Generic Top Level Domain Name (gTLD) Decisions

Complainant is WWF – World Wide Fund For Nature (formerly World Wildlife Fund), with offices at Avenue du Mont-Blanc, 1196 Gland, Switzerland, represented by Graham Clark, solicitor at Edwin Coe, with offices at 2 Stone Buildings, Lincoln's Inn, London, WC2A 3TH, England.

Respondent is Allia S.A., with offices at 696, rue Yves Kermen, F-92100 Boulogne-Billancourt, France, represented by Maître Isabelle Leroux, attorney at Bird & Bird, with offices at 6 rue de Caumartin, F-75009 Paris, France.

The domain name at issue is <panda.biz> (the Domain Name), registered on March 27, 2002 with Nameengine of New York, United States of America.

The WIPO Arbitration and Mediation Center ("the Center") received Complainant’s complaint on April 27, 2002, (electronic version) and April 30, 2002 (hard copy). The Center verified that the complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy for .BIZ ("the STOP"), the Rules for Start-up Trademark Opposition Policy (the STOP Rules), and the Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ ("the WIPO Supplemental STOP Rules"). The formal date of the commencement of this administrative proceeding is May 23, 2002.

Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on May 23, 2002, to Respondent and to Nameengine, Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier and e-mail, in accordance with the following contact details:

Allia S.A.
696, rue Yves Kermen
92100 Boulogne-Billancourt Cedex
France
E-mail: admincontact@verisign.fr
Allia@allia.fr

The Center advised that the response was due by June 11, 2002. On June 11, 2002, the Center received Respondent's response by email and on June 17, 2002, in hard copy. Accordingly, the Center issued the Acknowledgment of Receipt of Response on June 12, 2002.

On June 20, 2002, the Center invited Mr. Geert Glas to serve as a panelist. Having received Mr. Geert Glas’ Statement of Acceptance and Declaration of Impartiality and Independence on June 21, 2002, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist, on June 25, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the STOP Rules and WIPO Supplemental STOP Rules.

The Administrative Panel shall issue its Decision based on the complaint, the response, the evidence presented, the STOP, the STOP Rules and the WIPO Supplemental STOP Rules.

According to the information on the web site of Complainant, located at <www.panda.org>, "[Complainant's] mission is to stop the degradation of the planet's natural environment and to build a future in which humans live in harmony with nature, by:

According to the information on the web site of Respondent, located at <www.allia.fr>/, Respondent is a French company of international dimension. It creates, manufactures and commercializes equipment products for bathrooms, toilets and kitchens.

Complainant is the owner of numerous trademark registrations in numerous countries for the trademark PANDA. A list of trademarks owned by Complainant is attached to the complaint, together with copies of certain trademark registrations. According to these documents, Complainant owns the following registrations for the trademark PANDA that are valid in France, where Respondent is located:

- the international registration for the word mark PANDA, filed on April 21, 1978, under number 437451 and renewed for until April 21, 2008, for goods of the classes 1, 3, 4, 5, 8, 9, 12, 14, 15, 16, 17, 18, 19, 20, 21, 22, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33 and 34;

- the international registration for the word mark PANDA, filed on January 25, 1983, under number 475179 and renewed for until January 25, 2003, for goods of the classes 6, 9, 11 and 26; and

- the international registration for the word mark PANDA, filed on November 17, 1989, under number 552959 and renewed for until November 17, 2009, for services of the classes 35, 36, 38, 40, 41 and 42.

Respondent does not own any PANDA trademark nor does it seem to use the word PANDA to distinguish its products or services.

It does not appear from the file that the parties had any contact prior to the filing of the complaint.

There is no relation between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained an authorization to use Complainant’s trademark.

The Domain Name does not resolve to any web page.

According to Complainant, the Domain Name registered by Respondent is identical to Complainant's trademark.

Moreover, Respondent has no right or legitimate interest in the Domain Name since none of the products commercialized by Respondent are called PANDA. Furthermore, Respondent has no trademark registration for the PANDA trademark, as evidenced by a printout of the French trademark database listing Respondent's trademarks.

Finally, Respondent registered the Domain Name in bad faith because a subsidiary of Respondent, the company Leda (which allegedly owns two registrations for the trademark PANDA) concluded a trademark coexistence agreement with Complainant, which agreement precludes Leda and Respondent from registering the Domain Name. If Leda would appear not to be a subsidiary of Respondent, then Respondent registered a domain name corresponding to a competitor's trademark to prevent the competitor from using it, which also qualifies as bad faith registration.

Consequently, Complainant requests the transfer of the Domain Name registration.

In summary, Respondent sustains the following concerning Complainant's argument about lack of legitimate right or interest:

- A person or entity may legitimately register a domain name that is different from its corporate name, trade name or trademarks.

- The Domain Name does not incorporate a well-known trademark and is in fact merely a common noun in which Complainant cannot claim exclusive rights.

As to the bad faith issue, Respondent contends that it did not register the Domain Name in bad faith, because:

- there is no evidence that Respondent acted in violation of Paragraph 4(b)(i), (ii), (iii) or (iv) of the STOP;

- PANDA is not a well-known trademark but merely a common noun;

- there is no risk of confusion between Complainant's and Respondent's services and areas of activities;

- the existence of a coexistence agreement between Complainant and the company Leda does not demonstrate that the Domain Name has been registered in bad faith. Indeed, this agreement is not opposable to Respondent. Furthermore, even if it would be applicable to Respondent, then, under the terms of the agreement, the latter would be entitled to register the Domain Name to designate bathroom wares.

Consequently, Respondent requests the dismissal of the complaint.

Paragraph 15(a) of the STOP 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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the STOP directs that Complainant must prove each of the following:

(1) that the Domain Name registered by Respondent is identical to the trademark or service mark in which the Complainant has right; and,

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

(3) that the Domain Name has been registered or is being used in bad faith.

The Domain Name is "panda.biz".

"PANDA" is a registered trademark of Complainant.

In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark of Complainant, which is moreover not contested by Respondent.

Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks, nor has he ever been known by this name.

In view of the difficulty for complainants to prove respondents' absence of rights or legitimate interests in a domain name, UDRP decisions have often rightly considered this burden of proof to be borne by complainant satisfied when complainant could credibly state, taken into account all the facts of the case, that he was unaware of any element or circumstance which could be indicative of such right or legitimate interest. In the present case, the Panel considers that Complainant has met its burden.

While the Panel finds that Respondent rightly argues that a person or entity may legitimately register a domain name that is different from its corporate name, trade name or trademarks and that constitutes a common word, Respondent has produced no evidence whatsoever to sustain that it could have a legitimate interest in the Domain Name.

The mere fact that the word PANDA is also a common word does not, in the Panel's view, as such suffice to give Respondent a legitimate interest in the Domain Name in the absence of any other fact or circumstance. Indeed, this would be contrary to the STOP and general principles of trademark law and deprive many owners of valid and famous trademarks (such as REEBOK, JAGUAR or CATERPILLAR) of any remedy against potential cybersquatters, merely because their trademark is also a word used in the common language.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name.

A non-exhaustive list of what constitutes bad faith registration and use of a domain name is contained in Paragraph 4(b) of the STOP.

In the case at issue, Complainant contends that Respondent registered the Domain Name in bad faith either because:

- the company Leda which is alleged to be a subsidiary of Respondent concluded a trademark coexistence agreement with Complainant, which agreement precludes Respondent from registering the Domain Name; or

- if this company Leda is not a subsidiary of Respondent, then Respondent registered a domain name corresponding to a competitor's trademark to prevent the competitor from using it, which also qualifies as a bad faith registration.

As to Complainant's first argument, Respondent quite surprisingly does not provide any information on whether the company Leda is one of its subsidiaries or not.

Surely, if the company Leda would be unrelated to Respondent, Respondent could simply have stated so. Respondent and the company Leda are both French companies in the same line of business, namely sanitary installations. This fact, in combination with Respondent's failure to deny the existence of any relationship between the two companies, makes Complainant's presumption that Respondent and the company Leda are related, credible.

While Respondent's attitude in this regard is somewhat odd, it does however not necessarily amount to bad faith.

Under the terms of the coexistence agreement, the company Leda is indeed authorized to use the word PANDA to designate its products and activities in the field of sanitary installations. As consideration, Complainant undertakes not to use the PANDA name to designate any sanitary installation products. It can therefore not be said that the mere registration of the Domain Name by the company Leda would violate the coexistence agreement and consequently constitute a registration in bad faith. This is, a fortiori, the case for Respondent.

As to Complainant's second argument, the Panel finds that it is pure speculation. Complainant does indeed not bring forward any evidence sustaining that Respondent might have registered the Domain Name to prevent Leda from using it.

In conclusion and in view of the above, it is the Panel’s opinion that Complainants has failed to prove that Respondent registered or used the Domain Name in bad faith.

In light of the foregoing, the Administrative Panel decides that the Domain Name <panda.biz> registered by Respondent is identical to the trademark of Complainant, that Respondent has no right or legitimate interest in respect of the Domain Name, but that it is not proven that Respondent registered or used the Domain Name in bad faith.

Accordingly, pursuant to STOP paragraph 4(i) and STOP Rules paragraph 15(e), the Administrative Panel denies Complainant's request for transfer and permits a subsequent challenge to the domain name.