Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Jacques Lafitte SA, a French corporation, registered office: 16 rue Camille Pelletan, 92300 Levallois-Perret, France. The Complainant’s authorized Representative is Mrs. Caroline Casalonga, Bureau D.A. Casalonga Josse, address: 8, Avenue Percier, 75008, Paris, France, telephone: 00.33.1.45.61.94.64; fax: 00.33.1.45.63.94.21; e-mail: caroline-casalonga@casalonga.com.

The Respondent is 21^st Century Communications SCP, address: 3 Avenue Saint-Charles, Monte Carlo, Principality of Monaco, MC 98000. The Respondent’s authorized Representative is Mr. James P. Duffy, III, of Berg & Duffy, LLP, address: 7 rue du Gabian, Gildo Pastor Center, Principality of Monaco, MC 98000, telephone: 377.97.97.87.77; Fax: 377.97.97.87.78; e-mail: jpduffy@bergduffy.com .

The dispute concerns the domain names WHOSWHO.COM and WHOSWHO.NET. The Registrar with which the domain name is registered is Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

A Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on May 16, 2000.

On May 17, 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 May 19, 2000.

On May 24, 2000, the notification of the Complaint was issued and the administrative proceeding began.

On June 8 and 9, 2000, there were various communications between the Center and the Parties and the Response of the Respondent was received on June 19, 2000, in electronic format and on June 21, 2000, in hardcopy. On June 20, the acknowledgement of receipt of the Response was sent and on June 23, 2000, the Complainant made an unsolicited answer to that Response.

The compliance with the formal requirements of the Policy, Rules and Supplemental Rules has been checked. The payment in the required amount to the Center has been made by the Complainant.

The sole Panelist accepted his appointment on June 25, 2000, and submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

On June 27, 2000, the sole Panelist received from the Center the hard copy of the file.

On July 6, 2000, a new submission from the Respondent was received.

Although not bound to do so under the Rules, the Panelist accepts and considers the Parties’ further submissions after the Complaint and Response. He has obtained from the Center an extension of time to issue his Decision until July 24, 2000.

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 names were registered incorporates the Policy. The domain name "whoswho.com" was registered on April 16, 1997, and the domain name "whoswho.net" was registered on January 8, 1998.

As the language of the domain name registration agreement is the English language and as the Complainant has filed its complaint in English, the proceeding will be conducted in English, according paragraph 11(a) of the Rules.

The decision is issued within the time-limit of July 24, 2000.

The following facts and statements appear from the Parties’ submissions and the documents annexed thereto and have not been contested.

The Complaint arises as a result of registration by the Respondent of the domain names "WHOSWHO.COM" on April 16, 1997, and "WHOSWHO.NET" on January 8, 1998.

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

French Registration WHO’S WHO 1.313.552 on June 21, 1985, renewed on June 20,1995 for services in class 35.

French Registration WHO’S WHO 1.272.077 of May 11, 1984, renewed on April 28, 1994, for goods and services in classes 16 and 41 ( first registered under n° 128.187 on June 25, 1959).

French Registration WHO’S WHO 00.3015506 of March 20, 2000, in classes 3, 18 and 38;

Argentina Registration WHO’S WHO EN EL MERCOSUR Y CHILE, n° 1.658.244 of May 3, 1995, in class 16.

These marks are used to provide information in the field of biographical and professional data about individuals. (Copies of the Registration certificates in Exhibit 3 of the Complaint).

(b) The Respondent has rights in the following trademarks:

MC Registration WHO’S WHO GLOBAL NETWORK 96.16996 of June 26, 1996, for services in classes 35, 38 and 42, WIPO registration 660070 of June 28, 1996 (various countries e.g. France, Italy, Poland … ), US Registration 2,056,445 of April 22, 1997.

US Registration WHO’S WHO ON LINE 2,028,029 of December 31, 1996, for "Providing information in the field of biographical and professional data about individuals of accomplishment via global information networks", in class 42.

(Exhibit 1-3 of the Response).

(a) Complainant’s Complaint

The Complainant points out that "the second level part of both domain names is strictly identical to the registered trademarks of the Complainant and that the addition of the top level portion ".com" and ".net" does not lessen the effect of direct confusion of the domain name with the registered trademarks of the Complainant".

The Complainant adds that the Respondent has no legitimate interest in the use of the domain names at issue as the Respondent has no registrations of the trademark "who’s who".

The Complainant considers that it results from the web site of the Respondent that the activity of the latter on the Internet is similar to the activity of Complainant and that by using the said domain names for a web site dedicated to provide information in the field of biographical and professional data about individuals on the net, the Respondent created a likelihood of confusion with the Complainant’s mark as to the source of those domain names. Therefore, the Respondent should be considered to have registered the domain names in bad faith. Moreover, while stating that "unlike print editions of centuries past, which were only searchable alphabetically by last name, Who’s Who on line is in the position to offer a range of customized search capabilities", the Respondent not only infringes the trademarks of the Complainant, but also demonstrates that he uses the domain names in bad faith to attract internet users to his web site for commercial gain.

(b) Respondent’s Response

The Respondent states there is no identity between the Respondent’s domain names and the Complainant’s trademarks for there have been for years a number of trademarks throughout the world in which the term "who’s who" is included and between those trademarks no confusion was found by the authorities.

The Respondent adds that because he has been holding the trademarks "who’s who global network" and "who’s who on line" since 1997 and 1996, respectively, and because these trademarks have been in constant use in his business activities both in 21st Century Communications SCP and International Trade Promotion since 1995, it has gained rights and legitimate business interests in the domain names at issue.

Moreover, the Respondent contends that the registration of the domain names "whoswho.com"(1997) and "whoswho.net" (1998) was made after several years of activity with the company’s Who’s who global network and not in order to sell them to the Complainant or to prevent the Complainant from registering a similar domain name, as the Complainant did for the domain name "whoswhofrance.fr" on March 16, 2000. The Respondent did not register the domain names to disrupt Complainant’s business nor to attract and confuse customers with the intention of bad faith competition since Respondent was not aware of the Complainant’s activity or trademark registration before the Complaint was filed.

In support of its contention, the Respondent refers to previous WIPO cases: Telaxis Communications Corp. v. William E. Minkle, Case n° D2000-0005 and Digitronics Inventioneering Corporation v. @Six.Net Registered, Case n° D2000-0008.

(c) Complainant’s Reply to Respondent’s Response (dated June 23, 2000)

The Complainant underlines that the Complaint was not filed against the use of, or to recover the domain name "whoswho on line.com " that is registered in the name of the Respondent and inwhich the Complainant agrees that the Respondent has legitimate rights, but against the domain names at issue in which the Respondent has no prior rights.

The Complainant adds that the right of the Respondent to use the mark "who’s who on line" must be limited to the use of the word "who’s who" associated with the word "online" in order to avoid any risk of confusion with the prior rights of the Complainant on the registration "who’s who". The use by the Respondent of "who’s who" alone creates a risk of confusion and demonstrates the bad faith of the Respondent".

(d) Respondent’s Reply to Complainant’s Response (dated July 5, 2000)

The fact that the Respondent is well-known for holding domain names relating to Who’s who on line demonstrates that it has a legitimate interest in the disputed domain names and is actively using them in its business ( cf. Article of the New York Times, Cyber Times, May 1, 1997).

All of Respondent’s domain names are associated with common words that, in trademark terms, are considered descriptive or generic.

The Respondent in its domain names has simplified the wording of its trademarks in order to reach a broader panel of internet users but in fact it appears that "whoswho.com" is used as a link to the website of Who’who On Line, as the domain name "whoswho-online.com" links to the same exact home page, i.e. redirects the browser to the whoswho-online.com site.

The chronology of the domain name registrations reveals that the Respondent has registered the domain names at issue without any intention to create confusion with Complainant’s trademarks and only to promote its own business using its rights in its own registered trademarks.

This chronology reveals that the Complainant first became aware of Respondent’s business and use of the disputed domain names at the time of its own domain name registration, March 16, 2000. This fact contradicts the Complainant’s claim, as the Complainant has obviously had no indication of any confusion or "bad faith" campaign against the Complainant by the Respondent as a result of the Respondent’s registered domain names.

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 deems 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 confusing similarity

There is no doubt that there is identity between the trademarks of the Complainant and the characteristic elements of the domain names at issue. The difference in the top level domain names and the differences in the spelling of "who’s who" and "whoswho", the pronunciation of which being the same, are of no relevance in this regard.

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

The panel accepts that the Complainant has rights and legitimate interests in the domain names by virtue of its prior registration and use of "who’s who" trademarks, at least in the French area.

Nevertheless, the issue to decide is whether the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Considering the fact that, at the moment of the registration of the domain names at issue, the Complainant had not claimed in its trademarks registration for services of class 38, and the fact that, since 1995-1996, the Respondent registered in various countries and used for its business activity the terms " who’s who global network" and "who’s who on line"; considering also the fact that the words "who’s who" in the English speaking world are rather trite to designate some kinds of compilations, lists or directories with facts about notable persons (see Exhibit 4 of the Response) and the impressive list of US trademarks including the above terms (notably: Marquis Who’s who etc.; Exhibit 5 of the response), the Panel concludes that it is not established by the Complainant that the Respondent had no rights or legitimate interests in the disputed domain names.

Thus the Panel decides that, in the light of the submissions of both parties, the Complainant has not proven, according to paragraph 4(a)(ii) of the Policy that the Respondent had no rights or legitimate interests in respect of the domain names, and in addition, that the Respondent has established that before any notice of the dispute, it used the domain names or names corresponding to the domain names in connection with a bona fide offering of services, according to paragraph 4(c)(i) of the Policy.

3. Registration and use in bad faith

Given that the Complainant has failed to succeed in its burden of proof in respect of paragraph 4(a)(ii) of the Policy, it would not be necessary for the Panel to consider whether or not the Respondent has registered or is using the domain names in bad faith.

Nevertheless, the Panel finds that there is no clear evidence of the Respondent’s registration and use of the domain names in bad faith according to the circumstances described in Paragraph 4(b)(i-iv) of the Policy.

4. Counterclaim of the Respondent

In its second Response, dated July 5, 2000, the Respondent suggests vaguely that all the costs occurred by the proceeding should be paid by the Complainant as the Respondent "has had to bear the expense of a totally frivolous claim through Claimant’s negligence and disregard of easily discoverable information".

In view of the complexity of the case - it is not an obvious case of "reverse domain name hijacking" - the Panel refrains from considering whether the Complaint constitutes an abuse of the administrative proceedings. In any event, the remedies available in such administrative proceedings are limited by the provisions of paragraph 4(i) of the Policy.

For the above reasons, the Panel decides as follows:

In light of the foregoing, the Administrative Panel decides that the Complainant has not proven each of the three elements of paragraph 4(a) of the Uniform Policy. Thus the Panel declines to order the transfer to the Complainant of the domain names "WHOSWHO.COM" and "WHOSWHO.NET".

Christian Le Stanc
Sole Panelist

Dated: July 24, 2000