UDRP : OMPI D2000-0130 14 06 2000 EI D NEMOURS C AVANT GARDE
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
E. I. du Pont de Nemours and Company v. Avant Garde Composition
Case No. D2000-0130
1. The Parties
Complainant is E. I. du Pont de Nemours and Company, 1007 Market Street, Wilmington, Delaware 19898, U.S.A., represented by Anne F. Chabane, hereinafter « Complainant ».
Respondent is Avant Garde Composition, 8bis rue Bretonneau, 75020 Paris, France, represented by Marine Casin, 12 boulevard Raspail, 75007 Paris, France, hereinafter « Respondent ».
2. Domain Names and Registrar
The domain names at issue are « cromalin.com » and « chromalin.com », hereinafter referred to as the « Domain Names ». The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s first complaint on March 6, 2000. Following the issuance by the Center on March 9, 2000 of a Complaint Deficiency Notification to the Complainant, a revised complaint was submitted on March 21, 2000. The Center verified that the revised complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. Complainant requested one arbitrator only. The formal date of the commencement of this administrative proceeding is March 23, 2000.
On March 8, 2000, the Center transmitted via email to Network Solutions Inc. a request for registrar verification in connection with this case. On March 8, 2000, Network Solutions Inc. transmitted via email to the Center, Network Solutions’ Verification Response, confirming that Respondent is the registrant and that the administrative contact is Guillaume Caris, JBC Multimedia, 8bis rue Bretonneau, 75020 Paris, France, and that the technical contact is Jerome Berthelot, JBC Multimedia, 6/8 rue de la rosiere, 75015 Paris, France. The e-mail address for both is « email@example.com ».
Having verified that the revised complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on March 23, 2000, to Respondent (administrative as well as technical contacts), Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, facsimile and e-mail, to the addresses above as well as to « Postmaster@cromalin.com » and « Postmaster@chromalin.com ».
The Center advised that the Response was due by April 11, 2000.
On April 10, 2000, the Center received the Response. Respondent requested that the Administrative Panel (the « Panel ») consist of three arbitrators, and paid the required fee.
On April 27, 2000, after receiving their completed and signed Statements of Acceptance and Declarations of Impartiality and Independence, the Center notified the parties of the appointment of a three-arbitrator panel consisting of Mr. Geert Glas as the Presiding Panelist, and Ms. Dana Haviland and Mr. Alain Bensoussan as Panelists.
The Panel met by telephone conference call on May 5, 2000. The Projected Decision Date was May 10, 2000, but was extended to May 15, 2000, in regard of the complexity of the case and the fact that all but the Presiding Panelist did not receive Respondent’s Exhibits on time. The three Panelists find that the Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Pursuant to article 12 of the Rules and upon examination of the case, it appeared necessary to the Panel to ask the following questions to the parties:
1. The Parties are requested to further elaborate on the generic/distinctive character of the term « Cromalin ».
2. The Parties are requested to describe in detail the use Respondent makes of Complainant’s products sold under the « Cromalin » trademark and to elaborate on the legal and factual aspects of Respondent’s defense of use of the Domain Names in connection with the « bona fide sales of goods and services ».
3. Respondent is requested to comment on its « TM » reference when using « Cromalin » in his brochure.
This was done on May 18, 2000. A response by the Parties was due for May 24, 2000, by e-mail to the Center with a copy to the Panelists and the other party, and the deadline for the Panel to issue its decision was suspended until May 31, 2000.
The Panel shall issue its Decision based on the Complaint, the Response, the response to the Panel’s questions, the evidence presented, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The complaint is based upon two trademark registrations for « Cromalin », certified copies of which appear in Exhibit A of the Complaint.
These trademarks are:
1. Cromalin (U.S.A.), No. 908568, registered February 23, 1971, renewed February 23, 1991.
2. Cromalin (France), No. 1641439, registered January 30, 1991.
In responding to the Panel’s questions, Complainant added copies of one more trademark registration as well as a list containing a number of other registrations of the trademark « Cromalin » throughout the world. This trademark is:
– Cromalin (Community Trademark), No. 000470864, registered September 8, 1998.
It appears from the database of Network Solutions Inc., that Respondent is the registrant of the Domain Names. Respondent registered « cromalin.com » on December 15, 1998, and « chromalin.com » on July 21, 1999.
Respondent is a company active in the photogravure business. According to Respondent, he has bought from Complainant material and machines, marketed by Complainant under the trademark « Cromalin ». This equipment enables him to manufacture a color control test.
Respondent has a web site that can be accessed with the domain names « cromalin.com », « chromalin.com » and « avantgarde-compo.fr ». It contains information about the company, its products and services offered, the tariffs and conditions, as well as other miscellaneous information.
It should however be noted that none of the Domain Names are advertised, neither on the web site of Respondent, nor on the invoices and commercial documentation as submitted by Respondent as Exhibit B. The domain name « avantgarde-compo.fr » is however prominently displayed on the web site itself as well as on the commercial documentation and invoices.
The first page of Respondent’s web site is depicted below.
5. Parties Contentions
Complainant contends that Respondent has registered the Domain Names which are identical or confusingly similar to Complainant’s « Cromalin » trademarks, that the only goal pursued by Respondent was to take a free ride at Complainant’s detriment by using the Domain Names to intentionally attempt to attract, for commercial gain, internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship and affiliation of Registrant’s web site.
Consequently, Complainant requires the transfer of the Domain Name registration to Complainant.
Respondent contends that there is no confusion possible, that the Domain Names have been issued and are used in good faith in connection with the bona fide offering of goods and services, since he is purchasing Complainant’s products for his activities, and that he cannot be blamed for unfair competition since Complainant and Respondent are at different levels in the market chain. Respondent furthermore alleges that the term « Cromalin » has become generic by the use made over the years to designate color control tests in general.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: « A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. »
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical to the trademark in which the Complainant has right; and,
(2) that the Respondent has no legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and used in bad faith.
The Domain Names are « cromalin.com » and « chromalin.com ».
Cromalin is a registered trademark of the Complainant.
In view of the above, the Panel finds that « cromalin.com » is identical to the trademark of Complainant and that « chromalin.com » is confusingly similar to the said trademark, especially since the added « h » only makes an insubstantial difference in the pronunciation and appearance of the word.
D. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks (to the extent that Complainant’s right is not exhausted) or to apply for any domain name incorporating any of those marks.
However, in his complaint, Complainant has decided not to address this issue as a specific point, and rather to claim that Respondent’s behavior can only be sustained by unfair trade practice. Nevertheless, it is the duty of this Panel to determine, given the elements submitted and the circumstances, whether Respondent has a right or legitimate interest in respect of the Domain Names.
Respondent alleges that he has used the Domain Names in connection with the bona fide offering of goods and services, since he is purchasing « Cromalin » products for its photogravure activity (according to the initial Response), selling products under the general denomination « Cromalin » (according to the additional response).
The panel does not consider that the mere purchase by Respondent as an end-user of products sold under the « cromalin » trademark which are then used in the photogravure process (but not re-sold) should allow Respondent to register the Domain Names, making them thereby unavailable to the trademark owner.
However, the Panel cannot disregard the fact that the use of the domain name « in connection with a bona fide offering of goods or services » is mentioned in paragraph 4c of the Policy as demonstrative of rights or legitimate interests to the domain name.
While the Panel has serious doubts whether Respondent has, based on all evidence presented, such rights or legitimate interests in the given case, it cannot, within the limited framework of the Policy and the Rules, and in view of the wording of Paragraph 4c of the Policy, exclude such finding.
E. Registration and Use in Bad Faith
Several points should be examined and weighed with regard to the registration and use in bad faith:
1. Respondent knew that « Cromalin » is a registered trademark before registering the Domain Names. Indeed, Respondent buys and uses the « Cromalin » products on a regular basis, as supported by the Response and its Exhibits. Although this element does not support an allegation of registration in bad faith, it seems clear that by doing so, Respondent knew that his action was susceptible of infringing upon a third party’s right.
2. Although Respondent has registered the Domain Names since a certain time (according to the database of Network Solutions Inc., Respondent registered « cromalin.com » on December 15, 1998, and « chromalin.com » on July 21, 1999), it should be noted that he does not seem to advertise nor commercially use the Domain Names at all. Indeed, upon examination of the invoices and brochure submitted as Exhibit B to the Response, it appears that the only web address promoted is « www.avantgarde-compo.fr » and the only
e-mail addresses indicated are « firstname.lastname@example.org ». Upon examination of the web site the same statement can also be made. While the address « www.avantgarde-compo.fr » is prominently displayed on the banner of the first page of the web site, the Domain Names cannot be seen anywhere. The Domain Names just cannot be found anywhere on company documents or advertisement.
3. Respondent’s representative, Marine Casin, offered to Complainant to transfer the Domain Names to Complainant for the amount of 500.000 US$. This amount considerably exceeds the costs Respondent might have encountered to acquire the Domain Names.
According to Paragraph 4, b, (i) of the Policy, circumstances indicating that a domain name has been acquired for the purpose of selling or otherwise transferring its registration constitute evidence of registration and use in bad faith.
Concerning this point, it should be noted that this letter cannot be considered confidential (and thus shall be taken into consideration by the Panel) as alleged by Respondent, since under the principles of French law a letter sent by an attorney to another person which is not an attorney himself cannot be considered confidential. In this case indeed, the letter was not addressed to Complainant’s representative, which is an attorney, but to an employee of Complainant. Therefore, the panel shall take it into consideration for the elaboration of this Decision.
4. The web site reached with the Domain Names does not really sell or promote « Cromalin » products. Rather, it describes Respondent’s activities, services offered, tariffs, techniques used, etc.
5. Respondent alleges that the trademark « Cromalin » would have become generic and is currently used to designate color control tests in general. To support this argument, Respondent provides three written statements as well as an entry of the word Cromalin in a dictionary. The Panel considered whether the evidence of the generic nature of the term « chromalin » could be found in favor of the Respondent.
The Panel doubts whether the evidence provided is sufficient to conclude to the genericness of the word « Chromalin ». The Panel could however, in view of the Rules, not definitively answer this question. The Panel can indeed not overlook the fact that it is not equipped to adequately deal with this argument within the limited scope of the Policy and the Rules and that this issue should be dealt with by the courts.
While some of the above-mentioned elements constitute hints that Respondent may indeed have registered and used the Domain Names in bad faith, the claim to generic use in France which cannot be adequately examined in the framework of this dispute resolution procedure, precludes the Panel from finding that Respondent did in fact register and use the Domain Names in bad faith.
In light of the foregoing, the Panel decides that the Domain Names registered by Respondent are identical (as to « cromalin.com ») or confusingly similar (as to « chromalin.com ») to the trademark of Complainant, that it cannot be excluded that Respondent has a right or legitimate interest in respect of the Domain Names, and that Respondent’s Domain Names may not have been registered and used in bad faith.
Accordingly, the remedy requested by Complainant is denied. Respondent shall not be required to transfer the registration of the Domain Names « cromalin.com » and « chromalin.com » to Complainant.
Dated: June 14, 2000