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Outils Rubis Ltd. v. NETPLUS Communication [2005] GENDND 1485 (2 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Outils Rubis Ltd. v. NETPLUS Communication

Case No. D2005-0645

1. The Parties

The Complainant is Outils Rubis Ltd., Stabio, Switzerland, represented by VISCHER, Switzerland.

The Respondent is NETPLUS Communication, Issy les Moulineaux, France, represented by BLOCH & Associés, France.

2. The Domain Name and Registrar

The disputed domain name <rubis.com> is registered with Gandi SARL.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2005. On June 22, 2005, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the domain name at issue. On June 22, 2005, Gandi SARL 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 June 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2005. The Response was filed with the Center on July 13, 2005.

The Center appointed Geert Glas as the sole panelist in this matter on July 19, 2005. 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

The Complainant, Outils Rubis Ltd., is a producer of industrial and cosmetic tweezers in Switzerland. The Complainant supplies its tweezers worldwide to companies dealing in electronics, computers, aviation, telecommunications, biotechnology and research laboratories.

The Complainant commercializes its tweezers under the sign RUBIS, on which it owns the following trademarks:

- the Swiss trademark nr. 382457 of April 10, 1991; and

- the international trademark nr. 569814 of April 10, 1991.

The Respondent, Netplus Communications, is a company specialising in internet-related services, such as web hosting and the creation of websites.

On February 4, 1997, the Respondent registered the disputed domain name <rubis.com>. This domain name has not been used since its registration, although it does appear that the Respondent was contemplating the use of the word RUBIS for its web hosting activities around the time of the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name, <rubis.com>, as it asserts that the three cumulative requirements of paragraph 4(a) of the Policy have been satisfied:

1. the disputed domain name, <rubis.com>, is identical to the Complainant’s above-mentioned trademarks on the RUBIS sign, as well as confusingly similar to its company name Outils Rubis Ltd;

2. the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly given that the Respondent has not used the disputed domain name since its registration; and

3. the Respondent uses the disputed domain name in bad faith, given that the Complainant informed the Respondent by letter dated May 13, 2005, of its rights regarding the RUBIS trademark and the company name Outils Rubis Ltd.

B. Respondent

In its Response dated July 13, 2005, the Respondent only addresses the Complainant’s assertions concerning bad faith.

The Respondent first asserts that the Complainant has not satisfied its burden of proof concerning the bad faith of the Respondent. The Respondent claims that at the moment of the registration of the disputed domain name, it did not have any knowledge of the Complainant’s trademark rights, as:

1. it was not advised by anyone of the existence of the Complainant’s trademark rights (in particular, the Complainant only sent its letter informing the Respondent of its trademark rights on the sign RUBIS eight years after the registration of the disputed domain name); and

2. the Complainant’s trademarks are not well-known (particularly given that the Respondent and the Complainant are active in different sectors).

The Respondent asserts that it registered the disputed domain name, <rubis.com>, as the French word “RUBIS” (meaning “ruby”) evokes beauty and luxury.

The Respondent further stresses that it has never attempted to sell the disputed domain name to the Complainant.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel on the principles the Panel must use in determining the dispute:

“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy states that, for a complaint to be granted, the Complainant must prove each of the following:

- that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

- that the Respondent has no rights or no legitimate interests in respect of the domain name; and

- that the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to prove that the disputed domain name “is identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

The Complainant asserts that it owns the following trademark rights on the sign RUBIS:

- the Swiss trademark nr. 382457 of April 10, 1991; and

- the international trademark nr. 569814 of April 10, 1991.

The Respondent does not challenge these trademark rights in its Response dated July 13, 2005.

The Panel furthermore finds that the sign RUBIS is identical to the disputed domain name rubis.com. It is well established in UDRP case law that the addition of the generic top-level domain name “.com” is irrelevant when determining whether a disputed domain name is identical to a trademark (see amongst others WIPO Case No. D2004-0310, Microsoft Corporation v. N.R. Vinod, VinSoft).

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has “no rights or legitimate interests in respect of the domain name”.

The Complainant asserts that the Respondent is not holding any rights or legitimate interests in the disputed domain name. The Complainant asserts that this is demonstrated by, amongst other things, the fact that the Respondent has never used the disputed domain name.

As it is often impossible for the Complainant to prove a negative, i.e. that the Respondent has no rights or legitimate interests in the disputed domain name, UDRP case law has consistently held that the Complainant must only demonstrate prima facie that no rights or legitimate interests are present, whereupon the burden of proof shifts to the Respondent (see amongst others, WIPO Case No. D2003-0455, Croatia Airlines d.d. v. Modern Empire Internet Ltd. and WIPO Case No. D2004-0110, Belupo d.d. v. WACHEM d.o.o.).

The Panel finds that the Complainant has satisfied its prima facie burden of proof.

As in its Response dated July 13, 2005, the Respondent did not refer to any circumstances giving rise to rights to or legitimate interests in the disputed domain name, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the disputed domain name “has been registered and is being used in bad faith”.

The use of the word “and” implies that the Policy requires the Complainant to prove bad faith in both (i) the use and (ii) the registration of the disputed domain name (see amongst others WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows and WIPO Case No. D2003-0453, Paule Ka v. Paula Korenek).

In its Complaint dated June 21, 2005, the Complainant only asserts that the Respondent uses the disputed domain name in bad faith. The Complainant in particular asserts that the Respondent’s failure to react to its letter of May 13 2005, (in which it requested the transfer of the disputed domain name) constitutes bad faith in the use of the disputed domain name.

Although this may well be true, the Complainant has nonetheless failed to provide any evidence concerning the registration in bad faith of the disputed domain name. The Complainant therefore fails to meet its burden of proof concerning the bad faith of the Respondent, as there is no clear evidence indicating that the Respondent had the Complainant and its trademark in mind when the Respondent registered the disputed domain name in 1997.

In a similar case, the Panel found that the bad faith requirement had not been satisfied, considering that “even though the Panel finds that the Respondent’s continued maintenance of the domain name [despite various letters from the Complainant to the Respondent requesting the transfer of the disputed domain name] constitutes use in bad faith, the Panel cannot find that the Respondent registered the domain name in bad faith within the narrow meaning and confines of the Policy as adopted” (WIPO Case No. D2000-0756, Miele, Inc. v. Absolute Air Cleaners and Purifiers).

Likewise, in another similar case, the Panel held that “because Complainant has not presented any evidence to suggest that when the domain name was originally registered it was done so in bad faith […], Complainant has not satisfied its burden of showing bad faith registration. If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith” (see WIPO Case No. D2001-0782, Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI); see also WIPO Case No. D2000-0026, Teradyne Inc.Teradyne, Inc. v. 4tel Technology and WIPO Case No. D2000-0005, Telaxis Communications Corp. v. William E. Minkle).

The Panel would also like to add that the descriptive meaning of the disputed domain name (the word “Rubis” has different meanings in French, including “Ruby”) may suggest that the Respondent did not target the Complainant when the Respondent registered the domain name, but rather that the Respondent arrived at its choice of the domain name independently.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has not been satisfied.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Geert Glas
Sole Panelist