Système U Centrale Nationale v. Sacha Rebk

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Système

U Centrale Nationale v. Sacha Rebk

Case No.

D2001-0416

1. The Parties

The Complainant in

this administrative proceedings is SYSTEME U CENTRALE NATIONALE S.A.C.,

a company organized under French law, located at 9-11, rue Georges Enesco,

94000 Creteil, France and represented by Christian Frick with offices at

rue du Faubourg Saint Honoré, 56A, 75008 Paris, France, hereinafter

the "Complainant".

The Respondent is Sacha

Rebk, with address at 231 South Philips Ave., Suite 468 Sioux Falls, SD

57104, United States of America, hereinafter the "Respondent".

2. Domain Name and Registrar

The domain name at

issue is <magasinsu.com>, hereinafter the "Domain Name".

The registrar is Network Solutions, Inc. and the Domain Name was registered

September 28, 1999.

3. Procedural History

The WIPO Arbitration

and Mediation Center, hereinafter "the Center" received the Complainant's

complaint and the exhibits on March 23, 2001, by hardcopy and on April 2,

2001, by email.

On March 29, 2001,

the Center received by email and by fax the Complainant's rectification

of Complaint regarding the name of registrar.

On March 29, 2001,

the Center transmitted via email to Network Solutions, Inc., a request for

Registrar Verification relating to this case. On March 30, 2001, Network

Solutions, Inc. transmitted via email to the Center, Network Solutions’

Verification Response, confirming that the Domain Name is registered with

Network Solutions, that the Respondent is the current registrant of the

Domain Name and that he is the administrative and billing contact, the technical

contact being mydomain.com support. Network Solutions, Inc. confirmed that

the Network Solutions 4.0 Agreement is applicable and that the Domain Name

registration status is "Active".

On April 2, 2001, the

Center verified that the complaint satisfies the formal requirements of

the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the

Rules for Uniform Domain Name Dispute Resolution (the Rules), and the Supplemental

Rules for Uniform Domain Name Dispute Resolution (the Supplemental Rules).

The Center transmitted

on April 2, 2001, to the Respondent the Notification of Complaint and Commencement

of the Administrative Proceeding via post/courier and email in accordance

with the following contact details:

Registrant, Administrative

and Billing Contact:

Sacha Rebk

Sacha Rebk LLC

231 South Phillips Ave., Suite 468

Sioux Falls, SD 57104

USA

E-mail: postmaster@magasinsu.com

sacharebk@yahoo.com

Technical contact:

Global Internet Names

Inc.

588-12 Church St.

Hamilton, BM

USA

E-mail: support@mydomain.com

This notification has

been copied to the Complainant via email in accordance with the following

contact details:

Systeme U Centrale

Nationale

Represented by :

Christian FRICK

Cabinet Weinstein

56 A, rue du Faubourg

Saint Honoré

75008 Paris

France

Tel: 00 33 1 53306655

Fax: 00 33 1 53306644

E-mail: weinstein@weinstein-fr.com

The Center advised

that the Response was due by April 21, 2001.

On April 24, 2001,

having received no Response from the Respondent, the Center issued to the

email address of both parties and to the mail address of the Respondent

a Notification of Respondent Default. No reply by the Respondent to the

Notification of Respondent Default was received.

On April 27, 2001,

in view of the Complainant’s designation of a single panelist, the Center

invited Mr. Geert Glas to serve as a panelist and transmitted to him the

Request for Declaration of Impartiality and Independence and a Statement

of Acceptance.

Having received, on

May 8, 2001, Mr. Geert Glas' Declaration of Impartiality and Independence

and his Statement of Acceptance, the Center transmitted on May 8, 2001,

to the parties a Notification of Appointment of Administrative Panel and

Projected Decision Date by e-mail, in which Mr. Geert Glas was formally

appointed as the Sole Panelist. The Projected Decision Date is May 22, 2001.

The Sole Panelist finds that the Administrative Panel was properly constituted

and appointed in accordance with the Rules and Supplemental Rules.

Having reviewed the

communication records in the case file, the Administrative Panel finds that

the Center has discharged its responsibility under Paragraph 2(a) of the

Rules "to employ reasonably available means calculated to achieve actual

notice to Respondent." Therefore the Administrative Panel shall issue

its Decision based on the Complaint, the Policy, the Rules, the Supplemental

Rules and the verifiable facts but without the benefit of any Response from

Respondent.

4. Factual Background

On August 3, 1988,

the Complainant registered the trademark "LES MAGASINS U" in France

with the "Institut National de la Propriété Industrielle".

This trademark was renewed on August 3, 1998, for a period of ten years.

This trademark has been registered for the goods and services of classes

1 to 42.

Today, the Complainant

operates approximately 800 stores ("Hyper U", "Super U"

and "Marché U") throughout France under the umbrella trademark

"Les magasins U".

It can be said that

the Complainant's trademark has become, through massive advertising, and

through the important expansion of its distribution activity, a well-known

mark in France.

It appears from Network

Solutions’ Verification Response that the Respondent is the registrant of

the Domain Name. The Respondent registered the Domain Name on September

28, 1999.

The Domain Name is

not linked to any homepage specifically relating to the Domain Name. If

the public wishes to consult the website related to the Domain Name, it

will automatically be transferred to the website linked to the domain name

"Saint-Valentin.org". This French-language website is dedicated

to gifts and other initiatives to bestow upon one's loved one.

It appears from Network

Solutions' WHOIS database that the registrant of "Saint-Valentin.org"

is a company called C2IB with address at 6 bis rue du Forez, 75003 Paris,

France.

On March 23, 2001,

a complaint has been filed against this company concerning the registration

of the domain name <magasinu.com>. In the WIPO Case No. D2001-0417,

the Panel has decided on May 13, 2001, that the domain name <magasinu.com>

registered by the company C2IB was to be transferred to the Complainant,

Système U Centrale Nationale, which is also the Complainant in this

present case.

5. Parties Contentions

a. Complainant

The Complainant contends

that the Domain Name is confusingly similar to its trademark.

The Complainant contends

that the Respondent has no rights or legitimate interests in respect of

the Domain Name since it is neither known by the Domain Name in question

even without having acquired trademark rights, nor has made any legitimate

non commercial or fair use of the Domain Name.

The Complainant contends

that the Respondent, who is the registrant, is to be considered as a straw

man having filed the Domain Name in order to not directly make appear

the French company C2IB. It contends therefore that the registration of

the Domain Name by the registrant under the order of the company C2IB

can only be deemed to have been made in bad faith since this French company

could not be unaware of the intensive use over a long period of the trademark

by the Complainant. The Complainant contends also that the Domain Name

has been registered in bad faith since the company C2IB, which is the

party that should be considered as the Respondent, has asked the registrant

to register the Domain Name for the purpose of preventing the Complainant

from using its trademark in the form of a domain name and thus for the

purpose of perturbing trade operations over the Internet.

b. Respondent

Respondent has not

contested the allegations of the Complainant and is in default.

6. Discussion and Findings

Paragraph 15(a) of

the Rules instructs the Administrative Panel as to the principles the Administrative

Panel is to use in determining the dispute: "A Panel shall decide a

complaint on the basis of the statements and documents submitted in accordance

with the Policy, these Rules and any rules and principles of law that it

deems applicable."

Applied to this case,

Paragraph 4(a) of the Policy directs that the Complainant must prove each

of the following:

(1) that the

Domain Name registered by the Respondent is identical or confusingly

similar to the trademark in which the Complainant has rights; and,

(2) that the

Respondent has no rights or legitimate interests in respect of the

Domain Name; and,

(3) that the Domain

Name has been registered and used in bad faith.

a. Identity

or confusing similarity

The trademark

of Complainant consists of the words "Les Magasins" followed

by the letter "U".

It is obvious

that although the Respondent's Domain Name consisits out of the

single word "magasinsu", this word is incontestably similar

to the words of which the trademark "Les Magasins U" is

comprised of. Indeed, the only difference is the adding of the neutral

word "les". The fact that the words are not interspaced

in the Domain Name, as is the case in the trademark, does not seem

to reduce this similarity.

The Administrative

Panel therefore finds that the Domain Name is confusingly similar

to the Complainant's trademark and finds that the requirement of

paragraph 4(a)(i) of the Policy is satisfied.

b. Rights

or Legitimate Interests

The Complainant

has not licensed or otherwise permitted the Respondent to use its

trademark or to apply for any domain name incorporating its trademark.

Moreover, by

not filing a Response, the Respondent has failed to invoke any circumstance,

which could indicate the existence of any right or legitimate interest

he would have in the Domain Name. Therefore the Panel finds that

the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

c. Registration

and Use in Bad Faith

Anyone who

wishes to consult the website connected to the Domain Name is automatically

transferred to the French language website linked to the domain

name "Saint-Valentin.org" which is registered by the French

company C2IB.

A complaint has been filed

against this company, C2IB, which was the registrant of a very similar domain

name: <magasinu.com> (WIPO Case No. D2001-0417).

The Panel has ordered on May 13, 2001, the transfer of the registration of this

domain name to the Complainant.

The fact that

the Domain Name is not connected to its "own" website

but is connected to the website registered by the French registrant

of the quasi-identical domain name <magasinu.com> cannot be

a coincidence.

It appears

from this fact that either Respondent tried to build up a non-French

identity (having an address in the U.S.A but directing Internet

users to a French language website) or that the French company C2IB

tried to organize the registration and use of the Domain Name in

the name of a non French, and at first view, unrelated person. Both

situations are, however, deceptive.

The panel finds

that the Complainant has brought sufficient evidence that the trademark

of the Complainant is well known and commonly used in France.

Respondent

who either on itself or through its relationship with C2IB has links

with France, consequently knew or should have known that by choosing

a domain name consisting of the Complainant's trademark, it was

deliberately creating a situation which is at odds with the legal

rights and obligations of the parties.

By using the

Domain Name to direct Internet users to a commercial website which

is unrelated to the Complainant but owned by the company who in

bad faith registered and used a quasi –identical domain name, Respondent

has further illustrated its bad faith intentions.

The Respondent

was in default to respond in these proceedings, thereby failing

to invoke any element or circumstance which could indicate the good

faith nature of his registration and use of Domain Name. As a consequence,

the Respondent has failed to demonstrate any bona fide use of the

Domain Name.

Considering

the lack of interest of the Respondent in the Domain Name, in the

defense of its rights and interests as to the Domain Name and the

above facts, the Administrative Panel finds that the Complainant

has met its burden under section 4(a)(iii) of the Policy and that

the Respondent has registered and used the Domain Name in bad faith.

7. Decision

In light of the foregoing,

the Administrative Panel decides that the Domain Name registered by the

Respondent is confusingly similar to the Complainant's trademarks, that

the Respondent has no rights or legitimate interests in respect of the Domain

Name, and that the Respondent’s Domain Name has been registered and is being

used in bad faith.

Accordingly, pursuant

to Paragraph 4(I) of the Policy, the Administrative Panel requires that

the registration of the Domain Name <magasinsu.com> be transferred

to the Complainant.

Geert Glas

Sole Panelist

Dated: May

22, 2001

More cases by this complainant

• Système U Centrale Nationale v. C 2 I B — D2001-0417 · magasinu.com · Transfer · 23 May 2001