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Système U Centrale Nationale v. C2IB [2001] GENDND 939 (13 May 2001)

The Complainant in this administrative proceedings is Système U Centrale Nationale, 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 C2IB, with address at rue du Forez, 6 bis, 75003 Paris, France, hereinafter the "Respondent".

The domain name at issue is <magasinu.com>, hereinafter the "Domain Name". The registrar is Network Solutions Inc and the Domain Name was registered on September 15, 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 March 29, 2000 by email.

On March 28, 2001 the Center has transmitted the Acknowledgement of Receipt of Complaint both to the Complainant and to the Respondent by email.

On March 28, 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 the administrative and billing contact is Rachel Ebi, while the Technical Contact is Mydomain.com Support. It confirmed also that the Network Solution 4.0 Agreement is in effect and that the Domain Name registration status is "Active".

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

On April 3, 2001 the Center verified that the complaint satisfies with 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 3, 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, C2IB, 6 bis, rue du Forez, 75003 Paris, France.

The Administrative and Billing Contact is RACHEL EBI, 6 bis, Rue du Forez, 75003 Paris, France. Tel: 00 33 1 48879273, E-mail: Postmaster@magasinu.com,ciibourse@minitel.net

The Technical contact is mydomain.Com Support, Global Internet Names Inc., 588-12 Church St., Hamilton, BM, E-Mail: Support@MYDOMAIN.COM.

This notification has been copied to the Complainant via email.

The Center advised that the Response was due by April 22, 2001.

On April 23, 2001 having received no Response from the Respondent, the Center issued to the email address of both parties a Notification of Respondent Default. No reply by the Respondent to the Notification of Respondent Default was received.

On April 26, 2001 in view of the Complainant’s designation of a single panelist, the Center invited M. 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 April 27, 2001 M. Geert Glas' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted on April 30, 2001 to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date by e-mail, in which M. Geert Glas was formally appointed as the Sole Panelist. The Projected Decision Date is May 13, 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.

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 15, 1999.

The website linked to the Domain Name is under construction.

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 has registered the Domain Name in bad faith since the Respondent has registered 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. It contends also that the registration of the Domain Name can only be deemed to have been made in bad faith since the Respondent, which is French, could not be unaware of the intensive use over a long period of the trademark by the Complainant.

Respondent has not contested the allegations of the Complaint 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.

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 is composed out of the single word "magasinu", this word is incontestably similar to the words of which the trademark "Les Magasins U" is comprised of. Indeed, the only differences are the singular/plural declination of the word "magasin" and 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.

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.

When registering the Domain Name, Respondent knowingly and purposefully chose a name which is confusingly similar to Complainant's trademark. Indeed, the Panel finds that the Complainant has brought sufficient evidence that "LES MAGASINS U" trademark is well-known and commonly used in France.

Considering that the Respondent is located in France, the choice of the Domain Name by the Respondent is very unlikely to have resulted from a mere coincidence.

The Respondent could not have been unaware of the Complainant's trademark, and by knowingly choosing a domain name consisting of the Complainant's trademark, the Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties.

The website related to the Domain Name was under construction in April 2001 when the Complainant introduced this proceeding and still is while the Administrative Panel is considering this case.

The Respondent was in default to respond in this 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 his 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 <magasinu.com> be transferred to the Complainant.

Geert Glas
Sole Panelist

Dated: May 13, 2001