WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Loxam S.A. v. Bern S S.A.
Case No. D2001-1014
1. The Parties
The Complainant in this administrative proceeding is LOXAM S.A., 42, avenue de la Perrière, F-56100 Lorient, France.
The Respondent is BERN S S.A., 40 route de Mons, B-6030 Marchienne-au-Pont, Belgium.
2. The Domain Name and Registrar
The domain name in dispute is .
The Registrar with which the domain name is registered is CORE - Internet Council of Registrars.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on August 9, 2001, by e-mail and on August 13, 2001, in hardcopy. The Center acknowledged receipt thereof on August 10, 2001.
On August 14, 2001, the Center sent the corresponding Request for Registrar Verification in connection with this case to CORE. On that same date the Registrar's verification response confirmed that the Registrant was BERN S S.A. and that the domain name was in "production" status.
On August 15, 2001, after having verified whether the Complaint satisfied the formal requirements, the Center notified by e-mail, fax and courier the Commencement of Administrative Proceeding to the Parties, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
On September 7, 2001, the Center issued by e-mail, fax and courier the Notification of Default to the Respondent for having failed to submit a Response to the Complaint within the deadline granted.
On September 24, 2001, the Center proceeded with the appointment of the Administrative Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment of the undersigned as sole panelist in accordance with Paragraph 6(f) of said Rules, after the latter had signed and forwarded to the Center on September 21, 2001, a Statement of Acceptance and declared his impartiality and independence in this matter.
Transmission of the file to the Sole Panelist was made on September 24, 2001, by e-mail and registered post, hard copy of which was received by the undersigned a few days later.
The Sole Panelist forwarded his decision to the Center within the time limit fixed.
4. Factual Background
The Complainant is specialized in the rental of industrial materials. It is known in Belgium, where the Respondent is located, through its subsidiary company LOCMA S.A. (Complaint Annex 4a).
The Respondent is also known in Belgium through its subsidiary company LOCAMAT, and is specialized in the rental of materials and especially of industrial materials (Complaint Annex 5).
The Complainant is owner of the following trademark:
iCommunity trademark Registration No. 001258938 "LOCMA", filed on July 29 1999, and duly registered in classes 7, 8, 9, 12, 35, 37, 39 and 42 for the following goods and services:
Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs.
Class 8: Hand tools and implements (hand operated); cutlery; side arms; razors.
Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data-carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers; calculating machines, data-processing equipment and computers; fire-extinguishing apparatus.
Class12: Vehicles; apparatus for locomotion by land, air or water.
Class 35: Machine and office equipment rental, rental of advertising space.
Class 37: Rental of excavators, rental of bulldozers, rental of cleaning machines, rental of construction site and public works machines.
Class 39: Rental of automobiles, warehouses, boats, horses, diving bells, storage containers, vehicle roof racks, garages, parking spaces, refrigerators, diving suits, vehicles, motor cars, wagons.
Class 42: Rental of industrial and farming equipment, compressors, generating sets, hot air generators and all electrical appliances, rental of computers, computer software, do-it-yourself and gardening equipment, leasing access time to a computer database, computer programming (Complaint Annex 6).
The Belgian subsidiary of the Complainant is also owner of the domain name registered on January 26, 2001, (Complaint Annex 7).
The Respondent is owner of the domain name (Complaint, p. 9).
5. Parties� Contentions
A. Complainant
The Complainant submits the following:
(i) the domain name at issue, , is identical to the above-described community trademark "LOCMA";
(ii) the Respondent has no rights or legitimate interests in respect of the domain name ; the Complainant has not licensed or otherwise permitted the Respondent to use its trademark, nor has it licensed to apply for the registration of the domain name at issue; and
(iii) the domain name was registered and is being used in bad faith, because:
- it cannot be accepted that the Respondent was not aware of the use of "locma" by the Complainant and of the trademark "LOCMA";
- the Respondent still had a large choice for another domain name, such as, for example, or that are still available (Complaint Annexes 8 and 9); however, it was not logical to choose the trademark of a direct competitor;
- the Respondent had and has no intention to use the domain name at issue for a specific web site adapted to goods and/or services called "LOCMA" as the web site of said domain name is automatically redirected to the web site owned by the Respondent. (Complaint Annex 11);
- the Respondent and the Complainant have the same activity, the consumers of the Complainant, searching it on the Web, should be very easily misled believing that they have been arrived on the Complainant web site: this demonstrates that the Respondent�s intentions have been to take advantage of the trademark "LOCMA".
B. Respondent
The Respondent has not submitted any Response to the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy") sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:
(i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent's domain name has been registered and is being used in bad faith.
The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.
The Administrative Panel has to 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, pursuant to Paragraph 15(a) of said Rules.
A. Identity or Confusing Similarity
There is no doubt that there is identity between the Complainant' trademark "LOCMA" and the domain name .
The Complainant has also established its rights in the trademark "LOCMA" with registrations for such a name (see Complaint Annex 6).
B. Rights or Legitimate Interests of the Respondent
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute, in particular that it has used in connection with a bone fide offering of goods or services within the meaning of Paragraph 4(c)(i) of the Policy. This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14(b) of the Rules (see e.g. WIPO Cases Nos. D2000-0009, p. 6 or D2000-0867, p. 6).
It is the Sole Panelist�s finding that the Complainant has established that the trademark "LOCMA" has been known in the European Union for a while. Furthermore, absent evidence to the contrary, the Complainant, as submitted, has not granted any license or otherwise permitted the Respondent to use such trademark or to apply for any domain name incorporating the said trademark.
Moreover, the Sole Panelist is of the opinion that the Respondent does not seem to have been commonly known by the domain name ; rather, it has been known under the name "LOCAMAT" which is actually used for its Belgium web site .
Under those particular circumstances, the Sole Panelist is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.
C. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:
(i) circumstances indicating that you have registered or you 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 trademark 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 have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you 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 location.
As already pointed out, the Respondent did not file any Response to the Complaint, failing thereby to invoke any circumstance, which could demonstrate his good faith in the registration or use of the domain name in issue. In particular, the Respondent has not disputed any of the Complainant's contentions mentioned above that it has registered and is using the domain name in bad faith.
The Sole Panelist considers convincing, under the present circumstances, the two arguments submitted by the Complainant, as mentioned under 5. A.(iii) above, in support of bad faith registration and use of the domain name at stake: in using the domain name for promoting the sale of its goods and services, the Respondent creates the likelihood of confusion with the Complainant's trademark "LOCMA" as to the source, sponsorship, affiliation or endorsement of such web site, especially since the parties to this administrative proceeding have similar activities. Bad faith behavior of the Respondent is also enhanced by the fact, as submitted by the Complainant, that all hyperlinks of the home page of the web site redirect the Internet user to the Respondent's Belgium web site, namely the spelling of which would appear more in line with its name (see Complaint Annex 11).
This amounts, in the Sole Panelist's view, to bad faith registration and use within the meaning of Paragraph 4(b)(iv) of the Policy.
7. Decision
In light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondent is identical to the corresponding trademark of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Sole Panelist requires that the registration of the domain name shall be transferred to the Complainant.
Christophe Imhoos
Sole Panelist
Dated: October 9, 2001
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