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Sales Wanted, Inc. v. Michael Tate, Matthew Perlman, E-Magine Networks, Incorporated [2005] GENDND 73 (26 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bazar de l’Hotel de Ville – B.H.V. SA v. Eugene Chalov

Case No. D2004-0994

1. The Parties

Complainant is Bazar de l’Hotel de Ville - B.H.V. SA, of Paris, France, represented by Séverine Redon, APPLIMA, of Paris, France.

Respondent is Mr. Eugene Chalov, of Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name, <bhv.com> (the “Domain Name”), is registered with Go Daddy Software Inc. (the “Registrar”), of Scottsdale, U.S.A.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2004, via e-mail and on November 30, 2004, in hardcopy. The Center transmitted a request for registrar verification in connection with the Domain Name to the Registrar on November 26, 2004. On November 29, 2004, the Registrar transmitted to the Center its verification response, confirming that the Respondent was listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 1, 2004. Pursuant to the Rules, paragraph 5(a), the due date for the Response was set as per December 21, 2004. No Response has been filed by Respondent either with the Center or Complainant within that deadline.

On January 3, 2005, the Center transmitted to the Parties a Notification of Appointment of the Sole Panelist and Projected Decision Date. The Panel finds that it was properly appointed and constituted in accordance with the Policy, the Rules, and the Supplemental Rules.

4. Preliminary Issues

The FedEx shipment tracker document, as enclosed in the WIPO Case File, indicates that the hardcopy version of Complaint could not be delivered to Respondent. The same document, however, also indicates that there have been seven perfectly valid delivery attempts between December 7 to December 16, 2004, to the address of Respondent as indicated in the registered contact details by Respondent himself. This failure of delivery is thus clearly located in the sphere of responsibility of Respondent. Moreover, all e-mail correspondence between the Parties and the Center was successfully received by Respondent, as indicated by the Center’s e-mail transfer records in the Case File. Consequently, Respondent was fully aware of the commencement of administrative proceedings in connection with the Domain Name. The Center has therefore duly complied with the service of process requirements of the Policy and the Rules.

5. Factual Background

The following facts appear from the Complaint and its annexes.

Complainant is part of the well-known international group of companies Galeries Lafayette, of Paris, France. Complainant, founded in 1856, in France, was one of the first traditional department stores worldwide. Its business has grown ever since. Complainant now owns 14 stores in France and Lebanon and operates a website through which it markets its products on the Internet. The main store is still located in the center of Paris, next to city hall.

Complainant is the holder of various national and international trademarks, including BHV and BHV L’Esprit Bazar. It is also the owner of the domain names <bhv.fr> and <bhv.biz>, the former being its main business portal on the world wide web. It appears that Complainant was also the registrant of the Domain Name at issue, <bhv.com>, from its first registration on June 8, 1998 until June 2004. Visitors of the website under the Domain Name were then automatically forwarded to Complainant’s main website under the domain name <bhv.fr>.

Between April 9, 2003 and July 7, 2004, the administrative contact in the Domain Name’s registration details was, without consent of the Complainant, changed from postmaster@bhv.com to abenoit[@email address]. The latter e-mail address falsely referred to an employee and executive of Complainant, Mr. André Benoit. Using the newly created contact, abenoit[@email address] and apparently purporting Mr. Benoit’s identity, the registrar of the Domain Name was changed to the current Registrar, GoDaddy Inc., and the Domain Name subsequently transferred to Respondent, all without consent of or authorization by Complainant or its employee.

6. Parties’ Contentions

A. Complainant

Complainant contends that the Domain Name is identical or at least confusingly similar to its trademarks, that Respondent has no rights or legitimate interest in respect of the Domain Name, and that the Domain Name was registered and is being used in bad faith. Hence, Complainant requests the Domain Name be transferred.

Additional contentions, if relevant to the dispute, are included in the following discussions and findings.

B. Respondent

Respondent was duly notified in accordance with paragraph 2(a) of the Rules but failed to submit a Response of any kind. Complainant’s contentions are thus deemed unchallenged.

7. Discussions and Findings

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) That the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) That the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant alleges that the Domain Name registered by Respondent is confusingly similar, if not identical, to several of its trademarks, BHV and BHV L’Esprit Bazar in particular. The disputed Domain Name is <bhv.com>, differing only in the generic top-level domain from Complainant’s trademark BHV.

UDRP case law has established in a long series of precedents that, in determining identity or confusing similarity under the Policy, any generic top-level domain is excluded from consideration (see, e.g., Ruby’s Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868). It is therefore fairly obvious that the Domain Name is identical to Complainant’s trademark BHV.

Thus, Complainant has readily met the burden of proof as established by paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, inter alia, by showing any of the following elements:

(i) Before any notice of the dispute, Respondent’s 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 and services; or

(ii) Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant maintains that neither Complainant nor its competent executive, Mr. Benoit, have in any way permitted Respondent the use of its trademarks or authorized the transfer of the Domain Name. Complainant further holds that none of the defenses of paragraph 4(c) of the Policy apply. Accordingly, Complainant contends that Respondent has no rights or legitimate interests in the Domain Name.

Respondent, on the other hand, has not proved any rights or legitimate interests, neither of which, for that matter, is in any way conceivable to the Panel. Much more to the contrary, the obscure transfer of the Domain Name to Respondent without Complainant’s authorization demonstrates a strong indication of potentially inappropriate conduct on behalf of Respondent at the very outset of his connection to the Domain Name.

Thus, the requirements of paragraph 4(a)(ii) of the Policy are established.

C. Registered and Used in Bad Faith

Paragraph 4(b) states the following four non-exclusive circumstances which, if found present by the Panel, are deemed to provide evidence of bad faith in registering and using the Domain Name:

(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 Complainant who is the owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of its 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

(iii) By using the Domain Name, 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 Complainant’s marks as the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or its location.

Complainant presents strong evidence that the Domain Name was transferred to Respondent without its authorization, using a fabricated e-mail address and the identity of one of its executives to mislead the Registrar. Although it would, if at all possible, lead too far to evaluate the origins of this unduly conduct or to trace back the registrant of the e-mail address, abenoit[@email address], this action is a grave indication of a registration of the Domain Name in bad faith, by Respondent himself or as a beneficiary of a third party’s actions. There is after all no reason for the Panel to believe that Complainant, or one of its employees for that matter, would have transferred the Domain Name to Respondent, using a newly created e-mail address, instead of the correct administrative contact, and would now seek to regain possession by initiating legal proceedings against the very person the Domain Name has been transferred to. In completion, the inactive holding of a domain name, as done by Respondent, also demonstrates bad faith use of a domain name under the Policy, as established by UDRP case law (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Domain Name, moreover, was found to be on sale on <greatdomains.com> at an initial price of USD 15,’000, amounting to a multiple of Respondent’s expenses in connection with the Domain Name.

Although this attempt to sell the Domain Name, one might come to argue, is not completely congruent with the action specified in paragraph 4(b)(i) of the Policy, the inappropriate registration and inactive use of the Domain Name, as set out above, and in addition the attempted sale constitute more than reasonable grounds for a ruling of bad faith registration and bad faith use of the Domain Name.

Therefore, the requirements of paragraph 4(b)(i) have been met as well.

8. Decision

In light of the foregoing considerations, the Panel holds that the Domain Name is identical to the registered trademark of Complainant, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name has been registered and used in bad faith.

In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires the Domain Name <bhv.com> to be transferred to Complainant.

Bernhard F. Meyer-Hauser
Sole Panelist

Dated: January 10, 2005