Cegetel v. Mr. Alain Robert

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cegetel v. Mr. Alain Robert

Case No. D2003-0799

1. The Parties

The Complainant is Cegetel, Paris La Defense, France, represented by Cabinet Ores, France.

The Respondent is Mr. Alain Robert, Marseille France.

2. The Domain Name and Registrar

The disputed domain name is <7cegetel.com> and is registered with BookMyName SAS.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 9, 2003. On October 9, 2003, the Center transmitted by email to BookMyName SAS a request for registrar verification in connection with the domain name at issue. On October 13, 2003, BookMyName SAS 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 October 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 3, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2003.

The Center appointed William Lobelson as the sole panelist in this matter on November 17, 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.

The language of proceedings is English.

4. Factual Background

The Complainant is well known in France as a major telecommunication operator, offering in particular under the brand "LE 7 DE CEGETEL" telephone services to individuals and companies.

It owns a number of French and Community registered trademarks for "CEGETEL" on the one hand and "LE 7" or "LE 7 AUTOMATIQUE" on the other hand.

The Complainant has found out the existence of the domain name <7cegetel.com>, registered on June 19, 2003, with the Registrar "BookMyName" by Mr. Alain Robert, the Respondent.

On July 7, 2003, the Complainant asked a bailiff to witness that the domain name was owned by the Respondent, and that it pointed towards an active web site dedicated to a direct marketing business. The said web site does not refer at any moment to the name "7Cegetel", but to brand "Declic-Marketing" that apparently is used in relation to a service of access to e-mails data base for the purpose of forwarding "spams".

On July 18, 2003, the Complainant sent a cease-and-desist letter to the Respondent via e-mail (as the Respondent failed to identify its postal address in the Registration Agreement of the domain name), seeking an amicable transfer of the disputed domain name.

In a response dated July 23, 2003, the Respondent declined to transfer the domain name for free, explaining that the registration of domain names is not regulated, that the principles applicable to general trademark law would be irrelevant, that many domain names corresponding to protected trademarks are not owned by the trademark owners (giving precise examples such as "www.france2.com") and that the jurisprudence would be favorable to him. The Respondent, after having declared that a Tribunal would not accept the Complainant’s claim, suggested to study a proposal from the Complainant for purchasing the domain name.

The Complainant then filed the Complaint with the Center on October 9, 2003.

After being notified the same, and even though the Center notified his default

on November 7, 2003, the Respondent sent an e-mail to the Complainant’s attorney

on November 24, 2003, in response to an e-mail notification from the Center

dated November 17, 2003, which was copied to him. The Respondent’s message was

copied to the Panelist. This message was forwarded by the Respondent's attorney

to the Center, along with short comments and the whole was transmitted by the

Center to the Panelist on the same date.

Paragraph 10(b) of the Rules provides that:

"In all cases, the Panel shall ensure that the parties are treated with equality

and that each party is given a fair opportunity to present its case"

Even though the Respondent’s response was issued belatedly and notwithstanding

the fact that this response would not comply with the formal requirements of

the Rules (drafted in French and not addressed to the Center), the Panel is

of the opinion that it should be taken into account in the present case.

Deciding otherwise would amount to treating the Respondent as being in default

and that would not be a fair trial.

The said response is written in French, but the parties in the proceedings

are French, as well as the Panel, and all of them can therefore read and understand

the Respondent’s communication. Accordingly, the Panel is satisfied that the

"principe du contradictoire" is respected.

The content of the Respondent’s message dated November 24, 2003 directed to

the Complainant’s attorney is as follows (as translated by the Panel).

"Hello,

All of this is bullshit !

Go and take a look at France2.com and France3.com and http://www.whitehouse.com.

Register your domain names in .fr or .tm.fr and change your web staff !

And what about filing cegetel7.com in China ???

And cegetelfrance.com, cegetel-france.com.

In brief, I am a fair player, I let you register the domain names hereafter

and I propose the purchase of the name :

7cegetel.com for only : 1500 EUR !

Wouldn’it be cheaper than a trial ?

I await your response.

Alain ROBERT"

5. Parties’ Contentions

A. Complainant

The Complainant sustains that the disputed domain name <7cegetel.com>

is confusingly similar to its registered trademarks "Cegetel" and

"Le 7", as well as its own domain names <cegetel.com>, <cegetel.fr>

and <le7.fr>; that the Respondent has no legitimate interest in the domain

name for he was not authorized to register or use it, nor does he otherwise

uses the name Cegetel in the course of business; that when the disputed domain

name was registered, the Complainant was already very well known in France under

the brand Cegetel which therefore can be considered as notorious; that the Respondent

being based in France, he could not ignore the existence and fame of the mark

Cegetel; that the domain name is used in relation with an active web site intended

to mislead the public and distract the Complainant’s goodwill; that the domain

has been filed and is used in bad faith because it can be deducted from the

correspondence of the Respondent that he acquired the disputed domain name with

the intent to speculate and offer it for sale to its legitimate proprietor;

also because it is used to point towards a web site intended to promote the

Respondent’s own business through an undue benefit from the Complainant’s goodwill,

reputation and fame; the Respondent’s business is related to sending spams,

which could affect the good reputation of the Complainant; that the registration

of the disputed domain name prevents the Complainant from legitimately using

it; and that the Respondent could not ignore the Complainant’s trademarks rights

when he registered the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions in due time,

but as explained above, he has presented some arguments to justify its refusal

to comply with the Complainant’s requirements and also in response, although

indirectly, to the Complaint, through its e-mail communications of July 23 and

November 24, 2003.

Those arguments deserve to be taken into account.

The Respondent rejects the Complainant’s arguments on the ground that trademark

law would have nothing to do with the registration process of domain names and

that, according to him, a domain name can be registered by anybody even when

the registrant is not the owner of the corresponding trademark.

The Respondent offers to sell the disputed domain name to the Complainant for

a price of 1500 EUR.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns a number of trademarks registered in France and with the

OHIM for "CEGETEL", "LE 7" and "LE 7 AUTOMATIQUE".

The disputed domain name is <7cegetel.com>.

The disputed domain name is not therefore identical to any of the cited Complainant’s

trademarks.

But the said domain name does clearly appear confusingly similar to some of

the Complainant’s trademarks.

In particular, the trademark "CEGETEL", the distinctiveness of which

is not questionable, is entirely reproduced within the domain name <7cegetel.com>.

The addition of the digit "7" before the name "Cegetel"

and the suffix ".com" behind it must be regarded as irrelevant as

they do not create a wording having a meaning of its own and causing the earlier

mark "CEGETEL" to lose its individuality within the domain name. There

is no doubt that the predominant element within the disputed domain name is

"cegetel" which remains distinctive per se and clearly isolable

within the combination "7cegetel.com".

The public, when reading or listening to the domain name shall legitimately

be led to believe that this domain name is a derivation of the trademark "Cegetel",

both having a common origin and being owned by the same company.

The domain name <7cegetel.com> is therefore considered as confusingly

similar to the Complainant’s trademark Cegetel and the Panel is satisfied that

the requirement of Paragraph 4(a)(i) of the Policy is fulfilled.

The Panel does not therefore find it useful to examine whether the disputed

domain name is confusingly similar to the other trademarks invoked by the Complainant.

B. Rights or Legitimate Interests

The Respondent has not brought any element tending to justify his registration

of the domain name <7cegetel.com> or showing that he would have some rights

or any legitimate interest in it.

The Complainant has stressed that it never granted any authorization to the

Respondent to use its trademarks. This is not contested by the Respondent.

And the Panel, from the various factual elements submitted along with the Complaint,

including the communications of the Respondent, is convinced that the Respondent

has no legitimate interest in the domain name.

The Bailiff’s affidavit drawn up on July 7, 2003, revealed that the disputed

domain name was used by the Respondent to enable Internet users to access its

web site. But the Panel observes that the domain name <7cegetel.com> pointed

towards a web site within which there was absolutely no reference whatsoever

to a trademark, service mark or any other commercial message relating to "7Cegetel",

or even "7" or "Cegetel". The said web site refers to a

service identified as "Déclic-Marketing". It is therefore established

that the Respondent does not make any legitimate use of the brands "7cegetel",

"7" or "Cegetel" in the normal course of business.

Consequently, and being emphasized that the name "7Cegetel" is absolutely

not necessary for, nor descriptive of the services offered by the Respondent

on its web site, the Panel is satisfied that the Respondent has no rights nor

any legitimate interest in the domain name <7cegetel.com>.

C. Registered and Used in Bad Faith

Registration in bad faith

It shall be emphasized that, when registering the domain name, the Respondent

did not mention in the Registration Agreement his address, and it is suspected

that this was done on purpose in order to hinder his identification and the

possible notification of cease-and-desist letters or writs. This appears to

the Panel as first hint of bad faith.

The Complainant is very well known in France under the name "Cegetel",

and it has also widely promoted one of its services "Le 7 de Cegetel"

very actively in France for a number of years, from the date when the telecommunications

market was deregulated in France and the major public telephone operator lost

its monopoly. The Complainant then offered, and still offers, a competing telephone

service for individuals and companies, the particulars of which being that its

customers must dial the digit 7 instead of the usual 0 when dialling a phone

number.

Advertising campaigns for the mark "Le 7 de Cegetel" have been spread

all over press, TV, radio and Internet in France.

The Respondent being based in France, it is very unlikely that he was not aware

of the combined use of the trademarks "Le 7" and "Cegetel"

by the Complainant.

It also worth underlining that the Respondent in its communications does seem

to admit that he was aware of the trademark rights of the Complainant: in his

e-mail dated July 23, 2003, and again in his last e-mail of November 24,

2003, he invites the Complainant to register its trademarks as domain names

in ".fr" or ".tm.fr" and he also refers explicitly to other

very well known trademarks (the names of some French TV channels) to explain

that the corresponding domain names can be freely registered by anybody without

interfering with the principles of Trademark Law. In his first communication,

the Respondent indicates that the jurisprudence does not prevent such type of

behaviours, thus implying that he is aware that some Tribunals have already

decided on such cases. If so, and if the Respondent really examined the jurisprudence

relating to such matters, he then knew very well that "cybersquatting"

is always severely punished by French Courts.

Hence, the Panel is convinced that when he registered the domain name <7cegetel.com>,

the Respondent could not ignore the earlier Complainant’s rights vested in this

name and, in the very unlikely event that he would not have been aware that

his behaviour was regarded as unlawful by jurisprudence, made himself guilty

of reprehensible carelessness for having neglected to verify whether the registration

as a domain name of a third party’s mark was lawful or not.

The registration of the disputed domain name must therefore be regarded as

being tainted with bad faith.

Use in bad faith

As established by the Bailiff’s affidavit dated July 7, 2003, the Respondent

was, at this date, using the disputed domain name to point towards a web site

within which a brand or trade name "Declic Marketing" was promoted,

namely a service of offering e-mail addresses for the purpose of so-called "direct

marketing" or "spamming".

The web site of the Respondent does not contain any reference to the brands

"7cegetel", "7" or "Cegetel".

The Respondent does not at any moment justify the use of any of these marks

in the course of its business.

Taking into account the notoriousness in France of those marks, owned by the

Complainant, the Panel suspects the Respondent to have used in bad faith the

domain name <7cegetel.com> in order to unduly benefit at no cost from

the reputation and goodwill of the Complainant’s trademarks in order to attract

customers to his web site.

It is also clearly established from his e-mail of July 23, 2003, and even more

explicitly from his last e-mail dated November 24, 2003, that the Respondent

intends to speculate over the domain name, as he offers to transfer the same

to the Complainant in counterpart for the payment of a price that, evidently,

exceeds the effective cost of registration of a domain name (1500 EUR).

And the Panel observes that the Respondent’s web site is no longer accessible

through the disputed domain name and suspects that the Respondent deactivated

the link after being notified the Complaint, thus tacitly admitting his wrongdoings.

Anyway, use of a domain name does not necessarily imply that the domain

name points towards an active web site (see Telstra Corporation Limited v.

Nuclear Marshmallows,WIPO Case No. D2000-0003).

Even though the disputed domain name is not active at the present time, in

the sense that it does no longer points towards a web page, the Panel considers

that the Respondent keeps on using the disputed domain name fraudulently, as

it withholds the said domain name and only proposes to release it against payment

of money, thus interfering with the Complainant’s legitimate right to use the

domain name. Such a passive holding, furthermore coupled with blackmail, must

be regarded as a fraudulent use of the domain name.

The Panel is therefore convinced that the disputed domain was used by the Respondent

in bad faith when the Complaint was filed and is still used in bad faith at

the present time.

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 <7cegetel.com>

be transferred to the Complainant.

William Lobelson

Sole Panelist

Dated: December 1, 2003

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