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Eurial Poitouraine v. Compana LLC [2004] GENDND 806 (5 June 2004)

1. The Parties

The Complainant is Eurial Poitouraine, of Nantes, France, represented by APPLIMA, France.

The Respondent is Compana LLC, of Carrollton, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <soignon.com> (herein “the domain name in dispute”) is registered with Secura GmbH.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2004. On April 13, 2004, the Center transmitted by email to Secura GmbH a request for registrar verification in connection with the domain name at issue. On April 27, 2004, Secura GmbH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2004. The Response was filed with the Center on May 17, 2004.

The Center appointed J. Nelson  Landry as the Sole Panelist in this matter on May 26, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On May 28, 2004, Complainant requested leave to file a document which purports to reply (herein the “Reply”) to the Response. The Panel demanded to see the document and invited Respondent to make representations in this respect. The Reply pertains to two sets of facts, first, settlement negotiations between the parties after the Complaint was filed and sent to Respondent and second factual evidence to rebut Respondent’s statement that “SOIGNON” is a surname commonly found among persons of French “descent.”

4. Factual Background

The Complainant is the owner of several trademarks SOIGNON, registered in several countries in international class 29, more particularly for milk, cheese and dairy products, in particular of the following registrations:

United States: SOIGNON No. 2134426, on February 3, 1998, and P’TIT SOIGNON No. 2641790, on October 29, 2002, both on the principal register;

International registration “SOIGNON” No. 668 021, on February 4, 1997 for Austria, Benelux, China, Denmark, Germany, Greece, Italy, Norway, Poland, Portugal, Singapore, Spain and Switzerland, and

French registrations SOIGNON No. 96640454 on September 4, 1996, and SOIGNON (+ device) No. 1728707 on March 1, 1990 (herein “ the Trademarks”).

The Complainant has used the Trademarks worldwide through subsidiaries, including in the United States of America and in the United Kingdom in association with its products as shown in the numerous documents in English put in evidence in Annex 4. According to this Annex 4, 31% of the exports of Complainant are to North America where a subsidiary is located in Rhode Island. It also sold its products through its export division under the domain name <soignon.com>. From October 1, 1998 until its registration lapsed on September 30, 2003, the corresponding website “www.soignon.com” was marketed to and known by the Internet users as it appears from numerous references made to the said domain name on booklets and company’s packaging as put in evidence in Annex 6.

By inadvertence the registration for <soignon.com> was not renewed by Complainant on or prior to September 30, 2003, and allowed to lapse.

On December 14, 2003, the firm COMPANA LLC (herein the “Respondent”) registered the domain name in dispute <soignon.com>.

The Respondent does not own any trademark rights in United States upon the term “SOIGNON” in any of the classes of all good or services.

Internet searches made by Complainant on April 8, 2004, show that all the hits found on search engines upon the term “SOIGNON” appears in link with Complainants products and further searches on international databases firms such as Dun & Bradstreet did not reveal the existence of any firm called SOIGNON which could be linked with the Respondent, as put in evidence in Annex 7.

By April 8, 2004, and most likely by the date of the Complaint, the Respondent had not created an active website at the URL “www.soignon.com” as it appears from Complainant’s attempt to locate same in a Google search as shown in Annex 7.

Respondent has in the past registered several domain names on readily apparent generic terms such as “custodians,” “insulator,” “greenlawn,” “curtainrod,” as well as “agile,” “LFO,” “NEN,” and “naturalizer” which last four have been the subject matter of UDRP decisions as put in evidence by Complainant, two of three in which Respondent’s view prevailed, were referred to and relied upon by Respondent.

Respondent has shown that the SOIGNON surname was present in about 10 instances during the period of 1678 to 1869, as one of the old Huguenot families in Great Britain and Ireland and among the ancestors of Maxime Dian, all within the same period (see Exhibit A).

Prior to receiving the Reply, the Panel, on its own initiative, proceeded to a verification of the current presence of the surname SOIGNON in view of the allegation by Respondent that it is a “most common surname.” Panel could not find a single SOIGNON surname in Canada despite the fact that the population in the province of Quebec is predominantly French or of French origin nor in New Brunswick and Manitoba where there is a significant population of French speaking or origin. Panel further conducted a similar search for the United States and throughout the over 200 millions population of the United States of America, only six individual instances were found, one in each of the following states: New Mexico, New Hampshire, Nebraska, Nevada, New Jersey and North Dakota, not one in Louisiana where there is an important group of persons of French origin.¹

Respondent states that it has registered generic domain names such as: <bergmann.com>, <mccoy.com>, <andrea.com>, <zqi.com>, <vfz.com>.²

Respondent states that it has shown demonstrable preparations to use the domain name before any notice of this dispute.³

5. Parties’ Contentions

A. Complainant

Complainant submits that the domain name in dispute is obviously identical to Complainant’s “SOIGNON” earlier Trademarks and thus creates confusion for Internet users.

Complainant contends that considering Respondent’s lack of interest upon the name “SOIGNON,” the Respondent obviously took advantage of this non renewal to obtain the domain name in dispute.

Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name in dispute and in this respect relies on the facts that Respondent does not own any trademark rights in United States upon the term “SOIGNON” and that Internet searches showed that all the hits found on search engines upon the term “SOIGNON” appears in link with Complainants products and further searches did not reveal the existence of any firm called SOIGNON which could be linked to the Respondent.

Complainant further represents that the absence of meaning of the word SOIGNON which Complainant considers an arbitrary word, especially for non French speaking persons, reinforces the lack of legitimate interest into the related domain name in dispute considering that, according to Complainant, the denomination SOIGNON has absolutely no generic value.

Again according to Complainant, the fact that the Respondent has not created an active website at the URL “www.soignon.com” is suspicious and reveals an obvious absence of interest for the domain name in dispute and it is then rather illogical to see that the Respondent having obtained the said domain name immediately after its release (as shown in Annex 5) however let it without activity thereafter.

Furthermore, according to Complainant, should the Respondent have a real interest in the term “SOIGNON,” he then would have registered the corresponding domain name with others extensions, knowing that <soignon.org> and <soignon.net> were still available before last December 2003.

Complainant contends that the bad faith of the Respondent results from the combination and succession of the following numerous points: first, Respondent could not reasonably ignore the existence of the important interest that SOIGNON represents for the Complainant and it should have placed a watching upon the domain name status in order to be the first to obtain the domain name from its liberation; second, Complainant contends that Respondent did not place any active website at the URL “www.soignon.com,” and consequently maintains the likelihood of confusion between the domain name in dispute and Complainant’s Trademarks and therefore this is prejudicial to Complainant’s brand image insofar as the users of the former <soignon.com> expect to access to the past site, and third, Complainant contends that the registration deprives the Complainant of an ongoing communication mean concerning its Trademarks “SOIGNON,” without legitimate explanation.

B. Respondent

Respondent contends that Complainant brings its Complaint on the basis that it is entitled to monopoly rights over the generic surname, SOIGNON, and therefore over the domain name in dispute, <soignon.com>, since Complainant managed to register a trademark for the surname, SOIGNON for a very narrow category of products. Based solely on its unsupported allegations that it owns exclusive rights to the surname, SOIGNON, Complainant claims it is entitled to monopolistic use of generic domain name, <soignon.com> which Respondent challenges. However Complainant had previously registered the domain name, but had subsequently abandoned those registration rights.

Respondent submits that the name “SOIGNON” is a surname most commonly found among persons of French descent as shown in Exhibit A and that even if Complainant’s allegations of Trademark rights in “SOIGNON” are true, it would only have limited rights to a narrow category of goat cheese products as stated in the Complaint. The existence of Complainant’s Trademarks of the generic surname, SOIGNON would not provide Complainant or any other party with exclusive use of that surname and relies on a 1924 decision of the U.S. Supreme Court: Prestonettes, Inc. v. Coty, [1924] USSC 81; 264 U.S. 359.⁴

Respondent relies on several UDRP panels and courts decisions that have addressed the issue of generic domain names extensively and submits that Complainant does not enjoy monopoly rights over a generic name, and both have consistently held that a generic domain name’s rightful and legitimate owner is the party who registers the name first, regardless of other’s trademarks.

In International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, (WIPO Case No. D2000-0161), for the domain name “zero,” the panel noted that “indeed the Respondent has produced evidence of numerous US trademarks which included or comprised the word “zero.”

Another case pertains to the word or mark “clue” in Hasbro, Inc. v. Clue Computing, Inc., 66 F.Supp.2d 117, 125 (D. Mass. 1999), where notwithstanding a federal Trademark registration for the mark and the court held that “If another Internet user has an innocent and legitimate reason for using the famous mark as a domain name and is the first to register it, that user should be able to use the domain name…..”

In another decision, Steven H. Schimpff v. Jerry Sumpton (NAF case No. FA0003000094333), it was stated that the strength of a particular mark has and must be evaluated on a sliding scale, arbitrary or coined marks are at one end of the scale and are entitled to the broadest scope of protection. When the mark is a dictionary word rather than a coined word, however, the strength of the mark, in descending order of protection is: [1] fanciful, [2] suggestive, and [3] descriptive. See 15 U.S.C. §1052. The sliding scale of trademark protection is summarized in 1 McCarthy, Traders and Unfair Competition, Chap. 5 [3d ed. 1992] and see, i.e., Nutri/System v. Con-Stan Indus., Inc. (9th Cir. 1987) 809 F.3d 601, 605.⁵ (Panel underlining).

Respondent alleges that for nearly four years, it has been in the business of utilizing generic domain names such as <soignon.com> to provide e-mail services to its customers. Registering surname domain names is an essential element of Respondent’s business. Respondent represents that using its automated computer program and upon discovering that the surname, SOIGNON, was available as a “.com” domain name, it registered the name. According to Respondent, the evidence shows that Respondent was unaware of Complainant’s existence until after the domain name was registered on December 14, 2003, several months after Complainant abandoned its alleged registration of the domain name and that Respondent has a legitimate interest in the domain name in dispute.

Respondent alleges that its business model is providing web-based, Internet e-mail services to users and offers their customers a broad choice of generic domain names to match their profession or initials. After fully implemented, Respondent’s service will enable users to have a personalized, permanent and portable e-mail and website address (sub domain) with a name that best suits their needs and interests.⁶

Respondent submits it has registered generic domain names such as: <bergmann.com>, <mccoy.com>, <andrea.com>, <zqi.com>, <vfz.com>. Respondent’s customers sign up for e-mail services at these sites, and enjoy a customized e-mail address for life as shown in Exhibit B). At the time of Respondent’s initial contact from Complainant, Respondent had already completed the graphics for the “www.soignon.com” page (see Exhibit C) and had updated its DNS files to ready the site for use. It is important to note that Respondent only owned this name for little more than three months before Complainant filed the Complaint.⁷

Respondent has a legitimate interest in all of the generic domains it has registered, including <soignon.com> and has shown demonstrable preparations to use the domain name before any notice of this dispute.⁸

Respondent also relies on two recent decisions where the Panels ruled that Respondent’s business model constitutes legitimate interest as defined by the UDRP. See Agile Software Corporation v. Compana LLC (WIPO Case No. D2001-0545) and Trans Continental Records, Inc. v. Compana LLC (WIPO Case No. D2002-0105) for the domain names <agile.com> and <lfo.com> respectively.

Respondent contends that the Policy does not require a legitimate interest to be a trademark interest, but may include “equitable interests,” such as “a reliance interest in preparations to use the domain name” or “other interests recognizable at law or equity.”⁹

Respondent relies on other cases such as CRS Technology Corporation v. Condenet, Inc., (NAF case No. FA0002000093547), wherein the panel found that “concierge” is not so associated with just one source and that only that source could claim a legitimate use of the mark and General Machine Products Company, Inc. v. Prime Domains (a/k/a Telepathy, Inc) (NAF case No. FA0001000092531) wherein the transfer of the domain name <craftwork.com> was also denied.

Again Respondent relies on two other decisions where the inherent value and legitimate registration of a domain personal name (both forenames and surnames) has been recognized in UDRP decisions. See, Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654 (<tammy.com> legitimately registered because it contained a common female name); See also Rusconi Editore S.p.A. v. FreeView Publishing Inc., WIPO Case No. D2001-0875.¹⁰

Respondent contends that Courts have recognized that the use of a domain name to provide email services is not use “as a mark” and therefore cannot infringe or dilute. See Avery Dennison Corp. v. Sumpton, 1999 WL 635767 (9th Cir. August 23, 1999).

Respondent submits that Complainant’s first communication with Respondent was made after the filing of its Complaint without any attempt to notify Respondent of its allegations or concerns before filing this Complaint. Respondent first became aware of Complainant’s existence only after receipt of the Complaint notification from the Center. According to Respondent, after receiving notice of the Complaint from The Center, Respondent made numerous attempts to communicate with Complainant to resolve this dispute; however, Complainant refused to reply to most of these.¹¹

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interest in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Preliminary Procedural issue

As noted hereinabove, Complainant has submitted a document in the nature of a Reply. Upon being informed by Center and the Case manager that such a submission was made, the Panel demanded to receive communication of the document but before receiving same on Tuesday, June 2, 2004, the Panel carefully reviewed the Complaint, the Exhibits thereto, the Response and Exhibits thereto and read all of the UDRP panel decisions cited by Respondent. No copies of jurisprudence cited were provided by Respondent. At the time that the Panel received the Reply, it had determined the issue and decided upon the disposal of this case in accordance with the present decision without any assistance from the content of the Reply.

For the reasons briefly outlined hereinafter, having duly considered the Reply and Respondent’s objections to the submission of same, the Panel is of the view that the first portion of the Reply should be refused while the second portion should be received.

The Panel considers that it is to decide the dispute on the basis of facts which occurred prior to the date of the Complaint and therefore a first portion pertaining to settlement discussions subsequent to the Complaint will not be considered even though they may rebut allegations of contacts with Respondent by Complainant after the Complaint date but for which Respondent does not offer any evidence.

In respect of a second portion namely the verification of the occurrence of the surname SOIGNON in France, the Panel considers proper and admissible this segment of the Reply evidence which addresses the bold statement of Respondent that SOIGNON is “a most common surname,” a statement not supported by contemporaneous evidence, only by facts pertaining to the period of 1678 to 1869 as provided in Exhibit A to the Response. French ancestors and their presence in the Hugenot families and of Maxime Dian. The Reply evidence along with that located by the Panel is helpful to the understanding and appreciation of the “ most common surname” quality given by Respondent to the word SOIGNON.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has clearly established that it has rights in the Trademarks SOIGNON and P’TIT SOIGNON under the numerous registrations in evidence and in particular the two registrations in the United States, first in early 1998, the second in 2002. Notwithstanding the fact that from the evidence of Respondent in Annex A that there were ancestors in France, Great Britain and Ireland with the surname SOIGNON, that the Panel has found six instances of the current presence of Soignon surname in the United States and none in Canada, and that there is not one in the six main cities of France (Paris, Lille, Bordeaux, Toulouse, Lyon and Marseille) as put in evidence in the Reply, it is important to observe at this point that although SOIGNON may be considered by some persons, including the Panel, a surname, yet it was registered in the United States and therefore overcame the difficulty stipulated in the Lanham Act that one cannot register what is primarily the surname of a person.¹²

The Panel observes as significant that the word SOIGNON, primarily for non French speaking person, appears to be more a coined or fanciful word than a surname and therefore, conveys to the trademark a distinctive character. This was presumably the position of the US Patent and Trademark Office upon examining the application to register “SOIGNON.” Such distinctive character has been significantly enhanced by the continuous and extensive use of the Trademarks in numerous countries, including the United States in which Complainant has a subsidiary and sells a significant portion of its exported goods, as put in evidence by Complainant.

The Panel finds that Complainant has rights in the Trademarks SOIGNON and P’TIT SOIGNON.

There is no doubt that the domain name in dispute is identical to the SOIGNON Trademarks of the Complainant for purposes of the Policy. The domain name in dispute incorporates in its entirety the Trademarks but for P’TIT SOIGNON.

The Panels finds that the domain name in dispute is identical with the registered Trademarks SOIGNON and is confusingly similar to the Trademark P’TIT SOIGNON of the Complainant.

The criteria of paragraph 4(a)(i) has therefore been met.

B. Rights or Legitimate Interests

The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interest in the domain name in dispute by alleging that the Respondent has never been known by the name “Soignon” or the domain name in dispute, is not making legitimate non-commercial or fair use of the domain name in dispute and in fact, according to Respondent own behaviour, is not using the domain name in dispute in connection with bona fide offering of goods and services. Having made this prima facie case, the Complainant has shifted upon the Respondent the burden of showing that it has rights or legitimate interest in the domain name in dispute.

Complainant has acknowledged that it had inadvertently permitted its previous registration of the <soignon.com> domain name to lapse. Respondent does not challenge this nor claim or present any evidence to the effect that this “lapse” was anything but inadvertent. There is no evidence whatsoever of Record that Complainant intended to abandon either its Trademarks and/or the domain name. To the contrary, the evidence is that the Complainant has extensively used these Trademarks in Europe, in the United States and is vigorously attempting to recover the domain name rights lost by this “lapse.”

The Panel observes that the period of any claim “abandonment” is quite brief. The failure to renew occurred on the last day of September 2003, and Respondent registered the domain name shortly thereafter, on December 14, 2003. While there is no evidence that Complainant attempted in that interim period to contact Respondent to try to correct its inadvertence, it cannot be said that Complainant abandoned either its Trademarks or its domain name. As stated in the decision PerkinElmer Life Sciences Inc v. Compana, LLC NAF case No. FA0209000124752, a similar case of inadvertent lapse by a complainant and registration of the domain name by the same Respondent, the Panel stated that “while there are and certainly should be consequences even for “inadvertence” such as is acknowledged herein, it need not be fatal to the important intellectual property rights of Complainant which it has in all in other respects apparently vigorously protected same.”

Respondent asserts that SOIGNON is generic and a surname. This Panel finds that this bald assertion is not supported by reliable, convincing and contemporaneous evidence. The word SOIGNON may not be exactly fanciful and/or arbitrary to this Panel or a French person but the Panel has no difficulty in surmising that it would be considered fanciful and/or arbitrary by many non French speaking persons. Contrary to Respondent’s representation, it is not generic in that it does not refer to or bring to mind a particular type or class of goods and services nor a common surname.

Respondent has brought to the attention of the Panel the Steven H. Schimpff v. Jerry Sumpton (NAF case No. FA0003000094333) in which the Panel enunciated the distinction between a dictionary word and a coined word and the evaluation of the strength of the mark on a sliding scale in descending order of protection and defined generic as “the name of a thing or merely descriptive mark is at the opposite end of the scale from arbitrary marks.” It is of interest to observe that there is no mention of surname in this citation. Soignon can be considered arbitrary by non French persons.

Furthermore, the great majority of the cases, Court or Panel decisions, cited by the Respondent pertain to such generic or descriptive words such as “zero,” “clue,” “agile,” “naturalizer,” “concierge,” “craft work,” “phonespell,” “tammy” (a common female name) and “donna” (the descriptive name of a lady in the Italian language). The Panel has carefully read all these decisions, has also noted that in many instances, many other trademarks with the same descriptive word have been registered and were coexisting with the trademark of these complainants or that these complainants had not established that their mark had achieved a distinctive character or secondary meaning as the Panel has determined in the present case.

The Respondent states with emphasis that it has no knowledge of the existence of Complainant’s Trademarks and of Complainant itself. This is quite surprising to this Panel in the present context. First the Lanham Act specifically provides that Federal Registration of a Trademark constitutes constructive notice to the world of the existence and validity of the owner’s/registrant’s trademark rights. See 15 U.S.C. No 1072. Furthermore the Respondent, so able with surname searching devices, could have verified this, as rapidly as this Panel did, had it so whished.

Thus whether Respondent admits to or whether there is sufficient evidence of Record that Respondent actually knew of the Trademark rights of Complainant prior to registering the domain name in dispute, Respondent should and will be held to have known of same by the doctrine of constructive notice. Again as stated by the panel in PerkinElmer Life Science Inc. case, “under these circumstances, the registration by Respondent of a domain name identical and thus confusingly similar to a federally registered trademark is in and of itself registration in bad faith.”

Secondly, the present case is, to the knowledge of the Panel and on the evidence of record, the fifth instance in which the Respondent is respondent and challenging a demand for the transfer of a domain name it had registered. In each instance, the Respondent had always asserted that it had no knowledge of the trademark registration and of the existence of the Complainant. Considering the impression of a sophisticated Respondent conveyed by the Response, its significant use of technology to locate surnames that are not registered as a domain name, on the one hand and the ease with which within one hour, the Panel was able to verify the two U.S. registrations on the U.S.P.T.O.GOV website, the absence of any Soignon surname in Canada and the presence of a Soignon surname only in one instance for each six of the fifty states of the United States, on the other hand, this Panel considers that this behaviour of the Respondent is one of wilful blindness which further confirms a bad faith situation.

Furthermore, as stated in PerkinElmer Life Sciences Inc v. Compana, LLC case: “Respondent has produced some limited evidence of use and/or preparations to use the domain in question for an email service.” This Panel observes that this is very little preparation, if any, during a period of December 15, 2003, date of registration and April 21, 2004, date of the Complaint. The very limited evidence provided by Respondent does not bear a date prior to the date of the Complaint.

Furthermore, while the Complainant has shown that despite searches, it could not access any website for the domain name in dispute, (see Annex C-8 to the Complaint), the limited evidence provided by Respondent in Annex B for Bergman, McCoy, ZQI, Andrea and F2 on one hand as well as that for Soignon in Annex C do not show any date and is considered insufficient by this Panel. There is no evidence of Record to show that the entry or evidence in Exhibit C to the Response pre-date the date of the Complaint. Again, bearing in mind that this is the fifth case where the Respondent is confronted with such a situation and the ample time it had available from the date of the domain name registration to the date of the Complaint, the justification that Respondent had made in earlier URDP cases that it was a new or young organisation, do not carry any weight in this case. This Panel finds that this very limited evidence submitted in support to this claim is an insufficient base upon which the Panel is invited to find a bona fide use and is not reliable.

As noted by the Panel in the PerkinElmer Life Sciences Inc v. Compana, LLC case, “this posting could have been done in a few minutes and does not constitute sufficient evidence of a bona fide use or preparation to use a domain name in accordance with the Policy, paragraph 4(c)(i).”

There is no evidence that Respondent has any right or legitimate interest in the domain name in dispute and the condition for the second criteria have been fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above as decided in earlier UDRP decisions such as Peter Frampton v. Frampton Entreprises Inc. WIPO Case No. D2002-0141.

The Panel finds that the Respondent has registered the domain name in dispute in bad faith for the following reasons:

Having already been involved in four earlier UDRP decisions where the Respondent has asserted that he did not know that the domain it registered was a trademark and was not aware of the existence of its owner, the complainant, and considering how easy and fast it is for a person skilled with internet technology as Respondent represents itself to be in searching available surnames, this Panel finds that the alleged lack of knowledge of the registration of the Trademarks SOIGNON and P’TIT SOIGNON in the United States and its owner the Complainant is one of wilful blindness: Respondent simply did not want to know.

As stated before, this does not relieve Respondent of the deemed knowledge of these facts by reason of the constructive notice arising out of the Lanham Act in respect of federally registered Trademarks in the United States.

The Panel therefore finds that the domain in dispute has been registered in bad faith.

As it has been held by the majority of the panel in the PerkinElmer Life Sciences Inc v. Compana, LLC; it also appears to this Panel in the present case that the domain name in dispute is being held passively and such passive holding is and does support a finding of bad faith “use.” See Am. Home Prod. Corp. v. Valgioglio (WIPO Case No. D2000-1602), Ziegenfelder Co. v. VMH Enter., Inc. (WIPO Case No. D2000-0039), Flor-Jon Films, Inc., v. Larson, FA 94974 (Nat. Arb. Forum) DCI SakA. v. Link Commercial Corp. (WIPO Case No. D2000-1232) Clerical Med. Inv. Group Ltd. v. Clericalmedical.com (WIPO Case No. D2000-1228).

Again, this Panel finds in the present explanation of Respondent business model ambiguity if not contradiction as to its nature and objective on the one hand, and serious shortcoming in its implementation on the other hand. Having regard to the very short period of time from the lapse of the domain name in dispute and the registration by the Respondent of the domain name in dispute identical to the registered Trademarks, Respondent, in explaining its business model, contends that it has an alleged goal of providing their customers a broad choice of generic domain names to match their professional “surnames” and once “fully implemented” to enable users to have a “personalized” portable e-mail and website address with a “name” that best suits their needs and interests.

When, according to the Record, there are only six SOIGNON surnames in the United States, none in Canada, and none in the six main cities of France, it is difficult for this Panel to see which customers would honestly want to match their profession surname and enjoy a personalized portable e-mail and website address as offered by Respondent. This Panel cannot see how this could represent bona fide commercial use of the domain name in dispute nor any use thereof in good faith. The registration by Respondent simply serves to deprive Complainant of an ongoing communication mean related to its trademarks which necessarily results in disrupting Complainant’s business.

This Panel finds that for the above reasons, the domain name in dispute is used in bad faith.

The Panel finds that the third criteria has been met.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <soignon.com> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist

Dated: June 5, 2004

1 The Panel has verified the absence or presence of the SOIGNON surname at the following addresses: for Canada: “www.canada411.com” and for the United States: “www.peopledata.com”

² Respondent does not provide evidence to prove this assertion. However upon verifying the Panel did find McCoy, ZQI but could not find Bergmann, Andrea and VFZ.

³ Respondent does not provide any evidence with a date for the illustrations provided in Annex B.

⁴ The citation by Respondent from this case does not refer to surnames.

⁵ This citation by Respondent from this case does not refer to surnames.

⁶ Presumably only six persons in U.S. may be interested to such personalized e-mail and website address.

⁷ Respondent does not provide evidence of preparations with a date prior to the Complaint for this assertion.

⁸ Respondent does not provide evidence of preparations with a date prior to the Complaint for this assertion.

⁹ Respondent does not provide any legal base or UDRP decisions to support this argument.

¹⁰ In the Rusconi decision pertaining to <donna.com> donna means lady in Italian.

¹¹ Respondent does not provide any evidence to support this allegation which relates to facts after the date of the Complaint having been filed and sent to Respondent.

¹² See PerkinElmer decision at page 5