WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mutuelle Assurance des Commercants et Industriels de France et des cadres et Salaries de L'industrie et du Commerce (MACIF) v. Lebanon Index / La France DN
Case No. D2003-0125
1. The Parties
The Complainant is Mutuelle Assurance des Commercants et Industriels de France et des cadres et Salaries de L'industrie et du Commerce (MACIF), Niort, France, represented by Cabinet Lavoix of France.
The Respondent is Lebanon Index / La France DN, Beirut, Lebanon.
2. The Domain Name and Registrar
The disputed domain name (the "Domain Name" or "Domain Name in dispute") is registered with iH Inc. d/b/a DotR.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 19, 2003. On February 20, 2003, the Center transmitted by email to iH Inc. d/b/a DotR a request for registrar verification in connection with the domain name(s) at issue. On February 25, 2003, iH Inc. d/b/a DotR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on March 24, 2003.
The Center appointed J. Nelson Landry as the sole panelist in this matter on April 2, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On April 4, 2003, the Panel ordered Complainant to amend the Complaint in order to correct errors in the reference to the domain name. On April 4, 2003, Complainant was notified of such order.
On April 8, 2003, Complainant amended the Complaint to correct errors in reference to domain name mentions and notified the Center. On April 10, 2003, the Center informed and sent copy of the amended Complaint to Respondent, the Registrar and the Panel and provided 5 calendar days to file a reply, no Reply was filed within the stipulated delay.
On April 10, 2003, the Center notified the Parties that having regard to the fact that the delay for Respondent to file a reply was to expire on April 15, 2003, the Panel considered advisable to extend by 2 calendar days to April 17, 2003, the delay to render a decision.
4. Factual Background
Complainant is a mutual benefit insurance company of France. It existed and has been active under the acronym MACIF since its establishment on April 29, 1960.
Complainant MACIF is the registered owner of a number of marks comprising the denomination MACIF alone or in combination with a logo or descriptive terms. It has submitted documents demonstrating the following trademark registrations:
France, registration no. 1 446 306, registered on January 22, 1988, in class 36, extended to class 41and renewed on November 4, 1997, in classes 36 and 41 in association with the following services: insurance, finance, savings banks, banking, portfolio management, apartment house management, housing assessments;
- registration no 1 446 306, registered on January 22, 1988, and reviewed on December 12, 1997;
- registration no 438 596 in class 36;
- registration no. 438 597 in class 36;
- registration no. 438 598 in class 36;
- registration no. 438 599 in class 36;
Community Trademark (marque communautaire) CTM, registration no 000.018.028, registered April 29, 1998, in class 36;
- Registration no. 529.934, registered November 24, 1988, in class 36, which registrations cover, Austria, Benelux, Germany Italy, Portugal and Switzerland;
International registration no. 529.935 registered November 24, 1988, in class 36;
All these registrations are in association with the wares mentioned with registration 1 446 306 herein.
Complainant has also represented being the owner of other registrations for the mark MACIF in several other countries: Germany, Denmark, United-Kingdom, Norway and Sweden.
Complainant represents that its trademark MACIF is very well-known in the French territory. It submitted a copy of its annual brochure for the year 2001, as well as data pertaining to opinion and notoriety polls for the years 1999, 2000 and 2001, as well as data for the publicity campaigns on radio and T.V. for the years 2001 and 2002.
Complainant also represented that MACIF is the acronym or denomination of Complainant�s company name as acknowledged by a copy of the by-laws of Complainant dating back from 1960. Complainant has also submitted various opinion and notoriety polls for the periods 1999, 2000 and 2001, as well as extensive media and costs of publicity campaigns for 2001 and 2002.
Panel has read this voluminous documentation in French (annexes 4 and 5) and made certain notations which confirm Complainant representations.
Complainant was established on April 29, 1960, and in the initial documentation the acronym or denomination MACIF was then and thereafter associated with it.
Complainant evolved from about 590 members (cotisants) in 1960, to over 4.3 millions members representing 5 millions cars and 3.25 homes insured in 2001 contributing to Complainant being the first automobile and home insurer in France.
Complainant is directly present in Greece, Poland, Portugal and Spain and has partnerships not only in Europe but also in Tunisia, Cameroun, Canada and Cote d�Ivoire and has been requested by Cambodia to establish an insurance directorship. All said countries have a substantial use of French language as there is in Lebanon as represented by Complainant.
The domain name MACIF.BIZ was registered on December 6, 2001, with registrar iH Inc. d/b/a DotR of Miami, Florida, U.S.A. by ALLOVERLAND, a Lebanese Company.
Pursuant to a cease and desist letter from Complainant, dated October 4, 2002, the initial owner ALLOVERLAND replied on October 22, 2002, that it did not have any longer any interest in the Domain Name since the owner was now Lebanon Index/La France DN, Respondent herein. Such ownership was confirmed by a verification on NEULEVEL WHOIS database which showed that on October 23, 2002, Respondent was the owner of the disputed Domain Name.
A cease and desist letter was sent by Complainant to Respondent on November 20, 2002.
Respondent did not answer the cease and desist letter from Complainant nor did Respondent file a response to the Complaint herein.
Respondent has not submitted any evidence of the fact that it was either using the domain name in dispute or was commonly known by said Domain Name nor on any evidence on any other element in contention.
Complainant represented that it conducted searches and was not able to locate any activities by Respondent under the Domain Name MACIF.
Complainant has submitted a printout of the home page of the disputed Domain Name at the date of February 14, 2003, and represented on the basis of this page which cannot be displayed that there is no website in existence.
Complainant has conducted searches in respect of the presence of any trademark rights in France or in Lebanon in the name of Respondent with respect to the term MACIF. Complainant has not found any such trademark rights nor the presence of a company or association whose name does include the term MACIF.
5. Parties� Contentions
A. Complainant
Complainant alleges that the domain name MACIF.BIZ is identical to trademarks and service marks in which Complainant has rights pursuant to numerous registrations of marks comprising the denomination MACIF except for the sole difference of the generic suffix BIZ added thereto.
The Complaint further asserts that while Complainant is using its MACIF trademarks in association with assurance, finance, savings banks, banking, portfolio management, apartment house management and housing assessments, it could not find any use of the domain name MACIF.BIZ, of a website by the Respondent nor of any other trademark incorporating the denomination MACIF.
Complainant represents that its denomination MACIF which goes back to the incorporation of the company in 1960, and the registered marks are very well-known on the French territory. The Complaint represents that MACIF is the second company being mentioned spontaneously by the public behind AXA, another French well-known insurance company.
Complainant contends that Respondent lacks rights and legitimate interest with respect to the domain name . It alleges that Respondent has never been known by the name MACIF.BIZ nor is it making any legitimate, non commercial or fair use of the Domain Name.
Moreover, Complainant alleges that Respondent must have known at the time it acquired the Domain Name, due to the facts that the marks are well-known, that MACIF is one of the largest insurance companies in France and that there is a link both cultural and economic, between Lebanon and France, two French speaking countries.
Finally, Complainant alleges that the domain name MACIF.BIZ has been registered and is being used in bad faith. Complainant relies on earlier WIPO decisions in contending that a passive holding of a domain name may on its own be sufficient to constitute use in bad faith, taking into consideration the overall context of Respondent�s behaviour. Such circumstances are outlined in the Complaint, namely that Complainant�s trademark is well-known, the cultural and economic link between France and Lebanon, the absence of any evidence of good faith use of the disputed Domain Name and failure to answer by providing detailed information when being contacted by Complainant and assertion that any use of the disputed Domain Name would attract internet users to the websites and furthermore, that non-use or passive use of the disputed Domain Name in the circumstances of this case is evidence of bad faith. To that effect, Complainant relies on WIPO Case No D2000-0003 Telstra Corporation Limited V. Nuclear Marshmallows especially where the disputed Domain Name corresponds to a French well-known mark as held in the WIPO Case No D2002-1001 concerning the domain name . Finally Complainant relies on the fact that Respondent has been condemned several times by the WIPO Arbitration and Mediation Center for having previously registered and used in bad faith domain names corresponding to well-known French trademarks, namely in WIPO Case No D2002-0760.
B. Respondent
Respondent did not file any response nor evidence.
6. Discussions and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following 3 elements to obtain an order that a domain name should be cancelled or transferred.
i. 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. The Respondent has no rights or legitimate interest with respect to the domain name; and
iii. The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is no doubt that the domain name is, with the exception of the suffix BIZ, identical to Complainant�s marks for purposes of the Policy. The Domain Name incorporates in its entirety MACIF, the distinctive element of the marks which are registered in France, as a Community trademark for Austria, Benelux, Germany, Italy, Portugal and Switzerland, international registrations in addition to several other registrations mentioned hereinabove.
In the opinion of the Panel, the suffix ".BIZ" should not be taken into consideration when considering the identity or confusing similarity of a domain name to a trademark or a service mark. The Panel finds that the disputed Domain Name is identical to many registered trademarks of the Complainant and confusingly similar to the remaining ones identified herein.
The criteria of paragraph 4(a)(i) has therefore been met.
B. Rights or Legitimate Interests
Complainant has made a prima facie case that Respondent lacks rights to or legitimate interest in the domain name MACIF.BIZ by alleging that Respondent has never been known by the Domain Name, is not making legitimate non commercial or fair use of the Domain Name, and is not using the Domain Name in connection with the bona fide offering of good and services.
Despite serious efforts by Complainant, there is no indication that Respondent has used the Domain Name, or made any demonstrable preparation to use it, in connection with the bona fide offering of good and services. While Respondent was served with a cease and desist letter and then with a Complaint as amended, it has not availed itself of these opportunities to support its legitimate interest or right in the Domain Name or to rebut the presumption raised by Complainant.
Again notwithstanding Complainant�s efforts, there is no evidence that Respondent has been commonly known by the Domain Name or that Respondent was making a legitimate non commercial or fair use of the Domain Name.
The Panel concludes that Respondent has not made any use of the disputed Domain Name in connection of the bona fide offering of good and services.
Accordingly, there is no evidence that Respondent has any rights or legitimate interest in the Domain Name and the conditions for the second criteria have been fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4 b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the 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 the 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 or 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.
In the absence of any use of the website as verified by Complainant, we are in the presence of a passive holding of the Domain Name. Due to the fact that the Domain Name has been registered by the predecessor of Respondent and is still held by the Respondent, this situation is certainly preventing the Complainant and owner of the various trademarks or service marks from reflecting the mark MACIF in a corresponding domain name and using it to conduct its business.
Having regard to paragraph 4 b)(ii) of the Policy and as mentioned by Complainant in its written submission, we must consider whether we are in the presence of a pattern of conduct by the Respondent. Complainant has drawn Panel�s attention to WIPO Case No. D2002-0760. This is a recent decision of November 1, 2002, which does involve the same Respondent, but in respect of 14 different domain names, all registered with the Registrar of the Domain Name in dispute in the present situation. It is interesting to note that the domain names in dispute in the WIPO Case No. D2002-0760 case were also registered in November or December 2001, and some later by the same Respondent as in the present case. While it is not the current Respondent that registered the Domain Name, it is somewhat significant that Respondent did take title of the Domain Name in dispute between October 4, 2002, at which date the domain name was in the name of ALLOVERLAND and October 23, 2002. At that period, Respondent�s title in 14 domain names was already engaged in the arbitration dispute, having regard to the fact that in the WIPO Case No. D2002-0760 case, the Complaint was served on the Respondent on August 28, 2002. It appears significant to the Panel that Respondent acquired the Domain Name in dispute while it was already being challenged as the owner of those several domain names in the WIPO Case No. D2002-0760 case. The Panel finds such acquisition to be in bad faith.
The other case WIPO Case No. D2002-0760 was involving trademarks of one of the largest banks of France, Société générale. Similarly in our case, the Complainant is the most important insurance company for automobile and home coverage.
These are in the view of the Panel some circumstances that can be taken into consideration in relation to this allegation of registration and use in bad faith. Having regard to the numerous registrations of Complainant in France, community trademark and international registrations, the participation of the Complainant in activities in partnership with other companies in various countries of the world including one in the middle east, all of French speaking, and the rapid growth of the company over 40 years to become one of the leaders in its field of activities in France, certainly support the contention that Complainant�s trademarks and denomination MACIF are well-known. Panel agrees with such contention.
Panel has read the attempts of Respondent in the WIPO Case D2002-0760 at justifying its legitimate interest in respect of the domain names in dispute in that file, the review and characterization of the evidence made by the other Panel, in particular the observations in the WIPO Case No. D2002-0760 case that "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 appeared to be mere inventions to justify the actions of the Respondent". Said other Panel furthermore concluded in the following words: "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".
One can understand why Respondent has elected not to file any reply nor any evidence in the present case. The Panel may infer from this situation that the Respondent had no better explanation to justify the registration and use in good faith of the Domain Name in dispute than that in the case WIPO Case No. D2002-0760.
The Panel finds merits in the contention of the Complainant that any use of the disputed Domain Name would attract Internet�s users to the website by creating a likelihood of confusion for commercial gains with the Complainant�s trademarks as to source, sponsorship, affiliation or endorsement of the website. The Panel finds that this is a situation where reliance can be made on WIPO Case No. D2002-0003 Tesltra Corporation Limited v. Nuclear Marshmallows to conclude that such non use or passive use of the disputed Domain Name is evidence of bad faith.
As noted by the Panel in WIPO Case No. D2002-0760, "an additional factor evidencing bad faith was the registration of domain names which are confusingly similar to trademarks belonging to the Complainants." In the present case, with the exception of the word BIZ, the Domain Name is identical to the distinctive part MACIF of the registered trademarks of the Complainant as well as to the denomination under which it carries business.
Accordingly the Panel finds that the Domain Name in dispute has been registered and used in bad faith.
7. Decision
For the foregoing reasons, the Panel decides that:
a) the disputed Domain Name is identical to the trademarks in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed Domain Name;
c) the disputed Domain Name was registered and is being used in bad faith.
Accordingly, in accordance with Paragraphs 4 i of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
J. Nelson Landry
Sole Panelist
Dated: April 17, 2003
Full & Egal Universal Law Academy