WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Soci�t� Des Eaux De Volvic v. Yasushi Okabayashi / Kikakusha
Case No. D2004-0304
1. The Parties
The Complainant is Soci�t� Des Eaux De Volvic, Volvic, France, represented by Cabinet Plasseraud, France.
The Respondent is Yasushi Okabayashi / Kikakusha, Tokorozawa-shi Saitama-ken, Japan.
2. The Domain Names and Registrars
The disputed domain name is registered with Tucows, Inc. and the disputed domain names , and are registered with OnlineNic, Inc. d/b/a China-C. These domain names are referred to collectively as “the Domain Names” below.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on April 27, 2004. On April 27, 2004, and on May 6, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C and to Tucows, Inc. respectively a request for registrar verification in connection with the domain names at issue. On April 29, 2004, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant of , and and providing the contact details for the administrative, billing, and technical contact. On May 6, 2004, Tucows, Inc. transmitted by email to the Center its verification response confirming that Kikakusha was listed as the registrant of and providing the contact details for the administrative, billing, and technical contact. In response to notifications by the Center that the Complaint was administratively deficient, the Complainant filed amendments to the Complaint on May 10, 2004, and May 28, 2004. The Center verified that the Complaint together with the amendments to 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 June 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June�24,�2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2004.
The Center appointed Adam Taylor as the sole panelist in this matter on July 8, 2004. 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.
4. Factual Background
The non-contested facts are as follows.
The Complainant’s business of manufacturing and distributing mineral water originated in the area of Volvic, a French town in the Auvergne region. The Complainant has traded under the name VOLVIC since 1938, in France and throughout the world. The name VOLVIC has become well known both in France and internationally and is synonymous with the Complainant’s business.
The annual turnover (in thousands of Euros) generated through use of the mark VOLVIC during the past five years in Japan and throughout the world are as follows:
1999
2000
2001
2002
2003
Japan
39229
55494
62203
66858
68394
World
297�699
339023
396168
451800
471562
The annual advertising expenditure (again in thousands of Euros) relating to the mark VOLVIC during the past five years is as follows:
1999
2000
2001
2002
2003
Japan
5875
9401
9961
16903
14028
World
37450
45779
57965
62820
38263
The Complainant is the registered proprietor of trade mark registrations consisting of or containing the word VOLVIC in a large number of countries throughout the world including the following:
- French trade mark 1687458 first registered July 20, 1971, for the word VOLVIC in classes 1,3,5,9,10,11,18,21,25,28-33,35,37,40-42
- Japanese trade mark 2087655 first registered March 16, 1985, for the word VOLVIC in class 29
The Complainant has registered and operates a number of websites with the name VOLVIC in the url including “”.
On August 3, 2003, the Respondent registered .
On October 24, 2003, the Complainant sent a cease and desist letter to the Respondent by email and registered post. On November 18, 2003, the Complainant sent a chasing letter by email and post.
The Respondent did not reply to the above correspondence.
On November 18, 2003, the Respondent registered .
On February 7, 2004 and March 18, 2004, the Respondent registered and respectively.
As of March 25-26, 2004, none of the Domain Names resolved to websites.
On June 2, 2004, the Respondent emailed the Center (in response to an administrative email from the Center concerning this proceeding) saying “My name: Ysushi Okabayashi. Malice is not in me. I like VOLVIC name.”
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
The Domain Names are identical or confusingly similar to the trade mark VOLVIC in which the Complainant has rights.
The dominant and distinctive part of Domain Names is the verbal element volvic / volvics. The former is identical to the Complainant’s trade mark. In the case of the latter, the inclusion of the letter “s” is the only difference between the respective signs. This does not alter the visual, phonetic nor conceptual perception of the Complainant’s trade mark. The letter “s” is often added to signify a plural or may be used after an apostrophe to indicate the possessive form.
It is highly likely that the public will be confused between the Domain Names and the trade mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the Domain Names.
From the information available, it appears that no commercial use has been made of any of the Domain Names. The Respondent clearly has no intention to use them.
The Respondent has not registered nor applied to register any trade mark consisting of or containing the trade mark VOLVIC or VOLVICS in Japan.
The Respondent is not in position to show any trade mark rights in the sign VOLVIC / VOLVICS nor any commercial or non commercial use thereof and cannot therefore claim to be commonly known by the Domain Names.
Registered and Used in Bad Faith
The Domain Names were registered and are being used in bad faith.
As to registration in bad faith, the Respondent did not reply to the pre-dispute correspondence but rather, on November 18, 2003, registered in full knowledge that the Complainant owned earlier trade mark rights in the almost identical well known trade mark VOLVIC. More recently the Respondent registered and on February 7, 2004, and March 18, 2004, respectively. These are identical to the Complainant’s trade mark.
The above chain of events and bearing in mind the significant use made of the mark “VOLVIC” both in Japan and throughout the world clearly indicate the bad faith on the part of the Respondent in registering the , and . and likewise bad faith in registering and retaining . The Respondent must have had knowledge of the Complainant’s trade mark and clearly has no intention whatsoever of giving up the proprietorship of the Domain Names.
The concept of “using in bad faith” is not limited to making actual use but also extends to passively “holding” a domain name registration. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Guerlain SA v. Peikang, WIPO Case No. D2000-0055.
As the Respondent has no intention to use the Domain Names, it can only be surmised that it intends to either sell the Domain Names for profit, either back to the Complainant, at some point in the future, or to a third party.
The only other alternative is that at some point in the future the Respondent will make commercial use of the Domain Names with the intention of attracting, for commercial gain, Internet users to the corresponding website or other online location by creating a likelihood of confusion with the Complainant’s earlier trade mark as to the source, sponsorship, affiliation or endorsement of the website, or location, or of a product or service on the Respondent’s website or location.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
General
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established extensive registered and common law rights in the trade mark VOLVIC which substantially pre-date the Respondent’s registration of the Domain Names.
The domain names and are identical to the Complainant’s trade mark. It is well established that domain suffixes are disregarded for the purpose of this comparison.
The domain names and are confusingly similar to the Complainant’s trade mark. The extra “s”, denoting the plural or possessive form, does not materially distinguish these two domain names from the trade mark.
The Panel concludes that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests (see, eg, Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).
According to Paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the Domain Name by showing, among other circumstances, any of the following elements:
(i) before any notice to it of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) it (as an individual, business, or other organization) has been commonly known by the Domain Names, even it has acquired no trade mark rights; or
(iii) it is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue.
The Complainant asserts that the Respondent has not used the Domain Names, either commercially or non-commercially, and cannot therefore claim to have been commonly known by the Domain Names. The Complainant exhibits Internet printouts showing that the Domain Names did not resolve to websites as of March 25-26, 2004.
The Complainant has made a prima facie case that paragraphs 4(c)(i)-(iii) do not apply.
The Respondent has not submitted a response counteracting the Complainant’s assertions. The Respondent’s statement “Malice is not in me. I like VOLVIC name” in the June 2, 2004 email to the Center (assuming it is admissible) falls well short of what is needed to rebut the presumption of absence of rights or legitimate interests.
The Panel concludes that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out certain circumstances which are evidence of registration and use in bad faith. Those factors are, however, non-exhaustive and it is unnecessary to have regard to them here.
The Respondent was aware of the Complainant’s trade mark when it registered three of the Domain Names ( and ). These all postdate the Complainant’s cease and desist letter of October 24, 2003. Indeed the Respondent’s registration of on November 18, 2003, was clearly in response to the Complainant’s chasing email sent to it that day. In contrast, the Respondent never replied in writing to the Complainant’s correspondence.
Such behaviour by the Respondent suggests that it had also been aware of the trade mark when registering the first of the Domain Names on August�3,�2003. This conclusion is supported by the distinctiveness of the Complainant’s trade mark, the Complainant’s evidence of its extensive trading activity in Japan and the Respondent’s failure to deny such knowledge of the Complainant’s trade mark.
Further, the Respondent has not responded to these proceedings and has not offered any plausible genuine explanation of its purpose in registering the Domain Names.
The Panel is satisfied from the above that the Respondent has registered the Domain Names in bad faith.
The Complainant must also establish use in bad faith. There is no evidence that the Respondent actually used the Domain Names. It is, however, well established that passive holding can in certain circumstances be evidence of use in bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In the Panel’s view, passive holding of the Domain Names constitutes bad faith use in the circumstances outlined above in relation to bad faith registration.
The Panel concludes that the Domain Names were registered and are being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, and , be transferred to the Complainant.
Adam Taylor
Sole Panelist
Dated: July 22, 2004
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