WIPO Domain Name Decision D2002-0760 for barep.biz, fimat.biz, sgam.info, sgbl.biz, sggroupe.biz, sggroupe.info, sgmaroc.biz, sgprivatebanking.biz, sgprivatebanking.info, sogecap.info, sogecap.net, sogelease.biz, sogenal.biz, sogenal.info

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Société Générale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri

Case No. D2002-0760

 

1. The Parties

The First Complainant, Société Générale is a French corporation having its principal place of business in Paris, France.

The Second Complainant, Fimat International Banque, is a French corporation having its principal place of business in Paris, France.

The Complainants� authorized representative is Maître Isabelle Leroux of the law firm of Bird & Bird, Paris, France.

The first Respondent is Lebanon Index/La France DN and the second Respondent is Elie Khouri, both of the same address in Beirut, Lebanon.

 

2. The Domain Names and Registrars

The domain names at issue are:

The Registrar with which the disputed domain names , , , , , , , , , , , and are registered is iH Inc. d/b/a DotR of Miami, Florida, United States of America.

The Registrar with which the disputed domain name is registered is R.

 

3. Procedural History

On August 14, 2002, a Complaint was received by e-mail by the WIPO Arbitration and Mediation Center ("the Center") for decision in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999. A hardcopy of the Complaint was received by the Center on August 26, 2002.

On August 14, 2002, the Center requested verification of the following from IHoldings.Com Inc.:

(1) that a copy of the Complaint had been sent to them by the Complainants;

(2) that the disputed domain names were registered with them;

(3) that the Respondent was the current registrant of the disputed domain names;

(4) the contact details of the registrant (and other contacts);

(5) that the Policy applied to the disputed domain names;

(6) that the domain names will remain locked during the pending administrative proceeding;

(7) the language of the Registration Agreements;

(8) whether the domain name registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar.

On August 14, 2002, the Registrar IHoldings.Com Inc. advised the Center:

(1) that IHoldings.Com Inc had not received a copy of the Complaint;

(2) that it is the Registrar for the domain names in dispute with the exception of the domain name ;

(3) that the domain names in dispute, with the exception of had been registered by the Respondent Lebanon Index/La France DN with an address in Beirut, Lebanon;

(4) the registrant�s email address;

(5) that the Policy applies to the domain names in dispute registered with IHoldings.Com Inc.;

(6) that the domain names in dispute registered with IHoldings.Com Inc. will remain locked during the pending administrative proceeding;

(7) that English is the language of the registration agreements;

(8) that the registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar.

On August 15, 2002, the Center sent an e-mail message to the representative of the Complainants advising that the Registrar IHoldings.Com had informed the Center that the domain name is not registered with them but is actually registered with R. The Center requested the representative of the Complainants to file an Amendment to the Complaint listing the correct Registrar for and making all necessary amendments in this regard.

On August 16, 2002, the Center received an Amendment to the Complaint. The hard copies were received on August 26, 2002. The Center proceeded to forward a request for Registrar verification to R, the Registrar for .

On August 23, 2002, the Center advised the representative for the Complainants that R had advised that the "true" registrant for the domain name is Elie Khouri, and not Lebanon Index as it appears in the Whois. The Center advised that where there is a difference between the entity as listed in the Whois and the "true" registrant, as indicated in R�s report, an amendment to the Complaint is required. The Center requested the representative for the Complainants to file an Amendment to the Complaint, listing the correct Registrant for and making all necessary amendments in this regard.

On August 27, 2002, the Center received the second Amendment to the Complaint by e-mail. The second Amendment advises that the registrant for the domain name is Elie Khouri. A copy of the second Amendment was sent by the Complainants to the Respondent Elie Khouri by email and to the address provided by R in Beirut, Lebanon.

On August 28, 2002, the Center completed a Formal Requirements Compliance Checklist and transmitted a Notification of Complaint and Commencement of Administrative Proceeding to the Respondents. The Respondents were advised that a Response to the Complaint was required within 20 calendar days i.e. by September 17, 2002.

On September 12, 2002, the Center received an email from Mr. Stephen H. Sturgeon of the Law Office of Stephen H. Sturgeon & Associates, requesting an extension of time of 20 days to file a Response to the Complaint on behalf of the Respondent, Lebanon Index/LaFrance DN. Mr. Sturgeon claimed that Lebanon Index/LaFrance DN had spent considerable time finding an attorney to represent the Respondent in the case and considered that 20 days would be a reasonable extension.

On September 13, 2002, the Center forwarded Mr. Sturgeon�s request to the representative for the Complainants requesting comments on Mr. Sturgeon�s request. On September 16, 2002, the representative for the Complainants advised that the Complainants considered that the extension of 20 days requested by the Respondent was not justified but that an extension of 10 days would be acceptable. On September 17, 2002, the Center advised the representative for the Respondent that a 10-day extension for submitting the Response had been granted. The Response was to be filed by September 27, 2002.

On September 27, 2002, the Center received the Response by email from the Respondents� Representative and in hard copy on October 4, 2002. The Respondents requested a three member Administrative Panel. The Center acknowledged receipt of the Response on September 30, 2002.

On October 11, 2002, the Center received a Supplemental Filing from the Complainants responding to arguments of the Respondent submitted in the Response.

On October 14, 2002, the Center acknowledged the Complainants� Supplemental Filing and advised that the Rules do not provide for Supplemental Filings. It will be in the sole discretion of the Administrative Panel to determine whether to admit and consider the Supplemental Filing in rendering its decision and whether to order further procedural steps, if any.

On October 21, 2002, a three-member Administrative Panel was appointed consisting of G. Gervaise Davis, III, Jean-Claude Combaldieu and Ross Carson (Presiding Panelist). The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and Supplemental Rules.

The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

 

4. Factual Background

The Complainant Société Générale is one of the largest banks in the eurozone. The Société Group employs 85,000 people worldwide in three key businesses. In retail banking Société Générale serves 13.4 million customers worldwide. In asset management and private banking Société Générale ranks third in the eurozone in terms of assets under management (EUR 298 billion in 2001). In corporate and investment banking Société Générale is the fourth largest bank in the eurozone based on net banking income (Annex 6). The Complainant Fimat International Banque is the derivatives broking arm of Société Générale. Fimat has a global network of 23 offices and is a member of more than 30 of the world�s largest derivatives exchanges. The Fimat Group provides global clearing and execution services to institutional users of derivatives markets worldwide. Companies with the Fimat Group cover markets that account for 80 per cent of the volume of all major exchanges. (Annex 4).

The Trademarks

Société Générale is the owner of the following trademarks:

U.S. trademark SG PRIVATE BANKING, filed March 19, 1999, registered January 1, 2002, under n� 2523913 which covers goods and services of International classes 35, 36 and 38.

French trademark SG PRIVATE BANKING, registered under n� 98 737 065 which covers goods and services of International classes, 35, 36 and 38.

International trademark SG PRIVATE BANKING, registered June 15, 1998, under n 707 203 which covers goods and services of International classes, 35, 36 and 38 and designates Austria, Benelux, Spain, Hungary, Italy, Poland, Switzerland, United Kingdom.

French trademark BAREP, registered under n� 99 827 983 which covers goods and services of International classes, 16, 35, 36 and 38.

International trademark BAREP, registered under n� 740 676 which covers goods and services of International classes, 16, 35, 36 and 38 and designates Germany, Spain, Italy, Switzerland, Japan, United Kingdom.

French trademark SOGELEASE, duly renewed and registered under n� 1403696 which covers goods and services of International classes, 35, 36, 39 and 42.

International trademark SOGELEASE, registered under n� R 433 810 which covers goods and services of International classes, 35, 36, 39 and 42 and designates Austria, Egypt, Italy, Morocco.

Lebanese trademark SOGECAP LIBAN, filed on March 2, 2001, registered under n�86610 which covers goods and services of International classes, 35, 36 and 38.

International trademark SG, registered under n� 696 581 which covers goods and services of International classes, 16, 35, 36 and 38 and designates Austria, Benelux, Bulgaria, China, Croatia, Cuba, Spain, Russia, Hungary, Italy, Kazakhstan, Latvia, Uzbekistan, Poland, Portugal, Czech Republic, Romania, Slovakia, Slovenia, Ukraine, Viet Nam, Yugoslavia.

French trademark SG GROUP, registered under n� 00 3 004 400 which covers goods and services of International classes, 36 and 38.

French trademark SOGENAL, filed on January 10, 1967, and renewed in 1977, 1987 and 1997, under n� 14 23 114 which covers goods and services of International classes, 36 and 38.

Lebanese trademark SGBL, filed on March 2, 2001, registered under n� 86609 which covers goods and services of International classes, 35, 36 and 38.

French trademark SGAM (Société Générale Asset Management), registered under n� 96 653 345 which covers goods and services of International classes 36.

US trademark, SGAM (Société Générale Asset Management), registered May 9, 1997, under n� 96/653345 which covers goods and services of International classes 35, 36 and 38.

The Complainant Fimat International Banque is owner of the following trademarks (Annex 5).

US trademark, FIMAT, registered on September 8, 1998, under n� 2 187 975 which covers goods and services of International classes 38.

International trademark FIMAT, registered under n� 600 870 which covers goods and services of International classes, 9, 16, 35, 36, 38, 41 and 42 and designates Austria, Switzerland, Germany, Spain, Italy, Monaco, Portugal, Benelux.

The Complainant Société Générale is the owner of the domain names , , , , , , , , , , , , , . The Complainant Fimat International Banque is the owner of the domain names , and . (Annex 5).

Both the Complainants and Complainants� customers carry on business over the Internet.

The Respondent Lebanon Index/La France DN registered the domain names in dispute in November or December 2001 or later. (Annex 1 to the Complaint). The Respondent states that it is the operator of an Internet directory for Lebanon entitled the Lebanon Index (Exhibit A, Response). As advertised in Exhibit A to the Response relating to the official launch of the Respondent�s new operation in Amman Jordan on June 1, 2002, the Respondent is also in the business offering Web Design Plans, Web Hosting Plans, E-Commerce Hosting Plans and Domain Names reservation services.

The domain names in dispute were registered by the Respondents at a later date than the date of first use, application for or registration of the Complainants� registered trademarks, service marks and domain names.

 

5. Parties� Contentions

A. The Complainants

1. The Domain Names Disputed are Identical or Confusingly Similar to the Trademarks in which the Complainants have Rights

Complainants submit that the Respondents� registrations can be divided into two categories.

Respondents� domain name registrations which are identical to the Complainants� trademarks:

The Respondents� domain name registrations consist of the Complainants� trademarks with the adjunction of the three letters "www" and the gTLDs "net", "biz" or "info".

The addition of the "www" protocol (acronym for world wide web) and of the gTLDs "net", "biz" or "info" which are required for registration of the domain names, have no distinguishing capacity in the context of domain name and do not alter the value of the trademark represented in the domain name (Telecom Personal, SA v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).

Therefore, the only distinctive elements of the domain names concerned are "SGPRIVATEABANKING", "BAREP", "SOGELEASE", "SOGECAP", "SGBL", "SGAM", "SOGENAL"and "FIMAT" which are strictly identical to the Complainants� trademarks, and the use of lower case letter format does not prevent from confusion.

The second category concerns the Respondents� registrations which are confusingly similar to the Complainants� trademarks:

Concerning the domain names and , the distinctive element of the trademark "SOGECAP LIBAN" is SOGECAP, consequently, the reproduction by the Respondents of this distinctive element creates a likelihood of confusion with the Complainants� trademarks.

Concerning the domain name , the addition of the word "maroc" to the letter "sg" is insufficient to differentiate the domain name from the registered trademark SG that is known as the contraction of Société Générale. Complainants submit that there is no doubt that the two letters "sg" are related to Société Générale and the addition of the word "maroc" cannot be deemed sufficient to prevent a risk of confusion. Furthermore a website is accessible under the address "" to explain the activity of the Société Générale Marocaine de Banque, which is one of Société Générale�s subsidiaries.

Complainants submit that with respect to the domain names and , the addition of the letter "e" is insufficient to differentiate the Respondents� domain names from the registered trademark "SGGROUP" and cannot be deemed sufficient to prevent a risk of confusion with the Complainants� trademark. The domain names therefore remain confusingly similar to the registered trademark.

Complainants submit that because the domain names in dispute are identical or confusingly similar to Complainants� trademarks, there is a high risk of confusion, as a consumer may think that those domain names directly refer to the Complainants� services.

2. The Respondents have No Rights or Legitimate Interests in Respect of the Domain Names in Dispute

Complainants submit that there is no license, consent or other right by which the Respondents would have been entitled to register or use the domain names incorporating the Complainants� trademarks.

The Complainants have prior rights in the trademarks, which precede by many years Respondents� registration of the domain names.

Complainants submit that the Respondents have made no use or demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services.

The Complainants are well known throughout France and the world including Lebanon, under their trademarks and websites used to designate their services relating to banking and financial services on the Internet.

Complainants submit that the Respondents, who have no legitimate interest in respect of the domain names in dispute, have registered these domain names with the intention to divert the Complainants� consumers.

3. The Domain Names in Dispute have been Registered and Used in Bad Faith

Complainants submit that the obvious bad faith of the Respondent results from the following elements:

a) the Respondents have no prior right and no authorization given by the Complainants concerning use of the trademarks;

b) the notoriety of the Complainants and of their trademarks used on the Internet and by the way of the International press;

c) the Respondents� offer to sell the domain names disputed, for a high amount.

a) The Respondents have No Prior Right and No Authorization given by the Complainants Concerning the Use of the Trademarks

Complainants advise that the Respondents have no prior right to the marks SGPRIVATEBANKING, SOGECAP, SOGENAL, SOGELEASE, SGBL, SG, BAREP, SGAM SGGROUP and FIMAT and no authorization to use these marks in any form. Thus, the registration of the disputed domain names has not been made with bona fide intention.

b) The Notoriety of the Complainants and of their Trademarks

Complainants submit that the Complainants enjoy a great notoriety in France and all over the world. Société Générale is a well-known bank and its trademarks are used in France and all over the world to designate its activities, especially in the international press. Fimat, as a subsidiary, also benefits from this notoriety insofar as it is related to the Société Générale Group. (Annex 6)

Furthermore, the existence of various websites dedicated to the Complainants and thus the use on Internet of their numerous trademarks increases this international use.

Complainants submit that the notoriety of the Complainants and of their trademarks demonstrates that the Respondents registered the disputed domain names knowingly. At the time of registration Respondents knew of Complainants� fame and ownership of their trademarks.

c) The Respondents� Will to Sell the Domain Names Disputed for a High Amount

Complainants submit that the Respondents, through Respondent Mr. Elie Khouri who acts for Lebanon Index, as explained in his e-mail sent to the Société Générale (Annex 7), offered to sell to the Société Générale various domain names consisting of trademarks or trade names used by the Société Générale or its subsidiaries and namely Fimat.

The Respondent proposed to sell 47 domain names consisting of marks of which the Complainants own rights for the amount of $404,500 (Annex 7).

This proposition demonstrates that the Respondents were aware of the Complainants� trademark rights insofar as they were able to offer to sell a broad range of marks and trade names used by the Complainants in different areas and countries and not only the most important trademarks.

The Respondents registered the domain names knowingly in order to negotiate their acquisition with the legitimate owner.

Complainants submit that there is no doubt that the domain names in dispute were registered primarily for the purpose of selling them to the Complainant Société Générale for valuable consideration in excess of the Respondents� out-of-pocket costs directly related to the domain names.

The fact that the Respondents had registered a broad range of domain names similar to marks and trade names owned by the Complainants also underlines that the Respondents registered the domain names in dispute in order to prevent the Complainants from reflecting their trademarks in corresponding domain names.

B. The Respondents

The Respondents submitted that the Policy was established to permit the expedited disposition of clear abuses. Respondents submitted that a clear abuse is not present in the instant case and cites the decision in the case of America Online, Inc. v. John Deep d/b/a Buddy USA Inc., National Arbitration Forum, FA0103000096795, which stated that "the purpose of the ICANN UDRP is to deal with simple, clear, abusive registrations of domain names, and not complex trademark disputes or to inject the Panel�s views that someone should not be doing this since it might be wrong or unfair" (emphasis added). Respondent also cited J. Crew International, Inc. v. , WIPO Case No. D2000-0054, in which a similar statement appears: "The ICANN policy is very narrow in scope; covers only clear cases of �cybersquatting� and �cyber piracy,� and does not cover every dispute that might rise over domain names. See, for example, Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24, 1999), " udrp-second-staff-report-24oct99.htm" 4.1(c) which states:

Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others� trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations." Thus, the fact that the policy�s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger�s trademark) is a feature of the policy, not a flaw. [emphasis added]

Respondents submit that the instant case is not a clear case of "cybersquatting" and "cyber piracy."

1. Response to the Allegation that the Domain Names are Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainants Have Rights

Respondent refers to the Complaint in which the Complainants divide the domain names into two categories.

With respect to the first eight domain names listed, Respondents suggest that the registration of a trademark in certain countries should not enable a Complainant to take away all domain names throughout the world which may contain the trademarked words.

With respect to the domain name , Respondents submit that the Complaint does not provide any proof to show that Complainant Fimat is the registrant for the word fimat.

Concerning the second category of names listed by Complainants which Complainants allege are confusingly similar to Complainants� trademarks, namely

Respondents submit that these domain names are not confusingly similar to the trademarks of Complainants.

With respect to and Respondents submit that although Complainants may have trademark rights in the words SOGECAP LIBAN in some limited parts of the world, these words are not identically confusing with the domain names of Respondent.

Respondents cite the case of Primo Incense v. S, National Arbitration Forum, FA0101000096565 in which the decision states as follows:

Complainant only holds a trademark in the word "Primo." As such, Complainant has failed to meet the first element required under ICANN Policy 4, which requires Complainant to prove that: "The domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights...." See: Kittinger Co. v. Kittinger Collector, AF 0107 (eResolution May 8, 2000).Complainant has wholly failed to demonstrate that it has trademark rights in the phrase "primo incense" in the form of a registered trademark or a common law trademark. That Complainant allegedly has a trademark in the word "primo" is not sufficient. [�] As discussed above, Complainant has failed to demonstrate the first element of ICANN Policy 4 and has failed to demonstrate that it holds any interest in the phrase "primo incense." The trademark "Primo" and the domain name "" are not identical or confusingly similar. (Emphasis added)

Respondents submit that in the instant case the Complainants fail to present competent evidence that there exists a trademark in the words "" and "". Respondents also submit that alleged trademark in the three letters SOGECAP LIBAN are not identical or confusingly similar to the domain names and .

With respect to Respondents deny Complainants� allegation that Complainants� alleged trademark rights in the two letters SG would justify the transfer to Complainants of a domain name of seven letters which may contain the two letters that are trademarked. The acquisition of trademark rights to two letters in limited parts of the world does not justify the taking away of all domain names throughout the world which may contain the two letters.

2. Response to the Allegation that Respondents have No Rights or Legitimate Interest in the Domain Names

Respondents submit that Complainants failed to sustain their burden of proving that Respondents did not have any legitimate interest in the domain names. Complainants only made some unsupported statements that do not relate to the issue of the Respondents� "legitimate interest in the domain name" for the purposes of the Policy.

Complainants allege that "[t]here is no license, consent or other right by which the Respondent would have been entitled to register or use the domain names incorporating the Complainants� trademarks."

Respondents submit that this allegation is irrelevant to the issues of this case. This allegation without any supporting evidence does not constitute proof of this element of the case.

Complainants allege that "[t]he Complainants have prior rights in the trademarks, which precede by many years Respondent�s registration of the domain names." Respondents submit that this allegation is irrelevant to the issues of this case. This allegation without any supporting evidence does not constitute proof of this important element of the case.

Complainants allege that the Respondents have made no use or demonstrable preparations to use the domain names, in connection with a bona fide offering of goods or services. Respondents submit this allegation is not accurate. Evidence provided below demonstrates that the Respondents made use or demonstrable preparations to use the domain names, in connection with a bona fide offering of goods or services.

Respondents note that a Complainant�s burden of proof on this issue is made clear in the case of Marbil Co. Incorporated "DBA" Insol v. Sangjun Choi, WIPO Case No. D2000-1275, in which the Complainant attempted to prove that Respondent did not have any legitimate interest in the domain name. The Complainant did not provide adequate proof. The Panel decided that the domain name should not be transferred to the Complainant and stated that:

The Panel, therefore, finds that the Complainant has failed to satisfy the test of Paragraph 4a(ii) of the Uniform Domain Names policy, and that its complaint, therefore, must fail.

Respondents also cite other cases describing this principle. Respondent submits that the Complainants have failed to satisfy the "test of Paragraph 4a(ii)" since Complainants failed to prove that Respondents have no rights or legitimate interests in respect of the domain name.

Respondents submit the following as evidence to prove that Respondents have legitimate rights in the domain name:

1. Complainant (sic) and its affiliate Presidente agency are engaged in the operation of an Internet directory for Lebanon. Exhibit A. The company has numerous clients (Exhibit B) for which numerous services are provided (Exhibit C).

2. As a part of the development of the internet directory, a website has been established at the address "". In 1999, a memorandum was prepared which described the plans and the development of "Special Guide of Business in Lebanon. SGBL at the domain name (Exhibit D). This provides substantial documentation of the intent, the plans and the activities involved in the utilization of the domain name . We also point out that numerous other similar domain names were planned such as "SGBK", "SGBME", "SGBS", "SGBQ", "SGBJ", "SGBE", "SGBB" and "SGBO" as described in the affidavit (attached as Exhibit E).

Respondents submit that the specific uses for each of the domain names in dispute are as follows:

DOMAIN NAME

STANDS FOR

DOCUMENTATION

Special Guide Private Banking

Page 5 of Memo of October 15, 1999

Beirut Airlines Representatives

Exhibit F

Special Organization de Gestion, de Lease

Exhibit G

Special Organization Gestionnaire du CAPital

Exhibit H

Special Organization Gestionnaire du CAPital

Exhibit H

Special Guide Maroc

Exhibit I

Page 5 of Memo of October 15, 1999

Special Guide of Business in Lebanon

Exhibit J

Affidavit of Elie Khouri

Exhibit K

Exhibit K

Special Organisation des Gynecologues et Neurocologues au Liban

Exhibit L

Special Organisation des Gynecologues et Neurocologues au Liban

Exhibit M

Respondents submit that Complainants failed in sustaining their burden of proof. Respondents submit that they have proven that Respondents have legitimate rights in the domain names.

3. Response to the Allegation that Respondents have Registered and are Using the Domain Name in Bad Faith

Respondents submit that Respondents did not register the domain name in bad faith but did, in fact, have a legitimate interest.

Respondents submit that Complainants have failed to prove that the disputed domain names were registered (or used) in bad faith and therefore the Complaint must be denied. Respondents emphasize that the Policy requires that Complainant must prove bad faith both at the time of registration and in the current use of the domain name. The Complaint does not provide adequate proof or evidence to support the allegation that Respondents acted in bad faith. Respondents address each of Complainants� allegations with respect to the issue of bad faith � both at the time of registration and in the current use of the domain name as follows:

Complainants allege that the Respondents had no prior right and no authorization given by the Complainants concerning use of the trademarks."

Respondents submit that this allegation without any supporting evidence does not constitute proof of this important element of the case.

Complainants allege that the notoriety of the Complainants and of their trademarks used on the Internet and by the way of the International press constitutes proof that the domain names have been registered in bad faith.

Respondents submit that this allegation is irrelevant to the issues of this case. This allegation without any supporting evidence does not constitute proof of this important element of the case.

Complainants also allege that bad faith is demonstrated by Respondents� alleged offer to sell the domain names for a high amount.

Respondents submit that Complainants initiated discussions about the "purchase" of the domain names (Exhibit A). Previous decisions under the Policy have consistently held that when a Respondent only considers the selling of a domain name after being contacted by a Complainant there is not sufficient evidence of bad faith. Respondents cite the case of Mark Warner 2001 .v. Mike Larson, National Arbitration Forum, FA0009000095746 (November 15, 2000) as follows:

With regard to the claim that Respondent registered the names primarily for the purpose of selling the domain names for consideration that exceeds Respondent�s out-of-pocket expenses, Respondent only considered selling the domain names after being contacted by Complainant, who requested an offer from Respondent. In addition, simply considering to sell or even offering to sell a domain name is insufficient to amount to bad faith under the ICANN Policy, because the domain name must be registered primarily for the purpose selling it to the owner of trademark for an amount in excess of out-of-pocket expenses. See CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000) ("There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy).

Respondents also cite Open Systems Computing AS v. Alberto degli Alessandri, WIPO Case No. D2000-1393, and COTTONSMITH LLC v. Resource Services Ltd. National Arbitration Forum, FA0104000097096 (June 7, 2001).

Respondents submit that it is to be noted that Policy Paragraph 4(b)(i) requires a "pattern", and there is no evidence of such conduct here.

Respondents submit that there is no probative value for Complainants� allegations with respect to Respondents� Response to Complainants� unsolicited offer to purchase the domain name.

Evidence of the Absence of Bad Faith

Respondents advise that although they do not have the burden of proving that there is no bad faith, they submit the following as evidence that there was no bad faith:

1. Neither Respondent, his company, his business activities nor any of his associates have had any intent for commercial gain to misleadingly divert consumers or to tarnish any alleged trademark/service mark; Exhibit N

2. Neither Respondent, his company, his business activities nor any of his associates have registered or acquired the domain name in question for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is alleged to be the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; Exhibit N

3. Neither Respondent, his company, his business activities nor any of his associates have registered the domain name in question in order to prevent the owner of any trademark or service mark from reflecting the mark in a corresponding domain name, (and neither he, his company, his business activities nor any of his business activities have engaged in a pattern of such conduct); Exhibit N

4. Neither Respondent, his company, his business activities nor any of his associates have registered the domain name for the purpose of disrupting the business of the Complainants or any competitor; Exhibit N

5. By using the domain names in question, neither Respondent, his company, his business activities nor any of his associates have attempted to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with any alleged mark as to the source, sponsorship, affiliation, or endorsement of a web site or location or of a product or service on a web site or location; Exhibit N

Respondents submit that there has not been any conclusive evidence presented by Complainants to show one of the listed circumstances or any other circumstance of bad faith. Therefore, the Complainants have failed to establish this required element.

Respondents submit that Complainants have demonstrated bad faith in Complainants� activities. Respondents enclosed the translation of a formal notice of an impending lawsuit which is being planned by Respondents against the Complainants. The lawsuit alleges that the Complainant bank abused its banking relationship with the Respondent by "fraud, illegal methods, and evident bad faith with no right". The lawsuit also alleges extortion on the part of the Complainant in an attempt to coerce the transfer of the Respondents� domain names. The Respondents allege that Complainants have violated laws with respect to privacy and confidentiality of the banking relationship. The Respondents also allege that the Complainants have engaged in numerous other illegal actions with respect to the domain names.

Respondents� Conclusion

Respondents submit that Respondents have demonstrated that (1) Complainants have not proven that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights, (2) Complainants have not proven that Respondents did not have a legitimate interest in the domain name and (3) Complainants have failed to prove that Respondents had bad faith both at the time of registration and in the current use of the domain names.

Complainants� Submissions in Response to Reply

Following the Response sent by the Lebanon Index Representative on September 27, 2002, and the receipt of the exhibits by mail on October 4, 2002, the Complainants submitted a further Submission as follows.

"1. The domain names disputed are identical or confusingly similar to the trademarks in which the Complainants have rights.

The Respondent alleges that "the Complaint does not provide any proof to show that Complainant is the registrant for the word fimat."

However, the Complaint specifies that the Fimat company is the owner of two trademarks, of which registration certificates were joined in annex 5.

Consequently Fimat, which is one of Société Générale�s subsidiaries, as is notably mentioned in the international press, can obtain the transfer of the domain name to itself.

Regarding the similarity that exists between the domains , and the trademark SOGECAP LIBAN, the Complainants have already demonstrated that pursuant to trademark rules, SOGECAP constitutes the distinctive element, and the adjunction of the gTLDs "net" or "info" has no distinguishing capacity. The same rules have to be applied to SG."

 

6. Discussion and Findings

(a) Complainants� Supplemental Filing in Reply to the Response

By a letter dated October 11, 2002, the Complainants� representative filed a Supplemental Filing responding to submissions in the Response. By letter dated October 14, 2002, the Case Manager at the WIPO Arbitration and Mediation Center advised the Complainants that no express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. The Administrative Panel has considered the Supplemental Filing and decided to consider the Supplemental Filing in rendering the Panel�s decision. The Supplemental Filing primarily relates to submissions and cases and not to additional evidence.

(b) Parties

The Respondent submits that a Complaint must be filed by a single Complainant. The Respondent submits there is no support in the Policy for the filing of the Complaint by Société Générale and Fimat International Banque each named as a Complainant. Reference is made in a number of publications (Annex 6) to Fimat as the subsidiary of Société Générale. In addition Fimat is stated to be the derivatives banking arm of the Société Générale. The Respondent has not filed any material to show that Fimat is not a subsidiary of Société Générale. The Panel finds that the naming of a parent and subsidiary as Complainants is permissible in a proceeding in which the Respondent is using domain names which are confusingly similar to trademarks owned by the parent company and its subsidiary. It is preferable that a dispute concerning the domain names be considered in a single proceeding than in a multiplicity of proceedings.

(c) Uniform Domain Name Dispute Resolution Procedure

Paragraph 15(a) of the Rules instructs the Panel to:

"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 deems applicable."

The burden for the Complainants, under Paragraph 4(a) of the Policy, is to show:

● that the domain name registered by the Respondents is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

● that the Respondents have no rights or legitimate interests in respect of the domain name; and

● that the domain name has been registered and is being used by the Respondents in bad faith.

(1) Identical or Confusingly Similar

The Complainant Société Générale is one of the largest banks in the eurozone. The Société Générale Group employs 85,000 people worldwide in three key banking businesses. The Société Générale Group has been carrying on business in Lebanon for many years. Beirut is a banking center. The Respondent refers to a relationship between the Respondent and Société Générale in Lebanon throughout the years. (Exhibit "O", paragraph 2 to the Response). The Respondents� domain names , , , , , , , and consist of one or another of the Complainants� registered trademarks with the addition of the generic top level domains ".net", ".biz" or ".info." The Respondents above-noted domain names are identical to the Complainants� registered trademarks.

The Complainant Société Générale is also the owner of the registered trademarks SG GROUP, SOGECAP LIBAN, SG and SG & Design. The Société Générale Group refers to a considerable number of legal entities operated by Société Générale. The domain names and which include the letter "e" do not avoid a finding that the domain names are confusingly similar to the Complainants� Société Générale trademark "SG GROUP." The Complainant Société Générale is the owner of the trademark "SOGECAP LIBAN." According to the material in Annex 6 to the Complaint SOGECAP is a common law trademark used in relation to Société Générale life insurance subsidiaries. The domain names and are confusingly similar to the Complainant Société Générale�s registered trademark "SOGECAP LIBAN" and common law trademark "SOGECAP."

The Complainant Société Générale has a subsidiary Société Générale Marocaine de Banque which has a website accessible under the address "." The Complainant Société Générale is the owner of the registered trademarks SG and SG and design in respect of financial services. The use of the prefix "sg" in combination with the suffix maroc is confusingly similar to the registered trademarks SG and SG & design having regard to the Complainants� subsidiary Société Générale Marocaine de Banque.

(2) Respondent has No Rights or Legitimate Interests in Respect of the Domain Names

The Policy (Paragraph 4(c)) outlines circumstances which, if found by the Panel to be proved, shall demonstrate the Respondents� rights or legitimate interest in the domain name. These circumstances are:

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

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

(iii) the 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.

The Respondents have filed a number of Affidavits Exhibits E, F, G, L and a series of Exhibits designated as Exhibit N. Elie Khouri the affiant to the affidavit designated as Exhibit "E" is the Part Owner of Presidente Agency sarl and an investment partner with Nasser Hassan, founder of Lebanon Index. Mr. Khouri states that Presidente Agency have established a reputable website named "" as a full and general index portal for business consultancy in Lebanon. The deponent stated that in 1999, Presidente Agency entered into an investment partnership with Lebanon Index to develop various Internet projects including "Special Guide of Business in Lebanon" SGBL. Special Business Guides were planned for Kuwait, Middle East, Saudi Arabia, Qatar, Jordan, Egypt, Bahrain and Oman. The planned guides all were to commence with the acronym "SGB" (Special Guide to Business) followed by a letter, e.g. "K" to indicate Kuwait. The remainder of the affidavit consists of statements denying any of the circumstances set forth in Paragraph 4(b) of the Policy entitled "Evidence of Registration and Use in Bad Faith." Paragraphs 2 to 7 of the remaining affidavits included substantially the same statements. The evidentiary value of the substantially identical paragraphs 2 to 7 of all the affidavits leads to the inference that the affiants did not express their evidence on their own but executed an affidavit submitted to them. The evidentiary value of form affidavits is weak.

In Exhibit "F" the deponent states that he is aware Presidente Agency and Lebanon Index have been operating a business in the name of Lebanon Index and Presidente since March of 2001. The deponent states that as part of the development of the business they engaged in BEIRUT AIRLINES REPRESENTATIVES � "BAREP."

In Exhibit "G" the deponent states that the Presidente Agency and Lebanon Index engaged in the following activities as part of the development of the business "Special Organization des Gestions, de Lease" "SOGELEASE" and "Special Organization Gestionaire du Capital" "SOGECAP." In Exhibit L the deponent who is the owner and director of Lebanon Index stated "I have been planning to operate a business by the name of "Special Organization des Gynecologues et Neurocologues au Liban" "SOGENAL" since March 10, 2001.

The domain names and are allegedly an acronym for "Special Organization des Gynecologues et Neurocologues." The words "Special Organization" are English words followed by the French words "des Gynecologues et Neurocologues." The word "Neurocologues" does not appear to be a French word. Further, gynecologists and neurologists are considered to be unrelated medical specialties. The domain name is said to be an acronym for "Special Organization de Gestion de Lease." The words "Special Organization" are English words followed by the French words "de Gestion de" followed by the English word "Lease." The domain names and include the acronym SOGECAP for the words "Special Organization de Gestionnaire du Capital." The name of the organization is comprised of the English words "Special Organization" followed by the French words "de Gestionnaire du Capital."

The domain name is said to be an acronym for BEIRUT AIRLINES REPRESENTATIVES. The Respondents did not provide any explanation of the derivation of the domain name .

Annex 7 to the Complaint relates to a number of e-mails between a representative of Société Générale and a representative of the General Manager and Owner of Lebanon Index. Lebanon Index offered to sell a series of domain names to Société Générale for a total of $404,500. The list of domain names in the offer included "sgpb", "sgweather", "asphonet", "deny-all", "centradia", "sgprojects" and "masterunit" which are denominations used by Société Générale or their subsidiaries.

The Complainants� trademarks SG PRIVATE BANKING, BAREP, SOGELEASE, SOGECAP, SOGENAL and FIMAT appear to be invented words and as such are not ones traders would legitimately choose unless seeking to create an impression of an association with the Complainants. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, paragraph 7.2).

While it is always more difficult to judge the truth or accuracy of factual matters in proceedings where the Panel does not have the witnesses physically before it, this Panel finds that the allegations relating to the derivation of the domain names are simply not believable as alleged because they do not make sense and appear to be mere inventions to justify the actions of Respondents. Furthermore, the Panel is not required to assume a legitimate interest or right in a domain name merely because the Respondent alleges an intent to use a domain name. Allegations of intent are not evidence of such rights, especially when they come across as contrived, as these do. Accordingly the Panel exercises its right to judge the legal effect of the facts alleged and to reject them because they are inherently difficult to believe.

The Panel finds that the Respondents had no rights or legitimate interests in respect of the domain names in dispute.

(3) The Domain Names have been Registered and are Being Used in Bad Faith

Paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in 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 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 your website or location or of a product or service on your website or location."

It should be noted that the circumstances of bad faith are not limited to the above.

Referring to Annex 7 to the Complaint the Respondents had registered over 45 domain names which were offered to the Complainant Société Générale for over $400,000. The domain names in dispute were registered on December 6, 2001 except for registered on November 8, 2001, and registered on December 10, 2001. At the time of registration of the domain names in dispute the Complainants were the owners of registered trademarks, common law trademarks and domain names. The domain names in dispute were identical or confusingly similar to the Complainants� registered trademarks, common law trademarks and domain names. The domain names in issue are comprised of different trademark registrations including FIMAT, SG design, SG, BAREP and SOGELEASE incorporating the first two letters of Société Générale.

The Panel finds that the Respondents registered the domain names in dispute primarily for the purpose of selling, renting or otherwise transferring the domain name registrations to the Complainants who are the owners of trademarks or service marks for valuable consideration in excess of Respondents� documented out-of-pocket costs directly related to the domain names. (See CBS Broadcasting v.Worldwide Web, WIPO Case No. D2000-0834).

The Respondents are in the business of operating the Lebanon Index. The Respondents are also in the business of developing Web Design Plans, Web Hosting Plans, E-Commerce Hosting Plans and Domain Names (Exhibit A to the Response).

Any use of the domain names in dispute would attract Internet users to the web sites by creating a likelihood of confusion for commercial gain with Complainants� trademarks as to source, sponsorship, affiliation or endorsement of the web sites. The non-use or passive use of the domain names in dispute in the circumstances of this case is evidence of bad faith. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Respondents submitted that the Respondents� offer to sell the domain names was not in bad faith because the Respondents were allegedly approached by the Complainants to sell the domain names. In the facts of this case the price requested for the domain names in dispute in addition to other domain names similar to other trademarks of the Complainants was over $400,000. An additional factor evidencing bad faith was the registration of domain names which are confusingly similar to trademarks belonging to the Complainants.

The Panel concludes that for the purposes of Paragraph 4(a)(iii) of the Policy the Respondents registered and used the domain names in dispute in bad faith.

Complainants have established all three elements required under Paragraph 4a(i)(ii) and (iii) of the Policy.

 

7. Decision

For the foregoing reasons, the Panel decides that:

(a) the disputed domain names registered by the Respondents are either identical or confusingly similar to trademarks in which the Complainants have rights;

(b) the Respondents have no rights or legitimate interests in respect of the disputed domain names;

(c) the disputed domain names were registered and are being used in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names in dispute , , , , , , , , , , , , , be transferred to Société Générale and that the contested domain name be transferred to Fimat International Banque.

 

 

Ross Carson
Presiding Panelist

Jean-Claude Combaldieu
Panelist

Panelist
G. Gervaise Davis III

Dated: November 1, 2002

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