The Complainant is TEFAL of Rumilly, France, represented by Groupe SEB, France.
The Respondent is BombayBiz India Private Limited of Mumbai, Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2015. On March 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 April 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2015. The Response was filed with the Center on April 18, 2015.
The Respondent made a conditional offer to transfer the disputed domain name to the Complainant in consequence of which the Center requested the parties to confirm whether they wished for a suspension of proceedings to allow for settlement negotiations. This Panel notes that the Complainant opted against such suspension possibility.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on May 18, 2015. 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 facts relevant to the decision in this case are that:
1. the Complainant is a French company which sells kitchen and households goods by reference to the registered trade mark TEFAL and has a business selling those goods internationally;
2. the trade mark is, inter alia, the subject of Indian Trade Mark Registration No. 248634 TEFAL registered from April 17, 1968; and
3. the disputed domain name was registered on July 3, 1998. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in TEFAL and alleges that the disputed domain name is confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
In its Response, the Respondent states that it has no opinion as to whether or not the disputed domain name is confusingly similar to the Complainant’s trademark.
The Respondent asserts that it has renewed the domain name for 11 years after the Complainant failed to do so.
It denies any bad faith since it claims not to have misused the domain name, or used it for monetary gain, or attempted to sell it.
On the contrary, the Respondent claims that it has, at its own expense, kept the domain name out of the hands of cybersquatters and has asked for fair financial compensation from the Complainant as a condition of transfer of the name to the Complainant. 6. Discussion and Findings: Business/Contractual Dispute Outside the Scope of the UDRP
In Philippe Dagenais designer inc. / Philippe Dagenais v. Groupe Dagenais MDC inc. (formerly Philippe Dagenais Mobilier Décoration Conseils Inc.) / Mobilier Philippe Dagenais,WIPO Case No. D2012-0336, the panel stated:
“The UDRP jurisprudence, its governing instruments and legislative background, are all clear that the Policy was designed to prevent extortionate or abusive behavior commonly known as ‘cybersquatting’ and cannot be used to litigate all disputes involving domain names…the dispute presented to [the panel is] primarily a contractual and trade-mark dispute that is outside the Policy.”
In Luvilon Industries NV v. Top Serve Tennis Pty Ltd., WIPO Case No. DAU2005-0004, the UDRP panel observed that:
“[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes [.…]. The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.”
This Panel has taken these and similarly UDRP cases1 into account in reaching the Decision that this case falls outside the scope of the UDRP. The evidence of domain name abuse is lacking in essential respects. Applying the Policy, there is virtually no evidence on the record before the Panel of registration in bad faith.
The Complainant states that Tefal is a subsidiary of the Groupe SEB and that “the domain name was first used by Groupe SEB for the conduct of its activity under the Tefal brand in India.” It goes on to explain that “[I]n the early years of 2000, Groupe SEB decided to put a hold on its activity in India and thus the domain name was not renewed in 2004”.
Statements made in the Complaint indicate that there are no reliable records of events from the relevant past and that the Complainant’s efforts to reclaim the disputed domain name now are actuated primarily by a renewed interest in the protection of its rights in a market it had previously abandoned.2
The Complainant states that the “Respondent does not have any affiliation with Complainant and has not been authorized to register the domain name […]”. What then follows in the Complaint would appear to either contradict that statement or show that its reliability is in doubt. Complaint states, for example, that:
“[A]ccording to emails exchanged with the Respondent recently, the Respondent claims that back in 2002 they were handling the domain name on behalf of the Complainant, and that failing to receive instructions from Groupe SEB they have taken the domain name […] for themselves and have been renewing it since for so many years on their expense to avoid squatters to take the name.”
The Complainant goes on to state that:
“[W]e are not able to verify the accuracy of such statement, as the domain name was not managed centrally at a corporate level by Groupe SEB. As a result, we lack elements to verify the instructions given or not in 2004 with respect to the domain name […]”; “[…] Respondent may have been Complainant’s registrar before 2004 […]”
There is no evidence that Groupe SEB or the Complainant were ever the holder of the domain name. There is no evidence of a transfer of ownership of the disputed domain name from either of those entities to the Respondent. The Respondent proceeds on the basis that it had a commercial relationship of some kind with the Complainant or its holding company. Whilst there are aspects of the Respondent’s use of the disputed domain name which might raise an eyebrow, they sit alongside the Complainant’s defective records and apparent indifference to the fate of the disputed domain name for more than a decade. It is for a court of competent jurisdiction with greater inquisitorial powers to determine the nature of the relationship between the parties and how that might bear on the ownership or disposition of the disputed domain name. On the facts as they have been presented to this Panel, the Policy is a blunt or inappropriate instrument to achieve a rightful outcome. 7. Decision
Accordingly, it is Ordered that the Complaint be dismissed.
Debrett G. Lyons
Sole Panelist
Date: June 1, 2015
1 See for example, Jimmy Alison v. Finland Property Services (Pty) Ltd.,WIPO Case No. D2008-1141 “Clearly Complainant is aggrieved and, if his allegations are correct, rightfully so. However the Policy is not designed to deal with allegations of fraud and theft. It is a limited Policy, dealing with the bad faith registration and use of domain names to profit from the goodwill established by a trademark owner’s rights in a mark. There is generally no hearing available, no opportunity to examine witnesses, no opportunity to conduct cross-examination, and no ability in the Panel to effectively evaluate credibility. While the Panel has little doubt that Complainant has been wronged, this is simply not an adequate forum to address those wrongs”), and Palace Holding, S.A. de C.V., v. Priston Entertainment Ltd.,WIPO Case No. D2003-0705 (holding that a dispute over trademark rights is outside the scope of the Policy). See also, Cerruti 1881 s.a.s. v. Gurpreet Johar,WIPO Case No. D2012-1574 (“The UDRP was designed to address only a very narrow class of domain name disputes – cases of abusive domain name registration, or cybersquatting. The Final Report of the WIPO Internet Domain Name Process of April 30, 1999 indicates that the mandatory alternative dispute resolution procedure proscribed by the UDRP must be limited in scope ‘to cases of bad faith, abusive registration of domain names that violate trademark rights’. Subsequent years of case law have echoed this sentiment, reserving to the courts the complex questions of inter alia trademark infringement, breach of contract and fraud”).
2 For example, the statement that “recent renewed interest of Complainant for business in India […] led Complainant to recently reinforce its Intellectual Property rights in the country.”
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