Société Civile du Forum des Halles de Paris v. French Xpressions, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Civile du Forum des Halles de Paris v.

French Xpressions, Inc.

Case No. D2001-0821

1. The Parties

The Complainant is Société Civile du Forum des Halles de Paris,

a company organized under the laws of France, with its principal place of business

at 5 boulevard Malesherbes, 75008 Paris, France.

The Respondent is French Xpressions, Inc., a company organized under the laws

of Canada, with its principal place of business at 5124 Montclair Drive, Mississauga,

ON L5M 5A6, Canada.

2. The Domain Name and Registrar

The domain name at issue is <forumdeshalles.com> (the "domain name").

The Registrar is Tucows.com – Domain Direct, at 96 Mowat Avenue, Toronto, ON M6K 3M1,

Canada.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

"Center") by hardcopy on June 22, 2001, and by email on July

2, 2001. The Center acknowledged that it had received the Complaint on June

29, 2001.

On June 29, 2001, the Center sent to the Registrar a request for verification

of registration data. On May 4, 2001, the Registrar confirmed: 1) that <forumdeshalles.com>

was registered with the Registrar; 2) that the current registrant of <forumdeshalles.com>

is French XPRESSIONS, Inc., 5124 Montclair Drive, Mississauga, ON L5M 5A6, Canada;

3) that the Administrative, Technical and Billing Contact are: Guirguis, Chris,

5124 Montclair Drive, Mississauga, ON L5M 5A6, Canada, email: cguirguis@usa.net,

[telephone number:] [+1] 905 828 5922; 4) that the Uniform Domain Name Dispute

Resolution Policy applies to the domain name; and 5) that the domain name

is currently on hold.

On July 10, 2001, the Center verified that the Complaint had complied with

all formal requirements, including payment of the fee.

The Center forwarded the Complaint to the Respondent with copies to ICANN and

to the Registrar by email, by fax and by post/courier on July 10, 2001. The

Center formally notified the Respondent that the Complaint satisfied the formal

requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the

"Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy

(the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute

Resolution Policy (the "Supplemental Rules"); that payment of the

required sum had been made by the Complainant; and that an administrative proceeding

had been commenced against the Respondent. A deadline of July 29, 2001 was fixed

for the Response.

No Response was submitted to the Center. Accordingly, the Center issued a Notification

of Respondent Default to both parties on August 8, 2001.

On August 15, 2001, the Center notified the Parties that an Administrative

Panel composed of a single member, Dr. Kamen Troller, had been appointed and

that the Panelist had duly submitted a Statement of Acceptance and Declaration

of Impartiality and Independence to the Center. Absent exceptional circumstances,

the Panelist was required to forward its decision to the Center in accordance

with Paragraph 15 of the Rules by August 29, 2001.

The Panel examined all notifications of the Center, and the Complaint, and

finds that they comply with the formal requirements of the Rules and Supplemental

Rules, and that the Administrative Panel was properly constituted.

4. Factual Background

A. The Complainant

The Complainant, la Société Civile du Forum des Halles de Paris,

exploits the "Forum des Halles", which is a large commercial center

in Paris.

Complainant has registered the trademark "Forum des Halles" as follows

(the "Trademark(s)"):

- French trademark registration No. 1536787, filed on June 16, 1989 and renewed

on December 16, 1999 (Complainant’s Exhibit C);

- French trademark registration No. 99808206, filed on August 17, 1999;

- Community trademark registration No. 001333442, filed on October 5, 1999

and registered on August 9, 2001;

The Panel has searched on the Whois information databases of several domain

name registrars, and found that the domain name <forumdeshalles.net> is

registered by a company named Unibail Management, 5 boulevard Malesherbes, 75802

Paris Cedex 08, France, and that the domain name <forumdeshalles.fr> is

registered by a company named Forum Des Halles Multimedia, 5 boulevard Malesherbes,

75008 Paris, France. There are currently no websites under said domain names.

Given the fact that Unibail Management and Forum Des Halles Multimedia have

their addresses at the business place of Complainant, the Panel concludes that

it is highly probable that these companies are affiliates of Complainant.

B. The Respondent

Respondent, French Xpressions Inc., holds a website at "www.frenchxpressions.com",

where it sells online products and services for gift occasions and provides

gift-giving ideas through the Internet.

Respondent registered the domain name <forumdeshalles.com> on December

18, 1999. Currently, when accessing the website under the domain name, the Internet

user is informed that the site cannot be opened. No contents are available.

C. Correspondence between the parties

On March 24, 2000, and on April 21, 2000, Complainant informed Respondent’s

Administrative Contact by email, ordinary letter and registered letter that

it is the owner of the trademark "Forum des Halles", and requested

Respondent to transfer the domain name to Complainant (Complainant’s Exhibits

E).

On May 2, 2000, Respondent answered to the Complainant:

"We received your email not too long ago and had no chance to reply.

We plan to use the domain name "forumdeshalles.com" for an online

Canadian ecommerce site." (Complainant’s Exhibits E).

On June 16, 2000, Complainant summoned Respondent (at that time existing under

the name "Internet Max"), as well as Respondent’s Administrative Contact,

Mr. Chris Guirguis, before the Tribunal de Grande Instance

of Paris. Complainant requested that the Court: (i) establish judicially that,

with the registration of the domain name <forumdeshalles.com>, Respondent

has infringed Complainant’s Trademarks and has usurped Complainant’s company

name; (ii) prohibit Respondent from further using Complainant’s Trademarks and

company name; (iii) order Respondent to pay damages to Complainant; and (iv)

order Respondent to transfer the domain name <forumdeshalles.com> to Complainant.

In its judgment of January 23, 2001, the Court ruled that Respondent, by registering

the domain name <forumdeshalles.com> without the consent of Complainant,

had committed an act of infringement and had usurped Complainant’s company name.

The Court prohibited Respondent to register any new domain name containing the

designation "FORUM DES HALLES" or any domain name that could cause

confusion with said designation. However, the Court stated that it could only

deliver judgements that were enforceable in France and could therefore not order

the transfer of the infringing domain name, which was registered in the United

States.

On July 2, 2001, being the date on which the Complaint was filed by email,

Respondent sent an email to Complainant, the content of which is set out at

point 5.B. below. Respondent argued primarily that it had the right to use the

name "forumdeshalles", because it holds the trademark "forumdeshalles.com"

in Canada, and because it had incorporated that name to use it for its company

in Canada.

By email of July 10, 2001, Complainant answered as follows [sic]:

"We would like to point out that when you have registered your domain

name "forumdeshalles.com", you had no right to register it, since

you had not registered any trademark.

Forumdeshalles.com application for registration of the trademark forumdeshalles.com

is therefore evidence that you are acting in bad faith.

Besides, we have noted that Forumdeshalles.com’s application for registration

of the trademark Forumdeshalles.com in Canada has not been examined. It is therefore

incorrect to say that you "hold" a trademark in Canada, which has

not been registered, and that you have "every right to use it"."

5. Parties’ Contentions

A. The Complainant

Complainant contends that each of the three elements specified in Paragraph

4(a) of the Policy are applicable to the disputed domain name. More precisely,

Complainant submits that:

1) The domain name <forumdeshalles.com> is identical to Complainant’s

Trademark;

2) Respondent has no rights or legitimate interests in the domain name, because:

Respondent is not a licensee of Complainant and is in no way authorized to use

Complainant’s Trademark; Respondent does not own any trademark including the

words "Forum des Halles"; Complainant is the sole owner of the Trademark

and is the only one authorized to use said Trademark; and Respondent has no

link of any nature with Complainant;

3) The domain name was registered and is being used in bad faith, because Respondent

has acquired the domain name in order to prevent the owner of the trademark

from reflecting the mark in a corresponding name. Complainant contends that

Respondent has engaged in a pattern of such conduct, because it has registered

other famous trademarks to the prejudice of the owners of such trademarks. As

an example, Complainant cites WIPO Domain Name Dispute Case

No. D2000-0013 [1] in relation to the

domain name <sizesunlimited.com>.

Complainant also contends that, by pretending it planned to use the domain

name, Respondent intentionally attempted to attract Internet users to its website

in order to create a likelihood of confusion with the Complainant's Trademark

as to the source or affiliation of this website.

In addition, Complainant states that bad faith of Respondent is also demonstrated

by the facts that: (i) Respondent deliberately refused to take into account

the several complaints sent by Complainant; (ii) Respondent never explained

to the Court of Paris why it has registered the domain name; and (iii) Respondent

has tried to confuse both Complainant and the French Court, first, by changing

the registrant's name (Complainant was first known under the name Domain

Impact, then under the name Internet Max, and finally under the name

French Xpression) and, second, by changing of registrar (the first registrar

was Register.com, the second registrar was Tucows.com).

Complainant requests the Administrative Panel to issue a decision that the

domain name be transferred to the Complainant.

B. The Respondent

No Response was submitted.

However, immediately upon receipt of the Complaint, the Respondent sent to

the Complainant an email (hereinafter referred to as the "Answer")

with the following content:

"We have received the several complaints you mailed to us, as well as

your emails.

In response to your accusations and the case you filed with WIPO, we wish to

let you know that we hold the trademark for "forumdeshalles.com" in

Canada, and therefore have every right to use the name in Canada. Please do

some research and check the Canadian Intellectual Property Organisation website,

or view our trademark registration directly at "http://strategis.ic.gc.ca/SSG/1055/trdp100528900e.html";

as well, we incorporated the name "ForumDesHalles.com" to use for

our company in Canada, as I believe we mentioned to you before.

The domain name was by no means used in bad faith by our company. We had, and

still have no intention to damage your corporation’s reputation by registration

the domain name for our company. This has actually cause [sic] us damage by

preventing the launch of our site until now. If you want to get online with

your own domain name, I suggest you register (if you haven’t already) "forumdeshalles.fr",

as that is the TLD you are entitled to, being in France.

I believe this would both save us a lot of trouble and money, and would help

your corporation recuperate and lost time/earnings [sic].

Please let me know by email how this situation develops, I trust that you

will choose the wisest and least costly decision, by letting us use our domain

name for the purpose for which it was registered, and using any other domain

name (such as .fr or .net) for your own purposes." (Respondent’s email

of July 2, 2001).

6. Discussion and Findings

Pursuant to Paragraph 4(a) of the Policy, the Complainant must prove that each

of the following three elements are present:

(i) the Respondent’s domain name is identical or confusingly similar to a 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 to a trademark

The only difference between the domain name and the Trademark is that the domain

name has ".com" at the end. The addition of the designation ".com"

is non-distinctive because it is a gTLD required for registration of a domain

name [2].

The Panel concludes that the Complainant satisfies the requirements of paragraph 4(a)(i)

of the Policy.

(b) Rights or legitimate interests

Paragraph 4(c) of the Policy defines the circumstances required for the Respondent

to demonstrate "rights to and a legitimate interest in the domain name".

The Respondent is only required to demonstrate any one of the following

circumstances (in particular and without limitation) to prove its rights to

or legitimate interest in the domain name:

(i) before any notice to you of the dispute, your use of, 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; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain

name, without intent for commercial gain to misleadingly divert consumers or

to tarnish the trademark or service mark at issue.

With respect to Paragraph 4(c)(i), Respondent stated in its email of May 2,

2000 to Complainant that it planned to use the domain name for an online Canadian

e-commerce site (Complainant’s Exhibit E). However, Respondent does not allege

nor submit credible evidence that the domain name has ever been used in connection

with a bona fide offering of goods or services. The domain name does

not appear to have been used for an active website, nor has any evidence been

introduced showing preparation for use [3].

With respect to Paragraph 4(c)(ii), Respondent has stated in its Answer that

it "holds" the trademark "forumdeshalles.com" in Canada

and that it "incorporated the name "ForumDesHalles.com" to use

for [its] company in Canada". The Canadian Intellectual Property Organization’s

website at "http://strategis.ic.gc.ca/SSG/1055/trdp100528900e.html" lists a

company named ForumDesHalles.com, 5124 Montclair Dr., Mississauga, L5M 5A6,

Ontario, [Canada] as the registrant of the trademark application "ForumDesHalles.com"

No. 1055289 for operation of an e-commerce enabled website retailing a variety

of items and wares. It does not appear, however, that the Canadian Intellectual

Property Organization has registered the trademark. Respondent filed the Canadian

trademark application on April 18, 2000, after the registration of the

domain name <forumdeshalles.com>, and immediately after Respondent had

received Complainant’s warning letter of March 24, 2000. Therefore,

the Panel believes that Respondent has filed the Canadian trademark application

in bad faith. Also, except from the fact that "ForumDesHalles.com"

is indicated as the registrant of the Canadian trademark application, the Panel

could not find any evidence that a company existed under that name. In the light

of these circumstances, the Panel finds that there is not sufficient evidence

that Respondent has been commonly known by the name "forumdeshalles".

Therefore, Paragraph 4(c)(ii) of the Rules is not applicable.

With respect to Paragraph 4(c)(iii), there is no evidence in the record that

Respondent is making a legitimate non-commercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue.

Under these circumstances, and taking into account the Respondent’s failure

to file a formal Response, the Panel finds that the Respondent has no rights

or legitimate interests in the domain name.

(c) Bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to prove use in

bad faith as well as registration in bad faith.

Paragraph 4(b) of the Policy sets forth a non-exclusive list of circumstances

which shall be evidence that the registration and use of a domain name is in

bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly

related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your 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 your website or location

or of a product or service on your website or location.

The Complainant relies on both the second and the forth elements, alleging,

first, that Respondent registered the domain name <forumdeshalles.com>

in order to prevent Complainant from reflecting the Trademark in a corresponding

name, and, second, that the domain name was registered and used in bad faith

because Respondent intentionally attempted to attract Internet users to its

website, in order to create a likelihood of confusion with the Complainant's

Trademark as to the source or affiliation of this website.

In its Answer, Respondent has denied Complainant’s allegations by saying that

it did not have the intention to damage Complainant’s reputation by the registration

of the domain name.

Complainant, or one of its affiliates, owns gTLD domain name <forumdeshalles.net>

and ccTLD <forumdeshalles.fr>. The Panel finds that Respondent’s registration

of <forumdeshalles.com> cannot be considered as preventing Complainant

from reflecting its mark in a corresponding domain name, and that there is no

evidence that Respondent has engaged in a pattern of such conduct. In fact,

Complainant has only provided evidence of the registration by Respondent’s Administrative

Contact of the domain name <sizesunlimited.com> [4].

This cannot, in itself, give rise to evidence that Respondent has "engaged

in a pattern of conduct". The Panel finds that bad faith criteria of paragraph

4(b)(ii) of the Policy are not fulfilled.

The Panel also does not agree with Complainant’s allegation that Respondent

intentionally attempted to attract Internet users to its website in order to

create a likelihood of confusion with Complainant's Trademark. Although Respondent

has announced in its email of May 2, 2000 that it planned to use the domain

name for an online Canadian e-commerce site, it has been established that Respondent

has never exploited a website with content under that name. Therefore, the Panel

finds that bad faith criteria of paragraph 4(b)(iv) of the Policy are not fulfilled.

However, in the case at hand, the following circumstances lead the Panel to

conclude that Respondent has nevertheless registered and used the domain name

in bad faith:

a) Respondent listed the domain name for sale with Greatdomains.com, a company

that specializes in selling domain names for more than out-of-pocket expenses.

No price is listed for the disputed domain name - instead the phrase "Place

an Offer" appears. Had the Respondent merely sought out-of-pocket expenses,

these expenses would have been listed. The Panel finds that by seeking an offer

on Greatdomains.com, Respondent is holding out for more than out-of-pocket expenses.

This should come as no surprise given the likely value of this domain name to

Complainant. It is not necessary that there be evidence of a specific offer

to Complainant (or its competitors) [5]. Although

Respondent has not directly contacted the Complainants to sell the domain name,

use of the services of a third party vendor, Greatdomains.com, is sufficient.

This is a clear example of bad faith within the meaning of paragraph 4(b)(i).

(b) The domain name was registered on December 18, 1999. Respondent does not

seem to have actually used the domain name. It may be expected that a bona

fide registrant would establish his good faith by preparing and using a

site in a way which leaves no doubt that he does not intend to take any undue

(commercial or otherwise economical) advantage of a trademark’s reputation.

In the present case, Respondent has not made any effort to prove his good faith

- to the contrary, by offering the domain name for sale, Respondent showed that

it had no personal interest in the domain name, except to obtain some financial

advantage.

(c) Respondent does not seem to have any relation with the commercial center

Forum des Halles, nor with Complainant. Respondent has filed its application

for the Canadian trademark "ForumDesHalles.com" only after it had

registered the domain name and after it had received a warning letter from Complainant.

Neither does Respondent submit any credible evidence that it had established

an enterprise bearing the name "forumdeshalles" or any similar name

before the registration of the domain name or Complainant’s warning letter.

(d) Respondent has failed to file a formal Response and to demonstrate any

good faith use [6].

(e) Respondent has changed its registrant's name (first, Domain Impact,

then Internet Max, and finally French Xpression) and the registrar

of the domain name (first Register.com, then Tucows.com). This

suggests that Respondent tried to confuse Complainant and the courts.

(f) The Panel cannot conceive any plausible actual or contemplated active use

of the domain name by Respondent that would not violate or infringe the Complainants’

trademark rights, or would otherwise be legitimate.

Based on the above, the Panel finds that Complainant has satisfied its burden

of proof with respect to bad faith registration and use of the domain name.

7. Decision

The Panel decides that:

1) the disputed domain name is identical to the trademark "Forum des Halles"

in which the Complainant has rights;

2) the Respondent has no rights or legitimate interest in respect of

the domain name; and

3) the domain name has been registered and is being used in bad faith by the

Respondent.

Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel requires

that the Registrar, Tucows.com, Inc., transfer the domain name <forumdeshalles.com>

to the Complainant.

Kamen Troller

Sole Panelist

Dated: August 29, 2001

Footnotes:

1. See: The Avenue, Inc. and United

Retail Incorporated v. Chris Guirguis doing business as Lighthouse Web Design

and/or Cannibal, and Sam Guirguis (D2000-0013)

– Complainant’s Exhibit G.

2. See: Gateway, Inc. v. James Cadieux

(D2000-0198); The Journal Newspapers,

Inc. v. DomainForSale 980dollars (FA95395) and Konkinklijke Philips Electronics

NV v. Ramazan Goktas (D2000-1638).

3. See: Judgment of January 23, 2001

rendered by the Tribunal de Grande Instance de Paris, p. 6 (Complainant’s

Exhibit D).

4. See: The Avenue, Inc. and United Retail

Incorporated v. Chris Guirguis doing business as Lighthouse Web Design and/or

Cannibal, and Sam Guirguis (D2000-0013)

– Complainant’s Exhibit G.

5. See: The Journal Newspapers Inc. v.

DomainForSale 980dollars (FA95395).

6. See: Pharmacia & Upjohn AB v. Dario

H. Romero (D2000-1273), at p.6; Telstra

Corporation, Ltd. v. Nuclear Marshmallows (D2000-0003),

at p.8.