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AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr. [2005] GENDND 1429 (29 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr.

Case No. D2005-0485

1. The Parties

The Complainant 1) is AIB-Vincotte Belgium ASBL, Brussels, Belgium.

The Complainant 2) is AIB-Vincotte USA Inc./Corporation Texas, Houston, Texas, United States of America, represented by Office Kirkpatrick, SA, Belgium.

The Respondent is Guillermo Lozada, Jr., Houston, Texas, United States of America; C/o Gregory J. Manriquez, CEO - Namedrive.com, United States of America, represented by Greenberg & Lieberman, United States of America.

2. The Domain Names and Registrar

The disputed domain names <vincotte.com>, <vincotte.net> and <vincotte.org > are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2005. On May 4, 2005, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On May 5, 2005, iHoldings.com Inc. d/b/a DotRegistrar.com 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. In response to an email notification by the Center that the Complaint was not sent to the Registrar and to the Respondent, the Complainant provided proof that the Complaint was sent to the Registrar and to Respondent on May 4, 2005. 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 May 19, 2005. In accordance with the Rules, paragraph 5(a), and set the due date for Response to June 7, 2005.

On June 6, 2005, Respondent addressed an email to the Center requesting an extension of time to respond to the Complaint, which was forwarded to the Complainants by the Center. The Center granted an extension of time and set the due date for Response to June 15, 2005.

On June 14, the Respondent informed the Center that some documents in French needed to be translated and asked for another extension of time. The Center set a new due date for Response on June 28, 2005.

The Respondent transmitted the Response on June 28, 2005 at 23:48 (Washington time). The Response was received by the Center June 29, 2005, at 1:49 AM (Swiss time).

The Center acknowledged receipt of the Response on June 30, 2000. The Respondent transmitted the names of three candidates for a three-member Panel on July 1, 2005, and the Complainants on July, 4, 2005.

On July 4 and on July 22, 2005, Complainants transmitted additional submissions. On August 2, 2005, Respondent responded to the Complainants’ additional submissions.

The Center appointed Torsten Bettinger, David E. Sorkin and Alain Strowel as panelists in this matter on August 2, 2005. The Panel finds that it was properly constituted. Each member of 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

The Complainant 1) is an organization providing services of technical inspection and engineering surveys in various industries. Its core activities are inspection, certification, testing and training.

It has been active under the name “Vinçotte” since 1873, and was incorporated as a non-profit association under Belgian law on March 15, 1922, initially under the name “Association Vinçotte pour la surveillance des chaudières à vapeur”.

Complainant 1) is currently active in many fields of industry, but is renowned among the public on the Belgian marketplace especially through its activities of inspecting and certifying lifts in buildings of all kinds.

Complainant 1) holds the rights to the trade name which it began to use as the social name of the association when it was incorporated in 1922.

Complainant 1) also holds the rights to the Benelux figurative trade mark “V VINçOTTE registration”, registration number 158891 of December 12, 1987, for products and services of classes 37, 41 and 42. The mark has been used since 1969, on the certified lifts, by means of the sticker “This appliance is inspected by AIB VINçOTTE”.

The Complainant 2) was incorporated on April 18, 1980, under the name VINCOTTE USA in Houston, Texas, to serve the petrochemical industry. Complainant 2) is mainly involved in the following activities:

- third-party inspection and expediting services including non-destructive testing;

- pressure equipment directive assessment and certification together with PED marking

- training quality and environmental management;

- ISO 9000, 14000 and QS 9000 / TS16949 certification against the background of various domestic accreditation systems

On July 23, 2001, Complainant 2) changed its name into AIB-VINCOTTE USA, as result of the merger with the AIB group.

Complainant 2) holds the rights to the US trademark (device) “AV AIB-VINCOTTE USA” registration number 2788403, registered on December 2, 2003, for the following products/services:

“Carry out Vendor surveillance inspection and technical supervision of equipment such as Pressure Vessels, Pipes, Pumps, Compressors, etc, for Oil and Gas and Petrochemical industries at manufacturing facilities assuring equipment being designed, manufactured and supplied meeting Customer’s contract, specification, quality standards and statutory requirements by review of design, visual inspection and witnessing testing; Services includes registration of Environmental Management System to ISO 14001, and Quality Management Systems to ISO 9001, 9002, QS/TS and AS 9000 standards of manufacturers, suppliers, service companies, industrial plants in various industrial sectors.

Complainant 2) filed on December 6, 2004, the trademark “V VINCOTTE” for the following services:

Registration of Quality Management System Certification to ISO 9001, QS/TS and AS9100 and Environmental Management System Certification to ISO 14001; Other services include carrying Vendor surveillance inspections and technical supervision of equipment such as pressure vessels, pipes, valves compressors, etc for the Oil and Gas and petrochemical industries at manufacturing facilities assuring equipment being designed, manufactured and supplied meeting customers contract, specification, quality standard and statutory requirements by review of design, visual inspection and witnessing testing (Exhibit E.3.).

From the date of its incorporation in 1980, Complainant 2) usually presented itself under the trade name “V VINCOTTE USA”.

At the beginning of September 2004, Complainants planned to register the Domain Name <vincotte.com> and noticed that it was registered by the Respondent.

On September 8, 2004, Jim Dugal, legal representative of Complainant 2), sent an email to the Respondent asking the Respondent to contact him by phone. In a subsequent telephone conversation Complainant 2) and Respondent discussed the Complainant’s right to the domain name <vincotte.com> and the Respondent’s willingness to find an amicable solution under which the domain name would be transferred to Complainant 2) for a consideration to be paid to the Respondent. In an email following this telephone conversation, Respondent stated that he did not register the domain name <vincotte.com> for the purpose of competing with the Complainant 2) or for the purpose of “benefiting” from the reputation of Complainant 2). Respondent expressed his willingness to relinquish the domain name if the Complainant 2) could establish legal rights over the domain name <vincotte.com>.

Respondent contacted the domain appraisal service SEDO who appraised the value of the domain name <vincotte.com> as being EURO 42,000.

On September 14, 2004, the Respondent registered the domain name <vincotte.net>.

On January 18, 2005, Complainants’ representative informed the Respondent, by email, that the Complainants were interested in acquiring the domain name <vincotte.com>.

On January 18, 2005, Complainants’ representative again contacted the Respondent and indicated the Complainants’ interest in acquiring the domain name.

On January 19, 2005, the Respondent registered the domain name <vincotte.org>.

On the same day, Respondent contacted Complainants’ representative in order to negotiate the transfer of the domain name <vincotte.com> to the Complainants.

The Complainants’ representative informed the Respondent that the domain name <vincotte.com> infringed the rights and interests of the Vinçotte Group, as a result of the Complainants using this name as the distinctive sign of their business for more than 125 years in Belgium, and since the 80s in the United States of America, and more generally worldwide. During that conversation, Respondent informed the representative of the Complainants that he would not be reluctant to a transfer of this domain name to the Complainants, if the parties could reach an agreement on the price.

On January 20, 2005, the Respondent confirmed by email the phone conversation and his offer. He added that Complainants could not claim any right on the disputed domain names because of their common character and the fact that the trademark owned by the Complainant 2) is posterior to the registration of the Domain name <vincotte.com>.

On February 28, 2005, the Complainants’ representative asked the Respondent what was the price for the transfer of the domain name <vincotte.com>.

On March 2, 2005, the Respondent fixed the transfer price to € 100,000.

On March 3, 2005, the representative of the Complainants informed the Respondent that Complainants refused to pay this amount and made a counteroffer for € 1,500. This counteroffer was refused by the Respondent.

On March 24, 2005, the Complainants’ representative sent a cease and desist letter to the Respondent, requiring the immediate transfer of the three disputed Domain Names.

On March 25, 2005, the Respondent denied the rights of the Complainants on the disputed domain names.

Respondent is currently using the disputed domain names for a website that contains various sponsored links to other commercial sites on the topic of genealogy ancestry. The website is part of the “domain name parking program” of the German Domain Service Provider SEDO.

5. Parties’ Contentions

A. Complainant

In reference to the element in paragraph 4(a)(i) of the Policy, Complainant 1) asserts that its trade name “Vinçotte” is identical to the disputed domain names and that Complainants’ figurative Benelux and US trademarks are confusingly similar to the disputed domain names.

In reference to the element in paragraph 4(a)(ii) of the Policy, Complainants state that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion the Complainants argue that

- Respondent is known under his personal name, Guillermo Lozada Jr, but not under the name “Vincotte” or “Vinçotte”.

- Respondent is not making a legitimate non-commercial or fair use and is not using the domain name in connection with a bona fide offering of goods or services as the disputed domain names are merely used for a website offering the disputed domain names for sale.

In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainants, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain names. In support of this assertion the Complainants argue that

- the trade name and trademark of the Complainants are very well-known worldwide, especially in the real estate sector;

- trademarks of Complainant 1) appear in a huge amount of lifts in Belgium and almost everybody knows the name “Vinçotte” and its major presence in the real estate market;

- Complainant 2) is a well-known company in Texas since 1980, conducting its business under the name “Vincotte USA” and “AIB-Vincotte USA”;

- Respondent during its contacts with the Complainants proposed to transfer the domain name <vincotte.com> for € 100,000;

- Respondent registered the domain name <vincotte.com> when he realized that this well-known company AIB-VINCOTTE USA, incorporated under the laws of Texas did not register it;

- Respondent and Complainant 2) are established in the same geographical area and moreover in the same city (Houston) in the USA and therefore the Respondent knows of the existence of the trademark and the trade name of Complainant 2);

- the Complainants’ trademark registration preceded the Respondent’s domain name registration, and therefore Respondent is presumed to have knowledge of the trademark;

- the registration of the domain name <vincotte.com> by the Respondent on February 18, 2004, directly followed the registration of the US trademark AV AIB VINCOTTE USA, registered on December 2, 2003;

- Respondent registered the domain name <vincotte.net>, on September 14, 2004, directly after his contact with Jim Dugal, CEO and representative of Complainant 2), related to the possible transfer of the domain name <vincotte.com>;

- the Respondent registered the domain name <vincotte.org> on January 19, 2005, the day after its correspondence with the Complainants’ representative, dated January 18, 2005;

- the domain names are not used in any way and are “FOR SALE” on the Internet site “www.sedo.com”;

- Respondent satisfies himself with keeping the domain names without giving any appropriate explanation to the Complainants;

- the correspondence between the Respondent (and his brokering agent) and the representative of the Complainants clearly demonstrates that the sole objective of the Respondent is to make a large profit by selling the name <vincotte.com> to the Complainants (Price amount: € 104,000) and that the Respondent knows very well the “Domain name market” and the profit that could be made by hi-jacking.

In an email transmitted to the Center on July 4, 2005, Complainants pointed out that the Response was filed one day after the deadline set by the Center and that the Respondent did not provide a copy of the email sent to the Center to the Complainants. Complainants also pointed out that the Respondent did not provide the names and contact details of three candidates to serve as one of the Panelists as stated by paragraphs 5(b)(iv) and (v) of the Rules. The Complainants therefore requested that the Response should not be taken into account by the Panel.

In an email transmitted to the Center on July 22, 2004, the Complainants commented on the Respondent’s view concerning bad faith and requested that non-English documents filed with the Complaint should not be considered by the Panelists.

B. Respondent

As regards the language of the proceedings, the Respondent requests that non-English documents or documents with no English translation should not be considered by the panelists.

The Respondent denies that the Complainant 1) and Complainant 2) have exclusive rights to “VINCOTTE” and that the trademarks of Complainant 1) and Complainant 2) are identical to the disputed domain names. In support of this assertion Respondent argues that “Vincotte” is a common surname and only entitled to legal protection if it attains secondary meaning.

The Respondent also denies that he has no rights or legitimate interests in the domain name pursuant to paragraph 4(a)(ii) of the Policy and that he has registered and uses the disputed domain names in bad faith. In support of this assertion Respondent argues that:

- at the time of registration Complainants were not using “Vinçotte” as a brand name, but rather they were using AIB-VINçOTTE or AV AIB VINCOTTE USA as brand identifier;

- there are various well known personalities carrying the surname “Vinçotte” such as Thomas Vincotte, a famed painter who lived from 1604 – 1665, Max Vinçotte, a well-known French ace pilot in the World War II, Bernard Vinçotte (Belgium “right to image attorney”), Martin Vincotte (civil engineer), Amadine Vincotte (owner of Amadine Vincotte Studios), and AML Vincotte (inventor of, among other things, Cathodic Electrochemical Detection of Oxidizing Radial Specie);

- the surname “Vinçotte” is relatively common as evidenced by the web page located at “www.ancestry.com”;

- numerous companies use the name “Vinçotte” or “Vinçotte” to identify their goods and services to the public such as M&H Vincotte LLP and Vincot Farms Inc., Vincotte digital hydrometer;

- the Complainant 1) and its services are mostly unknown in the United States, where the Respondent resides;

- he was not aware of Complainants when the domain name <vincotte.com> was registered; Complainants have not proffered any evidence that the disputed domain names were acquired or registered with Complainants in mind – to sell to Complainants, to disrupt the Complainants’ businesses, to prevent them from reflecting their mark in a domain name, or to confuse consumers;

- he was attempting to establish a large vanity domain name service;

- his legitimate interest is bolstered by the fact that both Complainants, before filing this administrative proceeding first offered to buy <vincotte.com> if Respondent could prove the value of the domain name by an appraisal from SEDO; SEDO proved that the value of the domain name <vincotte.com> was approximately € 42,000.;

- Complainant 2) was receptive to a higher price if he could prove the value of the domain by an appraisal from SEDO and that SEDO proved that the value of the domain name <vincotte.com> was approximately € 42.000;

- prior to being contacted by Complainants, Respondent was not aware of Complainants;

- there is substantial use of the term “Vinçotte” and variations thereof, in other domain names to which Complainants have not objected, such as <vincote.co.th>, <vincotte.nf.ca>, <vincotte.lu>, <vincotte.co.th> etc.;

- he does not offer the same services and/or products as Complainants, and nothing on the websites available at the disputed domain names could confuse users that the websites are associated with Complainants;

- the domain name <vincotte.com> was registered from 1999-2004, by another registrant and that Complainant 1) and Complainant 2) acquiesced to this registration and use by not bringing an action against the registrant;

- Complainant 1) and Complainant 2) are barred by the equitable principles of laches in asserting their rights against the previous registrant from 1999-2004;

- “Vincotte” is a common surname and only entitled to legal protection if it attains secondary meaning;

- he was attempting to establish a vanity domain name service and had negotiated with a large vanity domain name service, NetIdentity.com, to create a prosperous opportunity for both companies;

- an offer to buy a generic domain name confirms the registrant’s legitimate rights to that domain name.

Respondent has executed an affidavit to confirm that all his statements are true.

6. Discussion and Findings

A. Procedural Aspects

Late filing of the Response

The first issue is whether the Panel will consider the administratively deficient and late Response of May 29, 2005.

In the event of a late Response, the Panel’s default course of action, pursuant to paragraph 14(a) of the Rules, is to proceed to decision based only on the complaint. The Panel may, in its discretion, consider the response if “exceptional circumstances” exist.

Responses that were submitted late were taken into account by the panels in cases in which

- the response was filed before commencement of the decision-making process by the panel (see J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035 - <jpmorgan.org>);

- the lateness did not delay the decision (See Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591 - <younggenius.com>);

- respondent was able to rely on a medical emergency (See Khoral Research, Inc. v. Alexy V. Khrabrov, National Arbitration Forum Case No. FA 94269 – <khoros.com>);

- failure to take into account would have led to a “miscarriage of justice” (see Collegetown Relocation, L.L.C. v John Mamminga, National Arbitration Forum Case No. FA 95003 – <collegetown.com>);

- response was late only by one day (See Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 and Arthur Guinness Son & Co. (Dublin) Limited v. Feeney O’Donnell and John O’Donnell, WIPO Case No. D2000-1710 - <guinnessdraught.com>).

Although there were no exceptional circumstances, a late response was taken into account on the basis of the panel’s “general powers” pursuant to paragraph 10(b) of the Rules (“equality and that each party is given a fair opportunity”) on the grounds that failure to take the response into account “would be a rather drastic step and should be undertaken with great care.” (AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830 – <attmsn.com>)

In contrast, responses submitted after the expiry of the deadline were dismissed by the panel where the period set was exceeded by two weeks, since the respondent could have applied for an extension and was represented by counsel (Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 - <talk-city.com>).

The Panel observes that Respondent transmitted the Response on June 28, 2005 (Washington time), but that due to time difference, the Response was received by the Center on June 29, 2005 (Swiss time)

The Panel holds the view that it is sufficient that Respondent has met the deadline in its time zone. However, even if it is assumed that the Response was filed one day late, the panels would agree with the views held in previous UDRP decisions that the lateness of Respondent’s response is de minimis and has not prejudiced the Complainants nor has it delayed the Decision in this Administrative Proceeding. The Panel therefore has admitted and considered the submissions set out in the Response.

Formal Deficiencies of the Response

There is no provision regulating the consequences for responses that do not meet the formal requirements comparable to paragraph 4(b) of the UDRP Rules for complaints. Whether and under what conditions responses are to be taken into account if they do not satisfy the formal requirements of paragraph 5 of the UDRP Rules has been determined differently by different panels. The majority of the panelists assume that they are entitled at their discretion to determine whether to consider responses which are formally incorrect (Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591 - <younggenius.com>).

A response has been taken into account inter alia if:

- the respondent wrongly submitted the response to the complainant and ICANN but not to the dispute resolution provider (See Oberoi Hotels Pvt. Ltd. v. Arun Jose, WIPO Case No. D2000-0263 - <tridenthotels.com>);

- the response was on time but was submitted in handwriting (See Cable News Network LP, LLP v. Manchester Trading, National Arbitration Forum Case No. FA 93634 - <cnnheadlinenews.com>);

- the response exceeded the limit on the number of words imposed by the Supplemental Rules (See Süd-Chemie AG v. tonsil.com, WIPO Case No. D2000-0376 – <tonsil.com>);

- the response was submitted by fax (See Veritas DGC Inc. v. The Collectors Source, National Arbitration Forum Case No. FA 94425 - <veritasdgc.org>)

Account was not taken of a response that was merely submitted by email (See William Hill Organisation Limited v. Seven Oaks Motoring Centre, WIPO Case No. D2000 – 0824 - <williamhill.org>).

In this case, the Panel finds that the fact that the Respondent did not provide in his response the names of candidates for a three-member panel as required by paragraph 5(b)(iv) of the UDRP (Respondent provided such list upon request by the Center) does not prejudice the Complainant and therefore, in its discretion, accepts the Response.

Additional Submissions after Filing the Complaint and the Response

Given the proceeding’s aim of an expeditious settlement of disputes, the UDRP does not provide the parties with any right to reply, unless the panel requests, in its sole discretion, further statements or documents from either of the parties pursuant to paragraph 12 of the UDRP Rules.

Opinions differ as to whether and under what conditions the Panel can take into account unrequested additional submissions. The wording of paragraph 12 of the UDRP Rules, “the Panel may request” and the aim of expeditious settlement have occasioned a number of panels to take into account of sur-replies and sur-sur-replies only if the submissions have been requested by the panel. Despite the wording of paragraph 12 of the UDRP Rules, the majority of the panels refer to the general requirement of procedural fairness and assume that unrequested submissions by the complainant can be taken into account by the panel, depending on the circumstances, if the additional submission concerns questions that were not known before the filing of the complaint (See Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802 – <itoyota.com)> or if objections have been raised by the respondent that were not foreseeable when the complaint was filed.

In this case, however, Complainants do not point to any exceptional circumstances necessitating further submissions, nor does the Reply itself disclose any new facts not available at the time the Complaint was submitted. Instead, Complainants appear to have submitted the Reply solely to provide argument rebutting the assertions in Respondent’s Response. Such a Reply is not permitted by the Rules and the Panel elects not to accept the Reply filed by Complainants and thus has not relied on it in reaching this decision (See Universal City Studios, inc. v. GA.B. Enterprises, WIPO Case No. D2000-0416 – <fieldofdreams.com>).

The Respondent’s submissions in his email dated July 4, 2005, are merely a reply to the Complainants’ arguments in their additional submissions and do not contain new facts. Therefore, for the same reasons, the Panel has decided not to consider the Respondent’s unsolicited submissions.

Language of the documents

The Complainants’ Exhibits A 3, C 1 – C 3, C 5 – C 8, C 10 - C 13, E 1, are in French without English translations. The Respondent submitted that English is the language of the Proceeding and that therefore all documents must be in English. The Respondent requested that non English documents should not be considered.

There is no rule that obliges the Parties to submit their documents in the language of the administrative proceeding (i.e., the language of the Registration Agreement – see Paragraph 11(a) of the Rules). According to Paragraph 11(b) of the Rules, the Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.

In the case at hand, Exhibit A 3 contains Complainants’ article of association, Exhibit C 1 - C 2 contain printouts of Complainants’ website describing the Complainants’ business activities, Exhibit C 3 and C 9 contain papers used in connection with the Complainants’ testing activities, Exhibits C 5 - C 8 contain copies of Complainants’ business report, Exhibit C 10 is a printout of Complainants’ registration in the Belgian commercial register, Exhibits C 11 – C 12 contain copies of Complainants’ website and business chronicle, Exhibit C 13 is a sticker used in connection with Complainants’ certifying activities, Exhibit E 1 is a copy of the Complainants’ Benelux trademark registration.

The Panel finds that the content of none of the above listed documents were necessary to enable the Respondent to address the Complaint. In these circumstances, the Panel considers that the Respondent does not suffer any real prejudice from these documents being in French. The Panel therefore declines to make an order to provide translations under paragraph 11(b) of the Rules.

A. Trademark Protection

The Complainant 1) has a figurative trademark “V Vincotte” issued by the Benelux Trademark Office and Complainant 2) has a figurative trademark “AV AIB Vincotte” issued by the United States Patent and Trademark Office.

If the Complainants own registered trademarks which contain the word element “Vincotte” then it satisfies the threshold requirement of having trademark rights pursuant to paragraph 4a(i) of the Policy. The question of whether the word element “Vincotte” is a surname and only entitled to legal protection if it attains secondary meaning is irrelevant when finding rights in a mark pursuant to paragraph 4a(i) of the Policy.

The Panel thus finds that Complainant has trademark rights in the mark “Vincotte”.

C. Identical or Confusingly Similar

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, [1979] USCA9 691; 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 <guiness.com>, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. 2001-0110 <ansellcondoms.com>, Dixons Group Plc v. Mr. Abu Abdullaah , WIPO Case No. D2001-0843 <dixons-online.net>, AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327 <attinternet.com>, <attuniversal.com>, BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 -<britanniabuildingsociety.org>).

The disputed domain names wholly incorporate the word element “VINçOTTE” of Complainants’ figurative trademarks.

The assumption of confusing similarity between trademark and domain name is not refuted by the fact that the Complainants’ trademarks contain additional design elements such as logos or the stylized letters “V” and “AIB AV” which can not be reproduced in a domain name (Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer WIPO Case No. D2001-0032; Wherehouse Entertainment, Inc. v. NetVentures WIPO Case No. D2001-0036; Fábricas Agrupadas de Muñecas de Onil S.A. (FAMOSA) v. Gord Palameta, WIPO Case No. D2000-1689).

It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

The Panel thus finds that the disputed domain names are confusingly similar to the trademarks in which Complainants have exclusive rights and that Complainants have established the requirement of paragraph 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

Complainants have made a prima facie showing that Respondent has no rights to or legitimate interests in the domain names. Complainants have established that Respondent has not been known by the name “Vinçotte” and that Complainants have not yet licensed or otherwise permitted the Respondent to use any of their trademarks or business names.

Although paragraph 4(c) of the Policy requires the Complainants to prove the presence of this element, Panels in a number of cases found that once a complainant makes a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to, or legitimate interests in the domain name (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 <croatiaairlines.com>; Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110 <belupo.com>).

In this case, the Respondent has failed to meet that burden. Although Respondent states in his affidavit that he registered the domain name “with the intent to develop vanity domain services”, Respondent has not provided any documentary evidence whatsoever to substantiate that assertion. Given that paragraph 4(c)(i) of the Policy requires Respondent to show “demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services,” the Panel concludes that the mere assertion of such an intention, even in the form of an affidavit, is insufficient. Instead, once Complainants make a prima facie showing, Respondent has to submit concrete evidence of at least demonstrable preparations in order to rebut Complainants’ showing that Respondent has not used, nor does it plan to use, the domain names in connection with the bona fide sale of goods or services.

Furthermore, the Panel rejects Respondent’s contention that a legitimate interest in the disputed domain names is established by the fact that “Vinçotte” is a surname and that the domain names are used for the purpose of redirecting traffic, to a website in order to make money from that site (owner of a website such as the Respondent’s which contains various links to other sites receives click-through fees for diverting Internet users to the advertisers).

The Panel is aware that the mere registration of a generic domain name has been, without reference to the examples listed in paragraph 4(c) of the Policy, regarded by some panelists as being sufficient to establish a legitimate interest, even if the domain name was merely used for the purpose of redirecting traffic to a website or not used (PROM Software, Inc. v. Reflex Publishing, Inc., WIPO Case No. D2001-1154 – <prom.com>). However, the word “Vinçotte” is not generic, but a rarely used surname. The mere use of a surname as a domain name for the purpose of redirecting traffic to a website in order to make money from that site does not in the eyes of the Panel in itself establish a legitimate interest pursuant to paragraph 4(a)(ii) of the Policy.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

E. Registered and Used in Bad Faith

The Complainants contend that the Respondent registered the domain names primarily for the purpose of selling them to the Complainants for valuable consideration in excess of his expenses. If this was the case, it would constitute evidence of registration and use in bad faith in accordance with paragraph 4(b)(i) of the Policy. However, the Respondent denies it, claiming that “Vinçotte” is a common surname, that he was unaware of the Complainants’ rights or interests in the name “Vinçotte”, and that he registered the domain names in connection with the intent to “establish a large vanity domain name service”.

The Panel has evaluated these rival contentions and came to the conclusion that Respondent’s arguments are a pretext.

First, the Panel had little difficulties in finding that the domain names <vincotte.net> and <vincotte.org > were registered for the purpose of sale to the Complainants for valuable consideration in excess of the costs of registration.

It is clear from the record that the Representative of the Complainant 2) contacted the Respondent on September 8, 2004, asserting trademark right in the domain name <vincotte.com> and that there was telephone conversation on the same day between the parties in which the Complainant indicated its interest to find an amicable solution under which the domain name would be transferred to the Complainant for a consideration to be paid to the Respondent. The Parties then negotiated the price for the transfer of the domain name to the Complainant and Respondent contacted the domain appraisal service SEDO which evaluated the value of the domain name <vincotte.com> as being EURO 42,000. The Registration of the domain <vincotte.org> occurred on September 14, 2004.

On January 18, 2005, the Complainant’s representative again contacted the Respondent and indicated the Complainant’s interest in acquiring the domain name. On January 19, 2005, the Respondent registered the domain name <vincotte.org>.

These facts alone are sufficient to base a finding of bad faith. When registering the domain names <vincotte.org> and <vincotte.net > Respondent was aware and conscious of the Complainants’ use of the trademark and trade name “Vincotte” and the Respondent’s willingness to find an amicable solution under which the domain name would be transferred to the Complainants for a consideration to be paid to the Respondent.

The Panel therefore has no doubt that Respondent registered the domain names <vincotte.org> and <vincotte.net> in order to prevent the Complainants from reflecting their trademarks in the corresponding domain names and to induce the Complainant to offer to purchase the domain name <vincotte.com> for a substantial sum of money (way beyond the Respondent’s out-of-pocket costs directly related to the Domain Name).

A more difficult issue for the Panel to decide is the question of whether the Respondent also registered and used the domain name <vincotte.com> in bad faith.

The Panel agrees with the Respondent that Complainants’ mark is not particularly well known and that constructive notice of a mark is not sufficient for a finding of bad faith (“constructive notice” which presumes that the existence of a trademark registration provides notice within the jurisdiction of the mark owner’s intent to dispute the infringing use is a recognized principle in some US courts, but it does not seem to be appropriate to apply this principle to UDRP disputes as domain holders do not have the resources to trademark search the entire world before registering a domain name; see Toronto Star Newspaper Ltd. v. Elad Cohen, WIPO Case No. DTV2000-0006 <tstv.tv>; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 <jackspade.com>; Alberto-Culver Company v. Pritpal Singh Channa, WIPO Case No. D2002-0757 <staticguard.com>, <staticguards.com>; Sterling Inc. v. Sterling Jewelers, Inc and Domain Traffic, WIPO Case No. D2002-0772 <jaredjewelry.com>; The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305 <sportsmenguide.com>).

However, the Panel holds the view that it is able to infer from circumstantial evidence that Respondent had actual notice and registered the domain name with the intent to sell it to the Complainant. The Panel considers the following matters to be of relevance in justifying this conclusion.

1) The Respondent and Complainant 2) are located in the same city in the USA. It therefore seems not unlikely that he has heard of the Complainant before he registered the domain name at issue;

2) It is true that the brand name/trade name used by Complainant before the registration of the domain name was AIB-Vinçotte, but it is precisely in 2004 that the company AIB-Vinçotte decided to use the trade name Vinçotte (rather than the combination “Vinçotte” and an acronym); it appears not unlikely that Respondent learned this and therefore decided to register <vincotte.com>;

3) The registration of the domain name <vincotte.com> by the Respondent on February 18, 2004, directly followed the registration of the US Trademark AV AIB Vincotte USA registration.

4) The argument that Respondent registered the domain name for developing a vanity domain name service is neither credible nor plausible; the Respondent has not provided any documentary evidence whatsoever to substantiate this assertion; “Vincotte” is not, as the Respondent tries to make the Panel believe, a common name, but rarely used not only in the US where the Respondent resides, but also in Belgium (for instance, the phone book of Brussels only lists one Vinçotte/Vincotte); the fact that there is a rather unknown Belgian painter who lived from 1604-1665, a Belgian IP Lawyer and a few other people bearing the surname “Vinçotte” is not a plausible explanation that Respondent registered the domain name <vincotte.com> with the intent to establish vanity domain name service; in fact, the Respondent neither in his email, dated September 8, 2004, nor in the subsequent correspondence and telephone conversations with the Complainant mentioned his intent to establish a vanity domain name service; rather, this argument war first put forward by the Respondent’s lawyers in their lengthy submissions to this dispute.

5) The mere fact that apart from the Belgian Painter and the IP-lawyer, Respondent has provided names of three companies and four individuals “Vincotte” by submitting a “Dialog Company Name Finder Search Report” do not strengthen the Respondent’s argument. Evidence that there are multiple other users of a mark can under certain circumstances undermine the Complainant’s assertion that the Respondent registered the corresponding domain name with the intent to deprive the Complainant from reflecting the mark in the domain name or to sell it to the Complainant; however the reference to three companies and four private individuals does not establish a sufficient third party use to refute the Complainants’ argument given the fact that the vast majority of references on the Internet for the of the name “Vincotte” relates to the Complainants.

6) Finally, the assumption of an intent to sell a domain name in bad faith is not refuted by the fact that it was the Complainant who initially addressed the Respondent and offered to purchase the domain name in order to amicably settle the dispute, if from the subsequent conduct of the Respondent and other circumstances of the case there are indications of bad faith on the part of the Respondent. Thus, in previous Panel decisions, bad faith within the meaning of paragraph 4(b)(i) of the Policy was assumed where

- the offer to sell that followed the complainant’s offer to purchase was for a price that was several times the amount offered by the complainant (See American Home Products Corporation and Genetics Institute, Inc. v. Global Productions, WIPO Case No. D2000-0456);

- pressure was used to induce the complainant to purchase the domain name (See Wembley National Stadium Limited v. Bob Thomson (aka Wembleystadium.net), WIPO Case No. D2000-1233) or

- respondent, after notice of the dispute, registered other domain names corresponding to the trademark of the complainant (See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503).

Similar circumstances exist in this case. Respondent has offered the domain name for EURO 100,000 which is clearly an extortionate amount (the SEDO appraisal evaluating the domain name as being EURO 42,000 appears dubious). Furthermore, Respondent has registered the Complainants’ trademarks under the generic Top Level Domains “.net” and “.org” immediately after Complainants had started to negotiate an amicable solution of the dispute under which the domain name would be transferred to the Complainants for a consideration to be paid to the Respondent.

For all of the foregoing reasons the Panel is satisfied that the domain names were registered and are being used in bad faith, in particular for the purpose of sale to the Complainants for valuable consideration in excess of the costs of registration. The third requirement of the Policy is satisfied.

F. Laches and Estoppel

The Respondent contends that the Complaint should be rejected on the grounds of laches or estoppel, since the Complainant did not object to the domain name <vincotte.com> until over six years after it was registered for the first time by a third party.

It has generally been held that laches or estoppel do not provide a separate defense in proceedings under the Policy, although they may sometimes be relevant in considering whether the requirements of the Policy have been satisfied (See e.g. The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616 <alberteinstein.com>; Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749 – <t-shops.net>; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 <commercialappeal.com>; Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453 <paulekacreations.com>).

This Panel concurs with the view that laches or estoppel do not provide a separate defense. However, even if laches or estoppel could provide a separate defense, the Panel considers that it is not made out in this case, in the absence of any evidence that the Respondent has, apart from the registration fees, incurred any expenditure or other detriment in reliance upon the Complainants’ acquiescence.

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 names <vincotte.com>, <vincotte.net> and <vincotte.org >, be transferred to the Complainants.

Torsten Bettinger Presiding Panelist
David E. Sorkin Panelist	Alain Strowel Panelist

Dated: August 29, 2005