Alain Delon Diffusion S.A. .v. Unimetal Sanayi ve Tic A.S.
Case No. D2000-0989
1. The Parties
The Complainant is Alain Delon Diffusion S.A., a company incorporated in Switzerland of 12 rue de Saint-Victor, CH-1206 Geneva, Switzerland.
The Respondent is Unimetal Sanayi ve Tic A.S. of Büyükdere Cad. No. 107/7, Bengün Han, Gayrettepe, Instanbul 80300, Turkey.
2. The Domain Name and Registrar
The domain name at issue is: "alaindelon.com"
and the Registrar is: Network Solutions, Inc
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on August 9, 2000, [electronic version] and on August 11, 2000, [hard copy]. The Center verified that the 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]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is August 24, 2000.
On August 17, 2000, the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case and on August 21, 2000, Network Solutions, Inc transmitted by email to the Center Network Solutions' verification response confirming that the registrant is Unimetal Sanyai ve Tic S.A. and that the contact for both administrative and billing purposes is Mr. Cem Bilginer.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on August 24, 2000, to
this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by September 12, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:
Unimetal Sanayi ve Tic A.S.
Büyükdere Cad. No. 107/7,
Bengün Han,
Gayrettepe,
Instanbul 80300,
Turkey.
to
Bilginer, Cem
Lokomotif A.S.
Hikaye Sokak No. 7/1
Esentepe
Istanbul 80280
Turkey
No Response was received from the Respondents by the due date of September 12, 2000. On September 25, 2000, Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. No reply by the Respondent to the Notification of the Respondent Default was received.
Having received on October 5, 2000, Mr David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panellist. The Projected Decision Date was October 22, 2000. The Sole Panellist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondents.
4. Factual background
4.1 The Complainant
The Complainant, Alain Delon Diffusion S.A. was established in Switzerland in 1978. The Complainant owns the ALAIN DELON trademark [see, paragraph 4.3 below] and its business is the licensing of that trademark for a wide variety of goods [see, paragraph 4.2 below].
4.2 The Complainant's Trade Marks
The Complainant is the registered proprietor of, inter alia, the following trade marks
The countries excluded from the License to Alain Afflelou S.A. (above)
Neckties: sportswear and accessories for men and women; shoes, purses, luggage, belts and other leather products (except clothes)
Hong Kong: China: Macao: Taiwan: Korea: Singapore: Thailand: Indonesia: Malaysia: Philippines: New Zealand: Australia.
S.E.A.T.A.
Cigarettes
The World [except France and French Colonies]
4.4 The Fame and Reputation of ALAIN DELON
The Complainant also points to the 82 films in which the well known French actor, Alain Delon, has featured in the period 1957 to 1990, the 26 films produced by Alain Delon in the period 1964-1990 and a number of theatre roles also. His biography also recites the many prestigious cinema awards which he has received.
Given the fame of Alain Delon as an actor and the extent to which the ALAIN DELON trade mark has been licensed and used, the Complaint avers that the ALAIN DELON trade mark constitutes a well-known mark within the meaning of Art. 6 bis Paris Convention. Whether that is correct or not, the Panel is satisfied that the ALAIN DELON name and mark is well-known internationally.
4.5 The Respondent
In the absence of a Response, all that is known about the Respondent is that it is an organisation located in Istanbul, Turkey. Mr Cem Bilginer, who is the contact for both administrative and billing purposes concerning the domain name in issue, appears to represent the Respondent. The Respondent is also the registrant of a number of other domain names, including the well-known French store, "prisunic.com".
4.6 The Respondent's Activities
The Complaint exhibits other domain names registered by the Respondent including "bongenie.com"; "baronphilippe.com"; and "prisunic.com" which the Complainant states are identical to registered trademarks and which the Panel concludes respectively indicate the businesses of Les Annuaire de Bon Génie; Baron Philippe de Rothschild S.A.; and the Prisunic retail stores.
In the absence of a Response, nothing more is known of the Respondent's activities.
4.7 Correspondence between the parties
The Complaint exhibits a cease and desist letter of August 5 1997, to the Respondent, marked for the attention of Mr Cem Bilginer and Mr Bilginer's reply of August 15, 1997, the material part of which reads:
"We are in the process of organising a big project for selling goods and services in Internet and hold many interesting web names for this purpose.
I will be very glad to inform you our exact plans for the specific website "Alain Delon" once this project will be determined.
I want to tell you however, that we have no intention of creating a website that will endanger the right of your client.
I hope to get in touch with you as soon as a clear decision is made …"
The domain name in issue does not resolve to an active website.
5. Parties' Contentions
A. The Complainant
The Complainant contends that the Respondent has registered as a domain name a mark which is identical to the Complainant's name and mark, that the Respondent has no right or legitimate interests in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith.
B. The Respondent
No Response or any communication has been received from the Respondent.
6. Discussion and Findings
6.1 The Policy paragraph 4a provides that the Complainant must prove each of the following:
● That the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
● The Respondent has no right or legitimate interests in respect of the domain name; and
● The domain name has been registered and is being used in bad faith.
6.2 Identical or Confusingly Similar
The Panel finds that the domain name in issue is identical with the Complainant's ALAIN DELON trade mark and that the first limb of paragraph 4a of the Policy is, therefore, met.
6.3 Rights or Legitimate Interests
Paragraph 4c of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented shall demonstrate the Respondent's rights or legitimate interests for the purposes of paragraph 4a(ii) of the Policy.
6.4 As stated above, no Response has been filed. There is, therefore, no evidence before the Panel to indicate that the Respondent can bring itself within one or more of the circumstances set out in paragraph 4c of the Policy or could otherwise establish rights or legitimate interests in the domain name in issue. Indeed, because the domain name in issue does not resolve to an active website, indications are that the Respondent is incapable of satisfying any of those circumstances. Note the Respondent's communication of August 15, 1997 [paragraph 4.7 above]. Further, the Complainant has not authorised or otherwise permitted the Respondent to use the ALAIN DELON name / mark or to apply or use any domain name incorporating that mark.
6.5 In the Panel's view the Complainant has made a prima facie case showing the Respondent has no rights or legitimate interests and it is for the Respondent to rebut that showing by providing convincing evidence to the contrary. In the absence of a Response, the Panel finds that the Complainant succeeds in establishing the requirements of paragraph 4a(ii) of the Policy.
6.7 Registered and Used in Bad Faith
Paragraph 4b of the Policy sets out circumstances which "… if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith". These circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.
6.8 Registered in Bad Faith
The Complainant points to the following factors:
● Despite the Respondent stating in a communication of December 23, 1997 that he would keep the Complainant in touch with developments relating to its proposed website, the Complainant states that there have been no replies to communications sent to the Respondent since that date.
● The Respondent has registered a number of other well known trademarks as domain names [paragraph 4.6 above].
6.9 Failure to file a Response entitles the Panel to draw an inference adverse to the Respondent [Talk City .v. Michael Robertson Case D2000-0009]. This is consistent with paragraph 14(b) of the Rules. Taking this into account, together with the Panel's finding in relation to paragraph 4a(ii) of the Policy and the factors advanced in the Complaint [paragraph 6.8 above], the Panel takes the view that there is no basis for finding that the Respondent in this case can have had any good faith basis for registering the domain name in issue.
6.10 Use in Bad Faith
Inaction (i.e. passive holding) of a domain name can amount to bad faith use [Telstra Corporation .v. Nuclear Marshmallows Case D2000-0003]. In this case, as the Complaint points out, the Respondent's passive holding of the domain name in issue prevents the Complainant, owner of the ALAIN DELON mark, from reflecting that mark in a corresponding domain name. Further, it is not possible to conceive of any plausible use by the Respondent of the domain name in issue which would not be illegitimate and, therefore, contrary to the Respondent's representation and warranty that registration of the domain name will not infringe upon or otherwise violate the rights of any third party [paragraph 2 of the Policy]. The Panel, therefore, finds that the domain name in issue is being used in bad faith and that the Complainant succeeds in fulfilling the third leg of the requirements under paragraph 4a of the Policy.
7. Decision
For all the foregoing reasons, the Panel decides that the Complainant has satisfied each of the three elements of paragraph 4a of the Policy. Accordingly, the Panel requires that registration of the domain name "alaindelon.com" be transferred to the Complainant.
