WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tokheim Sofitam Applications S.A. v. Name Administration Inc. (BVI)
Case No. D2007-1530
1. The Parties
The Complainant is Tokheim Sofitam Applications S.A., Tremblay, France, represented by Cabinet Herrburger, France.
The Respondent is Name Administration Inc. (BVI), Grand Cayman, Cayman Islands B.W.I., Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Domain Name Sales Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2007. On October 22, 2007, the Center transmitted by email to Domain Name Sales Corp. a request for registrar verification in connection with the domain name at issue. On October 22, 2007, Domain Name Sales Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 31, 2007. The Center verified that the Complaint together with the amendment 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 November 14, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2007. The Response was filed with the Center on December 4, 2007.
The Center appointed Christopher J. Pibus, Martine Dehaut and David E. Sorkin as panelists in this matter on January 4, 2008. The Panel finds that it was properly constituted. Each member of 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 January 4, 2008, the Respondent submitted a communication raising concern regarding what it considered a possible conflict issue with a Panel member, which the Center forwarded to the concerned Panelist for consideration. The Panelist having considered the matter is satisfied that there is no conflict that would affect the Panelist’s independence or impartiality in hearing the present matter. The Center has advised that it concurs with this assessment.
4. Factual Background
The Complainant manufactures and services equipment for a range of electronic and industrial products including: fuel dispensers, pumps, retail automation systems, payment terminals, and media devices. The Complainant owns a trademark registration for SATAM in an Oval Design format in France under Registration No.1537821 dated June 23, 1989. The Complainant also owns rights in the same SATAM Design Mark under International Registration No. 292571 dated December 30, 1964.
The Respondent registered the domain name on August 13, 2002. At the date the Complaint was filed, the Respondent was operating a rudimentary website that provided links to other websites containing religious content, as well as commercial links of a different type.
5. Parties’ Contentions
A. Complainant
(a) Identical or Confusingly Similar
The Complainant contends that the domain name is confusingly similar to the Complainant’s registered trademark SATAM, as the domain name replicates the trademark in its entirety.
(b) Rights or Legitimate Interests
The Complainant’s rights in the trademark SATAM pre-date the registration of the domain name by the Respondent. Accordingly, the Complainant submits that the Respondent lacks rights or legitimate interests in the name.
(c) Registered and Used in Bad Faith
The Complainant contends that the domain name has been registered and is being used in bad faith based on the following factors: (i) Respondent’s knowledge of the Complainant’s SATAM trademark at the time of registration of the disputed domain name because of the “visibility” of the SATAM trademark; (ii) Respondent’s registration of a confusingly similar domain name; (iii) Respondent’s use of a “fraudulent” address; and (iv) the fact that Complainant had been prevented from using its trademark as a domain name and the resulting disruption to its business.
B. Respondent
The Respondent claims that it was not aware of the Complainant’s trademark at the time of registration of the domain name, and submits that it chose the name because it is recognized as a typographical variant of “satan”. Respondent claims a legitimate interest in the name “satam”, as part of its practice of registering a large number of domain names based on religious terms and their commonly misspelled variants. Respondent relied on the fact that it has used the domain name in question for more than five years, always in connection with the website featuring links to primarily religious topics and related websites. Respondent denies that Complainant’s rights to the SATAM trademark are well known, and submits that those rights are limited in geographic scope to France.
Respondent denies that use of a post office box address is fraudulent in any way, pointing out that in the Cayman Islands the use of such an address is the practice adopted by residents and approved by postal authorities.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the SATAM and Oval Design trademark by virtue of French Registration No.1537821, which was attached to the Complaint. The word “satam” is the dominant element of the registered mark.
The Panel finds that the domain name is confusingly similar to the Complainant’s registered trademark, as the domain name replicates the dominant word element SATAM in its entirety.
The Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In view of its finding on bad faith, it is not necessary for the Panel to consider the issue of rights or legitimate interests.
C. Registered and Used in Bad Faith
On the basis of the evidence filed by the parties, the Panel finds that the Complainant has not satisfied its burden to establish bad faith in any of the particulars alleged against the Respondent.
On balance, the Panel accepts the Respondent’s evidence that it was not aware of the Complainant’s trademark rights when it registered the domain name in 2002, nor, in the Panel’s assessment of the particular circumstances of this case, should it have been so aware. Four factors support this conclusion:
1) Prior to 2002, Complainant appears to have had relatively narrow trademark rights in terms of registrations, with its business reputation established primarily in France;
2) Respondent has provided unchallenged evidence that it has engaged in the practice of registering a large number of descriptive religious terms, along with common typographical variations, such as ;
3) The domain name in question can be viewed as a misspelling of the religious term “satan”, substituting “N” for “M” as they are adjacent letters on the keyboard;
4) There are no advertising or promotions on the Respondent’s existing website that betray any connection to Complainant’s business or products.
In these circumstances, the fact that many of the website links appear to be of a commercial nature unrelated to the asserted religious connection does not alter the Panel’s above conclusion.
The Panel also rejects Complainant’s allegations that the use as such of a post office box address in the Cayman Islands indicates that the Respondent’s business is “fraudulent”. The Respondent’s evidence about postal practices in its jurisdiction is sufficient to rebut this allegation in this instance.
Finally, the Panel notes that the Respondent has apparently been using the domain name for more than five years without any objection from the Complainant. As such, it is difficult to attribute any weight to Complainant’s allegations that its business has been disrupted by the Respondent’s registration and use of the domain name.
For these reasons, the Panel finds that the Complainant has failed to satisfy the third element of paragraph 4(a) of the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Presiding Panelist
Martine Dehaut
Panelist
David E. Sorkin
Panelist
Dated: January 18, 2008
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