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Boffi S.p.A. v. Vincent Lecomte [2001] GENDND 1019 (25 May 2001)

World Intellectual Property Organization

The Complainant is Boffi S.p.A., a company incorporated in Lentate Sul Seveso, Italy, with offices at via Oberdan 70, Lentate Sul Seveso, Italy. The Respondent is Vincent Lecomte of Avenue de Bruxelles, Perpignan, 66031, France.

The domain name in dispute is <boffi.com> ("the Domain Name"). The Registrar is VeriSign (Network Solutions).

The Complaint was filed at the WIPO Arbitration and Mediation Center ("the Center") in electronic copy on March 28, 2001, and hard copy on April 4, 2001, by the Complainant’s representative Eduardo Fano of Ing. Barzanò & Zanardo Milano S.p.A. The Complaint further confirmed that it was sent by email and post to the Registrar on March 28, 2001. The Registrar verified on April 4, 2001, that it was the registrar and that the Respondent was the current registrant.

On April 5, 2001, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding to the parties, in the case of the Respondent by courier, fax and email. The hard copy sent by courier was subsequently returned to the Center, but the fax and email to the number and address recorded for the Administrative Contact appear to have been successfully transmitted. On April 11, 2001, the Center received an email message from a Tita Chetrit referring to the complaint and stating that her customer, Vincent Lecomte, was ready to sell the Domain Name. The Center forwarded the email to the Complainant and replied to the sender advising her to contact the Complainant directly.

There having been no other Response to the Complaint, the Center gave Notification of Respondent Default on April 27, 2001. The single member Panel, Jonathan Turner, submitted a Statement of Acceptance and Declaration of Impartiality and Independence and was appointed on May 10, 2001.

The Complaint as originally filed contained a jurisdiction submission in the following terms:

"In accordance with Paragraph 3(b)(xiii), the Complainant agrees to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer the domain name that is the subject of this Complaint, to the jurisdiction of the courts where the principal office of the concerned registrar is located, as shown by the address given for the domain name holder in the concerned registrar’s Whois database at the time of the submission of the Complaint to the WIPO Center."

The Panel considered that this submission was unclear since it conflated the two alternatives specified by paragraphs 1 and 3(b)(xiii) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), namely: (a) the courts where the principal office of the Registrar is located, or (b) the courts at the location of the Respondent’s address as shown in the Registrar’s Whois database. By a Procedural Order dated May 14, 2001, the Panel ordered the Complainant to file with the Center a clear jurisdiction submission complying with the Rules in electronic form and in hard copy signed by the Complainant or its authorised representative.

An amendment submitting (in the event of a challenge to the Panel’s decision) to the jurisdiction of the courts where the principal office of the Registrar is located was subsequently received by the Center on May 17, 2001, in electronic copy and on May 25, 2001, in hard copy signed by the Complainant’s representative.

Having reviewed the file, the Panel concludes that the Complaint as amended complied with the applicable formal requirements and was duly notified to the Respondent.

The Complainant makes and sells kitchen, bathroom and sanitary fixtures. The business started in 1934, in the Boffi family workshop and now has an annual turnover of 50 billion Italian Lire. The Complainant has registered "Boffi" as a trade mark in Italy, Germany, Austria, Benelux, Spain, France, Portugal, Switzerland, the US and Canada.

The Domain Name was registered by the Respondent on November 3, 1998. The Respondent was a distributor of the Complainant’s products but was not authorised by the Complainant to register the Domain Name. According to the Complaint, the Respondent posted a holding page at <boffi.com> and commenced using the domain for email in 1999, but then stopped using it. The Respondent does not appear to have used or to be using the domain name for the purpose of marketing products originating with the Complainant. As noted above, a representative of the Respondent has indicated that he is willing to sell the Domain Name to the Complainant.

The Complainant contends that the Domain Name is identical to its registered trade mark "Boffi" and that this is a well-known mark in accordance with article 6bis of the Paris Convention. The Complainant further submits that the Respondent has no rights or legitimate interest in respect of the Domain Name, and that it was registered and is being used in bad faith. The Complainant points out that as a former distributor of the Complainant’s goods, the Respondent knew of the Complainant’s rights, and that it does not have any interest in using the Domain Name.

As noted above, the Respondent has not submitted a response to the Complaint.

In accordance with paragraph 4 of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), a complainant must prove (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.

As to the first requirement, the Panel considers that the Domain Name is identical to the Complainant’s trade mark "Boffi" for the purpose of the Policy. For this purpose it is appropriate to ignore the .com suffix; see WIPO Decision No. D2001-0154 <KCTS.com>. Furthermore, the Complainant is the registered proprietor of the trade mark in, inter alia, France, where the Respondent is located.

As to the second requirement, the Panel considers that the Respondent does not have any right or legitimate interest in respect of the Domain Name. In accordance with article 6septies of the Paris Convention, the proprietor of a mark is entitled to object to the use of its mark by its agent without its authorisation. Furthermore, it appears that the Respondent has not used the Domain Name for the purpose of marketing products sold under the trade mark "Boffi" by the Complainant or any other possibly legitimate purpose.

As to the third requirement, the Panel is satisfied that the Respondent registered and is using the Domain Name in bad faith. The Respondent has not used the Domain Name for any legitimate purpose even though it registered it as long ago as November 1998, cf. WIPO Decision No. D2000-0004 <americanvintage.com>. Furthermore, the Respondent’s representative offered to sell the Domain Name to the Complainant. The Panel infers that the Respondent was seeking to sell the Domain Name for consideration in excess of its costs of registration. In the absence of any evidence of the Respondent to the contrary, the Panel concludes that the Respondent registered and is using the Domain Name for the purpose of selling it to the Complainant for consideration in excess of its costs and/or of disrupting the Complainant’s business.

The Panel considers that the Complainant has a legitimate interest in using the Domain Name, and that a significant number of internet users in a number of countries would associate it with the Complainant. Accordingly, it is appropriate to order that the Domain Name be transferred to the Complainant.

The Panel decides that the Domain Name <boffi.com> should be transferred to Boffi S.p.A. of via Oberdan 70, Lentate Sul Seveso, Italy.

Jonathan Turner
Sole Panelist

Dated: May 25, 2001