Viaccess v. Satoliver

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Viaccess v. Satoliver

Case No. D2003-0361

1. The Parties

The Complainant is Viaccess, Paris La Defense Cedex, France, represented by J.-P. KARSENTY & Associés of France.

The Respondent is Satoliver, Ecublens, Switzerland.

2. The Domain Name and Registrar

The disputed Domain Name <viaccess2.com> (hereinafter, the "Domain Name") is registered with Network Solutions, Inc. Registrar.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 12, 2003. On May 12, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the Domain Name at issue. On May 14, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for 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 May 20, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2003. The Response was filed with the Center on June 21, 2003.

The Center appointed Hugues G. Richard as the sole panelist in this matter on June 26, 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.

Regarding the language of the proceeding, even though the general proceeding are held in the English language, the Panel accepts Respondent’s representations in the French language as being part of the file, given the circumstances, namely that, first, Complainant is a French enterprise and therefore understands Respondent’s contentions as they have been submitted and second, that Complainant will suffer no damage from it. For the same reasons, the Panel accepts the Response even though it was filed after the due date.

4. Factual Background

Complainant, a French "Société Anonyme", owns the French and International VIACCESS trademark for products and services of classes 9, 37, 38 and 42. The trademark, which was registered in 1994 by FRANCE TELECOM, was later transferred to VIACESS in 2000. The International registration (registration no. 634 103) applies for Switzerland.

Respondent is a Swiss company which provides products, services and information with respect to satellite services to Internet users.

5. Parties’ Contentions

A. Complainant

1. Identical or confusingly similar

The Domain Name is a reproduction of Complainant’s trademark and company name which leads to confusion.

The Domain Name is used for activities which are similar to those developed by Complainant and for the presentation of products identical or similar to those for which Complainant owns a registered trademark. Indeed, it gives access to a Web portal leading to Respondent’s commercial Website named "Tout par satellite" (in English, "All by satellite").

Moreover, an e-mail exchange between Complainant and a third company which was misled by the <viaccess2.com> Domain Name and thought having referred to the VIACCESS Official Website is evidence of actual confusion.

2. Rights or legitimate interests

Respondent has obviously never used the Domain Name in connection with a bona fide offering of goods or services, and was never seriously prepared to do so. Conversely, Respondent refers on its website located at <toutparsatellite.com>, to which is linked the <viaccess2.com> Domain Name, to the upgrade of a deciphering system for satellite programs, which Respondent improperly names "viaccess 1" and "viaccess 2". These systems do not correspond to any technology developed by Complainant and consequently will mislead its clients looking for information regarding the real products and services developed by Complainant. Furthermore, Respondent is in no way authorized to give any information on the systems developed by Complainant.

Moreover, Respondent has never been commonly known by the Domain Name, since the web page linked to this Domain Name leads to the commercial website of Respondent, which has the same name as its physical store, "Tout par satellite" (in English, "All by satellite").

Respondent claims to use the Domain Name for a solely informative purpose, in order to help satellite reception terminals users upgrade their products. In adopting this behavior, Respondent in fact misappropriates for commercial gain Complainant’s goodwill by creating confusion likely to tarnish the VIACCESS trademark. Through its website and therefore thanks to the Domain Name, Respondent explains how to "upgrade to viaccess 2" (according its own expression) decoders which have never been guaranteed by Complainant and some of which are known to be products allowing to pirate encoded satellite programs. Respondent also sells different kinds of subscriptions and accessories concerning satellite reception.

3. Bad Faith

The facts prove that the Domain Name was registered primarily for the purpose of selling the Domain Name registration to the owner of the VIACCESS trademark. Further to Complainant’s claims, Respondent did not hesitate to propose to the Complainant the sale of the Domain Name, highlighting the "time that was invested to satisfy viaccess’s users".

By using the Domain Name, Respondent intentionally attempted to attract for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s trademark. The e-mail exchange between Complainant and a third company which had been misled by the "viaccess2.com" Domain Name thinking it was referring to the VIACCESS Official website clearly establishes this point.

B. Respondent

Respondent alleges, inter alia, that:

The website "www.viaccess2.com" is there to satisfy and help satellite users, since at this time, even of the "www.viaccess.com" website, there is no or very little information on updates and receivers compatibility matters.

The website was registered on several search engines and Respondent invested great energy, time and money to make contact with the manufacturers, to conduct tests on terminals etc. in order for Internet users to find help and information which was otherwise unavailable.

Every request made to Complainant remained unanswered. Indeed, Respondent proposed to sell the Domain Name to Complainant, however Complainant wished to get it for free, now that the Domain Name is known to many retailers and clients throughout the world, and that Respondent has invested a lot of time and worked with many collaborators.

Respondent further submits reactions from its users to the eventual closing of <viaccess2.com>.

6. Discussion and Findings

Pursuant to the UDRP Policy, Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:

(i) that the Domain Name is identical or confusingly similar to a trademark in which it holds rights;

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

(iii) that the Domain Name was registered and is being used in bad faith.

These three elements are considered below.

A. Identical or Confusingly Similar

The Panel is of the opinion that the evidence provided by Complainant supports a finding that Complainant is the owner of the registered trademark VIACCESS and that Complainant has rights in that mark.

While the Domain Name is not identical to Complainant’s VIACCESS mark, the Panel finds that they are confusingly similar. The test of confusion in comparing the words or marks at issue is from the stand point of the average unwary consumer, looking at the marks in their totality, having an imperfect recollection of the former.

The Domain Name incorporates in whole Complainant’s famous registered

VIACCESS mark and the only deviation is that Respondent has added the number

"2" as a suffix. The Panel adopts the finding in Viacom International

Inc. v. MTVMP3.COM, WIPO Case No. D2001-0275,

Parfums Christian Dior v. Netpower, Inc., WIPO

Case No. D2000-0022 and The Tylonol Company v. Farmacias Mexicana,

SA DE CV, WIPO Case No. D2002-0597 where

it was decided that the addition of a generic term to a trademark (such as VIACCESS)

creates a Domain Name that is confusingly similar to the trademark. Because

the Domain Name refers to "VIACCESS", consumers are likely to believe

that they refer to websites that concern Complainant’s products.

Given that the Domain Name is confusingly similar to Complainant’s registered trademark, since it merely adds the number 2 to the trademark, the Panel is of the opinion that Complainant has readily met the burden of proof as stated by paragraph 4(a)(i) of the UDRP Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the ICANN Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been commonly known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.

In this regard, the Panel refers to its decision in Pivotal Corporation

v. Discovery Street Trading Co. Ltd., WIPO

Case No. D2000-0648. The Panel is of the opinion that, once lack of legitimate

rights or interests has been alleged by a complainant, the respondent is obliged

to adequately address this issue. This finding is supported by the various means

which are available to a respondent under the ICANN Policy to show legitimate

right or interest, on a balance of probabilities.

First, Respondent has not even attempted to explain or rebut the indications that it has not made any commercial use of the Domain Name, by which it could have established that it has rights or legitimate interest in the Domain Name. Its mere assertions that it provides information for satellite users is not sufficient to establish that it has rights or legitimate interests in the Domain Name.

Moreover, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name given there exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the Domain Name. There is no evidence of any commercial relationship between Complainant and Respondent which would entitle Respondent to use Complainant’s trademark.

Respondent has alleged that it has incurred numerous expenses related to the

Domain Name in order for satellite systems users to find useful information

on the Internet. However, Respondent has not produced satisfactory evidence

to support its claim that it was using the Domain Name in any legitimate manner.

Notwithstanding the fact that no evidence was produced to account for any expenses,

the Panel is of the opinion that the sole fact that Respondent incurred expenses

does not infer a legitimate right or interest to Respondent. The Panel adopts

the findings in Société des Bains de Mer et Cercle Des Étrangers

à Monaco v. Global Productions- Domain for Sale, WIPO

Case No. D2000-1332.

In addition, the fact that Respondent attempted to sell the Domain Name would

tend to demonstrate that it does not use the name for any legitimate purpose

and can therefore reveal no legitimate interest or rights in the Domain Name.

See for example Virtuel Culture & Loisirs SA and GIE Casinos Conseil

& Service v. Bearnais Traders and Mrs. Rayna Strike, WIPO

Case No. D2002-0650.

Moreover, the Panel is of the opinion that the evidence provided by Respondent does not support a finding of legitimate rights or interests of the Respondent pursuant to paragraph 4(c)(ii) i.e. that Respondent is not commonly known by the Domain Name, since the web page linked to the Domain Name leads to Respondent’s commercial website "Tout par satellite", the name of its physical store.

Additionally, the Respondent is not making a legitimate non-commercial or fair

use of the Domain Name, pursuant to Policy 4(c)(iii). According to the evidence

submitted by Complainant and not rebutted by Respondent, Respondent has the

Domain Name linked to its own website which offers competing goods and services,

such as satellite reception subscriptions and accessories that have never been

guaranteed by Complainant and some of which are alleged to be products allowing

to pirate encoded satellite programs. Assuming this to be so, then the Domain

Name would lead to a site that offers commercial services unrelated to the Domain

Name which is then evidence that "the Respondent is seeking to gain advertising

or other revenues from mis-typed Domain Name". See Williams-Sonoma, Inc.

v. Polanski, WIPO Case No. D2001-0236

(April 5, 2001).

The Panel is of the opinion that Complainant has discharged its burden of demonstrating that Respondent has no legitimate right and that there is no evidence to support any finding of a legitimate right or interest in the Domain Name on behalf of Respondent.

C. Registered and Used in Bad Faith

It is often quite difficult to actually show bad faith with concrete evidence. While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be assimilated to bad faith.

The Panel’s understanding of the Policy is that although the initial burden to prove Respondent’s bad faith in the registration or the use of the disputed Domain Name relies squarely on the shoulders of Complainant, such an obligation is only to make out a prima facie case, and once it has done so, as it did in the present case, it is then incumbent upon Respondent to either justify or explain its business conduct (if not to demonstrate the contrary). Failure to do so will, in some circumstances, enable the Panel to draw negative inferences.

In the present case, the Panel finds that, since Complainant's trademark VIACCESS

was registered in France as well as internationally (including Switzerland),

compounded by the fact that Respondent seems to be a direct competitor of the

Complainant (dealing in the selling of satellite products and services), it

is very unlikely that when Respondent registered the Domain Name, it wasn't

aware that it was infringing on Complainant's trademark rights (see e.g. Expedia,

Inc. v. European Travel Network, WIPO

Case No. D2000-0137).

Furthermore, the Panel is of the opinion that the Domain Name is so obviously

connected with Complainant’s trademark and its services that its very use by

someone with no connection with Complainant suggests "opportunistic bad

faith" (see Parfums Christian Dior v. Javier Garcia Quintas and

Christiandior.net, WIPO Case No. D2000-0226

and Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix

Group Co., WIPO Case No. D2000-0163).

Moreover, the Panel is of the opinion that the evidence, as submitted by the

Complainant, tends to demonstrate that Respondent registered the Domain Name

with the purpose of intentionally attempting to attract, for commercial gain,

Internet users to its website by creating a likelihood of confusion with Complainant’s

trademark as to the affiliation of a service on Respondent’s website and by

using the goodwill and positive reputation in the field of satellite services

and equipment attached to the Complainant's VIACCESS trademark. See Snapple

Beverage Corp. v. Telmex Management Services, WIPO

Case No. D2002-0114. The e-mail exchange provided by Complainant is blatant

evidence of actual confusion among consumers and further establishes this issue.

It is the Panel's opinion that Respondent attempts to piggyback on the goodwill

vested in Complainant's trademarks and finds that this behaviour, in line with

paragraph 4(b) of the UDRP Policy, constitutes evidence of bad faith in

the registration and use of the Domain Name. See for instance Crown Audio

Inc., D/B/A Crown International v. Yuri Gutsatz Réalisation, WIPO

Case No. D2001-0722.

The explanations given by Respondent in its letter to WIPO dated June 20, 2003, have not convinced the Panel that it registered and used the Domain Name in good faith.

Moreover, the evidence arising from both parties demonstrates that Respondent

at some point intended to sell the Domain Name to Complainant. The Panel finds

this fact, considering the general circumstances of this case, to be evidence

of bad faith registration since it establishes that Respondent registered the

Domain Name with the purpose of selling it to Complainant. See Fortuneo v.

Johann Guinebert, WIPO Case No. D2001-0781,

Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph

Philus, WIPO Case No. D2000-0166 and

Pebble Beach Company v. Telmex Management Services, WIPO

Case No. D2002-1068.

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 <viaccess2.com> be transferred to the Complainant.

Hugues G. Richard

Sole Panelist

Date: July 10, 2003