Magneti Marelli Motopropulsion France SAS v. Mopex S.A.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Magneti Marelli Motopropulsion France S.A.S. v. Mopex S.A.

Case No. D2003-0187

1. The Parties

The Complainant is Magneti Marelli Motopropulsion France S.A.S., Nanterre,

France, represented by Guylene Kiesel Le Cosquer, Cabinet Plasseraud, in Paris,

France.

The Respondent is Mopex S.A., Saint-Quentin, France, represented by Stephen H. Sturgeon,

in Rockville, USA.

2. The Domain Name and Registrar

The disputed domain name <velosolex.com> is registered with Network Solutions

Inc.

3. Procedural History

A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy

("the Policy") was submitted to the WIPO Arbitration and Mediation

Center ("the Center") on March 6, 2003.

On March 7, 2003, the acknowledgement of receipt of the Complaint was

sent.

On March 7 and 12, 2003, the Center made an initial request for Registrant

verification.

On March 11, 2003, the Center sent a notification for Complaint deficiency.

The Complaint was amended the same day.

On March 12, 2003, the Notification of the Complaint took place and the administrative

proceeding began.

On April 15, 2003, a Response was received from the Respondent and the acknowledgement

of receipt of Response was sent.

On April 28, 2003, the notification of an appointment of the sole Panelist

to both parties took place. The administrative Panel, consisting of a single

member, Mrs. Isabelle Leroux was appointed. Mrs. Leroux has filed

a Statement of Acceptance and Declaration of Impartiality and Independence.

The Panel understands that the requisite fees have been paid.

No interim orders have been made by the Panel.

As the language of the domain name registration agreement is the English language

and as the Complainant has filed its complaint in English, the proceeding will

be conducted in English, pursuant to paragraph 11(a) of the Rules.

The decision is issued within the time limit fixed by May 12, 2003.

4. Factual Background

The Complainant is Magneti Marelli France S.A.S., a French corporation.

The company Solex, which changed its name on 1994 to Magneti Marelli France

was founded in the beginning of the twentieth century as a manufacturer of bicycles,

mopeds, accessories and spare parts. On May 31, 2001, Magneti Marelli

France partially brought its assets (including the trademarks SOLEX and VELOSOLEX)

from Magneti Marelli Motopropulsion France S.A.S.

The name and mark Solex is famous internationally and the Complainant’s bicycles

and mopeds are sold in many countries under the famous Solex brand. It represents

the iconic French economical bicycle. Several million bicycles and mopeds have

been sold throughout the world and more specifically in Europe.

Complainant owns trademark and service mark registrations for the marks Solex

and Velosolex in numerous countries in several classes and in particular in

classes 4, 7, 9, 11, 12 and 25. In the documents submitted by the Complainant,

there are recurring references to vehicles, means of transport by land, air

or water, and engines.

These registrations include national registrations, for example France where

Complainant and Respondent are located, and international registrations, the

earliest dated 1910.

On September 22, 1997, Magneti Marelli France granted a non-exclusive trademark

license to the company JIANGXI HONGDU MOPED CO LTD, represented by Mr. Dominique

Chaumont, who is also the Chairman of the Board of Directors of the company

MOPEX S.A., the Respondent, as stated in the certificate of registration of

the latter that is provided by the Complainant. This license agreement was signed

for duration of three years and since September 22, 2000, has no longer

been applicable.

On April 25, 2001, seven months after the ending of the above-mentioned license

agreement, the Respondent registered the domain name <velosolex.com>.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

The domain name <velosolex.com> is identical and is confusingly similar

to the Complainant’s Solex and Velosolex trademarks.

The addition of the word "velo", which means "bicycle"

in the French language, as a prefix to the Complainant’s marks "Solex",

makes the disputed domain name confusingly similar to the Complainant’s marks.

The Respondent is not commonly known by or acquired any trademark or service

marks in the <velosolex.com> domain name. Furthermore, its right to use

and to exploit the Complainant’s trademarks, granted within the above-mentioned

license agreement ceased in September 22, 2000.

In this particular context, the Respondent had perfect knowledge of Complainant’s

famous Solex and Velosolex marks when registering the domain name <velosolex.com>

seven months after the ending of this license agreement.

The Respondent had no authorization from the Complainant to register the domain

name <velosolex.com>.

The Respondent has not used the <velosolex.com> domain name in connection

with a bona fide offering of goods and services. As indicated in the website

"velosolex.com", the name of the Respondent’s competing mopeds is

"Black’n Roll", which also corresponds to a trademark hold by the

Respondent.

The registration of the domain name was made on April 25, 2001, and

as of the filing date of the Complaint, a website specialized in mopeds is accessible

by using the domain name <velosolex.com>.

The Respondent is not making a legitimate non-commercial or fair use of the

<velosolex.com> domain name without intent for commercial gain to misleadingly

divert consumers or to tarnishing the trademark at issue.

The Respondent’s offer for Complainant to purchase the domain name clearly

shows that the Registrant has registered and is using the <velosolex.com>

domain name for commercial gain.

There is no evidence that shows that the Respondent has taken any positive

action in relation to the <velosolex.com> domain name, other than exploiting

it with bad faith, to benefit of the notoriety of the Complainant in order to

market its own products, called "Black’n Roll", without any link with

the Complainant’s trademarks.

B. Respondent

The Respondent replied to the Complainant’s contentions on April 14, 2003.

It considers that Complainant has not proven that the domain name is identical

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

has rights. It refers to the issue of the Complainant’s trademark with respect

to the words velosolex and solex, which are currently in litigation. Accordingly,

such issues are in the nature of complex trademark disputes, which are not properly

the types of issues determined by this expedited UDRP proceeding.

It also denies the fact that Complainant has proven that Respondent did not

have a legitimate interest in the domain name <velosolex.com>.

For many years (since April 25, 2001, which is the date of the domain

name registration), Respondent has demonstrably used the domain name for the

marketing of its products. It has not only prepared to utilize the domain name,

but has also engaged in considerable active use of the domain name in connection

with its bona fide business activities.

Finally, the Respondent considers that Complainant has failed to prove that

Respondent had bad faith both at the time of registration and in the current

use of the domain name concerned.

6. Discussion and Findings

Paragraph 15 (a) of the Rules instructs the Panel as to the principles the

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 seems applicable".

Paragraph 4(a) of the Policy states that, for a complaint to be granted, the

Complainant must prove each of the following:

(i) that the domain names registered by the Respondent are identical or confusingly

similar to the trademarks or service marks in which the Complainant has rights;

and,

(ii) that the Respondent has no rights or no legitimate interests in respect

of the domain names; and,

(iii) that the domain names have been registered and used in bad faith.

A. Identical or Confusingly Similar

The Complainant’s trademarks Solex and Velosolex are well-known throughout

the world. The Complainant is currently the owner of various trademarks, including

nominative trademarks, available in France and in other various countries (in

Europe, Africa, America, Asia) such as the United States of America. In this

country, for instance, a word mark "Solex", filed in 1911 and registered

under the number 85655, was assigned to the Complainant in 2002.

The disputed domain name <velosolex.com> is made up of the Complainant’s

trademarks.

The addition of the prefix "velo", which means "bicycle"

in French and is descriptive for certain products as indicated in trademark

filings, to the mark "Solex", does not affect the attractive and distinctive

power of the word Solex and its individuality.

The name "velosolex" is consequently confusingly similar to the registered

trademarks Solex.

B. Rights or Legitimate Interests

The Registrant of the domain name at issue has not alleged any facts or elements

to justify prior rights or legitimate interests in the said domain name.

The Complainant does not appear to have licensed after the ending of the license

agreement signed on September 22, 1997, (ceased in September 2000)

with the company JIANGXI HONGDU MOPED CO LTD or otherwise authorized the Respondent

to use its trademarks or to apply any domain name incorporating the trademarks.

The only company, which is currently licensee of the Complainant, is the company

IMPEX HUNGARIA S.A.R.L.: an exclusive license was granted for five years on

January 1, 2001, for cycles and mopeds for the whole world.

The Respondent only uses the domain name in connection with the promotion of

its own product, a moped called "Black’n Roll", which makes no reference

to the name "velosolex", except in its domain name.

In its Response, the Respondent has failed to demonstrate that it has rights

or legitimate interest in the domain name.

Thus, the Panel concludes that the Respondent has no rights or legitimate interests,

within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy to register

a domain name consisting of the well-known trademarks of a third party.

C. Registered and Used in Bad Faith

The Policy (paragraph 4(b)), indicates that certain circumstances may, "in

particular but without limitation", be evidence of bad faith.

The bad faith of the Respondent is established by the following elements:

- The Complainant’s trademarks are well known and the Respondent was aware

of Complainant’s rights to these well-known trademarks at the time of registering

the domain name <velosolex.com>. Previous Panels have held that the awareness

of a Complainant’s mark at the time of registration of a disputed domain name

that is confusingly similar to that mark is evidence of bad faith (see The

Channel Tunnel Group Ltd v. Powell, WIPO

Case No. D2000-0038, and Sony Kabushifi Kaisha also trading as Sony Corporation

v. Sin, Eonmok WIPO Case No. D2000-1007).

- The Respondent refers to a "complex trademark dispute in court proceedings"

but it produces no document relating to such proceedings. Thus, no element proves

that the trademark issues in this case are particularly "complex"

(as mentioned by the Respondent) and not of a nature that can be "adjudicated

in an expedited UDRP proceeding".

- The Respondent has used the domain name concerned in order to attract for

financial gain Internet users by creating a likelihood of confusion with the

Complainant’s trademarks. The disputed domain name links to a website that appears

to be created for the sole purpose of promoting a moped sold by the Respondent

under its own trademark "Black’n Roll", manufactured and marketed

by the Respondent with various mentions such as "She has come back to

France. After many remarkable trips around the world, the most popular moped

ever made in the world is finally being made in France, again". So,

the domain name is used by the Respondent to direct traffic to its site for

commercial gain.

This website also refers to the moped "S3800", the "good

old S3800 is still the same, only better", whereas the iconic model

of the Complainant is also called "3800", corresponding to a black

bicycle. The domain name is <velosolex.com>, but otherwise the home page

and other pages are dedicated to displaying advertisements to moped sold by

the Respondent under its own mark. Clearly, the disputed domain name is being

used intentionally to attract users to these other sites, and thus is evidence

of bad faith. (see Big Dog Holdings, Inc. v. Frank Day, NAF Case No.

FA0093554).

- Such bad faith is further exacerbated in this case because Respondent uses

the disputed domain name to promote the same kind of products (mopeds), but

under other trademarks, than those offered by the Complainant.

Thus, the Panel concludes that the domain name was registered and is being

used in bad faith.

For the above reasons, the Panel decides as follows:

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain name <velosolex.com>

be transferred to the Complainant.

Isabelle Leroux

Sole Panelist

Date: May 12, 2003

More cases by this complainant

• Magneti Marelli Motopropulsion France SAS — D2003-0188 · Terminated

Other cases for this domain

• Velosolex America LLC v. SINBAR S.A.R.L. — D2010-1231 · velosolex.com · Complaint denied · 21 Sept 2010
• SINBAR v. Forsyte Corporation — D2008-1667 · velosolex.com · Transfer · 21 Dec 2008