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Société des Eaux de Volvic v. Volvic Village [2005] GENDND 30 (25 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Eaux de Volvic v. Volvic Village

Case No. D2004-1015

1. The Parties

The Complainant is Société des Eaux de Volvic, Volvic, France, represented by Cabinet Plasseraud, France.

The Respondent is Volvic Village, C/O Katsushi Okabayashi, Tokorozawa, Saitama, Japan.

2. The Domain Name and Registrar

The disputed domain name is registered with Spot Domain LLC d/b/a DomainSite.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2004. On December 3, 2004, the Center transmitted by email to DomainSite.com a request for registrar verification in connection with the domain name at issue. On December 6, 2004, DomainSite.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. 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 December 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2004. The Respondent didnot submit any formalresponse, only two short, informalemail communications of December 27, 2004 and January 3, 2005.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on January 7, 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 non-contested facts are as follows.

The Complainant is in the business of manufacturing and distributing mineral water. Its business originated in the area of Volvic, a French town in the Auvergne region. The Complainant has traded under the name VOLVIC since 1938 in France, and throughout the world since. The name VOLVIC has become well known in France and internationally through that use and is now synonymous with the Complainant.

The annual turnover (in thousands of Euros) generated through use of the mark VOLVIC during the past five years in Japan and throughout the world is as follows:

The annual advertising expenditure (again in thousands of Euros) relating to the mark VOLVIC during the past five years is as follows:

The Complainant is the proprietor of a vast international portfolio of trademark registrations consisting of or containing the word VOLVIC, including simply as example :

- French trade mark 1 459 126, first registered July 20, 1963, for the word mark VOLVIC in relevant classes;

- Japanese trade mark 2 087 655, first registered March 16, 1985, for the word mark VOLVIC in a relevant class.

The Complainant has registered and operates a number of websites with the name VOLVIC in the url including “www.volvic.co.jp”.

The Respondent registered the <volvic.name> on May 26, 2004.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the disputed domain name is strictly identical to the trademark VOLVIC in which it has rights.

Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name. From the information available, it appears that no commercial use has been made of the domain name. The Respondent clearly has no intention to use it, says the Complainant.

The Respondent has not registered nor applied to register any trademark consisting of or containing the trademark VOLVIC in Japan. The Respondent is not in position to show any trade mark rights in the term Volvic or Volvic Village (the registrant organisation name) as either company or trading names, nor any commercial uses thereof. The Complainant therefore contends that the Respondent cannot claim to be commonly known by the domain name.

The Complainant make additional claims under this head which the Panel regards as more pertinent to the issue of bad faith and so they are detailed below

Registered and Used in Bad Faith

Registration in bad faith

The Complainant alleges that the domain name was registered in bad faith.

Prior to filing of this Complaint, a cease and desist letter was sent to the Respondent. Amongst other things, it demanded voluntary transfer of the disputed name. The eliptically worded reply by the Respondent was “Malice is not in us. Volvic is the name of a place. Is it ready to discuss on the assumption that reconciliation here”.

The demand letter refers to an earlier UDRP decision decided in the Complainant’s favour, Societe Des Eaux De Volvic v. Yasushi Okabayashi WIPO Case No D2004-0304, in which it was decided that the respondent in that case transfer to the Complainant the disputed names <volvic.biz>,<volvic.org>, <volvics.net> and <volvics.com>.

The Complainant argues that since that case was decided adversely to the respondent, and since it is transparent that the Respondent here and the earlier party are somehow closely connected, the disputed domain name was registered in bad faith.

Use in bad faith

The Complainant alleges that the concept of “using in bad faith” is not limited to making actual use of a domain name , but extends to passive “holding” of an offending registration. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Guerlain SA v. Peikang, WIPO Case No. D2000-0055.

Since it is argued that the Respondent has no intention to use the domain name, it must be surmised that it intends to either sell the name for profit, either back to the Complainant, at some point in the future, or to a third party.

The Complainant maintains that the only alternative is that at some point in the future the Respondent will make commercial use of the name with the intention of attracting, for commercial gain, Internet users to the corresponding website or other online location by creating a likelihood of confusion with the Complainant’s earlier trade mark as to the source, sponsorship, affiliation or endorsement of the website, or location, or of a product or service on the Respondent’s website or location.

B. Respondent

As mentioned above, the Respondent did not submit a formal response to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

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

It is the responsibility of the Panel to consider whether these requirements have been met, regardless of the fact the Respondent failed to submit a reply.

A. Identical or Confusingly Similar

The Panel holds that the disputed domain name <volvic.name> is identical to the trademark VOLVIC. It is a well respected principle by numerous earlier panels that domain name suffixes are disregarded when making this comparison.

Moreover, the Complainant has shown itself to have registered and unregistered or common law rights in the VOLVIC name which substantially pre-date the registration date of the disputed domain name.

For these reasons, the Panel finds without hesitation that the Complainant has satisfied Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

From the information available, it appears that no commercial use has been made of the domain name. If one visits the domain name there is a message stating “Welcome to volvic.name. This is the future home of volvic.name. Please come back soon. In the mean time register your very own name with DomainSite.com, Inc”. Clearly this message is posted by Spot Domain LLC to encourage its business and is not an expression of the Respondent’s intentions.

A trade mark search shows that the Respondent has not registered nor applied to register any trade mark consisting of or containing the trade mark VOLVIC in Japan.

By failing to file a response, the Respondent has not shown any trade mark rights in the term VOLVIC nor any commercial or non commercial use thereof and cannot therefore claim to be commonly known by the domain name. There is no evidence that the Respondent trades or in any way carries on business under the name Volvic Village.

For these reasons, and in the absence of contrary evidence, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has so satisfied Paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

The Panel has no difficulty in finding that the Respondent registered the name <volvic.name> in full knowledge that the Complainant owned earlier trade mark rights in the identical well known trade mark VOLVIC. Moreover, it did so in the face of an earlier adverse administrative proceeding against a clearly related party which ordered the transfer of other identical or near identical domains. The Panel decides the registration was made in bad faith.

The Panel agrees with the Complainant that the concept of “using in bad faith” is not limited to making actual use, but also extends to passively “holding” a domain name registration. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Guerlain SA v. Peikang, WIPO Case No. D2000-0055.

As the Respondent has not demonstrated intention to use the name, it might be surmised, as the Complainant argues, that it intends to either sell the name for profit, either back to the Complainant, at some point in the future, or to a third party. The Respondent’s allusion to “a reconciliation” is perhaps indicative of that threat.

The Complainant argues that the only other alternative is that at some point in the future the Respondent will make commercial use of the domain name with the intention of attracting, for commercial gain, Internet users to the corresponding website or other online location by creating a likelihood of confusion with the Complainant’s earlier trade mark as to the source, sponsorship, affiliation or endorsement of the website, or location, or of a product or service on the Respondent’s website or location. If that were the case, the Panel endorses the views expressed in the Telstra case (supra) to the effect that it is inconceivable to think of ways in which the Respondent might use the name which did not result in a breach of the Complainant’s intellectual property rights.

As to the Respondent’s arguments in the two email communications of December 27, 2004 and January 3, 2005, they support, if anything, the view that the Respondent had prior knowledge of the Complainant and its products when he registered the disputed domain name.

Accordingly, the Panel holds that the domain name was registered and used in bad faith and that Paragraph 4(a)(iii) of the Policy is satisfied.

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, <volvic.name> be transferred to the Complainant.

Debrett G. Lyons
Sole Panelist

Date: January 25, 2005