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Medi Telecom SA v. ITM INC. [2005] GENDND 377 (17 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Medi Telecom SA v. ITM INC.

Case No. D2005-0128

1. The Parties

The Complainant is Medi Telecom S.A., Casablanca, Morocco, represented by M. Taieb Belkahia, its Legal Director, at the same address.

The Respondent is ITM INC., Lewes, DE in the United States of America.

2. The Domain Name and Registrar

The disputed domain name <meditelecom.com> (the “Domain Name”) is registered with Bulkregister, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2005, by email. On February 8, 2005, the Center transmitted by email to Bulkregister a request for registrar verification in connection with the domain name at issue. On February 8, 2005, Bulkregister 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 March 16, 2005, preceded by communications between the Respondent, the Center, the Registrar and the Complainant between March 8 and March 11, 2005. In accordance with the Rules, paragraph 5(a). The Respondent submitted its response on April 4, 2005, acknowledged on April 13, 2005.

The Center appointed Isabelle Leroux as the sole panelist in this matter on May 3, 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 is Medi Telecom SA, a company which is a licensed telecommunication operator in Morocco. It is defined in the Complaint as the first private telecommunication operator in this country and incorporated by a consortium of European and Moroccan companies.

The Complainant is the owner of trademark registration No 71633 in Morocco, dated November 26, 1999, for the figurative mark “Méditelecom” in connection with telecommunications services (class 38) and various apparels and devices (class 9).

5. Parties’ Contentions

A. Complainant

The Complainant has been using the corporate name “MEDI TELECOM” since its incorporation in March 30, 1999. The Complainant owns the domain name <meditelecom.ma>, under which it operates its website since 2000.

The Complainant does not submit evidence of the fame and use of its trademark “MÉDITELECOM”.

However, the Complainant shows that the registration of the domain name <meditelecom.com>was made on December 25, 1999, few weeks after its Moroccan trademark registration, which means that the Respondent was aware of the existence of such trademark when it registered the contentious domain name. It seems, according to both Whois communicated by the Complainant (Annex 1 and 5) that the Domain Name was firstly registered by M. El Hadri and transferred to ITM INC., even though no details are provided with about this in the Complaint or in the Response.

The Complainant also asserts that M. El Hadri, situated in France, who seems to be the CEO of the Respondent, proposed to sell such domain name in 2001, to the Complainant in order to make benefits. It also indicates that M. El Hadri registered the domain name <maroctelecom.com> in June 20, 1999, corresponding to the name of a major operator of telecommunications networks in Morocco.

The Complainant also mentions that the disputed Domain Name is not used for any website, even though it does not provide any evidence of such assertion (blank page, site under construction…).

Consequently, the Complainant argues that the Domain Name is confusingly similar to its “MÉDITELECOM” trademark. The Complainant also considers that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered in bad faith.

B. Respondent

Although the Respondent, an American company created in 1993, did not submit a formal Response to the Complaint, the Panel will consider the arguments made in Respondent’s email communication of April 11, 2005. Respondent argues that the Domain Name is not confusingly similar to Complainant’s trademark, since the prefix MEDI is a generic term, corresponding to the abbreviation of “MEDITERRANEAN”. The Respondent also argues that the Domain Name was not registered and used in bad faith as it never offered it for sale and never intends to offer it for sale.

The Respondent also argues that its website is not causing confusion with Complainant’s website, as its main business is in France and in the USA, and is unaware of any users that arrived at its site by mistake while trying to get to the Complainant’s site.

The Respondent also argues that the Complainant provides telecommunication services in Morocco under the name “MEDITEL” but does not use its trademark “Méditelecom”, but only the name “MEDITEL”. 

Finally, the Respondent denies to have sent any email to the Complainant and asserts that it has never proposed to sell the Domain Name.

6. Discussion and Findings

Paragraph 15 (a) of the Rules instructs the Panel as to the principles the Panel is to 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 seems applicable”.

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

(i) 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,

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

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

A. Identical or Confusingly Similar

The domain name <meditelecom.com> is confusingly similar to the Complainant’s trademark “MÉDITELECOM”. The addition of the acute accent does not modify the spelling. The Domain Name is extremely similar to the trademark in sound and meaning, despite the figurative elements of the trademark owned by the Complainant.

The presence of the “.com” generic top-level-domain in the disputed Domain Name is not a factor for purposes of determining that a disputed domain name is not confusingly similar to the mark in which the Complainant asserts rights (Telecom Personal v. namezero.com, WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).

Therefore, the Panel finds that the Complainant has proven that the Domain Name in dispute is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights and interests in a disputed domain name by showing:

(i) “before any notice to you of the dispute, your use of, or demonstrate preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service marks rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue”.

Respondent argues that it is making legitimate use of the Domain Name in that the term “medi” is an abbreviation of the Mediterranean region.

No printout proving that the Respondent does not exploit any website using the Domain Name is provided by the Complainant, even though the latter asserts that no web page appears after entering the domain name <meditelecom.com>.

Thus, the Panel has to check this point and has found a website essentially in French, offering network services and solutions to communication companies, entitled “MEDI TELECOM the operator of Mediterranea”, written in large letters at the top of the page. However, no information provided relating to the date of creation of such website using the Domain Name, which may have been set up after the Respondent received notice of the dispute.

The Complainant argues that the Respondent is not commonly known by the Domain Name and that the Respondent is not making any legitimate non-commercial or fair use of the Domain Name. The Complainant has not directly addressed the possibility that the Respondent has rights pursuant to Paragraph 4(c)(i), that is, that Respondent used the Domain Name in connection with a bona fide offering of services prior to receiving notice of the dispute. In fact, the Respondent is using the Domain Name in connection with an active commercial site.

However, given the finding by the Panel below under the third element, the Panel does not make a conclusion under this element.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out that certain circumstances may, “in particular but without limitation”, be evidence of bad faith, such as:

(i) circumstances indicating that the respondent has registered or 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 that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The Complainant suggests the possibility of bad faith pursuant to Paragraph 4(b)(i). In support of this argument, the Complainant points to email “correspondence” from Respondent, dated 2001, indicating the terms “nom de domaine meditelecom.com à céder” (meaning “domain name meditelecom.com for sale”), without any message from the Respondent, does not constitute serious evidence. It is not sufficient to show that Respondent’s primary purpose in acquiring the Domain Name was to sell it. Furthermore, since 2001, no email or other correspondence has been exchanged between the Respondent and the Complainant in order for the Respondent to extract money. The Panel does not find that the Respondent has offered the Domain Name for sale, since Annex 6 provided with by the Complainant does not indicate clear information of intent to sale from ITM INC.

The Complainant argues that the disputed Domain Name does not correspond to any active website, without offering evidences to support such assertion. However, it seems that an active website is exploited by the Respondent, but no argument is developed by the Complainant that purchasers are likely to be confused.

Furthermore, the Panel finds that the Complainant trademark is not largely used and well-known all over the world. Even its official website “meditelecom.ma” seems not to use the figurative trademark “Méditelecom” for products or services. The only elements relating to the term “meditelecom” are present in the domain name and the corporate name of the Complainant, which seems to use commonly the name MEDITEL. Therefore, the Panel does not consider that the Respondent knew the trademark of the Complainant when acquiring the Domain Name.

The Panel does not take consequences from the registration by M. El Hadri, and not the Respondent itself, of the domain name <maroctelecom.com>, since no Administrative Panel Decision has been rendered relating to this domain name until now and since it is expired since June 20, 2001, according to the Whois extract communicated by the Complainant (Annex 7). It seems to be registered now by the telecom operator Itissalat al Maghrib (Maroc Telecom), according to recent Whois extract found by the Panel.

The enumerated list of bad faith factors is not exclusive. Other circumstances can indicate bad faith. See Playboy Int’l v. SAND WebNames – For Sale, WIPO Case No. D2001-0094; General Electric Co. v. Fisher Zvieli a/k/a Zvieli Fisher, WIPO Case No. D2000-0377. However, in this case, the Complainant has not provided the Panel with any alternative bad faith evidence. Considering that the Respondent uses the term “meditelecom” in connection with a related business, this case looks less like a true case of bad faith cyberpiracy and more like a case of a legitimate trademark dispute that is better left to a competent court litigation. While the Complainant may ultimately be able to prove a case of trademark infringement or dilution in court, it has not provided enough evidence of bad faith to carry its burden to persuade the Panel by a preponderance of the evidence that bad faith registration and use has occurred.

Consequently, the Panel finds that the Complainant has failed to prove the third element required in paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Complaint is denied and the domain name <meditelecom.com> is not transferred to the Complainant.

Isabelle Leroux
Sole Panelist

Date: May 17, 2005