Generic Top Level Domain Name (gTLD) Decisions

Complainants are Societe Des Eaux De Volvic et al, Bourg-La-reine, II, France ("Complainants") represented by Jeffrey H. Kaufman, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C. Respondent is Bans, Hamburg, II, Germany ("Respondent") represented by Flick Rechtsanwalte, of Flick & Sab Rechtsanwalte.

The domain name at issue is "volvic.com", registered with Network Solutions, Inc.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

Complainants submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 6, 2001; the Forum received a hard copy of the Complaint on March 7, 2001.

On March 8, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "volvic.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 March 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 28, 2001 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@volvic.com by e-mail.

A timely response was received and determined to be complete on March 28, 2001.

A timely additional submission from Complainants was received and determined to be complete on April 3, 2001.

On April 5, 2001, pursuant to Complainants’ request to have the dispute decided by a one member Panel, the Forum appointed Honorable Paul A. Dorf, (Ret.) as Panelist.

Complainants request that the domain name be transferred from Respondent to Complainants.

A. Complainants

The Complainants contend that the domain name at issue is identical or confusingly similar to Complainants’ "Volvic" mark, that the Respondent has no rights or legitimate interests in the domain name, and that the domain name was registered and is being used by the Respondent in bad faith.

B. Respondent

The Respondent contends that he did not know the domain name at issue was a registered trademark for mineral waters, nor did he know of the "Volvic" brand; that the domain name was an acronym for "Vote-Live-4-Victory-project" which was to be a website to encourage people to vote; and that he did not register the domain name in bad faith.

C. Additional Submissions

On April 12, 2001, an additional submission was received by the Respondent. While this submission was not timely, it was reviewed and considered by this Panelist.

The Complainant, Volvic, is a wholly owned subsidiary of Groupe Danone, both companies being organized under the laws of France. Their co-Complainant in this arbitration, Great Brands of Europe, Inc., is the exclusive U.S. licensee of Volvic, and is incorporated under the laws of the State of New York.

The Complainant began using the mark "Volvic" in 1938 in connection with bottled drinking water. The Complainant is the owner of trademarks that incorporate the word "Volvic" used in the connection with bottled water and other goods. The Complainant boasts annual sales throughout the world in excess of U.S. $2,000,000 for each of the past two years.

It appears that the Respondent is a student who resides in Germany.

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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The Respondent does not offer any evidence to dispute Paragraph 4(a)(1) of the Policy.

The Respondent has not presented any evidence that he has ever been known by the domain name. See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainants’ VICTORIA’S SECRET mark because of Complainants’ well established use of the mark).

Even though the Respondent stated in his additional submission that he had a business plan for the website, he failed to provide any evidence supporting this claim. See Open Systems Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish rights and legitimate interests in the domain name where Respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim).

Given the fame of the Volvic mark, which has is widely known throughout the world, the Respondent should have been aware of the mark when he registered the domain name. See Nintendo of America, Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity); see also Singapore Airlines Ltd. v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (holding that "[t]he domain name <singaporeairlines.com> is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith").

Also, the Respondent demanded payment of $100,000, plus legal and travel expenses to transfer the domain name to Complainants. Complainants allege that Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant, the owner of the VOLVIC mark for valuable consideration in excess of out-of-pocket costs directly related to the domain name. See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, "if you are interested in buying this domain name, we would be ready to sell it for $10,000").

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain name "VOLVIC.COM" be transferred from the Respondent to the Complainant.