WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlantic, Société Française de Développement Thermique v. Dowd, Kevin
Case No. D2007-1063
1. The Parties
The Complainant is Atlantic, Société Française de Développement Thermique, La Roche Sur Yon, of France, represented by Lepeudry et Associés, France.
The Respondent is Dowd, Kevin, Niantic, Connecticut, of the United States of America.
2. The Domain Name and Registrar
The disputed domain name <atlantic.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed in French with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2007. On July 23, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name(s) at issue. On July 23, 2007, 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. 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”), subject to the issue of the language of the proceedings which shall be addressed below.
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 was August 26, 2007. However, the Respondent already filed a Response with the Center on August 3, 2007. On this basis, the Center contacted the Respondent by email of August 6, 2007 in order to acknowledge good receipt of his early response and to inform him that the 20 days period for the Response was starting that day so that the Respondent shall have the opportunity to change the Response or make additional submissions. The Respondent did not change his early Response and did not file either any additional submission.
The Center appointed Jacques de Werra, Christian Gassauer-Fleissner and David H. Bernstein as panelists in this matter on September 20, 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.
By email of July 23, 2007, Network Solutions, LLC informed the Center that the language of the registration agreement relating to the Disputed Domain Name was English. By an email of August 6, 2007 to the Parties, the Center informed them that the Center accepted the Complaint which was filed in the French language, that it also accepted the Response in the English language, and that the Panel shall decide on the issue of the language of the proceedings. On this basis, the Panel decides pursuant to paragraph 11 of the Rules that the language of the proceedings shall be English which is the language of the registration agreement relating to the Disputed Domain Name, even though the Complaint was filed in French and the exhibits attached to the Complaint are also in French. The Panel did not consider it necessary to request an English translation of these documents given that it understood them in their original language.
4. Factual Background
The Complainant is a French company which is in the business of manufacturing and selling heating and air conditioning systems. The corporate name of the Complainant contains the term “atlantic” since 1987 (i.e. “ATLANTIC Société française de développement thermique”).
The Complainant is the owner of the following trademarks (hereafter: the “Trademarks”):
- French word trademark ATLANTIC, number 1656415 filed on October 12, 1957, and periodically renewed since then covering various goods in classes 6, 7, 9, 11, 19, 20 and 21;
- International word trademark ATLANTIC, number 634551, registered on March 29, 1995 for various goods in classes 6, 11 and 19 and covering several countries (including Australia, Benelux, China, Italy, Poland and the United Kingdom).
The Disputed Domain Name was registered by the Respondent on January 22, 1993. Based on the evidence provided by the Respondent as well as on publicly available sources consulted by the Panel1, including the “wayback machine”2, it appears that the Disputed Domain Name was used by the Respondent as the website of the Respondent’s company which provided information technology services (most specifically IT security services) and was called “Atlantic Computing Technology Corporation”.
Based on evidence filed by the Parties and on independent research conducted by the Panel, it appears that the Disputed Domain Name was more recently used by the Respondent in order to refer to a category of sailboats (the Atlantic class sailboats) one of which Respondent claimed is owned and actively used by him. Respondent states that a picture of the Atlantic sailboat that is owned by him can be seen on the homepage of the Disputed Domain Name.
Based on the exhibits filed by both the Complainant and the Respondent (i.e. printouts of the homepage of the Disputed Domain Name), it also appears that the Disputed Domain Name was recently offered for sale by the Respondent. The relevant text relating to such sale (based on a printout dated July 13, 2007) was as follows:
“The domain altantic.com is for sale. The domain was first registered in 1993 for Atlantic Computing Technology Corporation. It has been used solely in connection with Internet security and Atlantic class sailboats to-date. The domain is being offered by the original registrant.
Domain will be listed for auction in the next week at an opening price of $100K US. Correspondence should be sent to [email/address@atlantic.com]“.
5. Parties’ Contentions
A. Complainant
The Complainant first contends that the Disputed Domain Name is identical to the Trademarks and claims that the ATLANTIC Trademark is well known in France by reference to a recent French court decision.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has not used, or has not made demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services and because the Respondent has not been commonly known by the Disputed Domain Name.
Regarding the condition of registration and use in bad faith of the Disputed Domain Name, the Complainant contends that the Respondent has registered the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.
B. Respondent
The Respondent contends that he registered the Disputed Domain Name in 1993 for business purposes, that the Disputed Domain Name was chosen because of a connection to his family – a class of sailboat, “Atlantic One-Design”. The Respondent claims that he used the Disputed Domain Name for seven years in business as president of Atlantic Computing Technology Corporation and then as part of Integralis Ltd., following a merger of Atlantic Computing Technology Corporation with Integralis, Ltd. in 2000. He contends that the ownership of the Disputed Domain Name was contested after his departure from Integralis, and that he entered into a settlement agreement with Integralis in 2006 under which the Respondent paid USD 75’000 plus legal fees and which contained covenants prohibiting the Respondent from using the Disputed Domain Name in a business which would compete with Integralis Ltd. for a certain period of time (which is not disclosed by the Respondent). The Respondent claims that in the meantime he is using the Disputed Domain Name to highlight Atlantic class sailboats and particularly his own Atlantic class sailboat which constitutes a legitimate use of the Disputed Domain Name. The Respondent also claims that the Disputed Domain Name has been in continuous use for 14 years. He also alleges that he has met financial challenges since the later part of 2006, so that the Respondent offered the Disputed Domain Name for sale at the same time as he was using it in connection with Atlantic class sailboats.
Regarding the three cumulative conditions of paragraph 4 of the Policy, the Respondent claims regarding the first one that the trade name Atlantic is very common. Regarding the second one, which relates to the rights or legitimate interests of the Respondent with respect to the Disputed Domain Name, the Respondent claims that the Disputed Domain Name was registered by the Respondent and used for legitimate purposes for 14 years and that he never received a complaint that its use interfered with another’s trademark. He also claims that the Disputed Domain Name currently hosts a non-commercial site dedicated to Atlantic Class One-Design sailboats, one of which is owned by the Respondent. The photograph of the sailboat in the upper right hand corner of the homepage of the Disputed Domain Name is a photograph of the Respondent’s own Atlantic Class sailboat (sail number 30). Links on other parts of the homepage of the Disputed Domain Name further connect to organizations where the Respondent has participated in sailing, and one organization where the Respondent has acted as an officer. Consequently, the Respondent contends that the domain is being used for a bona fide purpose.
The Respondent claims that the past and current uses of the Disputed Domain Name <atlantic.com> have always been for legitimate commercial or non-commercial purposes and that the Disputed Domain Name was never used to mislead consumers or tarnish others’ trademarks. The Disputed Domain Name was acquired for legitimate business use by the Respondent 14 years ago, and is now employed in a legitimate use in association with Atlantic Class sailboats perhaps until such time as the covenants on the agreement with Integralis, Ltd. will expire.
Regarding the third element relating to the registration and use in bad faith of the Disputed Domain Name, the Respondent claims that the subsequent offers of the Disputed Domain Name for sale were not in excess of out-of-pocket expenses for costs related directly to it, because the cost of the settlement with Integralis, Ltd. was $75,000, plus legal fees, plus the time-value of money. The Respondent states in this respect that a copy of the agreement with Integralis, Ltd. has not been attached to the Respondent due to its confidential nature and leaves the Panel to decide whether it shall require evidence of the existence and the content of this agreement to the extent deemed material.
The Respondent further contends that the registration of the Disputed Domain Name in 1993 and its subsequent use have produced no interaction with the Complainant’s Trademarks to the best of the Respondent’s knowledge, that the Respondent has never been contacted by consumers confused by the use of the Disputed Domain Name with respect to the Complainant’s Trademarks. He also claims that the registration of the Disputed Domain Name was not made with any consideration of preventing the Complainant from reflecting its mark nor confusing its consumers nor to disrupt the Complainant’s business. The Respondent claims that the Disputed Domain Name has been registered for 14 years and used in Internet Security offerings and sailboats and that it has never been used to sell heaters, blowers, or air conditioners which is the business of the Complainant. The Respondent finally contends that the Disputed Domain Name is not in commercial use at present but is rather solely informational and provides links to other Atlantic Class sailboat resources. Accordingly, it plays no commercial role in attracting Internet users away from Complainant’s Trademarks or misleading consumers.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The 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) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its rights in the ATLANTIC trademark, by virtue of the Trademarks.
The Panel finds that the Disputed Domain Name is identical to the Trademarks given that it simply replicates the Trademarks in their entirety.
The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In this case, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has not used, or has not made demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services and because the Respondent has not been commonly known by the Disputed Domain Name.
The Respondent has however established that the choice of the Disputed Domain Name at the time of its registration (in 1993) can be explained by reference to the company called “Atlantic Computing Technology Corporation” which was run by the Respondent and was offering information technology services. On this basis, the Panel is prepared to consider that the Respondent had a legitimate right and interest in the Disputed Domain Name in the past because he used the Disputed Domain Name in connection with a bona fide offering of goods or services at that time.
However, the Panel has to consider whether this past commercial use made of the Disputed Domain Name which has now ceased can as such justify the finding of a right or legitimate interest of the Respondent in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy.
As this results from the statements made by the Respondent himself, the type of use made of the Disputed Domain Name has indeed changed since then and the Respondent has in the recent times stopped to use the Disputed Domain Name in connection with commercial services. The Respondent explains in this respect that he would not have had the right to use the Disputed Domain Name for any commercial services which would be competing with the ones of Integralis Ltd which is the company with which its own company merged in 2000 as a result of a covenant contained in a settlement agreement which was entered into with Integralis Ltd in 2006 (which was not disclosed in these proceedings)3.
The Respondent claims that he now uses the Disputed Domain Name in connection with Atlantic Class sailboats, one of which is owned by the Respondent and is shown on the homepage of the Disputed Domain Name. On this basis, the Respondent claims that he is making a legitimate non-commercial use of the Disputed Domain Name, without intent for commercial gain, and without any intent to misleadingly divert consumers or to tarnish the Complainant’s Trademarks (by reference to paragraph 4(c)(iii) of the Policy). The Panel notes that no evidence has been brought by the Complainant that supports a claim that Respondent exhibited any intent to use the Disputed Domain Name to misleadingly divert consumers or to tarnish the Complainant’s Trademarks.
Whether the Respondent’s current use of the Disputed Domain Name can support a claim of legitimate interest is a difficult question. On the one hand, the term contained in the Disputed Domain Name (i.e. Atlantic) is a basic geographic designation which, as such, cannot be compared to a fanciful, arbitrary and distinctive term which would have been created and would be exclusively owned by the Complainant and from which it could have been inferred that the Respondent would have had the intent to capitalize on or to tarnish such fanciful trademark of the Complainant. The Panel notes that Respondent claims that the choice of the Atlantic term and the use of this term in the Disputed Domain Name is justified because the website to which the Dispute Domain Name resolves refers to a specific class of sailboats (Atlantic Class sailboats) for which the Respondent has a true interest (as established by the fact that the Respondent sails with one such sailboat). On the other hand, the Panel notes that the descriptive texts about Atlantic class sailboats on the homepage of the website appear to be identical to texts which are available on other websites relating to this class of sailboats. As a result, the Panel cannot refrain from holding it possible that this content has been added by the Respondent in order to try to justify the use of the Disputed Domain Name. The Panel has found out in this respect that - based on an independent research that it conducted - the Disputed Domain Name did not contain any texts or images referring to Atlantic Class sailboats a few months ago and was simply offered for sale for a significant price ($350,000 USD). From this perspective, the Panel notes that there are at least doubts that the recent use of the Disputed Domain Name by the Respondent can be considered as maintaining rights or legitimate interests of the Respondent with respect to the Disputed Domain Name within the meaning of paragraph 4(a)(ii) of the Policy. This doubt is reinforced by the fact that the Disputed Domain Name has continued to be clearly offered for sale by the Respondent on its homepage in addition (and next) to the textual and visual references made to the Atlantic Class sailboats.
Whether the lack of originality and the offer to sell the Disputed Domain Name in this context undermines a claim of legitimate interest is a close and difficult question. Because of the difficulty of this issue and the fact that the Panel’s decision on bad faith (see below) is dispositive of this matter, the Panel does not have to decide the issue of legitimate interest and therefore declines to do so.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the Disputed Domain Name can be considered to have been used and registered in bad faith if:
(i) circumstances indicating that the Respondent has registered and has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) the Respondent has registered the Disputed Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iii) by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
Under the Policy, Complainant can prevail only if it can show both that Respondent is using the Disputed Domain Name in bad faith and also that Respondent registered the Disputed Domain Name in bad faith.
The Panel considers in this respect that no evidence has been brought by the Complainant from which it would have been demonstrated or from which it could be inferred that the Respondent knew or had reasons to know about the Complainant’s Trademarks at the time when he registered the Disputed Domain Name in 1993. Rather, the Panel notes that the Atlantic name which is contained in the Disputed Domain Name is a basic geographic designation and not a fanciful and distinctive term, that the Respondent appears to have had a legitimate business reason for choosing that term as his domain name in 1993 given that it corresponded to the distinctive element of the company name that he was running at that time, and that the Complainant has not established that the Trademarks would be well known and famous trademarks globally or at least in the United States of America which is where the Respondent is based (this could potentially have resulted from the fact that the Complainant would have established an intensive business activity in the United States so that the Trademarks could have been considered to be famous there). It thus appears unlikely that Respondent registered the Disputed Domain Name in 1993 with a bad faith motive as concerns Complainant’s Trademarks. On this basis, the Panel is ready to hold that, given that bad faith cannot be admitted in circumstances in which the Respondent was unaware of the Complainant’s Trademarks, no registration in bad faith of the Disputed Domain Name can be reproached to the Respondent. See National Trust for Historic Preservation v. Preston, WIPO Case No. D2005-0424.
From this perspective, given that the conditions of registration and use in bad faith under paragraph 4(a)(iii) are cumulative (see Guildline Instruments Limited v. Anthony Anderson, WIPO Case No. D2006-0157) and that the registration of the Disputed Domain Name was not made in bad faith by the Respondent in 1993, the Panel holds that the condition of registration and use in bad faith under paragraph 4(a)(iii) of the Policy cannot be met in this case.
For these reasons, the Panel finds that the Complainant has not satisfied the third requirement of paragraph 4(a) of the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
|
Jacques de Werra | |
|
Christian Gassauer-Fleissner |
David H. Bernstein |
Dated: October 4, 2007
1 It being noted that the Panel has the ability to consult such sources and to conduct independent research at its discretion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 4.5
2 “www.archive.org” whereby this popular website retrieval tool has also been used by other panels for their independent research. See Gaylord Entertainment Company v. Nevis Domains LLC, WIPO Case No. D2006-0523.
3 The Respondent expressly stated in his response that the settlement agreement with Integralis Ltd. could be disclosed to the Panel to the extent required; the Panel however considers that the content of this settlement agreement is of no relevance for deciding this case.