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BioCryst Pharmaceuticals, Inc. v. Kumar Patel [2005] GENDND 651 (4 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société pour l’œuvre et la mémoire d’Antoine de Saint Exupéry-

Succession Saint Exupéry - D’Agay v. The Holding Company

Case No. D2005-0165

1. The Parties

The Complainant is Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry- Succession Saint Exupéry - D’Agay, Agay - St-Raphaël, France, represented by Grünig & Binimelis Asociados, Spain.

The Respondent is The Holding Company, Road town, Tortola, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <antoinedesaintexupery.com>, <saint-exupery.com> and <saintexupery.com> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2005. On February 11, 2005, the Center transmitted by email to Network Solutions, LLC, the registrar for the disputed domain names, a request for registrar verification in connection with the domain names at issue. On February 16, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for the domain names <antoinedesaintexupery.com>, <saint-exupery.com>, and <saintexupery.com> providing the contact details for the administrative, billing, and technical contact. In its registration agreement the Respondent submitted to the jurisdiction at the location of the principal office of the Registrar for court adjudication of dispute arising from the use of the domain names. 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 February 21, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2005, which was extended to March 31, 2005 by the Center. The Response was filed with the Center on March 31, 2005.

The Center appointed Daniel J. Gervais, Jacques A. Léger and Frederick M. Abbott as panelists in this matter on May 4, 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.

On April 27, 2005, the Complainant filed a Request for an additional submission of arguments and reply to the Response. On May 17, 2005, the Panel issued an Order allowing the Reply, requesting that it be forwarded forthwith to the Respondent and inviting the Respondent to respond to the Reply by May 24, 2005. At the Respondent’s request, the date was changed to May 31, 2005. On May 28, 2005, the Respondent filed a Response to the Reply. In it, the Respondent opposed the admission of the Reply into the Record and offered new arguments in reply to the facts and arguments contained in the Reply.

4. Factual Background

The Complainant is the “Société civile pour l’œuvre et la mémoire D’Antoine de Saint Exupery-Succession Saint Exupery-D’Agay”, which purports to represent Antoine de Saint Exupéry, the famous French author and pilot. The Complainant is authorized by the successors of Saint Exupery to be the sole owner and the manager of the intellectual property rights in Saint Exupery’s work, as well as intellectual property rights related to the writer’s work, life and his name. The Complainant maintains an Internet website located at “www.saint-exupery.org”.

The Complainant is the owner of the French registered trademark ANTOINE DE SAINT EXUPERY, as well as International Trademark ANTOINE DE SAINT EXUPERY in the Austria, Belgium, Luxemburg, Switzerland, Germany, Spain, Italy, Liechtenstein and Portugal.

The Respondent operates a website currently dedicated to the work of Antoine de Saint Exupery using the disputed domain name <saint-exupery.com>, where he provides information about Antoine de Saint Exupery, as well as offers links to commercial websites that sell various merchandise, including the books, related to Antoine de Saint Exupery.

The website has been in operation since 2002.

5. Parties’ Contentions

A. Complainant

The disputed domain names are either virtually identical to or confusingly similar with the Complainant’s registered mark ANTOINE DE SAINT EXUPERY.

The Respondent has no rights or legitimate interests in the domain names. The Respondent has wrongfully incorporated into his domain names a mark uniquely associated with the Complainant. The Respondent is not known or identified by the name Antoine de Saint Exupéry, nor is he affiliated or connected in any way with the Complainant. The Respondent is not making a legitimate noncommercial or fair use of the domain name. The Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized by the Complainant to use the Complainant’s marks.

The domain names have been registered and are being used in bad faith.

The Respondent has registered and used the domain name with full knowledge of the rights of the Complainant in and to the ANTOINE DE SAINT EXUPERY mark.

The Respondent conducts commercial activity on its website.

The Respondent has registered the disputed domain names in order to prevent Complainant, as the owner of the ANTOINE DE SAINT EXUPERY mark, from reflecting its mark in the corresponding domain names.

The Respondent is using the domain names in an intentional intent to attract, purely for commercial gain, Internet users to Respondent’s websites to try to sell these visitors products and services connected to the author or commercial services of any kind.

The Complainant sent a cease and desist letter to the Respondent and obtained a certified report by a French bailiff (“constat d’huissier”) to show what the Respondent’s website looked like in 2002, and showing significant changes since then.

B. Respondent

The Complainant should not be party to this proceeding because it does not have rights in the mark. The Complainant challenges the effect of the Complainant’s mark in the British Virgin Islands, the location of the Respondent, because the Complainant’s mark ANTOINE DE SAINT EXUPERY has been registered in France and has not been registered in British Virgin Islands. Furthermore, the Complainant claims that the name ANTOINE DE SAINT EXUPERY can not be subject to trademark protection, especially because the author is deceased, and the names of deceased persons can not be subject to trademark protection. Respondent has legitimate rights and interest in the domain names <saintexupery.com>, <saint-exupery.com> and <antoinedesaintexupery.com>, because he is using these domain names to offer tribute to Antoine de Saint-Exupéry’s works and life.

The Respondent has permission to make use of the name Antoine de Saint-Exupéry by its legal affiliation with Amazon.com, Art.com, AllPosters.com, and BarnesAndNoble.com for the authorized sale and representation of Antoine de Saint-Exupéry books, films, recorded music, posters and any other items related to the author or his work. The Respondent has not prevented the Claimant from using its mark in the disputed domains, because the Complainant has already registered and is using the following domain names <saint-exupery.org>, <saintexupery.net>, <saintexupery.org>, <antoinedesaintexupery.net>, and <antoinedesaintexupery.org>. In fact, the Respondent is just one of many fan/tribute websites to life and work of Antoine de Saint-Exupéry.

The Respondent’s is not using the disputed domain names in bad faith. The merchandise which can be bought via the links on the Respondent’s website is legitimate and has been produced with the permission from copyright owners, and the sale of such merchandise generate royalties and other incomes for Complainant, heirs and/or the estate of Antoine de Saint-Exupéry and other rightful holders of his works. The Respondent is not misleading the public, because his website features a disclaimer that distinguished the Respondent from the Complainant. The Respondent is not using the domain name in bad faith, because there is no valid trademark in British Virgin Islands, and the Respondent did not know of or could not have know of complainant and/or the trademark rights at the time of registration of the disputed domain names.

The Respondent is not using the Complainants mark as a trademark. The website operated by Respondent may have changed since 2002, but its essential elements have remained the same. The Respondent received neither the Complainant’s cease-and-desist letter nor a copy of the bailiff’s report.

6. Preliminary Procedural Issues

The Panel must discuss first the procedural issue of Complainant’s request to file additional submission, submitted on April 27, 2005, in which it asked the Panel to permit additional submissions because they challenge a number of facts raised by the Respondent in its Response.

The Complainant concedes that additional submissions are admissible only when the Response raises facts that the Complainant could not have been expected to address in the Complaint. The Complainant relied on Plaza Operating Partners, Ltd., supra; Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000); Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 (June 29, 2000); Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (September 19, 2000); Electronic Commerce Media, Inc. v. Taos Mountain, File No. FA0008000095344 (NAF October 11, 2000); Parfums Christian Dior S.A., supra; Viz Communications, Inc. v. Redsun, WIPO Case No. D2000-0905 (December 22, 2000).

There are two issues with respect to this supplemental filing. First, whether and under what circumstances the Rules permit such a filing and, second, if the Rules do allow the filing, whether the applicable conditions, if any, are met in this case.

With respect to the first issue, the Rules provide for the submission of a Complaint by the Complainant (paragraph 3 of the Rules) and a Response by the Respondent (paragraph 5 of the Rules). Paragraph 12 of the Rules provides that “[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”. The Rules are, therefore, silent with respect to unsolicited supplemental and additional filing and evidence.

As the panel in Ravissant Limited. v. Vama Inc., Mehul Kotecha, WIPO Case No. D2003-0747 noted: “no party has the right to insist upon the admissibility of additional evidence.” Based on the lack of explicit reference to additional unsolicited filings in the Rules, numerous Panels in the past refused to consider supplemental filings, additional evidence and amendments to the Complaint. See, inter alia, Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; PepsiCo, Inc. v. “The Holy See”, WIPO Case No. D2003-0229; Deutsche Post AG v. MailMij LLC, WIPO Case No. D2003-0128; Kirkbi AG v. Michele Dinoia, WIPO Case No. D2003-0038; Helsingin yliopiston ylioppilaskunta and HYY Group Ltd v. Paul Jones, WIPO Case No. D2002-1164; Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635; Victor Chandler Limited and International Sports Marketing Limited v. Thierry Leray, WIPO Case No. D2002-0624; VISIVA S.r.l. v. VISIVA di Rocca Sergio, WIPO Case No. D2001-1130; AT&T Corp. v. Randy Thompson, WIPO Case No. D2001-0830; Avanade Inc. v. Robert Tansey, WIPO Case No. D2001-0824; Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No. D2001-0398; Telstra Corporation Limited v. Heaydon Enterprises, WIPO Case No. D2000-1672; Goldline International, Inc. v. Gold Line, WIPO Case D2000-1151; Parfums Christian Dior S.A. v. Jadore, WIPO Case D2000-0938; Viz Communications, Inc. v. Redsun dba www.animerica.com and David Penava, WIPO Case D2000-0905; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case D2000-0662; AT&T Corp. v. WorldclassMedia.com, WIPO case Case No. D2000-0553; Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO case D2000-0416; Plaza Operating Partners, Ltd.; Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case D2000-0270; Easyjet Airline Company Ltd v. Andrew Steggles, WIPO Case No. D2000-0024).

Several Panels have accepted supplemental filings based on the particular circumstances of the case, as well as the quality and importance of the supplemental filings and evidence. (See e.g., Wollongong City Council v. Viva La Gong, WIPO Case No. D2003-0113; SES Astra S.A. v. Design Technology Ltd. (t/a Transcom ISP), WIPO Case No. D2002-1078; Nabor B.V. Stanhome S.P.A., v. Organization Francisco Vicente, WIPO Case No. D2000-0757; HER MAJESTY THE QUEEN, in right of her Government in New Zealand, as Trustee for the Citizens, Organizations and State of New Zealand, acting by and through the Honourable Jim Sutton, the Associate Minister of Foreign Affairs and Trade v. Virtual Countries, Inc, WIPO Case No. D2002-0754).

In this Panel’s view, the circumstances of the current case reach the required level because the additional filing challenges the factual credibility of statements made by the Respondent, and therefore call for a permission to submit supplemental filings which provide relevant additional factual information, not legal arguments. Therefore, on May 17, 2005, the Panel issued Procedural Order No. 1 allowing the additional filing by the Complainant. Because of due process considerations, as presented in paragraph 10(b)) of the Rules: “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”, in its Procedural order the Panel invited the Respondent to file a Response to the additional filing by the Complainant. See Delikomat Betriebsverpflegung G.m.b.H. v. Alexander Lehner WIPO Case No. D2001-1447, AutoNation Holding Corp. v. Rabea Alawneh WIPO case No. D2002-0058 and De Dietrich Process Systems v. Kemtron Ireland Ltd. WIPO case No. D2003-0484.

7. Discussion and Findings

This case raises the question whether the owner of a trademark consisting of the name of a deceased person can obtain the transfer of a domain name registered by a third party to operate a “fan site” concerning the deceased person. Contrary to “pure” fan sites, the site at issue in this case provides biographic and other data but also operates with the for-profit intent of linking Internet users with ecommerce sites selling products by or about the deceased person (French writer Antoine de Saint-Exupéry).

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 7.1);

2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 7.2); and

3. The domain name has been registered and is being used in bad faith (see below, section 7.3).

Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.

7.1 Is the domain name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?

This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.

As to the first question, the record confirms that the Complainant owns the registered trademark ANTOINE DE SAINT EXUPERY in France, Austria, Belgium, Luxembourg, Switzerland, Germany, Spain, Italy, Liechtenstein and Portugal predating the registration of the domain names (as early as 1992). The Respondent challenged the Complainant’s rights in the mark, based on the fact that the mark is not registered in the British Virgin Island, where the Respondent resides. For the purpose of the Policy, the location of the registered mark is not relevant for purposes of establishing rights in a trademark. Complainant is an owner of a valid trademark.1 The Panel finds that the Complainant has rights in the mark ANTOINE DE SAINT EXUPERY.

The Respondent has also challenged the validity of the Complainant’s mark based on the fact that personal names, and personal names of deceased persons in particular, can not be protected by trademark. That challenge must fail because the Complainant owns registered trademark for ANTOINE DE SAINT EXUPERY. It is not for this Panel to discuss the differences between various national trademark practices. It may be useful to note, however, that in many national laws it is in fact easier to register the name of a deceased person (except recently deceased) as a trademark than the name of a living person.

As to the second question, the Panel finds that the domain name <antoinedesaintexupery.com> is identical to the Complainant’s mark, while the domain names <saint-exupery.com> and <saintexupery.com> are confusingly similar to the Complainant’s mark. The domain name <antoinedesaintexupery.com> fully incorporates the Complainant’s mark and is therefore identical to the Complainant’s mark. The domain names <saint-exupery.com> and <saintexupery.com> consist of the words “saint exupery”, which are the abbreviation of the Complainant’s mark ANTOINE DE SAINT EXUPERY, and are therefore confusingly similar to the Complainant’s mark. See, e.g., Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656.

7.2 Does the Respondent Have Rights or Legitimate Interests in the domain name?

The Complainant submits that the Respondent has no rights or legitimate interests in the domain names based on Complainant’s right in the mark ANTOINE DE SAINT EXUPERY. The Respondent contends that he has rights and legitimate interests to use the disputed domains because he offers a tribute site to the life and work of Antoine de Saint-Exupéry, and because he is using the domain names for a bona fide offering of goods or services through his affiliation with distributors of Antoine de Saint-Exupéry’s writings and related merchandise.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

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

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you [Respondent] 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 trade mark or service mark at issue.”

Bona Fide Offering of Goods and Services

First, it is clear that the link between Amazon.com and the Respondent does not create a legitimate interest of any kind. The contract between Amazon and associates specifically disclaims the establishment of this type of link.

Second, resellers of trademarked goods were found in some circumstances to have legitimate interest in the domain names that incorporate trademarks. In this case the Respondent is not a reseller, but links to authorized resellers who pay him a commission. He is not, however, an agent of those resellers. This does not constitute a bona fide offering in light of previous interpretations of the Policy.2

There are no elements showing that the Respondent is or was commonly known by the domain name.

Legitimate Non-Commercial Use

By operating a “fan site”, the Respondent might arguably be making legitimate use of the domain names. Here, however, Respondent is operating a commercial site, which defeats any argument on this point based on the language of the Policy.3

In addition, the Respondent’s use of the domain name is not a “nominative fair use” because he is using the mark in order to make the first sale to the public, which is the primary interest of the trademark holder. The Respondent does not need to use the Complainant’s mark in the domain name to operate a business. The Respondent can easily establish a fan site and achieve the same goal - if that is the goal - by using a domain name that does not infringe the Complainant’s rights. As the site now stands, the Respondent is not only using the disputed domain names to describe the goods it sells. The mark is being used in the domain names to attract consumers.

The facts are distinguishable from, for example, 2001 White Castle Way, Inc. v. Glyn O. Jacobs, WIPO Case No. D2004-0001 (<patbenatar.com>), in which the Respondent had the implicit consent of the Complainant to operate his fan website and in which there was no evidence of a commercial link to recommended CD vendors.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

7.3 Was the domain name Registered and Used in Bad Faith?

The Panel’s understanding of the Policy is that, although the initial burden to prove Respondent’s bad faith in the registration and the use of the disputed domain name lies squarely on the shoulders of the Complainant, once a case of bad faith has been made by the Complainant, it is up to the Respondent to either justify its conduct, explain it, or demonstrate satisfactorily the contrary. See, to this effect: The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez (WIPO Case No: D2002-0823); AT&T Corp. v. Linux Security Systems (WIPO Case No. DRO2002-0002).

Bearing in mind the above comment, in its consideration of the evidence adduced by the Parties, the Panel then turned to paragraph 4(b) of the Policy which sets out four circumstances which, without limitation, constitute evidence of registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or

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

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

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

There is no evidence as to subparagraphs 4(b)(i) or (iii). In the latter case, it must be borne in mind that the Complainant’s “business” is the management of intellectual property rather than the actual sale of items related to the life and work of Antoine de Saint-Exupéry. As to (ii) there is no evidence that the Respondent engaged in such “pattern” of conduct.

Of the four cases of bad faith expressly mentioned in the Policy, the Panel must then consider subparagraph 4(b)(iv).

- commercial gain

Commercial intent was established (see under “Legitimate Interest”, above). This leaves the question whether the Respondent had the intention to attract Internet users to his website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

- likelihood of confusion

No case of actual confusion was brought to the Panel’s attention. That said, the Policy requires only a likelihood of confusion. Is there such a likelihood of confusion in the instant case?

The current website operated by the Respondent features the following disclaimer:

“This website is privately owned and maintained and in no way affiliated with Antoine de Saint-Exupéry and/or his representatives, nor is it implied to be or should be interpreted as such. His representatives cannot be reached through this site and we cannot forward messages to them. This website is an unofficial tribute/fan site and has been created solely for entertainment purposes. Use of copyrighted images and information is covered under the fair use section of the Copyright Law. This website is not responsible for any content, off this site, to which it links. This website and its contents do not constitute official information. Although the information is believed to be accurate when presented, this site is under constant revision, and no warranty of any kind (including accuracy, completeness, reliability, or otherwise) is made or implied. The website registrant will not be responsible for any damages of any nature resulting from use of or reliance upon the information provided herein.”

An Internet user looking for the products of Complainant using a conventional search engine will find Respondent’s website addresses incorporating Complainant’s mark (in the disputed domain names). An average Internet user is likely to assume that a website identified by Complainant’s mark is operated by or on behalf of Complainant, and will visit that site. This establishes initial interest confusion with respect to the consumer. Respondent will have accomplished much of its purpose in using Complainant’s mark by initially drawing consumers to its website.

A disclaimer may help to dispel confusion once the Internet user has reached the website, but it is very difficult to cure the problem created as to Complainant. Complainant may not recover the interest of the consumer. For this reason, the Panel is not inclined to place great weight on the introduction of the disclaimer.

While the disclaimer may be taken into account, it does not cure the likelihood of confusion, especially if other elements were established--in fact, the disclaimer itself actually proves the knowledge of the Complainant’s mark.4 In addition, there is evidence that the disclaimer was added after the Respondent received a notice from the Complainant. It is well established that administrative panels may consider bad faith (again, as this term is defined in the Policy) at any time after the registration of a disputed domain name.

The Respondent rightly points out that the “look and feel” of the Complainant’s and Respondent’s websites are quite distinct. However, many Internet users may not have the opportunity to “compare” the two sites. What matters is whether an average Internet user who, presumably while looking for information about or books by Antoine de Saint-Exupéry, is directed to the Respondent’s page is likely to think the page is sponsored by or affiliated with a foundation representing the writer’s interests.

In terms of confusing the public, in the Fondation Le Corbusier v. Mercado M. (WIPO Case No. D2004-0723), the Panel found in similar circumstances that established that there is a confusion even if the websites have a different look. The Panel concluded as follows:

“…the Respondent should have realized that the name Le Corbusier was an asset in which she had no rights. Given Complainant’s fame, Respondents interest in Le Corbusier, and the failure of the Respondent when registering the domain name to check if there were any third party trademark rights, the Panelist therefore concludes that the Respondent has registered the Domain Name in bad faith.

To demonstrate that the Respondent has not only registered the Domain Name in bad faith, but is also using it in bad faith, the Complainant puts forward the following arguments. The Complainant repeats that the Respondent claims to operate ‘the official Le Corbusier website’ and infringes its copyright. […]

…the Panelist does, however, agree with the Complainant that the use of the Domain Name for the website may give the general public the impression that it is a ‘official website’ and for a commercial purpose constitutes use in bad faith.”

Both parties insisted on that case. The Complainant noted the many similarities with the present case. The Respondent noted that in the Le Corbusier case, the Panel stated that the “Respondent’s website [was presented as] as ‘the official website’, creating confusion with the Complainant’s domain names and using the name Le Corbusier as a pretence”.

The question that remains is whether an average Internet user is likely to get the impression of sponsorship or affiliation in the presence of a disclaimer (which may have been added only after the Complainant notified the Respondent). In the Panel’s view, that likelihood exists. The “Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site” (Paragraph 4(b)(iv)). That constitutes bad faith registration and use under the Policy.

Put differently, the Respondent is using a valid, registered trademark (the Respondent’s arguments that the name of famous deceased persons should not be protected as trademarks are not relevant in this context) in a commercial context, i.e., with the intent to generate commissions on sales of books and other memorabilia concerning Antoine de Saint-Exupéry. That does not constitute bona fide use.

The Panel thus finds for the Complainant on the third part of the test.

8. 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 <antoinedesaintexupery.com>, <saint-exupery.com> and <saintexupery.com>, be transferred to the Complainant.

Daniel J. Gervais
Presiding Panelist

Jacques A. Léger
Panelist

Frederick M. Abbott
Panelist

Dated: June 9, 2005

1 See Section 1.1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.

2 See WIPO Opinion Guide at “http://arbiter.wipo.int/domains/search/overview/index.html#25”.

3 See Id.

4 WIPO Guide (“http://arbiter.wipo.int/domains/search/overview/index.html#35”).