DECISION

NAT International v. Suez

Claim Number: FA0203000105930

PARTIES

The Complainant is NAT International of Pointe Claire, Quebec, CANADA  (“Complainant”).  The Respondent is Suez of Paris, FRANCE (“Respondent”) represented by M.Vincent Varet, of SCP Lafarge Flecheux Campana le Blevennec of Paris.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <suez.net>, registered with Verisign - Network Solutions, Inc.

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.

Sandra J. Franklin Esq., Professeur Xavier Linant de Bellefonds and Alan L. Limbury Esq., (Chair) as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 18, 2002; the Forum received a hard copy of the Complaint on March 18, 2002.

On March 20, 2002, Verisign - Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <suez.net> is registered with Verisign - Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Verisign - Network Solutions, Inc. has verified that Respondent is bound by the Verisign - Network Solutions, Inc. 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 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 10, 2002 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@suez.net by e-mail.

A timely Response was received and determined to be complete on April 10, 2002.

On May 1, 2002, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Sandra J. Franklin Esq., Professeur Xavier Linant de Bellefonds and Alan L. Limbury Esq. as Panelists.

The language of the proceeding is partly English (being the language of the Service Agreement) and partly French (being the language of certain official documents). The Panel does not require a translation.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, owned by an Egyptian Canadian, promotes tourism in Egypt by means of several domain names which it holds for Egyptian cities, including <Egypt.net>. 

On November 15, 2000 Complainant registered the disputed domain name <suez.net> for 10 years with Network Solutions, Inc. (“NSI”).  Complainant used the domain name for tourism purposes, with the assistance of the Egyptian Tourist Authority, and as an email service for companies and individuals related to the city of Suez.

On November 5, 2001 Respondent took court action in France to deprive Complainant of the disputed domain name.  Complainant contends Respondent has no rights to that domain name and has acted in bad faith by disrupting Complainant’s business.

B. Respondent

Respondent is the successor to the company that built and operated the Suez Canal, thereby making the city of Suez famous. One of Respondent’s four main activities is communication. It is the registered proprietor of the trademark SUEZ in France for “communication products and services by computer and on the Internet”.  That mark is also registered in other countries, including Canada.

Upon discovering Complainant’s registration of the disputed domain name, Respondent served formal demand on Complainant, receipt of which was acknowledged on June 26, 2001, but to which no substantive reply was made.  Thereupon Respondent commenced trademark infringement proceedings against Complainant in the French court of first instance at Nanterre.  The summons was duly served upon Complainant by the Quebec Ministry of Justice on October 17, 2001.

On November 19, 2001, by summary judgment, the court at Nanterre found Complainant’s registration and use of SUEZ as a domain name to have infringed Respondent’s trademark SUEZ and ordered Complainant to transfer the domain name to Respondent. It also held that NSI, although not a party, should transfer the disputed domain name to Respondent and authorized Respondent, if necessary, to arrange the transfer.

The Quebec Ministry of Justice was unable to serve the judgment on Complainant. Nevertheless, the disputed domain name was registered in the name of Respondent on January 18, 2002.

Despite the summary judgment, Complainant has initiated these proceedings in an attempt to circumvent the time limit for an appeal (75 days from notification) and in violation of Section 5 of the Policy.

In any event, the dispute is not within Section 4(a) of the Policy.

Respondent counterclaims against Complainant for $30,000 for damages, costs and fees for arbitration and attorney’s fees.

FINDINGS

It is inappropriate for the Panel to embark upon consideration of the merits of the Complaint. The administrative proceeding should be terminated.

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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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.

As in AmeriPlan Corp. v. Gilbert d/b/a NewWave Solutions, Inc., FA 105737 (Nat. Arb. Forum Apr. 22, 2002), the Panel has decided not to consider the case on its merits and does not consider these three elements. In that case the three-member Panel held:

Under Section 5 of the Policy, disputes outside of the narrow framework set out in Section 4 of the Policy "... shall be resolved through any court ... available." While Section 5 primarily seems to be concerned with using a UDRP forum to settle matters unrelated, or indirectly related, to issues concerning domain name registration and use, a complainant or respondent should not be permitted to use a UDRP claim to boot strap decisions regarding more senior disputes between the parties. This is especially so when, as here, an action is already pending in a Court of competent jurisdiction.

….

Rendering a decision on the merits when there is already a court action pending does violence to the one function of the UDRP - to reduce the cost and effort required to resolve domain name disputes issues by offering a simplified mechanism in lieu of litigation. Instead of minimizing the amount of effort (time and money) needed to resolve a dispute, filing a UDRP proceeding when the parties' dispute is already in front of a court, adds to that effort.

We are also of the view that the Policy at Section 4(k) has some application here. When evidence of a court proceeding is submitted ICANN "will not implement the Administrative Panel's decision, and ... take no further action until . . ." the court proceeding is resolved. No purpose is served by our rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.

That case concerned pending court proceedings in which no judgment had been made at the time of the Panel’s consideration.  This case concerns court proceedings in which summary judgment has been rendered at first instance, from which no appeal has been lodged. On that basis, the proceedings may be considered to be no longer pending.  However, on the material before the Panel, that judgment has not been formally served on Complainant[1], with the consequence that the time for appeal may not have commenced to run, still less have expired. On this basis, the proceedings may be considered to be still pending.  On either basis, for this Panel to embark on a consideration of the merits of this case would be to disregard the determination of the Nanterre court and do violence to the function of the Policy to reduce the cost and effort required to resolve domain name disputes issues by offering a simplified mechanism in lieu of litigation.

Section 4(k) of the Policy is consistent with the notion that determinations under the

Policy are subordinate to those of competent courts :

“The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you [the registrant] or the Complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.”

Rule 18(a) provides:

“in the event of any legal proceeding initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”.

Because the legal proceedings initiated in Nanterre prior to the commencement of this administrative proceeding have resulted in a judgment, as between the parties, determining adversely to Complainant the very issue raised for decision by the Panel, namely whether the Respondent is entitled to be the registrant of the disputed domain name, the Panel decides to exercise its discretion to terminate these proceedings.

As to the Respondent’s counterclaim for damages, costs and fees, the Panel has no power to entertain such an application.

DECISION

The administrative proceeding is terminated under Rule 18(a) and the Complaint is hereby dismissed.

Alan L. Limbury,Esq.

Presiding Panelist

Dated: May 15, 2002

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