Boffi S.p.A. v. Vincent Lecomte

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Boffi S.p.A.

v. Vincent Lecomte

Case No.

D2001-0450

1. The Parties

The Complainant is

Boffi S.p.A., a company incorporated in Lentate Sul Seveso, Italy, with

offices at via Oberdan 70, Lentate Sul Seveso, Italy. The Respondent is

Vincent Lecomte of Avenue de Bruxelles, Perpignan, 66031, France.

2. The Domain Name and

Registrar

The domain name in

dispute is <boffi.com> ("the Domain Name"). The Registrar

is VeriSign (Network Solutions).

3. Procedural History

The Complaint was filed

at the WIPO Arbitration and Mediation Center ("the Center") in

electronic copy on March 28, 2001, and hard copy on April 4, 2001, by the

Complainant’s representative Eduardo Fano of Ing. Barzanò & Zanardo

Milano S.p.A. The Complaint further confirmed that it was sent by email

and post to the Registrar on March 28, 2001. The Registrar verified on April

4, 2001, that it was the registrar and that the Respondent was the current

registrant.

On April 5, 2001, the

Center sent the Notification of Complaint and Commencement of Administrative

Proceeding to the parties, in the case of the Respondent by courier, fax

and email. The hard copy sent by courier was subsequently returned to the

Center, but the fax and email to the number and address recorded for the

Administrative Contact appear to have been successfully transmitted. On

April 11, 2001, the Center received an email message from a Tita Chetrit

referring to the complaint and stating that her customer, Vincent Lecomte,

was ready to sell the Domain Name. The Center forwarded the email to the

Complainant and replied to the sender advising her to contact the Complainant

directly.

There having been no

other Response to the Complaint, the Center gave Notification of Respondent

Default on April 27, 2001. The single member Panel, Jonathan Turner, submitted

a Statement of Acceptance and Declaration of Impartiality and Independence

and was appointed on May 10, 2001.

The Complaint as originally

filed contained a jurisdiction submission in the following terms:

"In accordance

with Paragraph 3(b)(xiii), the Complainant agrees to submit, only with

respect to any challenge that may be made by the Respondent to a decision

by the Administrative Panel to transfer the domain name that is the subject

of this Complaint, to the jurisdiction of the courts where the

principal office of the concerned registrar is located, as shown by the

address given for the domain name holder in the concerned registrar’s

Whois database at the time of the submission of the Complaint to the WIPO

Center."

The Panel considered

that this submission was unclear since it conflated the two alternatives

specified by paragraphs 1 and 3(b)(xiii) of the ICANN Rules for Uniform

Domain Name Dispute Resolution Policy ("the Rules"), namely: (a)

the courts where the principal office of the Registrar is located, or (b)

the courts at the location of the Respondent’s address as shown in the Registrar’s

Whois database. By a Procedural Order dated May 14, 2001, the Panel ordered

the Complainant to file with the Center a clear jurisdiction submission

complying with the Rules in electronic form and in hard copy signed by the

Complainant or its authorised representative.

An amendment submitting

(in the event of a challenge to the Panel’s decision) to the jurisdiction

of the courts where the principal office of the Registrar is located was

subsequently received by the Center on May 17, 2001, in electronic copy

and on May 25, 2001, in hard copy signed by the Complainant’s representative.

Having reviewed the

file, the Panel concludes that the Complaint as amended complied with the

applicable formal requirements and was duly notified to the Respondent.

4. Factual Background

The Complainant makes

and sells kitchen, bathroom and sanitary fixtures. The business started

in 1934, in the Boffi family workshop and now has an annual turnover of

50 billion Italian Lire. The Complainant has registered "Boffi"

as a trade mark in Italy, Germany, Austria, Benelux, Spain, France, Portugal,

Switzerland, the US and Canada.

The Domain Name was

registered by the Respondent on November 3, 1998. The Respondent was a distributor

of the Complainant’s products but was not authorised by the Complainant

to register the Domain Name. According to the Complaint, the Respondent

posted a holding page at <boffi.com> and commenced using the domain

for email in 1999, but then stopped using it. The Respondent does not appear

to have used or to be using the domain name for the purpose of marketing

products originating with the Complainant. As noted above, a representative

of the Respondent has indicated that he is willing to sell the Domain Name

to the Complainant.

5. Parties’ Contentions

The Complainant contends

that the Domain Name is identical to its registered trade mark "Boffi"

and that this is a well-known mark in accordance with article 6bis of the

Paris Convention. The Complainant further submits that the Respondent has

no rights or legitimate interest in respect of the Domain Name, and that

it was registered and is being used in bad faith. The Complainant points

out that as a former distributor of the Complainant’s goods, the Respondent

knew of the Complainant’s rights, and that it does not have any interest

in using the Domain Name.

As noted above, the

Respondent has not submitted a response to the Complaint.

6. Discussion and Findings

In accordance with

paragraph 4 of the Uniform Domain Name Dispute Resolution Policy ("the

Policy"), a complainant must prove (i) that the domain name is identical

or confusingly similar to a trademark or service mark in which the complainant

has rights; and (ii) that the Respondent has no rights or legitimate interests

in respect of the domain name; and (iii) that the domain name has been registered

and is being used in bad faith.

As to the first requirement,

the Panel considers that the Domain Name is identical to the Complainant’s

trade mark "Boffi" for the purpose of the Policy. For this purpose

it is appropriate to ignore the .com suffix; see WIPO Decision No. D2001-0154

<KCTS.com>. Furthermore, the Complainant is the registered proprietor

of the trade mark in, inter alia, France, where the Respondent is located.

As to the second requirement,

the Panel considers that the Respondent does not have any right or legitimate

interest in respect of the Domain Name. In accordance with article 6septies

of the Paris Convention, the proprietor of a mark is entitled to object

to the use of its mark by its agent without its authorisation. Furthermore,

it appears that the Respondent has not used the Domain Name for the purpose

of marketing products sold under the trade mark "Boffi" by the

Complainant or any other possibly legitimate purpose.

As to the third requirement,

the Panel is satisfied that the Respondent registered and is using the Domain

Name in bad faith. The Respondent has not used the Domain Name for any legitimate

purpose even though it registered it as long ago as November 1998, cf. WIPO

Decision No. D2000-0004 <americanvintage.com>. Furthermore, the Respondent’s

representative offered to sell the Domain Name to the Complainant. The Panel

infers that the Respondent was seeking to sell the Domain Name for consideration

in excess of its costs of registration. In the absence of any evidence of

the Respondent to the contrary, the Panel concludes that the Respondent

registered and is using the Domain Name for the purpose of selling it to

the Complainant for consideration in excess of its costs and/or of disrupting

the Complainant’s business.

The Panel considers

that the Complainant has a legitimate interest in using the Domain Name,

and that a significant number of internet users in a number of countries

would associate it with the Complainant. Accordingly, it is appropriate

to order that the Domain Name be transferred to the Complainant.

7. Decision

The Panel decides that

the Domain Name <boffi.com> should be transferred to Boffi S.p.A.

of via Oberdan 70, Lentate Sul Seveso, Italy.

Jonathan

Turner

Sole Panelist

Dated: May

25, 2001