batigere.com

WIPO Arbitration and Mediation Center

The Complainants are GIE Batigère and SA Batigère, a French groupement d’intérêt économique and a French société anonyme respectively, having their principal place of business in Metz, France.

The Respondent is Sociedad Batigere, a company having its principal place of business in San Salvador, El Salvador.

The domain name at issue is <batigere.com>. The domain name registrar is Network Solutions, Inc.

Complainants filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received by email on May 17, 2001, and in hard copy on May 23, 2001.

On May 21, 2001, the Center transmitted a request for register verification to Network Solutions, Inc. in connection with this case.

On May 25, 2001, Network Solutions, Inc. sent via email to the Center a verification response confirming that the Respondent is the registrant as well as the administrative, technical and billing contact.

The Respondent notified the Center that it required an English translation of the Complaint on May 24, 2001. Complainants filed the amended Complaint with the Center which was received by email on May 30, 2001, and in hard copy on June 1, 2001.

On June 6, 2001, the Center notified Complainants that its Complaint was deficient. The Center received Complainants’ second amendment to the Complaint by e-mail on June 6, 2001, and by hardcopy on June 18, 2001, resolving the deficiency.

On June 21, 2001, 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 (the "Supplemental Rules").

On June 21, 2001, the Center formally commenced this proceeding and notified Respondent that its Response would be due by July 10, 2001. The notification was sent to the Respondent by courier and by email. The courier was not successfully delivered to the Respondent’s address. The email appears to have been transferred without receipt of any "undeliverable" notice.

The Respondent filed its Response with the Center by email and hard copy on July 5, 2001.

Complainants filed a reply to the Response with the Center by email on July 10, 2001, and in hardcopy on July 11, 2001.

Complainants elected a one-member Panel. On July 12, 2001, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the Panelist and set July 25, 2001, as the deadline for issuance of a decision.

Complainants filed a second submission in this matter without the invitation of the Panelist. This is contrary to paragraph 12 of the Rules. Accordingly, the Panelist has decided not to take this submission into consideration in this case.

The following facts are taken from the Complaint and are generally accepted as true in the circumstances of this case.

"The company Batigère SA has direct and indirect holdings in the council-house companies in the Batigère Group. It also owns the French and European Union trademark BATIGERE…

The GIE Batigère benefits from a licence to use the trademark BATIGERE…It especially deals with communication and trademark promotion and manages the website <batigere.fr>, .net, org…

Mr SCHOENBERGER Robert…registered the trademark BATIGERE on May 14, 1982 under the n° 1 207 148 in the classes 19, 36 and 37.

The trademark has been transmitted by simple contract to the SA Batigère (registered by the INPI on August 6, 1996) and then licenced by simple contract to the GIE Batigère (registered by the INPI on February 27, 1998)

The complainants have made :

- a registration of the trademark BATIGERE as a European Community trademark in the classes 36, 37 and 42 on May 3, 2001

- in May 2001, a request to the INPI to enlarge the registration of the trademark BATIGERE to the class 38.

The trademark is used by the Complainants to characterize the activities of their companies in the scope of housing and real estate services : social rental housing with a patrimony of 45.000 accommodations in Lorraine, Alsace, Ile-de-France, Rhône-Alpes, Bourgogne and Champagne-Ardennes ; the "1% logement" with 3.540 client companies ; real estate loan companies ; building up dwelling-houses and real estate services provided to individuals and institutional clients.

While the GIE Batigère wanted to register the domain name <batigere.com> in November 2000, it discovered that an individual, Mr. Sébastien Schmitt…had already registered it. A request for the destruction of the domain name was filed on February 28, 2001, at the condition to pay 149 F to Mr. Schmitt.

The domain name <batigere.com> came into the public domain and, when the company Batigère was about to register it, a Bolivian company, batigere.com, seated Pral8, Bolivia, ch 31235 registered the domain name on March 20, 2001.

In fact, on May 15, 2001, the domain name’s registrant and contacts had changed for the benefit of a company Sociedad Batigere, seated #C-2, P G Esc y 103 A Nte, San Salvador, San Salvador 00000 SV."

Complainants and Respondent make the following allegations. The legal issues are discussed in the next section of this decision.

In respect of the domain name being identical or confusingly similar to a trademark or service mark in which the Complainants have rights, Complainants allege that:

"It is clear that the complainants’ domain names and trademark are completely identical to the domain name registered by the Respondent.

This property is very confusing for internet users who try to find the company Batigère by keying the URL <batigere.com> in the navigation bar. They are then informed that the website does not exist."

The Respondent claims that:

"It appears that the complainant applied for its EC trademark on April 18, 2001, which is after we registered the domain. Therefore, this EC trademark can not be considered in this case. When we registered the domain, the complainant only had a French trademark that nobody is aware of outside France."

Complainants contend that the Respondent has no rights or legitimate interests in the domain name on the basis of the following elements:

"The Respondent does not justify of (sic) any right on this domain name and it appears very strange that the domain name’s registrant has already changed, being transferred from a company seated in Bolivia to a company seated in the State of Salvador in the period March 20, - May 15, 2001."

The Respondent asserts that:

"One of our members decided to register <batigere.com> for our society, but found out that the domain was already registered. However, we also found out that the domain's registration was in the process of being cancelled by the registrar. So we paid Mr. Somoza to register the domain for us, once it was dropped from the database and made available again. As the complainant points out, it was registered on March 20, 2001.

Mr. Somoza was unaware of the complainant's trademark when he registered the domain. He registered the domain on our behalf, as it is the name of our private society. The complainant is upset because Mr. Somoza beat him to the domain's registration once it was dropped from the database.

Mr. Somoza transferred the domain to our Nameit.net account on May 11, 2001…[T]he registrant in nameit.net's whois is "Sociedad Batigere".

It should now be clear that the domain was registered for our organization, Sociedad Batigere, and responds to the complainant's comments about the change from Mr. Somoza's contact details to ours."

Complainants claim that the domain name was registered and used in bad faith by the Respondent and relies on the following elements:

"The Complainants wrote to the contact of this company in order to recover the property of the domain name.

After several e-mails with Mr Ivo Somoza, who had indicated to Sandra HOUE (working for Oléane, the Complainants’ registrar) his willingness to sell the domain name (e-mail dated May 3, 2001), he finally answered to the Complainants on May 10, 2001, that the name <batigere.com> could not be sold, because it was already used by the organization which had registered it."

Respondent asserts that:

"The complainant claims to have trademarks in France and the European Union. We have never been to Europe and we had never heard of the complainant before he contacted us on May 10, 2001. The complainant does not have any trademarks in any country in the American continent, which is where we reside, and where we have traveled. The complainant is completely unknown in every country in this continent. Even in the United States they are completely unknown, where they don't even have a trademark.

The complainant is now attempting to prove that we were aware of his organization, and their French trademark, even though we have never been to France, and their organization is unknown in our continent.

Once a .com domain is deleted, it is available for registration by any other party. Dot com is not a restricted TLD like dot fr. RFC 1591 states that .com, .net, and .org domains are registered on a first-come first-serve basis.

The complainant knew, or should have known, about the risks he was taking when he requested the previous owner to delete the domain instead of transferring it to him. And now the complainant is upset because we registered it before he did….

Mr. Somoza has provided me with the email [of May 3, 2001] he received from Ms. Houe and the (only) response he sent to her:

"Hello

I'm working for an Internet Service Provider in France and I'm contacting you today to ask you if you will be interested to

do a transfert of Property with one of our client because my client is very interested with your domain name. Do you use it ?

Are you interested to give it ? sell it ?

Let me know ASAP what your decision will be ?"

…Mr. Somoza's only response was:

"We are already working out with another party the sale of this name.

What proposal do you have in mind?"

Mr. Somoza's reply: "What proposal do you have in mind?" is no evidence of bad faith. He asked [Sandra Houe] about the proposal she had in mind in order to transmit the message to us, the legitimate owners of the domain.

Furthermore, Mr. Somoza did not register the domain with the intent of reselling it to the complainant, a competitor, or to engage in any other act of bad faith.

Mr. Somoza registered the domain because we paid him to do so, which explains why he responded: "We are already working out with another party the sale of this name". The mere fact that he asked Ms. Houe what proposal she had in mind does not prove that he registered the domain with the intent of reselling it to the complainant, or a competitor, or engage in any other act of bad faith. To the best of my knowledge, Mr. Somoza never listed the domain for sale anywhere, and has never offered the domain for sale to anybody either. And the complainant has provided no evidence of such.

It is not the same to register a domainand (sic) actively seek buyers for it, than to register a domain for our organization and then be asked if he would like to sell it. The former could be an argument of bad faith, but the later can not (sic), as the domain was not registered for the purpose of reselling it.

This is the first (and only) email that one of our members received from
the complainant on May 10, 2001:

"Further to our contacts with Mr Ivo Somoza, we would be interested by
The domain name <batigere.com> which you registered in March 2001.

Could you please let us know ASAP what is your proposal to transfer us
The property of the domain?"

My response on May 13, 2001 was:

"We do not have a proposal to transfer <batigere.com>
as the domain represents our organization.

If you have any further questions please do not
hesitate to contact me."

When I wrote that email, I knew nothing about their emails with Mr. Somoza or their French trademark, as their organization is completely unknown in the American continent.

…there is no possible confusion or trademark-dillution (sic) by the fact that we own <batigere.com>, as we are not preventing the complainant from displaying its mark under <batigere.net>, <batigere.org> and <batigere.fr>. We are not competitors disrupting or tricking their customers, either. And we have never attempted to sell the domain to them or anybody else, attempted to profit in any other way at the expense of their trademark or organization, or engaged in any other act of bad faith.

Since the complainant and its marks are only known in France, their claim that we registered the domain in bad faith does not make sense. How could we be aware of their organization and/or trademarks? In the American continent the complainant's organization is completely unknown. We became aware of their existence only after they wrote to us, and no evidence has been provided otherwise, as none exists. This is the key issue for proving bad faith, and the complainant has not presented any evidence to support it."

The burden for the Complainants under paragraph 4(a) of the Policy is to prove:

(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and is being used in bad faith.

Complainants have established its rights in the trademark BATIGERE with a trademark registration in France in 1982.

This Panelist finds that <batigere.com> is identical to Complainants’ trademark BATIGERE. The use of lower case letter format and the addition of the gTLD ".com" are not significant in determining whether the domain name is identical or confusingly similar to the mark: see CBS Broadcasting Inc. v. Worldwide Webs, Inc.,Case No. D2000-0834 (WIPO, Sept. 4, 2000).

Therefore, the Complainants have satisfied the first requirement.

Since the Complainants have failed in respect of the third requirement as discussed below, the Panelist is not required to consider whether the Complainants have met the second requirement of Section 4(a) of the Policy and the Panelist will not do so.

This case deals with the registration by a Central American company of a domain name containing a trademark that is apparently known in France, but does not appear to be known in Central America. The Complainants have not established the notoriety of their trademark internationally based on the documentary record.

This is a basic point as all of the examples of bad faith under paragraph 4 (b) of the policy appear to require some familiarity either with the Complainants or with their trademark.

The Panelist accepts as possible -- and indeed probable -- that the Respondent was unaware of the Complainants’ existence or products and did not know of the Complainants’ mark when the domain name at issue was registered on March 20, 2001.

Complainants allege that there was a willingness to sell the domain name in dispute by the Respondent based on Mr. Somoza’s response of May 3, 2001, and appear to implicitly rely on this as evidence of bad faith on the part of the domain holder under paragraph 4 (b) (i) of the Policy. The Panelist does not accept that Complainants’ query to Mr. Somoza, a third party, as to whether the domain name is for sale can be taken as evidence of a direct offer initiated by the Respondent to sell the domain name.

The documentary evidence clearly indicates that it is the Complainants who propose to purchase the domain name initially from Mr. Somoza on May 3, 2001, and then directly from the Respondent on May 10, 2001. In its email on May 10, 2001, Complainants state that "we would be interested by the domain name <batigere.com> which you registered in March 2001." The Respondent replied by email on May 13, 2001, that "We do not have a proposal to transfer <batigere.com> as the domain represents our organisation." The Respondent clearly declined Complainants’ offer to purchase the domain name. The Panelist notes that there is no reference in the Complaint to Respondent’s negative reply of May 13, 2001.

The Complainants have not proved that the domain name was registered in bad faith by the Respondent nor that the Respondent acquired the domain name for the purpose of selling it to the Complainants for valuable consideration under paragraph 4(b) (i) of the Policy. The Panelist is not therefore required to consider the additional requirement of whether the domain name was actually used in bad faith by the Respondent.

Therefore, the Complainants have failed to meet the third requirement of paragraph 4(a) of the Policy.

For the foregoing reasons, the Panelist holds that this dispute is not within paragraph 4(a) of the Policy and that the domain name <batigere.com> shall remain registered in the name of the Respondent.

Thomas H. Webster
Sole Panelist

Dated: July 27, 2001