neurone.com

Neurones SA v. Madame Chantal Weber

Case No. D2003-0883

Complainant is Neurones SA, Clemenceau, Nanterre Cedex, France, represented by Eric Cohen, France.

Respondent is Madame Chantal Weber, Diedendorf, France.

The disputed domain name <neurone.com> is registered with Network Solutions, Inc.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 5, 2003. On November 6, 2003, the Center transmitted by e-mail to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On November 11, 2003, Network Solutions, Inc. transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On November 13, 2003, the Center requested Complainant to submit, by November 18, 2003, a translation into English of the Complaint initially drafted in French. The translation of the Complaint was received by e-mail by the Center on November 18, 2003. 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 Respondent of the Complaint, and the proceedings commenced on November 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2003. On December 27, 2003, a Mr. Guillerm, a friend of Respondent, sent an e-mail to the Center requesting, on behalf of Respondent, a new delay to submit the Response. However, Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 12, 2004.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on January 27, 2004. The Panel finds that it was properly constituted. 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 January 28, 2004, Mr. Guillerm sent a second e-mail on behalf of Respondent, requesting that the language of the proceedings be French and briefly sustaining that the disputed domain name was freely sold to Respondent.

However, with regard to the language of the proceedings, the Panel notes that no agreement has been entered into between the parties in order to use French as the language of proceedings and that, from November 25, 2003 (date of notification of Commencement of Administrative Proceedings) to January 28, 2004, Respondent (and/or her friend) never challenged the language of the current proceedings, the first of Mr. Guillerm’s e-mails being in English.

With regard to the allegations raised by Mr. Guillerm in his e-mail, the Panel would first like to recall that this e-mail may not be considered as a formal Response since it does not comply with the requirements described in the Rules, paragraph 5 and the Supplemental Rules.

On February 5, 2004, the Panel finds necessary, to render its decision, to order both parties, to communicate further statements and evidence.

The Panel therefore ordered Complainant to produce a copy of the decision that has been rendered on the merits of the case in order to determine whether, at the time Respondent entered into the "Registrant Name Change Agreement", the disputed domain name was still subject to such prohibition, as well as any other relevant document and/or statement.

The Panel also authorized Respondent to submit a Response, which shall comply with the requirements as described in Rules, paragraph 5 and the Supplemental Rules, as stated in the Notification of Complaint and Commencement of Administrative Proceedings that was duly notified to Respondent on November 25, 2003.

The last day for both parties, for sending these elements to the Center and the other party was February 13, 2004, and the date for issuing the decision was accordingly postponed to February 23, 2004.

On February 12, 2004, Complainant replied to the Procedural Order and submitted complementary documents and evidence in accordance with the administrative order.

On February 19, 2004, after the due date, Respondent replied to the Procedural Order.

Complainant is the owner of the trademark "NEURONES", registered in France on December 27, 1984 (N° 1316846) and renewed on December 16, 1994.

Complainant uses this trademark for "computer and electronic system" and "all operations of data processing, communication and training" and for "computer file maintenance and communications by computer terminal".

Complainant is also the owner of the domain name <neurones.net>.

The disputed domain name <neurone.com> was initially registered on March 15, 1997, by a French competitor of Complainant (S.A.R.L. Neurocim). Following an action brought by Complainant against this company, the French Court of Appeal of Colmar had provisionally forbidden, on November 21, 2000, any use or transfer of the disputed domain name <neurone.com> by the S.A.R.L. Neurocim.

On February 5, 2001, the French "Tribunal de Grande Instance" of Strasbourg, forbade the transfer of the disputed domain name <neurone.com> by the S.A.R.L. Neurocim.

On April 12, 2002, the "Registrant Name Change Agreement" stating the transfer of the disputed domain name <neurone.com> to Respondent was registered by notary.

Complainant claims that the disputed domain name <neurone.com> is confusingly similar to the trademark "NEURONES", the only difference being that the term "Neurone" included in the disputed domain name does not end with the letter "s".

In addition, Complainant contends that Respondent has no rights to, or legitimate interests in the disputed domain name because the decisions of the French Court of Appeal of Colmar and of the French "Tribunal de Grande Instance" of Strasbourg forbade any transfer of the disputed domain name.

Finally, Complainant asserts that the disputed domain name has been registered and is used with dishonesty since:

- The "Registrant Name Change Agreement" entered into by Respondent was concluded in breach of the decisions of the French Court of Appeal of Colmar and of the French "Tribunal de Grande Instance" of Strasbourg and is not dated;

- Respondent is the concubine of Mr. Guillerm who was the manager of the S.A.R.L. Neurocim, which has initially registered the disputed domain name and which has been ordered by the French Tribunal de Grande Instance of Strasbourg not to transfer the disputed domain name;

- The registration of the disputed domain name by Respondent precludes Complainant from registering and using the disputed domain name.

Based on the foregoing, Complainant seeks the transfer of the domain name <neurone.com> to Complainant.

Respondent alleges that she intends to develop an activity on expert systems and neuronal network and that is the reason why she bought the disputed domain name.

Respondent affirms that she bought the disputed domain name from the company Pandemonium group, and not from Neurocim or Neurones in which she declares to have nothing to do with.

The Panel’s findings under each heading with reference to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law are the following:

Complainant has proven that it is the owner of the trademark "NEURONES".

The disputed domain name comprises Complainant’s trademark "NEURONES", but for the letter "s". Like in Citigroup Inc. v. Ling Shun Shing, WIPO Case No. D2003-0328, June 2, 2003, where it was held that "The spelling of the name CITIGROUP is unique and exclusively referable to the Complainant. While there may be circumstances where a plural is sufficient to distinguish a domain name from the singular form, this is not such a case.", in the present case, the spelling of the name NEURONES is unique and the fact that the disputed domain name does not end with the letter "s" is not sufficient to distinguish the disputed domain name from Complainant’s trademark.

Furthermore, the suffix <.com> is incidental to the domain name and cannot serve to distinguish.

The Panel therefore finds that the domain name <neurone.com> is confusingly similar to Complainant’s trademark and as a consequence, the action brought by Complainant meets the requirement of paragraph 4(a)(i) of the Policy.

According to paragraph 4(b)(ii) of the Policy, Complainant has to demonstrate that Respondent has no rights to, or legitimate interests in the disputed domain name.

Complainant merely bases its contentions on the fact that the transfer to Respondent, of the disputed domain name damaged the Complainant’s rights since any transfer of the disputed domain name had been forbidden by decisions of the French Court of Appeal of Colmar and of the French "Tribunal de Grande Instance" of Strasbourg.

Nonetheless, Respondent was also given the opportunity to contest the case against her. However, Respondent did not submit any evidence that would demonstrate that she has any rights to, or legitimate interests in the domain name <neurone.com> and more specifically, that:

- Before any notice to Respondent of the current dispute, there was a 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; in particular, the document on which Respondent wishes to establish her intention to develop an activity on neuronal networks is not dated and does not mention her name; or,

- Respondent has ever been commonly known by the domain name <neurone.com>; or,

- Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark "NEURONES".

The Panel therefore infers from Respondent’s silence and Complainant’s contentions that Respondent has no rights to, or legitimate interests in the domain name <neurone.com>. The Panel considers paragraph 4(a)(ii) of the Policy fulfilled.

Complainant has been the owner of the trademark "NEURONES" since 1984. Respondent is a French citizen.

Therefore, and in the absence of contrary evidence submitted by Respondent, the Panel finds that Respondent knew of or should have known of Complainant’s trademark and services at the time it became the new registrant of the domain name <neurone.com>, i.e., on April 12, 2002, and that such registration occurred in infringement of Complainant’s trademark.

Furthermore, the trademark registration certificate produced by Complainant expressly refers to the fact that the trademark "NEURONES" had been the subject of litigation. Therefore, Respondent knew or should have known that the disputed domain name was, or at least had been, the subject of a prohibition from any transfer and has not produced evidence, in the current proceedings, demonstrating that at the time it entered into the "Registrant Name Change Agreement", such prohibition order had been overturned by a judgement on the merits of the case.

Accordingly, the Panel finds that the domain name <neurone.com> has been registered in bad faith.

With regard to the use in bad faith of the disputed domain name, Complainant does not give any information regarding the actual use of the disputed domain name by Respondent since April 2002, nor does Respondent.

Furthermore, the Panel notes that there is no evidence that, while the registration of the disputed domain name by Respondent currently precludes Complainant from registering and using the disputed domain name, Respondent is nonetheless engaged in a pattern of such conduct, as required by paragraph 4(b)(ii) of the Policy.

However, the Panel notes that, at least at the time of proceeding to this decision, there is no use of the domain name <neurone.com>, the home page consisting of a parking place of the registrar, Network Solutions, informing Internet users that "This site is under construction and coming soon".

The Panel indeed notes from the decision of the French "Tribunal de Grande Instance" of Strasbourg produced by Complainant that the S.A.R.L. Neurocim, first user of the disputed domain name, had acquired the physical assets and trademark rights of a company named Neurones Informatique. Both Neurocim and Neurones Informatique are or were competitors of Complainant. The Panel also notes that, contrary to the Respondent’s declaration, both Respondent and her friend, Mr. Guillerm, were representatives of Neurones Informatique and that Mr. Guillerm was also a representative of Neurocim.

As a result, the Panel finds that the domain name <neurone.com> was registered and is used by Respondent in bad faith and considers the requirements of paragraph 4 (a)(iii) of the Policy to be fulfilled.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <neurone.com> be transferred to Complainant.