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Plasto SA v. Computer Aided Services - Hong Kong [2004] GENDND 844 (1 June 2004)

1. The Parties

The Complainant is Plasto SA, Chenove, France, represented by Raymond Ullmann, France.

The Respondent is Computer Aided Services - Hong Kong, of Hong Kong, Special Administrative Region of China, represented by Dann, Dorfman, Herrell & Skillman, PC, United States of America.

2. The Domain Name and Registrar

The disputed domain name <plasto.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2004. On March 23, 2004, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On March 26, 2004, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and at the same time as the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 6, 2004. The Center verified that the Complaint together with the amendment to 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 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2004. The Response was filed with the Center on May 13, 2004.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on May 18, 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.

4. Factual Background

A. Complainant

The Complainant submits to be the proprietor of several trademarks consisting of the word PLASTO or a combination of the word PLASTO with figurative elements, standing in the name either of the company SAPE or the company F.I.S., and having been transferred to the Complainant on February 1, 2003, by means of a property transfer.

Since the Respondent does not contest this submission the Panelist is satisfied that this submission is correct.

The trademarks referred to are the following:

· French registration no 1 726 975 with priority dating back to 1955, for the word PLASTO, covering goods, particularly adhesive materials, contained in classes 1, 5, 16 and 17 of the international classification.

· International registration no R216975 for the same mark, dating back to 1959, and originally covering the countries Benelux, Italy, Morocco and Switzerland (as can be seen in the documents attached to the Complaint). Subsequent designations have been made for this registration with effect of December 21, 2001, to the countries Germany, Portugal and Spain.

· French registration no 1307652, dated April 30, 1985, for a figurative mark (logotype), containing dominantly the word PLASTO, for goods in class 17.

· International registration for the same mark, dated April 18, 1989, covering the countries Austria, Benelux, Germany, Italy, Portugal, Spain and Switzerland.

B. Respondent

The Respondent registered on August 9, 2000, the domain name <plasto.com>. It uses it for a link to a website “www.roar.com”, which provides a selection of commercial and other links.

5. Parties’ Contentions

A. Complainant

The Complainant submits that (1) the domain name <plasto> is identical or confusingly similar to a trademark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; (3) the domain name was registered and is being used in bad faith.

B. Respondent

The Respondent submits that the Complainant has no global rights in the trademark PLASTO; that the Respondent uses the domain name outside France and does not use the domain name <plasto.com> for goods related to the business of the Complainant; and that the Respondent has not registered and is not using that domain name in bad faith.

6. Discussion and Findings

The Policy lists three elements that the Complainant must prove to merit a finding that the domain name of the Respondent be transferred to the Complainant:

1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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.

A. Identical or Confusingly Similar

The domain name <plasto.com> is identical to the word mark PLASTO in which the Complainant has rights in a number of countries (the generic TLD indicator “com” cannot be taken into consideration when judging identity). It is also at least clearly confusingly similar if not identical to the logo mark PLASTO in which the Complainant also has rights in several countries, these rights all having priority to the registration of the domain name (whilst some later extensions to the international registration for the word mark PLASTO have been made in 2001, after the registration of the domain name). When the Respondent submits that the Complainant has rights only in France, it overlooks that the Complainant has submitted sufficient evidence as to the countries to which the protection of its two international registrations for the trademark PLASTO extends. There is no doubt that under the Policy the Complainant needs not have global rights in its trademark (such “global rights” legally do not exist and may in practice be affirmed for a small number of marks such as COCA COLA). Under the policy it would even be sufficient for a Complainant to have rights in its trademark in one country only, provided it can prove that the Respondent has no legitimate interest in the corresponding domain name and has registered and is using it in bad faith.

B. Rights or Legitimate Interests

The Respondent has no connection or affiliation with the Complainant, who has not consented to the Respondent’s use of the domain name which is identical to its trademark.

The Respondent submits that the term “plasto” can legitimately be used outside France and for other products than “adhesives”. It also submits that its website is not directed to French users (since it is in English). In that context the Respondent overlooks again that the Complainant has rights not only in France but also in other countries where other languages are spoken and furthermore, that the international commercial language is English. Also the website of the Complainant “www.plasto.fr” is in French and English at the choice of the user.

Furthermore the Respondent fails to submit any facts that would support its argument to have a right or a legitimate interest in the use of the domain name <plasto.com>. Considering the typical circumstances listed in the Policy, demonstrating rights or legitimate interest, the Panel finds that these circumstances are not given. The Respondent does not use the domain name for a bona fide offering of goods or services, since the domain name provides only a link to the website of a service provider acting as “Roar” or “Roar’s” and entertaining a similar website under the name (“www.roar.com”). It seems to this Panel that the Respondent is not commonly known under the domain name, since it uses the name “Roar”. It has furthermore submitted no argument that it uses the domain name for noncommercial purposes. The argument that the website to which the domain name is linked also provides a link to subjects relating to “Plato” is not convincing. First of all, “Plato” is only mentioned on a website of the e-bay company which is superimposed on the website of “Roar” (the latter appears when a user closes the page of e-bay). Secondly, if somebody had an interest to offer a website under “plasto” for users who are misspelling “Plato”, this would be expected to be the provider of the website “www.plato.com”, the Plato Learning Inc. If that company does not care for a possible misspelling of “Plato” into “Plasto”, why should the Respondent care for such misspelling.

The Panelist is therefore satisfied that the Respondent has no rights or legitimate interests in the domain name <plasto.com>.

C. Registered and Used in Bad Faith

The Respondent submits that many trademarks containing the term PLASTO exist and that even some expired trademarks were registered for that term alone. It furthermore refers to homepages for companies using the term “plasto” as main part of their company name and having websites in cctlds such as “www.plasto.fi”, “www.plasto.no”, “www.plasto.ee” and “www.plasto.co.jp”.

In order to prove bad faith of the Respondent, the Complainant only submits that by using the domain name <plasto.com> the Respondent intentionally attempted for commercial gain, to lead Internet users to a website automatically directed to the URL “www.roar.com”, by creating a likelihood of confusion with the Complainant’s mark as to the source of the Respondent’s website.

The Complainant did not submit any argument or evidence as to its position in the international market. Furthermore, it did not make any reference to its use of the term “plasto” and to the use of other companies of that term as trademark or trade name or domain name (it did not even mention that it entertains websites under “www.plasto.fr” and “www.plasto.info”). Such and other arguments and evidence would have been important in view of the fact that the term “plasto” clearly includes a descriptive reference to plastic material (as is confirmed by the many trademark registrations, containing the term “plasto” in the United States alone, which have been evidenced by the Respondent). In such a case it is necessary for the Complainant to submit strong arguments and evidence why it believes that the Respondent has registered and is using its domain name in bad faith with reference to the Complainant’s mark. Actually, the Complaint is written in a minimal approach (this is true also for the original of the complaint in French language). In view of the fact that the Complaint contains only evidence as to some registered trademarks for the term “Plasto” and simply refers to the fact that the Respondent uses its domain name for a link to another website, it is difficult for the Panelist to issue an order for additional information. Such order is normally issued where, taking into account the submissions of the Complainant and of the Respondent, for certain concrete aspects of importance the Panelist needs more information in order to make his decision. Here the Panelist would have to request facts and evidence to all aspects of the Complaint (beginning with evidence as to the Complainant’s ownership of the trademarks cited). It cannot be the task of the Panelist to request from the Complainant to substantiate its Complaint.

Taking into account that, as evidenced by the Respondent, at least several other companies do exist in the field of activity of the Complainant who are using country code domain names identical to that of the Respondent in the .com gtld (and identical to the Complainant’s domain name in the French cctld), and which are likely to have rights in registered trademarks in their countries of activity for the word “plasto”, (the more as these companies all have company names that contain or practically consist of the term “plasto”), the Panelist cannot accept the sole argument of the Complainant that the Respondent intentionally attempts to attract for commercial gain Internet users to its website as sufficient for proving registration and use in bad faith. It is even likely to be true that the Respondent uses the domain name in order to attract Internet users to its website (since that is what generally domain names are registered for). However, the Complainant did not submit any evidence that these Internet users are users who normally had intended to visit the Complainant’s website and that therefore a likelihood of confusion with the Complainant’s mark as to the source of the Respondent’s website is created.

In that context the Panelist would have expected arguments and evidence that the users which the Respondent attracts are users who intended to visit its website (as opposed to the website of other companies in Estonia, Finland, Japan and Norway that are using identical domain names in their respective cctlds). In that context the Complainant was also expected to have argued and evidenced that in the year 2000 the Respondent has registered the domain name <plasto.com> in bad faith with respect to its trademark PLASTO (since under the Policy the Complainant must prove that the Respondent has registered and is using the domain name in bad faith).

Since the Respondent did not submit any convincing argument as to the reasons why

it registered the domain name <plasto.com>, it may well be that it intended to profit from Internet users whose intention is to visit one of the websites of the number of companies in different countries that use the company name “Plasto” and entertain websites that can be acceded through a domain name consisting of the term “plasto” in a cctld. However, this is only a consideration of the Panelist, what may have been the intention of the Respondent, which does not allow him to arrive at such conclusion. As said before, the Complainant has under the Policy to submit arguments and evidence in order to prove that the Respondent is acting in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Gerd F. Kunze
Sole Panelist

Date: June 1, 2004