beauty, Health, Drinks, Vines and Spirits, Foodstuffs, etc.; under "The House" : Appliances, Dishes, Furniture, Towels, Do-it-yourself, Gardening; under "The Person" : Clothes, Shoes, Jewelry, Watches, Baggages, Kid Care, Perfumes"). None of those products are competing with the insurance and financial products of the Complainant. There appears to be no competition between the parties, so that no risk of confusion may exist in the mind of the consumers. In a world where approximately 12 million domain names are registered and where the imaginative powers of the human mind are what they are, it is likely that many a domain name is identical or confusingly similar to a trademark or a trade name. The fact that no absolute protection is granted to normal trademarks, but only protection as against identical or similar signs affixed on identical or similar goods and services, reflects the balance that most countries and all international treaties (see e.g. Art. 6 bis Paris Convention; Art. 16 TRIPs) have sought to strike between the rights of the trademark owner and the right of the other businessmen and businesswomen to use distinctive signs.

Thus, in the prima facie views of the Panel, no "brand counterfeiting" as is pleaded by the Complainant appears to take place in the present case.

(4) It might well be decided otherwise by a French court applying French law, as could be indicated e.g. by the decision of the Tribunal de Grande Instance of Bordeaux in the case Atlantel 7 - which was a trademark registered in France and known in that country and could not be registered as a domain name (even with a different top level domain name) by another French business. Nevertheless, the administrative proceedings that are instituted under the ICANN Policy, Rules and Additional Rules are not opening a forum for adjudicating intricate questions of law under a given municipal law. On the contrary, they aim at eliminating various forms of flagrant misuses of the principle "first come first served" for the registration of domain names.

This is so true that various governments raised in the year 2000 the issue whether the arbitration system under ICANN should not be extended to further areas, such as the protection of trade names, presumably outside the rather limited scope of trademark law (see the WIPO Center site under "Process 2"). Be it as it may, the present regulations do not empower a panel to protect a French trademark which is not worldwide known against the registration by a third party of a similar domain name, absent a showing that there is no legitimate interest and there is bad faith on the part of the third party.

C. Registration and Use in Bad Faith

On the strength of the file, the Panel finds that the registration has not been proven to have been made in bad faith, nor the use to occur in bad faith.

(1) As to the registration, the Complainant asserts two grounds for supporting its contention that the registration occurred in bad faith.

First, the Respondent would be a "company which does not legally exist". If that was established, it could entail difficult questions as to the validity of the present proceedings, since to be a party in any proceedings involving the adjudication of private interests, both parties must have a legal existence. Nevertheless, in the present administrative proceedings, it appears to be enough if a contact person could in fact receive on behalf of the Respondent proper notice of the complaint and all other communications by the WIPO Arbitration and Mediation Center, which has been the case.

In any case, the registrant being a legal entity apparently organized under the laws of South Dakota, in the United States, the panel cannot pass an informed judgment on the contention by the Complainant that the Respondent would not legally exist. Further, whether the Respondent does "legally" exist e.g. as a limited liability company or not, the panel would in any case be authorized to seek whether its directors, officers and/or partners have shown bad faith in registering the domain name. In the view of the Panel, however, it is not an evidence of bad faith to have recourse to an agent in order to register a domain name, as it has long been recognized that a trade mark can be registered as a trust property by a trustee for the account of a beneficiary (who may be the trustor) 8.

The second argument of the complaint as to the alleged registration in bad use of the domain name is based on the fact that MACSF means nothing in French or in English, but corresponds to the acronym of the Complainant’s company name. This might be deemed to be an indication of bad faith, as it is shown that the real beneficiary of the domain name might well be French citizens operating the père-noël cyber business. It would be strange that they chose the five letters MACSF at random. In fact, they might well have known that acronym. On the other hand, no certainty can exist in this respect, as it is known that French companies and institutions use a wide array of acronym such as SACEM, SACD and so many other ones that identical combinations of letters are bound to coexist in various sector of the French economic and public life – and do in fact coexist.

Now, proper relief could be granted against the confusion which is so aroused in the public – for example under Article L 711-4 of the French Code of Intellectual Property in case of an infringing trademark registration. Nevertheless, if the Panel were to accept the Complainant’s contention that the sheer fact to register a domain name which is identical to an acronym is to be deemed an evidence of bad faith, the Panel would overextend the notion of bad faith, which under general principles of law is not presumed to exist unless precise evidence is brought to bar in this respect. The Complaint will already be rejected on this ground.

(2) The Complainant also maintains that the use of the domain name is made in bad faith. The web sites www.macsf.com is directly linked with the web sites www.saint-valentin.com, www.perenoel.fr and www.cypermarche.org.

The owner of www.perenoel.fr is a French company which would benefit from contacts with customers trying to reach the Complainant.

The Panel cannot find bad faith use in that respect. First it should be noted that a customer for assurance and financial services will promptly observe that he or she happened to be visiting a web site of groceries and home appliances, and will not be detained there against his or her will. Any search engine will then indicate to such a customer the other web site, macsf.fr, belonging to the Complainant.

Second, it should also be noted that most signs of bad faith use that are common in the cases adjudicated under the present ICANN policy are absent in this case. For example, no offer has been made to the Complainant to buy back the domain name. No threat or selling it to a third party has been proffered. No well-known brand is shown to have been registered as domain name by the same registrant or the person on behalf of whom the registrant acts.

Therefore, the Panel does not find for the Complainant in respect of the alleged bad faith use.

Finally, the Panel is aware that if the Complainant’s contentions as to the true beneficiary of the registration are correct, the Complainant may apply for proper relief before the French courts, as their jurisdiction would appear to be proper 9 notwithstanding the "mutual jurisdiction" declaration made in accordance with Para. 3 (b) (xiii) in the complaint (viii). Such declaration would bear only on "any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name". In the event, the Panel declines to order the transfer or the cancellation of the domain name in issue. Therefore, the ordinary rules will determine the jurisdiction of French or U.S. courts.

6. Decision

The Panel rejects the relief requested in the complaint and declines to order the transfer or the cancellation of the domain name macsf.com.

François Dessemontet
Sole Panelist

20 July 2000

Footnotes:

1. Paris, Jan. 8, 1979, Annales Propr. Industrielle 1981, 56.

2. Paris, May 23, 1997, Bull. doc. PIBD 1997 N° 637, III, 439.

3. Toulouse, Feb. 23, 1995, Juris-Data N° 40399.

4. J. Schmidt-Szalewski, France, in International Encyclopedia of Laws, The Hague, London, Boston, 1999, N° 581.

5. A. Françon, Cours de propriété littéraire, artistique et industrielle, Paris, 1999, 106.

6. See generally W.R. Cornish, Intellectual Property, 4^th ed., London 1999 N° 15.15, p. 606.

7. Ord. Réf. July 22, 1996, N° 1366/96 – 1543/96.

8. See generally U. Rüede-Bugnion, Fiduziarische Rechtsgeschäfte, die ein Markenrecht zum Gegenstand haben ["Trademarks as Trust Property"], thesis Geneva, Berne 1978.

9. See G. Kaufmann-Kohler, in Internet : Which Court Decides ? Which Law Applies , ed.by K. Boele-Woelki & C. Kessedjian, The Hague, London, Boston, 1998, esp. pp. 111-119.