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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Millennium Broadcasting Corp. v. Publications France Monde/Hachette Filipacchi Presse
Claim Number: FA0011000096116
PARTIES
The Complainant is Millennium Broadcasting Corporation, New York, NY, USA ("Complainant") represented by Cheryl L. Davis, Menaker & Herrmann LLP. The Respondent is Publications France Monde/Hachette Fillipacchi Presse, France ("Respondent") represented by Corinne Allard-Dornaletche, Markplus International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is iciparis.com, registered with Network Solutions.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as panelists in this proceeding.
John J. Upchurch, Carolyn Marks Johnson and Karl V. Fink are the Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 22, 2000; The Forum received a hard copy of the Complaint on December 11, 2000.
On December 11, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name iciparis.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@iciparis.com by e-mail.
The Forum received an e-mail copy of Respondent’s Response to Claim on December 27, 2000 and a hard copy thereof on January 8, 2001.
The Forum received a hard copy of Complainant’s Additional Written Statement on January 12, 2001.
On January 9, 2001, pursuant to Complainant’s request to have the dispute decided by a Three Member panel, the Forum appointed John J. Upchurch, Carolyn Marks Johnson and Karl V. Fink as Panelists.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
Complainant is the owner of the common law trademark iciparis.com in the United States, and has utilized the mark as a registered domain name on the Internet since February 9, 1999.
The domain name was transferred to Respondent based upon misrepresentations of Respondent’s counsel to registrant Network Solutions, Inc. ("NSI").
The domain name was immediately attached to a website that provided English language information in North America regarding European attractions and culture.
While the website was under construction, Respondent repeatedly objected to Complainant’s registration due to Respondent’s French trademark.
Complainant responded to the demands by explaining the basis for Complainant’s good-faith registration and offering to participate in an amicable settlement.
Respondent threatened to take the matter to court through a French law firm. Complainant responded to this letter by again explaining its position and offering to resolve the matter on an amicable basis.
Complainant was served with court papers on August 8, 2000 related to a French proceeding filed on May 26, 2000, indicating a hearing would take place before the French Court on June 15, 2000, and if Complainant did not appear, it would be in default.
On August 21, 2000, Respondent, while this controversy was in active discussion among counsel for the parties, registered the name iciparis.org with NSI.
On September 26,2000 Complainant received a "Summary Order Injunction Pronounced on June 22, 2000" from the French court.
Complainant filed a complaint pursuant to the UDRP to have the name iciparis.org transferred to Complainant. In that proceeding, Complainant learned that NSI had administratively returned the domain name iciparis.com to Respondent in recognition of the decision of the French Court.
Complainant never received any notification of the transfer.
Respondent misled NSI’s Senior Investigator to the effect that NSI was not a party to the French court proceedings. Accordingly, NSI determined to act based upon the French decision. Had NSI been aware that it had been a party to the foreign court proceedings, it would have deferred until proper domestication and enforcement proceedings had been initiated.
In fact, NSI was a party to the French court action, not as had been represented by Respondent’s counsel.
Respondents have now submitted themselves to the jurisdiction of ICANN’s UDRP and of this Panel.
Complainant does not establish that it has rights to a mark identical or confusingly similar to the domain name iciparis.com, and fails to establish that Respondent has no rights or legitimate interest to the subject domain name.
Complainant does not demonstrate that the domain name iciparis.com has been registered and used in bad faith.
Complainant’s initial registration to the domain name was fraudulent with regard to Respondent’s ICI PARIS trademark rights. Complainant is the owner of the well known French Trademark Registration ICI PARIS filed in September, 1983 (renewed in 1993) as well as an International Trademark Registration.
The District Court of Nanterre (France) decided that the registration of the domain name iciparis.com in the name of Complainant constituted an infringement upon Respondent’s registered trademark. The court ordered the return of the domain name to Respondent. NSI transferred the domain name in accordance with the decision of the French court.
Complainant has never used the domain name iciparis.com in commerce. The mere registration of iciparis.com as a domain name is not sufficient to establish trademark or service mark rights.
Respondent registered its trademarks prior to the initial registration of the domain name by Complainant. ICI PARIS is a famous magazine, distributed by Respondent in France and numerous other countries since 1945, with an annual circulation in excess of 500,000.
Respondent’s efforts in the French Court are not to damage Complainant or as acts of bad faith, but have been done to defend Respondent’s legitimate interests and trademark rights.
Respondent is not responsible for NSI’s actions in transferring the domain name without notification to Complainant, and this cannot support a finding of bad faith against Respondent.
Complainant shows no proof that its first notice of the French legal proceedings was on August 15, 2000 when the date of the hearing had been set on June 15, 2000.
Complainant had appellate rights before the Court of Appeal of Versailles following rendition of the lower court’s order.
It is not within the jurisdiction or authority of the Panel to decide the validity of the decision of the French Court.
FINDINGS
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "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 requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant’s former domain name iciparis.com is identical to Respondent’s domain name iciparis.com. However, to prevail as to this element, Complainant must demonstrate that it has rights to a trademark or service mark inherent in the domain name. Complainant seeks to establish these rights by merely asserting that it had registered the domain name iciparis.com and had undertaken to develop a website at that web address. The underlying question is whether registration of a domain name generates trademark or service mark rights in favor of the registrant, the complainant in this case. We answer this question in the negative, and determine that Complainant has failed to carry its burden with respect to this element. It takes more than mere registration to establish trademark or service mark rights in a domain name. See Powrachute Inc. v. Buckeye Ind., AF-0076 (eResolution May 30, 2000); Millennium Broadcasting Corp. v. Publication France Monde (AF FA 0010000095752 Nov. 22, 2000).
Since the Complainant has not provided any evidence of rights in any trademark or service mark, the first condition of paragraph 4(a) of the policy is not met, and the panel need not consider the matter further. However, we do note and adopt the discussion and findings of the panel with respect to Rights or Legitimate Interests and Registration and Use in Bad Faith in Millennium Broadcasting Corporation, all of which support a denial of the relief sought in this proceeding.
DECISION
Since the Complainant has not established that it has rights in a trademark or service mark that is identical or confusingly similar to the domain name in question, the Panel denies the Complainant’s request and orders that the domain name iciparis.com remain with the Respondent.
John J. Upchurch, Panelist
Carolyn Marks Johnson, Panelist
Karl V. Fink, Panelist
Dated: January 23, 2001
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URL: http://www.worldlii.org/int/other/GENDND/2001/147.html