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Système U Centrale Nationale v. Sacha Rebk [2001] GENDND 1004 (22 May 2001)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Complainant in this administrative proceedings is SYSTEME U CENTRALE NATIONALE S.A.C., a company organized under French law, located at 9-11, rue Georges Enesco, 94000 Creteil, France and represented by Christian Frick with offices at rue du Faubourg Saint Honoré, 56A, 75008 Paris, France, hereinafter the "Complainant".

The Respondent is Sacha Rebk, with address at 231 South Philips Ave., Suite 468 Sioux Falls, SD 57104, United States of America, hereinafter the "Respondent".

The domain name at issue is <magasinsu.com>, hereinafter the "Domain Name". The registrar is Network Solutions, Inc. and the Domain Name was registered September 28, 1999.

The WIPO Arbitration and Mediation Center, hereinafter "the Center" received the Complainant's complaint and the exhibits on March 23, 2001, by hardcopy and on April 2, 2001, by email.

On March 29, 2001, the Center received by email and by fax the Complainant's rectification of Complaint regarding the name of registrar.

On March 29, 2001, the Center transmitted via email to Network Solutions, Inc., a request for Registrar Verification relating to this case. On March 30, 2001, Network Solutions, Inc. transmitted via email to the Center, Network Solutions’ Verification Response, confirming that the Domain Name is registered with Network Solutions, that the Respondent is the current registrant of the Domain Name and that he is the administrative and billing contact, the technical contact being mydomain.com support. Network Solutions, Inc. confirmed that the Network Solutions 4.0 Agreement is applicable and that the Domain Name registration status is "Active".

On April 2, 2001, the Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the Supplemental Rules).

The Center transmitted on April 2, 2001, to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding via post/courier and email in accordance with the following contact details:

Registrant, Administrative and Billing Contact:
Sacha Rebk
Sacha Rebk LLC
231 South Phillips Ave., Suite 468
Sioux Falls, SD 57104
USA
E-mail: postmaster@magasinsu.com
sacharebk@yahoo.com

Technical contact:
Global Internet Names Inc.
588-12 Church St.
Hamilton, BM
USA
E-mail: support@mydomain.com

This notification has been copied to the Complainant via email in accordance with the following contact details:

Systeme U Centrale Nationale

Represented by :
Christian FRICK
Cabinet Weinstein
56 A, rue du Faubourg Saint Honoré
75008 Paris
France
Tel: 00 33 1 53306655
Fax: 00 33 1 53306644
E-mail: weinstein@weinstein-fr.com

The Center advised that the Response was due by April 21, 2001.

On April 24, 2001, having received no Response from the Respondent, the Center issued to the email address of both parties and to the mail address of the Respondent a Notification of Respondent Default. No reply by the Respondent to the Notification of Respondent Default was received.

On April 27, 2001, in view of the Complainant’s designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.

Having received, on May 8, 2001, Mr. Geert Glas' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted on May 8, 2001, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail, in which Mr. Geert Glas was formally appointed as the Sole Panelist. The Projected Decision Date is May 22, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore the Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules, the Supplemental Rules and the verifiable facts but without the benefit of any Response from Respondent.

On August 3, 1988, the Complainant registered the trademark "LES MAGASINS U" in France with the "Institut National de la Propriété Industrielle". This trademark was renewed on August 3, 1998, for a period of ten years. This trademark has been registered for the goods and services of classes 1 to 42.

Today, the Complainant operates approximately 800 stores ("Hyper U", "Super U" and "Marché U") throughout France under the umbrella trademark "Les magasins U".

It can be said that the Complainant's trademark has become, through massive advertising, and through the important expansion of its distribution activity, a well-known mark in France.

It appears from Network Solutions’ Verification Response that the Respondent is the registrant of the Domain Name. The Respondent registered the Domain Name on September 28, 1999.

The Domain Name is not linked to any homepage specifically relating to the Domain Name. If the public wishes to consult the website related to the Domain Name, it will automatically be transferred to the website linked to the domain name "Saint-Valentin.org". This French-language website is dedicated to gifts and other initiatives to bestow upon one's loved one.

It appears from Network Solutions' WHOIS database that the registrant of "Saint-Valentin.org" is a company called C2IB with address at 6 bis rue du Forez, 75003 Paris, France.

On March 23, 2001, a complaint has been filed against this company concerning the registration of the domain name <magasinu.com>. In the WIPO Case No. D2001-0417, the Panel has decided on May 13, 2001, that the domain name <magasinu.com> registered by the company C2IB was to be transferred to the Complainant, Système U Centrale Nationale, which is also the Complainant in this present case.

a. Complainant

The Complainant contends that the Domain Name is confusingly similar to its trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name since it is neither known by the Domain Name in question even without having acquired trademark rights, nor has made any legitimate non commercial or fair use of the Domain Name.

The Complainant contends that the Respondent, who is the registrant, is to be considered as a straw man having filed the Domain Name in order to not directly make appear the French company C2IB. It contends therefore that the registration of the Domain Name by the registrant under the order of the company C2IB can only be deemed to have been made in bad faith since this French company could not be unaware of the intensive use over a long period of the trademark by the Complainant. The Complainant contends also that the Domain Name has been registered in bad faith since the company C2IB, which is the party that should be considered as the Respondent, has asked the registrant to register the Domain Name for the purpose of preventing the Complainant from using its trademark in the form of a domain name and thus for the purpose of perturbing trade operations over the Internet.

b. Respondent

Respondent has not contested the allegations of the Complainant and is in default.

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

Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and,

(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,

(3) that the Domain Name has been registered and used in bad faith.

a. Identity or confusing similarity

The trademark of Complainant consists of the words "Les Magasins" followed by the letter "U".

It is obvious that although the Respondent's Domain Name consisits out of the single word "magasinsu", this word is incontestably similar to the words of which the trademark "Les Magasins U" is comprised of. Indeed, the only difference is the adding of the neutral word "les". The fact that the words are not interspaced in the Domain Name, as is the case in the trademark, does not seem to reduce this similarity.

The Administrative Panel therefore finds that the Domain Name is confusingly similar to the Complainant's trademark and finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

b. Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating its trademark.

Moreover, by not filing a Response, the Respondent has failed to invoke any circumstance, which could indicate the existence of any right or legitimate interest he would have in the Domain Name. Therefore the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

c. Registration and Use in Bad Faith

Anyone who wishes to consult the website connected to the Domain Name is automatically transferred to the French language website linked to the domain name "Saint-Valentin.org" which is registered by the French company C2IB.

A complaint has been filed against this company, C2IB, which was the registrant of a very similar domain name: <magasinu.com> (WIPO Case No. D2001-0417). The Panel has ordered on May 13, 2001, the transfer of the registration of this domain name to the Complainant.

The fact that the Domain Name is not connected to its "own" website but is connected to the website registered by the French registrant of the quasi-identical domain name <magasinu.com> cannot be a coincidence.

It appears from this fact that either Respondent tried to build up a non-French identity (having an address in the U.S.A but directing Internet users to a French language website) or that the French company C2IB tried to organize the registration and use of the Domain Name in the name of a non French, and at first view, unrelated person. Both situations are, however, deceptive.

The panel finds that the Complainant has brought sufficient evidence that the trademark of the Complainant is well known and commonly used in France.

Respondent who either on itself or through its relationship with C2IB has links with France, consequently knew or should have known that by choosing a domain name consisting of the Complainant's trademark, it was deliberately creating a situation which is at odds with the legal rights and obligations of the parties.

By using the Domain Name to direct Internet users to a commercial website which is unrelated to the Complainant but owned by the company who in bad faith registered and used a quasi –identical domain name, Respondent has further illustrated its bad faith intentions.

The Respondent was in default to respond in these proceedings, thereby failing to invoke any element or circumstance which could indicate the good faith nature of his registration and use of Domain Name. As a consequence, the Respondent has failed to demonstrate any bona fide use of the Domain Name.

Considering the lack of interest of the Respondent in the Domain Name, in the defense of its rights and interests as to the Domain Name and the above facts, the Administrative Panel finds that the Complainant has met its burden under section 4(a)(iii) of the Policy and that the Respondent has registered and used the Domain Name in bad faith.

In light of the foregoing, the Administrative Panel decides that the Domain Name registered by the Respondent is confusingly similar to the Complainant's trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent’s Domain Name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4(I) of the Policy, the Administrative Panel requires that the registration of the Domain Name <magasinsu.com> be transferred to the Complainant.

Geert Glas
Sole Panelist

Dated: May 22, 2001