WIPO Domain Name Decision: D2007-0965

The Complainant is Mondial Assistance S.A.S., of Paris, France, represented by Hunton & Williams, United States of America.

The Respondent is Compana LLC, of Texas, United States of America, represented by Shrull Altman LLP, United States of America.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2007. On July 4, 2007, the Center transmitted by email to budgetnames.com a request for registrar verification in connection with the domain name at issue. On July 12, 2007, budgetnames.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 August 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response August 26, 2007. The Response was filed with the Center August 27, 2007.

The Center appointed David J.A. Cairns, David Perkins and David E. Sorkin as panelists in this matter on October 11, 2007. 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.

On August 2, 2007, the Respondent submitted a request to stay this administrative proceeding. The Respondent stated that court proceedings had been commenced in the United States relating to this dispute between the Parties. The Respondent referred to the discretion of the Panel to suspend or terminate the proceeding pursuant to paragraph 18 of the Policy, and stated that the proceeding should be stayed because any decision by this Panel could prejudice the US proceedings, and in particular might cause prejudice in the jury pool, and so potentially deprive one or both parties of their right to trial by a fair and impartial jury. On August 15, 2007, the Complainant submitted its opposition to the Respondent’s request for a stay on the grounds that there is no legal basis for the request, and no demonstrated risk of prejudice. The Complainant states that there was no clear and compelling reason to grant the stay, which accordingly must be denied.

The Respondent has not demonstrated any potential prejudice to the satisfaction of the Panel, particularly where the issues in the other fora are not clear. This Panel has jurisdiction over this dispute pursuant to the Policy and the Rules, and also is the first forum to be invoked by the Parties. For these reasons the Respondent’s request for a stay is denied.

The Complainant operates in assistance and travel insurance sector, and has a worldwide network to support its business.

The Complainant has three trademark registrations with the United States Patent and Trademark Office, namely, (i) Registration No. 1,375,021 for a design mark consisting of a logo and the words MONDIAL ASSISTANCE and with a disclaimer for the word “Assistance” apart from the mark shown, registered on December 10, 1985 and based on a French application; (ii) Registration No. 2,836,844 for a design mark consisting of a logo and the words MONDIAL ASSISTANCE and with a disclaimer for the words “Mondial Assistance” apart from the mark shown, registered on April 27, 2004 and based on a first use in commerce in 1983. The registration includes the annotation that The English translation of the word “mondial” in the mark is “worldwide”; and (iii) Registration No. 2,730,969 for a design mark consisting of a logo and the words MONDIAL SERVICE and with a disclaimer for the words “Mondial Service” apart from the mark shown, registered on July 1, 2003.

The Complainant uses the MONDIAL ASSISTANCE and MONDIAL SERVICE trademarks in connection with travel services including mobility, domestic services, personal services and client relations services.

The Complainant also owns MONDIAL ASSISTANCE and MONDIAL SERVICE trademarks in many other countries around the world. It does not own any trademark consisting solely of the word MONDIAL.

The Complainant owns some 250 domains which feature the “mondial” name, including <mondial.travel>, <mondial.jobs>, <mondial.mobi>, <mondial.co.uk>, <mondial.us>.

On March 23, 2004 the Respondent registered the disputed domain name. The Respondent has not created a web page using the disputed domain name.

The Complainant contends that the disputed domain name is confusingly similar to trademarks owned by the Complainant or its subsidiaries, that the Respondent has no legitimate rights or interests in the disputed domain name and that the Respondent has registered and used the disputed domain name in bad faith.

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademarks in that the word “mondial” is a prominent word in both of them.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Respondent is in the business of registering generic domains and then selling them, because it has not created a website at the disputed domain name, because it has not used the disputed domain name in connection to a bona fide offering of goods and services, because the Respondent has no registered trademark for MONDIAL or discernible interest in the name, and because there is no evidence that the Respondent has been commonly known by the name. Further, the Respondent would have discovered the Complainant’s trademarks upon performing a trademark search. Finally, the Respondent has not been licensed, authorized, contracted or otherwise permitted by the Complainant in any way to use the Complainant’s trademarks

The Complainant submits that the disputed domain name was registered and is being used in bad faith because the Respondent intends to hold the domain name solely for illegitimate commercial gain thereby compromising Complainant’s trademark. Further, the Respondent’s failure to perform a trademark search before registering the disputed domain name, and its failure to respond to repeated contacts made by the Complainant evidence bad faith. Finally, there is a pattern of registering infringing domain names which is evidenced by the several UDRP disputes of a similar nature in which the Respondent has been involved.

The Respondent submits, firstly, that the Complainant has failed to meet its burden of proof by failing to prove that the disputed domain name is identical or confusingly similar to Complainant’s trademarks, that the Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name is being used in bad faith; and secondly, that the Complainant’s conduct evidences reverse domain name hijacking.

The Respondent contends that the disputed domain name is not identical to any mark in which the Complainant has enforceable rights under the Policy for the following reasons: (i) registered marks must be considered as a whole, and a disputed domain name composed only of one of the words of a trademark that has been disclaimed cannot be considered identical to the Complainant’s trademark that is a stylized image; (ii) “mondial” is a generic and descriptive word that is extremely common in French and is being used by thousands of companies to describe their business as “worldwide” or “global”; (iii) descriptive, generic and geographical terms provide no rights under the Policy even if they are registered, and the Complainant has not registered the disputed name as a standalone word; (iv) given the widespread use of the disputed name and the differences in style and name composition with the Complainant’s registered marks, there is little or no likelihood that the average Internet user would confuse the disputed domain name with Complainant’s marks.

The Respondent asserts that it has rights and a legitimate interest in the disputed domain name since it was the first to register this term as a domain name and the Respondent may fairly buy, use or sell descriptive or generic terms as a commercial domain name regardless of whether they have been registered as marks.

The Respondent submits that the Complainant has failed to prove that the disputed name is being used in bad faith. First, because where a mark is a common term with substantial third party use, the complainant must proffer evidence that demonstrates that the Respondent has specifically intended to confuse consumers seeking out the Complainant; precisely because there are so many other enterprises using the term, one cannot easily conclude that the Complainant must necessarily be the special target. Second, because the Respondent had no actual knowledge of the Complainant’s mark and need not have any such knowledge since the Complainant had no presence in the Respondent’s jurisdiction. Third, the Respondent did not register the disputed domain name for the purposes of selling it to the Complainant and is making a fair use. Fourth, the Respondent was under no obligation to search the USPTO records for it was going to register a generic name which it is allowed to use under the doctrine of “fair use”. Fifth, even if it had performed the search, the Respondent would have found other design marks but nothing to preclude it from registering this generic word; Sixth, failure to amicably settle a dispute and refusal to enter into discussions to transfer or sell a domain name does not constitute bad faith. Seventh, there is not a single “adverse” UDRP decision involving the Respondent that is still standing.

The Respondent contends that Complainant’s conduct evidences reverse domain name hijacking because, having had no success in its attempts to purchase the disputed domain name, the Complainant is attempting to manipulate the Policy to have the disputed domain name transferred to it. This is evidenced by the fact that the “Complainant has blatantly misstated the usage of mondial as a mark”, by the lack of applicable precedents to support Complaint’s position, by its ignoring the widely accepted business model of registering generic domain names, and by the fact that it has chosen to pursue this particular claim while allowing and ignoring other registered domain names such as <mondialassistance.com> or <mondialservice.com>.

The Respondent also submits that a further proof of the Complainant’s bad faith is the submission of a list of its registered domain names which contain marks of several other companies for which the Complainant has no legitimate use in business.

The Panel is required to decide the Complaint on the basis of the statements and documents submitted, and in accordance with the Policy, the Rules and any rules and principles of law that it deems appropriate.

The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

Paragraph 15(e) of the Rules states that if after considering the submission “the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.

The Panel is satisfied that the Complainant owns the United States Patent and Trademark Office registrations for the MONDIAL ASSISTANCE trademarks referred to above, as well as many other international registrations comprising or including the words MONDIAL ASSISTANCE. It does not own any trademark consisting exclusively of the word “mondial”.

The disputed domain name is alleged to be confusingly similar to the Complainant’s trademark because “the word ‘mondial’ is a prominent word in both” (Complaint, paragraph 24). The disputed domain name therefore comprises part of a registered trademark. In these circumstances, whether the disputed domain name is confusingly similar to the trademark depends on the relative distinctiveness of the element of the trademark that comprises the disputed domain name, and the other elements of the registered trademark. For example in Agile Software Corporation v. Compana LLC, WIPO Case No. D2001-0545 the Complainant owned the trademark registration for AGILE SOFTWARE, and the disputed domain name was <agile.com>. The Panel found that “The disputed domain name <agile.com> is confusingly similar to the Complainant’s mark Agile Software, since it includes the distinctive part of the mark”.

Similarly, in this case the Complainant submits that “mondial” is the prominent element of the trademark, but does not elaborate why this is so. The Respondent states that “mondial” is descriptive or generic, and is an extremely common word in the French language.

An additional element in the present case is that the registered trademarks (at least those for which the registrations are in evidence in this proceeding) contain design elements which cannot be reproduced in a domain name which (for the time being at least) must consist of Roman script. There is the question of the significance of the design elements of a registered trademark for the purposes of determining confusing similarity under the Policy. As a matter of logic, the design element is a part of the “trademark or service mark in which the complainant has rights” for the purposes of paragraph 4(a) of the Policy, and therefore should be considered for the purposes of determining “confusing similarity”. However, there is no doubt that the practice of panels has often been to concentrate only on the word element of the trademark for the purposes of comparison with the disputed domain name.

The Panel makes the following observations regarding the distinctiveness of the word “mondial” in this case: (i) “mondial” is a common and descriptive French word and, as the Complainant’s USPTO registration No. 2,836,844 states, translates as the English “worldwide”; (ii) “mondial” is much more distinctive in English than in French because “mondial” has no meaning in English; (iii) English is the most important Internet language, and the Respondent’s registration agreement and the place of the Respondent’s domicile; (iv) the Complainant is a French corporation and has chosen a common and descriptive French word as part of its trademark, and therefore it is appropriate to consider the meaning of “mondial” in French for the purposes of the application of the Policy; (v) the Internet is a world wide phenomenon, and the Panel should not ignore the foreign meaning of a word where, as here, the Respondent makes a reasoned submission that the disputed domain name consists of a generic or descriptive word in a foreign language relevant to the proceeding or the Parties; (vi) in an era of global brands there is increasing recognition in national trademark laws of the meaning of a trademark in translation, for example, the doctrine of foreign equivalents in US trademark law. Indeed, the English translation of “mondial” is explicitly noted in the Complainant’s most recent United States trademark registration; (vii) there is no evidence in this case of secondary meaning attaching to the word “mondial” that might invest this term with distinctiveness.

On this basis, the Panel concludes that the Complainant’s trademark consists of two common descriptive words. “Mondial” and “assistance” are only distinctive in combination, and the Complainant’s submission that “mondial” is the prominent element of the trademark is rejected. As noted, the Complainant does not appear to have a trademark consisting solely of the word “mondial”.

For these reasons, the Panel finds that the disputed domain name is not confusingly similar to the Complainant’s trademark MONDIAL ASSISTANCE. The Complainant has failed to prove the first element of the Policy, and the Complaint is accordingly dismissed.

The Panel is not required to address this element of the Policy in light of its findings on the first element.

Paragraph 15(e) of the Rules refers to several concepts, namely “bad faith”, “Reverse Domain Name Hijacking”, “harassment” and “abuse of the administrative proceedings”, the relationship between which is not entirely clear. However, the key element in this paragraph is bad faith, meaning that if the Panel finds bad faith in the conduct of the Complainant, it should declare so.

Although bad faith is the decisive element of paragraph 15(e), this paragraph is more commonly identified with reverse domain name hijacking, to the extent that the most cited decision, Sydney Opera House Trust v. Trilynx Pty. Limited, WIPO Case No. D2000-1224, requires bad faith and harassment to determine the existence of reverse domain name hijacking (“to establish reverse domain name hijacking, the Respondent must show knowledge on the part of the Complainant of the Respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”).

Another common feature of previous panel decisions is that there is a tendency to identify the bad faith requirement with the degree of the Complainant’s knowledge of its capability of meeting its burden of proof with regard to the mandatory elements of paragraph 4 of the Policy. For example, in carsales.com.au Limited v. Alton L. Flanders, WIPO Case No. D2004-0047 the Panel states that “a finding of reverse domain name hijacking is warranted if the Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the policy”.

However, it is important not to overemphasize the Complainant’s failure to prove the Complaint, to the detriment of the demonstration of bad faith that is the essence of paragraph 15(e). A complainant with a weak claim may present this complaint in good faith. Not succeeding in the complaint does not amount to an attempt at reverse domain name hijacking except when it involves bad faith in an to attempt to deprive a registered domain-name holder of a domain name (paragraph 1 of the Policy).

In the present case, this Panel has found that the disputed domain name is not confusingly similar to the MONDIAL ASSISTANCE trademarks, but the Complainant’s submission on this element was reasonable, and the Panel cannot find that the Complainant knew or should have known it would not succeed on this element.

The other submissions of the Complainant have not required determination, but the Panel does not consider that the other circumstances referred to by the Respondent justify a finding of bad faith. In fact, this appears to be an acrimonious although bona fide dispute between a trademark owner and a Respondent engaged in the commercial exploitation of domain names. This dispute has also lead to litigation in the United States Federal and State Courts. In this Panel’s view, the Complainant has misconceived its trademark rights and has failed in this proceeding, but the Panel declines to find that the Complainant has acted in bad faith, and so the Respondent’s application for a declaration to this effect is dismissed.

David J.A. Cairns
Presiding Panelist

David Perkins
Panelist

David E. Sorkin
Panelist