Quanta S.p.A. v. Francois Kyan

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Quanta S.p.A. v. François Kyan

Case No. D2003-0158

1. The Parties

The Complainant is Quanta S.p.A of Milano, Italy, represented by Marco Brenco of Italy.

The Respondent is François Kyan of Paris, France.

2. The Domain Name and Registrar

The disputed domain name <quanta.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2003. On March 3, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On March 5, 2003, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed both as the registrant and as the administrative, billing, and technical contact. The Center verified that 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 on March 7, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 27, 2003.

The Complaint which had been notified by mail (Federal Express) to the Respondent was returned to the WIPO Arbitration and Mediation Center, indicating that the postal address of the Respondent was incorrect.

In an email of March 10, 2003, the Complainant informed the WIPO Arbitration and Mediation Center that:

"[…]

We would like to inform you that the hardcopy of the complaint we sent to the Respondent on February 28th to the postal address:

François Kyan

188, rue de Courcelles

75026 Paris – France

has returned to us in the original envelope today, with a stamp that reads:

N’HABITE PAS A L’ADRESSE INDIQUEE

RETOUR A L’ENVOYEUR

that is, in English, "doesn’t live at the specified address – return to the sender".

We would like to use also this fact as an evidence that the domain name was registered and is being used in bad faith (para. 11C of the Complaint), since providing false contact details is in breach of the registration agreement, and is one of the circumstances under which a passive holding of a domain name amounts to the Respondent acting in bad faith […]"

Considering the Rules, Paragraph 10(a) and 10(d), the Panel shall take this

fact into consideration, as the Complainant obviously had no possibility to

raise it in its Complaint before its notification to the Respondent (see: Gilliéron,

Philippe, La procédure de résolution en ligne des conflits relatifs

aux noms de domaine, Lausanne 2002, CEDIDAC n° 48, n° 69, p. 38, who refers

to Goldline International, Inc. v. Gold Line, WIPO

Case No. D2000-1151 and Scorpions Musikproductions und Verlagsgesellschaft

MBH v. Alberta Hot Rods, WIPO Case No.

D2001-0787).

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2003.

The Center appointed Kamen Troller as the sole panelist in this matter on April 3, 2003. 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 Complainant is the holder of the domain name <quantagruppo.it>. Based upon the website associated to this domain name, one can deduct that:

1) The Complainant has developed a bona fide business in the human resources field, under the name quanta.

2) The Complainant has subsidiaries in Romania, Switzerland and the United States, which all operate under the name quanta.

3) All companies of the group use the designation quanta to designate their activities, i.e. they use that designation as a service mark.

One learns from the website of the Complainant (for the English version see: <quantaus.com>) that Quanta S.p.A started its activities in 1998 as a provider of temporary workers. After two years, Quanta was profitable and it expanded by offering its clients a complete consulting service. In 2001, the Quanta Group was established and currently comprises 35 offices in Italy (the most important being Quanta Energia Lavoro S.p.A [2000], fully owned by Quanta S.p.A), 2 in the United States, 1 in Romania and 1 in Switzerland (Quanta Ressources Humaines [2001], which controls all the other foreign Quanta companies).

On September 1, 2002, the Respondent registered the domain name <quanta.com>. The domain name is not connected to any active website so far.

On October 28, 2002, the CEO of the Complainant sent the following email to the Respondent (Annex 4):

"Good Morning, I’m the CIO of Quanta SpA, an Italian recruiting company. I see you registered the domain <quanta.com> but there is no website associated yet. I wonder if you might be interested in selling us the domain. Looking forward to hearing from you, Marco Brenco."

On November 7, 2002, the Respondent answered (Annex 5):

"I’m thinking of reselling the domain name <quanta.com> for US$ 50’000. If you are interested, please get in touch. Regards"

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant alleges that the domain name <quanta.com> is identical to its service mark quanta.

Rights or legitimate interests

The Complainant contends that it did not license or otherwise permit the Respondent to use any of its trademarks or to apply for or use any domain name containing the word quanta. It goes on by stating that, six months after its registration, Respondent’s domain name is still not used.

In the absence of any submission of the Respondent, the Panel therefore concludes that the Respondent has no rights or legitimate interests vis-à-vis the Complainant in the domain name <quanta.com>.

Registered and used in bad faith

On Complainant’s offer to purchase the domain name (Annex 4), the Respondent answered as follows: "I’m thinking of reselling the domain name <quanta.com> for US$50’000. If you are interested, please get in touch. Regards" (Annex 5). The Complainant considers that this email clearly demonstrates that the domain name was registered and acquired primarily for the purpose of selling the domain name in excess of Respondent’s out-of-pocket costs directly related to the domain name.

The Complainant also asserts that the Respondent is passively holding the domain name, which has to be held as a use in bad faith of the domain name.

B. Respondent

The Respondent has failed to submit any statement. It has therefore not contested the allegations of the Complaint and the Panel shall decide on the basis of Complainant’s submissions, and all inferences that can reasonably be drawn therefrom (Rules, Paragraph 14(b)).

6. Discussion and Findings

A. Identical or Confusingly Similar Designation

According to Policy, Paragraph 4(a)(i), the Complainant has to establish that the domain name held by the Respondent is identical or confusingly similar to a trademark or service mark in which it has rights.

The Complainant does not produce any evidence that it is the holder of a registered trademark.

However, the requirement of "a trademark or service mark in which the

Complainant has rights"[Policy, Paragraph 4(a)(i)] does not mean that

the Complainant has to be the holder of a registered trademark. The real issue

is to know whether the Complainant can assert rights in the designation quanta

or a confusingly similar word. As an example, one can refer to Isabelle

Adjani v. Second Orbit Communications, Inc., WIPO

Case No D2000-0867, related to the domain name <isabelle-adjani.net>,

where the Panel considered that the Complainant, located in Switzerland, could

claim a right on her name based upon Art. 29.2 of the Swiss Civil Code, which

was held sufficient according to Policy, Paragraph 4(a)(i).

In Italy, non registered signs can be protected in two ways :

1) Art. 17 of the Italian Trademark Law (Royal Decree No 929 June 21, 1942), which confers an exclusive right to the holder of a non registered sign which is known among the relevant public;

2) Art. 2598 of the Italian Civil Code (Unfair Competition Clause).

Notwithstanding the fact that Complainant had not referred to its website,

based upon its power conferred by the Rules, Paragraph 10(a), the Panel checked

it (www.quantagruppo.it) (this ex officio Power is considered

as being in compliance with the Rules: Société des Produits

Nestlé SA v. Telmex Management Services, WIPO

Case No D2002-0070; Gilliéron, op.cit., n° 73 et seq.,

pp. 40 et seq.). It clearly appears that, since 1998, Complainant has

developed an important bona fide business in the human resources field

under the quanta name, the group now comprising 39 offices in the world.

There is no doubt that the designation quanta has been extensively used

throughout these years by Complainant to provide services, i.e. as a trademark.

Considering the fact that the Complainant would be protected against the abusive

use of this sign in Italy, the Panel is of the opinion that the Complainant

has rights in a service trademark, as required by Policy, Paragraph 4(a)(i).

Considering the fact that the domain name <quanta.com> is identical to the service mark quanta (quanta being the distinctive part of the domain name <quanta.com>), Paragraph 4(a)(i) of the Policy is satisfied.

B. No Rights or Legitimate Interests of Respondent

According to Policy, Paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name.

The Complainant contends that it did not license or otherwise permit the Respondent to use any of its trademarks or to apply for or use any domain name containing the word quanta.

In Do The Hustle, LLC v. Tropic Web, WIPO

Case No D2000-0624, the Panel stated: "Where a complainant has asserted

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

domain name, it is incumbent upon the respondent to come forward with concrete

evidence rebutting this assertion. This information is uniquely within the knowledge

and control of the respondent. Failure of a respondent to come forward with

such evidence is tantamount to admitting the truth of complainant's assertions

in this regard."

In this case, the Respondent did not reply. For this reason, the Panel admits the Complainant’s contentions and considers Policy, Paragraph 4(a)(ii) to be fulfilled.

C. Registered and Used in Bad Faith

For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, Paragraph 4(a)(iii)). The question is therefore, whether the passive holding of the domain name can be considered to be registration and use in bad faith, taking into account all circumstances of the present case.

Since its registration, the domain name has been inactive. The Complainant

relies on Telstra Corporation v. Nuclear Marshmallows, WIPO

Case No. D2000-0003 where the Panel stated: "the concept of a domain

name being used in bad faith is not limited to positive action; inaction is

within the concepts". The Panel in the Telstra case went on

to make it clear that in addition to the inactivity there must also be either

an intention to sell, rent or transfer the registration, Paragraph 4(b)(i),

or a pattern of conduct preventing a trademark owner’s use of the registration,

Paragraph 4(b)(ii), or the primary purpose of disrupting the business of a competitor,

Paragraph 4(b)(iii). The question of what circumstances of inaction (passive

holding) can constitute a Domain Name being used in bad faith cannot be answered

in the abstract, but only in respect of the particular facts of a specific case.

Therefore, the Panel must give close attention to all the circumstances of the

Respondent’s behavior. The Panel finds that there has been sufficient behavior

shown in this case to make a finding of bad faith in respect of the Respondent.

The mere passive holding of a domain name is not sufficient to infer bad faith, especially in the present case where the domain was only registered on September 1, 2002. However, the overall circumstances in addition to the passive holding of the domain name demonstrate in the Panel’s opinion that the domain name was registered and is being used in bad faith:

1) In its email of November 7, 2002, the Respondent offered to sell the domain name for an amount of US$50’000.-, i.e. an amount which obviously is far in excess of the costs related to the registration of the domain name. The requested amount is not justified at all, as the Respondent did not develop any website or make any preparations to use the domain name.

2) The Complaints which had been sent by mail and faxes to the Respondent were returned to the Complainant and the WIPO Arbitration and Mediation Center. This proves that the contact details indicated by the Respondent were incorrect. According to Paragraph 7(c) of eNom’s Registration Agreement, "you [the registrant] acknowledge that willfully providing inaccurate information or willfully failing to update information promptly will constitute a material breach of this Agreement and will be sufficient basis for cancellation of your domain name registration" (Annex 2). This breach of the Registration Agreement alone could therefore already lead to the cancellation of the domain name registration.

Once all these circumstances have been taken into account, there is no doubt that the Respondent, who apparently registered the domain name for the sole purpose of selling it at a profit, registered and used it in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the domain name <quanta.com> be transferred to the Complainant.

Kamen Troller

Sole Panelist

Dated: April 8, 2003