WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Soci�t� pour l’Oeuvre et la M�moire d’Antoine de Saint Exup�ry – Succession�Saint�Exup�ry – D’Agay v. Perlegos Properties
Case No.�D2005-1085
1. The Parties
Complainant is Soci�t� pour l’Oeuvre et la M�moire d’Antoine de Saint�Exup�ry�-�Succession Saint Exup�ry - D’Agay, St-Rapha�l, France, represented�by�Gr�nig & Binimelis Asociados, Spain.
Respondent is Perlegos Properties, Santa Clara, United�States�of�America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network�Solutions,�LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on October�14,�2005. On October�14,�2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On October�17,�2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as 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 October�19,�2005. In accordance with the Rules, paragraph�5(a), the due date for Response was November�8,�2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November�9,�2005.
The Center appointed Torsten Bettinger as the sole panelist in this matter on November�24,�2005. 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.
The Panel executed a Procedural Order on December�16,�2005, requesting that the Complainant submits the Respondent’s response to the Complainant’s cease and desist letter of October�10,�2001, as well as the agreement between Complainant and Respondent mentioned on page 10 of the Complaint.
Complainant replied to the Procedural Order on December�20,�2005.
4. Factual Background
Complainant is the “Soci�t� civile pour l’œuvre et la m�moire D’Antoine de Saint Exupery-Succession Saint Exupery-D’Agay”, which purports to represent Antoine de Saint Exup�ry, the famous French author and pilot. Complainant is authorized by the successors of Saint Exupery to be the sole owner and the manager of the intellectual property rights in Saint Exupery’s work, as well as intellectual property rights related to the writer’s work and his name.
Antoine de Saint Exup�ry is the author of the novel “Le�Petit�Prince” (English:��“The�Little Prince”) which has been published in 1943 and has become most famous novel worldwide.
Complainant is the owner of the French registered trademark “Le Petit Prince”, a European Community Trademark “Le Petit Prince” and various international and national trademarks “Le Petit Prince” in the United States and other countries.
Respondent registered the domain name , but is not using it.
In 2001 the Complainant sent a letter to the Respondent requesting the transfer of the domain name. The Respondent did not reply to the Complainant’s request.
5. Parties’ Contentions
A. Complainant
Complainant submits that (1) the domain name is identical to the Complainant’s mark in which Complainant has rights; (2)�Respondent has no rights or legitimate interests in respect of the domain name; (3)�the domain name was registered and is being used in bad faith.
In reference to the element in paragraph�4(a)(i) of the Policy Complainant asserts that the domain name is confusingly similar to the Complainant’s mark as “The Little Prince” is a literal translation of the mark “Le Petit Prince”.
In reference to the element in paragraph�4(a)(ii) of the Policy, Complainant argues that the Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized by the Complainant to use the Complainant’s marks or to use the English title of Antoine de Saint Exup�ry’s famous novel which is still protected by copyright law.
In reference to the element in paragraph�4(a)(iii) of the Policy, Complainant asserts that the title “The Little Prince” has been widely used throughout the world and is particularly well-known in the United States. Complainant therefore contends that Respondent was aware of or had constructive notice of the Respondent’s rights in the famous title “The Little Prince” at the time it registered the domain name.
Complainant concedes that Respondent has not used the domain name for an active website and argues that passive holding of a domain name equates with active use of a domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, such as the Sleekcraft factors – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No.�D2000-1698 , Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No.�2001-0110, Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No.�D2001-0843, AT&T Corp. v. Amjad Kausar, WIPO Case No.�D2003-0327, BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. Van R.. Whting, WIPO Case No.�D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No.�D2001-0505).
The disputed domain names do not incorporate Complainant’s mark “Le Petit Prince” but the English translation of Complainant’s trademark “The Little Prince”. The Panel thus finds that there is no phonetic similarity between the disputed domain name and Complainant’s trademark.
However a semantic similarity between a trademark and a domain name can also exist if the trademark and the domain name contain word elements of different languages if a considerable part of the public understands the meaning of the translation. See e.g. Compagnie Generale Des Etablissements Michelin - Michelin & Cie. v. Graeme�Foster, WIPO Case No. D2004-0279. The Panel observes that Complainant’s�registered trademark is identical with the English translation of Complainant’s trademark and title “Le�Petit Prince” and that the English title “The Little Prince” of Saint Exup�ry’s novel is well known in the English speaking world.
The Panel thus finds that the disputed domain name is confusingly similar to the trademark in which Complainant has exclusive rights and that Complainant has established the requirement of paragraph�4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph�4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and Respondent fails to show one of the three circumstances under Paragraph�4(c) of the Policy, then the Respondent may lack a legitimate interest in the domain name.
Complainant showed that the Respondent has neither a license nor any other permission to use the trademark or the title of Saint Exup�ry’s novel “Le Petit Prince” which is still under copyright protection. The Panel thus finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the domain name .
Respondent has not provided evidence of circumstances of the type specified in paragraph�4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Before notice to the Respondent of the dispute, there is no evidence of its use, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Further, nothing in the record suggests that Respondent is making a legitimate non commercial use of the domain name.
Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph�4(a)(ii) of the Policy is also satisfied.
C. Registered and Used in Bad Faith
The fact that the Respondent has chosen not to submit a response is particularly relevant to the issue of whether the Respondent has registered and is using the domain name in bad faith. Paragraph�14(b) of the Rules provides that, in the absence of exceptional circumstances, a Panel shall draw such inferences as it considers appropriate from the failure of a party to comply with a provision or requirement of the Rules. This Administrative Panel finds no exceptional circumstances for Respondent’s failure to submit a response. The Panel draws from this failure the following two inferences:
(i) Respondent does not deny the facts which the Complainant asserts, and
(ii) Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see, Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No.�D2000-0438).
Under paragraph�4(b) of the Policy, Complainant may demonstrate that the domain name was registered and is being used in bad faith by showing any of the following circumstances, in particular but without limitation:
(i) circumstances indicating that the Respondent has registered or 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 its out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 it has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The Panel notes that Complainant has provided little direct evidence to satisfy any of the above four criteria, nor has it presented evidence that the domain name at issue is used by the Respondent as required by paragraph�4(a)(iii) of the Policy. However, in a number of cases, and in certain circumstances, mere passive holding has been held to constitute use of the domain name in bad faith, (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No.�D2000-0574).
The Panel has considered whether, in the circumstances of this particular case, the passive holding of the domain name by the Respondent would amount to the Respondent acting in bad faith. The Panel concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) Complainant’s trademark is identical to the English translation of Saint Exup�ry’s famous novel “Le Petit Prince” which is widely known in the English speaking world. It therefore appears that the Respondent has registered and used the domain name in order to create an association with the mark or title as a means of attracting users to his future website;
(ii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name. Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith.
Taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate and constitute an infringement of Complainant’s rights. In light of these particular circumstances, the Panel concludes that Respondent’s registration and passive holding of the domain name, in this particular case, satisfies the requirements of paragraph�4(a)(iii) of the domain name being registered and used in bad faith by the Respondent.
The Panel therefore concludes that also the requirement of paragraph�4(a)(iii) of the Policy has been met.
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 name, , be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Dated: January 2, 2006
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