WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Loxam v. Virtual Swimwear International Pty Ltd.
Case No. D2005-1009
1. The Parties
The Complainant is Loxam S.A, of Chateney Malabry, France, represented by Bérengére Egasse and Maria Luisa Arce, Novagraaf, France.
The Respondent is Virtual Swimwear International Pty Ltd, of Sydney, New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <loxam.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2005. On September 23, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On the same date, Network Solutions, LLC 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 administrative, billing, and technical contact is Franck Lefevre, Argentan Normandie Orne France;
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 September 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2005. No Response was filed, and the Center issued the Notification of Respondent Default on October 21, 2005.
The Center appointed Mr. Anders Janson, Ms. Nathalie Dreyfus and Prof. Michael D. Pendleton as panelists in this matter on November 22, 2005. The Panel finds that it was properly constituted. Each member of 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 asserted, and provided evidence in support of, the following facts, which the Panel finds established:
The Complainant, the French company Loxam S.A., is one of Europe’s largest companies in the area of material renting for the building trade, the construction industry, civil engineering and professionals. The Complainant has several specialized affiliates; “Loxam Power”, “Loxam Access”, “Loxam Module”, “Loxam TP” and “Loxam Event”. Loxam S.A has 350 agencies in eight European countries.
The Complainant owns several domain names such as <loxam.fr>, <loxam-power.com>, <loxam-access.com>, <loxam-module.com>, <loxam.de>, <loxam.es>, <loxam.be>, <loxam.ch>.
Furthermore, the Complainant has registered two national trademarks and one international trademark reflecting the term “Loxam”. These are the French national trademarks for “Loxam”, no 94506105, no 97677100 covering the in the classes 7-9, 12, 35,36, 37, 39, 42 and 44. The International trademark “Loxam”, no 631716 is registered for the following goods and services in the following classes; 7, 8, 37, 39 and 42, designating several countries in Europe, Africa and Asia.
The Respondent is a company with a stated address in Australia, who does not have any affiliation with the Complainant, nor is or has been a representative or licensee of the Complainant, or otherwise authorized to use the Complainant’s marks.
The Respondent has offered to transfer the domain name to the Complainant for an amount of USD 50000.
The disputed domain name was registered by the Respondent with Network Solutions. On August 1, 1998, when trying to enter the disputed domain name <loxam.com>, no website connected to the domain name was found.
5. Parties’ Contentions
A. Complainant
The Complainant contends that:
- The disputed domain name is identical and confusingly similar to trademarks or service marks in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name;
- The domain name has been and is being used in bad faith; and
- The domain name <loxam.com> should be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name at issue is <loxam.com>. The Complainant is the holder of a large number of registered trademarks containing the word “Loxam”. The Panel finds it established that the Complainant’s trademark is well-known, distinctive and famous, and used in commerce around the world.
In conclusion, the Panel finds that the Complainant has proven that the disputed domain name and the trademark of the Complainant are confusingly similar.
The Respondent does not contest this supposition.
The domain name must therefore be considered confusingly similar to the trademark “LOXAM”. The Panel holds that the Complainant has established element (i) of the Policy’s Paragraph 4(a).
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent does not have any legitimate interest in the registration of the disputed domain name. The domain name does not appear to be in use for any bona fide offering of goods or services or to be prepared for such use, in fact the domain name is not used at all. There is no indication that the Respondent was known by the name “Loxam” prior to the registration of the domain name. The Respondent is not authorized or licensed to use the Complainant’s mark. There is no indication of a legitimate non-commercial or fair use of the domain name. These assertions are sufficient to satisfy the Complainant’s obligation of making a prima facie showing that Respondent lacks a legitimate interest; the Respondent, by virtue of its default, has failed to rebut that showing.
The Panel therefore holds that the Complainant has established element (ii) of the Policy’s Paragraph 4(a).
C. Registered and Used in Bad Faith
Finally, the Panel has to consider whether the disputed domain name was registered and used in “bad faith”.
Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(i) states that a circumstance indicating bad faith is registering or acquiring a 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 the documented out-of-pocket costs directly related to the domain name.
From the correspondence submitted by the Complainant in the Complaint, the Panel finds it established that the domain name <loxam.com> was registered by Franck Lefevre, which runs his company K1 Informatique in Argentan, France, where a LOXAM store is located.
The trademarks of the Complainant are registered in a number of countries and are used in countries spread over the world. The question is whether the Respondent has registered the domain name in bad faith, i.e. having the Complainant’s trademarks in mind and registering the domain name with the bad faith intention of profiting from the Complainant’s trademark. Although there is no direct evidence, the circumstantial evidence is more than sufficient to support the inference that the Respondent probably was well aware of the Complainant’s trademark at the time of registration. Mr. Franck Lefevre, the Registrant, who runs his business in a small town in France where a Loxam store is located, must have been well aware of this fact.
The more difficult question in this case is whether the domain name “is being used in bad faith” by the Respondent. The domain name <loxam.com> does not resolve to a website or other on-line presence. There is no evidence that a website or other on-line presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the domain name. However, the Panel finds it established that the Respondent has offered to sell, transfer the domain name to the Complainant for more than the “out-of-pocket” costs.
In light of these circumstances, the Panel in this case (as numerous panels before; see, generally, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 and Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003) concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by Respondent.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the domain name, <loxam.com> be transferred to the Complainant.
|
Anders Janson | |
Nathalie Dreyfus |
Michael D. Pendleton |
Dated: December 6, 2005