WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Redcats S.A. And La Redoute S.A. v. Tumay Asena
Case No. D2001-0859
1. The Parties
The first Complainant in this administrative proceeding is LA REDOUTE S.A., a French Société Anonyme, registered at the Court of Commerce of Roubaix Tourcoing under n� B 477 180, under the laws of France, with its headquarter at 57, rue de Blanchemaille, 59100 Roubaix, France. Second Complainant is REDCATS S.A., a French Société Anonyme, registered at the Court of Commerce of Roubaix Tourcoing under n� B 321 164, under the laws of France, with its headquarter at 110, rue de Blanchemaille, 59100 Roubaix, France. Both complainants are hereinafter jointly referred to as "Complainant" (singular). Complainant's authorized representative is Mr. André Bertrand, Avocat à la Cour, 26 rue Vignon, 75009 Paris, France.
According to the Registrar's WHOIS database, the Respondent is Tumay Asena ("Respondent"), Gelincik Sok. 11/2, Kavaklidere, Ankara, TR 06690, Turkey.
2. The Domain Name and Registrar
The domain name at issue is ("Domain Name"), registered with DotR ("Registrar"), a division of iH Inc., of 13205 SW 137th Ave, Suite #133, Miami, FL 33186, USA.
3. Procedural History
A complaint ("Complaint"), pursuant to the Uniform Domain Name Dispute Resolution Policy, implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy, implemented by ICANN on the same date ("Rules"), was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on July 6, 2001, in hardcopy and was received on July 13, 2001, by e-mail.
The Acknowledgement of Receipt of Complaint was submitted to the Complainant by the WIPO Center on July 12, 2001. On the same day, a Request for Registrar Verification was transmitted to the Registrar, which confirmed with its Verification Response that the disputed Domain Name was registered with DotR and that Respondent, Tumay Asena, was the current registrant of the Domain Name. The reply also contained contact information for the Respondent.
The assigned WIPO Center Case Manager completed a Formal Requirements Compliance Checklist on July 16, 2001, without recording any formal deficiencies.
No formal deficiencies having been recorded, a Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification") was transmitted to the Respondent on July 16, 2001, setting a deadline as to August 4, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification and Complaint was transmitted to postmaster@ and tasena@ (administrative and technical contact). The aforementioned documents were successfully transferred by facsimile and, in addition, sent by DHL courier service to the available postal address of Respondent. It's on record that the shipment was delivered on July 17, 2001, to Respondent.
Having reviewed the communications' records in the case file, the Panelist finds that the WIPO Center has discharged its responsibility under paragraph 2(a) of the Rules to "employ reasonably available means calculated to achieve actual notice to Respondent".
Since, in the meantime, Complainant had perfected an agreement with Respondent on transferring the disputed Domain Name, Complainant's authorized representative requested the WIPO Center, on August 1, 2001, to immediately transfer the Domain Name to Complainant. On the same day, the WIPO Center informed Complainant that it was not in power to order the transfer of any domain name whatsoever. If Complainant and Respondent had settled the case, a duly signed request to suspend or terminate the administrative proceeding must be submitted by Complainant. Only then the concerned registrar could implement the transfer agreement.
Therefore, on August 2, 2001, Complainant's authorized representative sent an e-mail and a signed fax to the WIPO Center, requesting the suspension of the ongoing administrative proceeding.
According to Complainant's request, a Notification of Suspension of Administrative Proceeding was transmitted to Respondent and Complainant by the assigned WIPO Case Manager on August 3, 2001, suspending the administrative proceeding until September 1, 2001.
Since the concerned Registrar was apparently not able to implement the transfer agreement reached between Complainant and Respondent, Complainant's authorized representative contacted the WIPO Center on August 16, 2001, and asked for immediate re-institution of the administrative proceeding.
On August 20, 2001, the assigned WIPO Case manager notified to Complainant that the proceedings were re-instituted and that all time periods were recalculated from the said re-institution date as of August 20, 2001. The deadline as to which Respondent could file a Response to the Complaint was re-set to August 24, 2001.
On August 27, 2001, having received no Response from Respondent, the WIPO Center transmitted by e-mail a Notification of Respondent Default to Respondent (tasena@).
Complainant requested a single-member panel. Since Respondent failed to submit a response, the WIPO Center invited the undersigned to serve as sole panelist in Case No. D2001-0859 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence which was duly signed and returned to the WIPO Center on September 4, 2001.
The WIPO Center transmitted to the parties on September 4, 2001, a Notification of Appointment of Administrative Panel and Projected Decision Date as of September 18, 2001. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
4. Factual Background
The following facts and statements appear from the Complaint and its annexed documents which have not been contested by Respondent:
First Complainant, LA REDOUTE S.A., is a French company founded in 1873 which began mail order sales in 1922. During the past decades it has been selling under the trademark LA REDOUTE a large variety of products and children's, men's and ladies wear. LA REDOUTE S.A., the 3rd largest company for home shopping world wide, is the legitimate owner of several trademarks "LA REDOUTE" and among them the:
- Community trademark "LA REDOUTE" n� 000659151 filed on October 3, 1997 for products and services in classes 1 to 42 of the international classification established by the Nice Agreement (Annex n�5);
- International trademark "LA REDOUTE" n� 471 825 filed at the WIPO on October 8, 1982, and renewed in 1992 for products and services in classes 1 to 42 of the international classification established by the Nice Agreement, for France, Germany, Austria and Benelux (Annex n�6).
The second Complainant, REDCATS S.A., is the legitimate owner of several trademarks "LA REDOUTE" and among them:
- the French trademark "LA REDOUTE" n� 93462885 filed at the French INPI on April 2, 1993 for products and services in classes 3, 16, 20, 21, 24, 25, 26, 35, 36, 37, 38, 39, 40, 41 et 42 of the international classification established by the Nice Agreement (Annex n�8).
Both complainants, LA REDOUTE S.A. and REDCATS S.A., are part of the Group PINAULT PRINTEMPS REDOUTE (PPR), listed on the French stock exchange, which regroups several other well known companies such as GUCCI, FNAC, CONFORAMA and the department stores of LE PRINTEMPS.
The disputed Domain Name was registered by Respondent on June 1, 2001.
5. Parties� Contentions
A. Complainant
Complainant contends that:
- the domain name is identical to a trademark or service mark in which the Complainants have rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith; and
- the Domain Name should be transferred to the first Complainant, LA REDOUTE S.A.
Additional respective contentions of the Complainant may be contained in the following discussions and findings.
B. Respondent
As mentioned above, Respondent has been notified in accordance with paragraph 2(a) of the Rules, but failed to submit a Response in accordance with the requirements under the Policy. Nevertheless, to the extent deemed appropriate, his earlier statements in the correspondence attached to the case file shall be taken into consideration by the Panel.
6. Discussion and Findings
Paragraph 4(a) of the policy directs that the Complainant must prove each of the following:
"(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and used in bad faith."
Identical or confusingly similar Domain Name: Policy 4(a)(i)
The Domain Name at issue is . Complainants are the holders of the registered trademark "LA REDOUTE", which obviously is identical with the relevant and disputed part of the Domain Name.
In any event, the Respondent has not contested this point.
Thus, the Panel holds that the Complainant has established element (i) of the policy's paragraph 4(a).
Respondent's Rights or Legitimate Interests in the Domain Name: Policy 4(a)(ii)
It is first convenient to recall that, 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."
Respondent has not provided any evidence of legitimate rights or interests in the above sense, and has not shown any other circumstances reflecting a right or legitimate interest in the disputed Domain Name.
In the absence of any indications as to a legitimate interest of Respondent to use the Domain Name, the Panel finds that Complainant has fulfilled its burden of proof under paragraph 4(a)(ii) of the Policy.
Domain Name Registered and Used in Bad Faith: Policy 4(a)(iii)
The third element to be established by Complainant is that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name:
"(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have 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 trade mark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name.; or
(ii) you [Respondent] have registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or your location."
Complainant alleges that Respondent registered and used the Domain Name in bad faith.
Additionally, in WIPO Case No. D2000-0003, paragraphs 7.9 to 7.11, as well as in other WIPO decisions, it was ascertained that passive holding of a domain name may be sufficient to constitute bad faith use, taking into consideration the overall context of Respondent's behavior. In the present case, the following circumstances seem relevant in this respect: Complainant's trademark is well known and has a strong reputation; Respondent has provided no evidence of any good faith use of the disputed Domain Name. Respondent doesn't seem to have associated the Domain Name with any web site or on-line presence at all. In fact, the disputed Domain Name , which was registered by Respondent on June 1, 2001, currently doesn't relate to any web site and there is no evidence that a web site or other on-line presence is in the process of being established which will use the Domain Name.
Furthermore, it's on record that on July 23, 2001, Respondent himself explicitly requested the Registrar to transfer the Domain Name immediately to Complainant.
In an overall assessment of the contentions and the facts mentioned above, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant, and that Respondent's bad faith registration and use of the Domain Name have been proven.
7. Decision
In view of the circumstances and facts discussed above, the Panelist decides that the disputed Domain Name is identical to the registered trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent's Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panelist requires that the disputed Domain Name, , shall be transferred to the first Complainant, LA REDOUTE S.A.
Bernhard F. Meyer-Hauser
Sole Panelist
Dated: September 19, 2001
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