WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vallourec v. Vinayak Kulkarni
Case No. D2003-0940
1. The Parties
The Complainant is Vallourec, of Boulogne-Billancourt, France, represented by Bourgeois Muller Pidoux & Associés, Switzerland.
The Respondent is Vinayak Kulkarni, of Maharashtr, India.
2. The Domain Name and Registrar
The disputed domain name <vallourec.com> is registered with BulkRegister.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 25, 2003. On November 26, 2003, the Center transmitted by e-mail to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On December 2, 2003, BulkRegister.com 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. 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 the Respondent of the Complaint, and the proceedings commenced on December 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2003. On December 17, 2003, the Complainant submitted a supplemental filing to the Center. On December 23, 2003, the Respondent submitted the Response via e-mail and the Complainant addressed an e-mail to the Center.
The Center appointed Luca Barbero as the Sole Panelist in this matter on December 29, 2003. 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 9, 2004, the Panel issued a first procedural order requesting the Respondent: (i) to submit the Response in hard copy to the Center; (ii) to provide the Panel, as annexes of such hard copy of the Response, with evidence for each of the following statements of the Respondent:
"… on 26 February, 2003. Well, at that time, I already had a Web hosting account in the United States and had an ‘Under Construction’ site ready,"
"I have been using [email protected] e-mail address to send and receive e-mails; to store files on the FTP server using vallourec.com as the domain name."
"…Additionally, I have hired designers and programmers to build the site …."
"…I get e-mails almost on a monthly basis where different individuals are ‘interested’ in buying the domain name. … Many of the offers were for sums far larger than what the Complainant was offering…"
On January 20, 2004, a second procedural order was issued stating: "Whereas on January 9, 2004, the Panel issued the procedural order No. 1 requesting the Respondent to file evidences for a number of statements included in the Response, pursuant to paragraph 12 of the Rules; Whereas the Respondent has duly submitted on January 12, 2004, a first reply via fax to the procedural order No. 1, received by the Panel in a readable format via fax on January 20, 2004; Whereas on January 17, 2004, the Complainant has requested, pursuant to the receipt of the new documents filed by the Respondent, to submit a brief supplemental filing - via e-mail only - to comment such annexes of the Respondent; Whereas pursuant to paragraph 10(b) of the Rules, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case; The Panel hereby decides to grant the Complainant three additional days to file with the Center, via e-mail only, the requested comments limited to the new annexes filed by the Respondent on January 12, 2004, which should therefore be received by January 24, 2003. The Respondent shall then have three additional days to submit, via e-mail only, any possible reply but only limited to the new comments filed by the Complainant, which should be received by the Center not later than January 27, 2004."
The decision was originally due on February 11, 2004, but was subsequently extended until February 25, 2004, in accordance with paragraph 10(c) of the Rules.
4. Factual Background
The Complaint is based on a number of trademark registration and application including the International trademark registration Number 2R 212 425 for "VALLOUREC" registered on August 25, 1958, in class 1 and International Registration Number R 414 689 for "V logo over Vallourec," registered on December 18, 1974, in classes 6, 7, 9, 11, 12, 17, 19, 20, 37, 40 and 42.
The Respondent registered the domain name <vallourec.com> on January 14, 2000.
5. Parties’ Contentions
The Complainant was established in 1930 as the result of a partnership association between Valenciennes, Louvroil and Recquignies, and registered in the commercial registry as Métallurgique de Montbard at that time since 1899. The Complainant was listed on the Paris stock exchange since 1957, and is currently the world leader in the production of seamless steel tubes; its activities extend from the manufacture of precision or stainless steel tubes to the manufacture of automotive components or forged products.
The Complainant indicates that it has more than 40 subsidiaries all over the world, including United States and Asia and employs a staff of 18,000 people around the world; the Complainant’s consolidated net sales for the year 2003, is estimated at 1,778.2 millions Euros.
The Complainant informs the Panel that it has several agents in India through its subsidiaries and on February 4, 1998, the Complainant was recognized as a well known steel maker by the Ministry of Commerce & Industry of the Government of India.
The Complainant is the holder of numerous trademarks around the world, including International Number 2R 212 425 for "VALLOUREC" registered on August 25, 1958, in class 1 and International Registration Number R 414 689 for "V logo over Vallourec," registered on December 18, 1974, in classes 6, 7, 9, 11, 12, 17, 19, 20, 37, 40 and 42 duly extended in a number of countries. The complainant indicates that it is also the holder of the following domain names <vallourec.fr> (since June 6, 2000) and <vallourec.info>, <vallourec.biz>, <vallourec.us>, <vallourec.de>, <vallourec.org.uk>, <vallourec.ch>, <vallourec.at>, <vallourec.be>, <vallourec.dk>, <vallourec.jp>, <vallourec.ru>, <vallourec.com.mx>. All these domains are pointing at "www.vallourec.fr." The Complainant is also the holder of <valourec.com> and <vallourec.co.uk>. <vallourec.net> and <vallourec.it> have been registered by Complainant’s subsidiaries but have no content yet.
The Complainant underlines that the Respondent has been the holder of the domain name <vallourec.com> since January 14, 2000, but until 2003, the domain name was inactive and informs the Panel that between the January 23, 2003, and February 12, 2003, the Respondent changed its servers from Bulkregister to Zentrifugal, where the domain name is still currently hosted.
The Complainant reports to the Panel that at that time the website linked to the domain name was said to be under construction and automatically redirected the user to the website of the hosting provider after a few seconds. On February 26, 2003, the Complainant, through the Digital Brand Management Services of VeriSign France SA, sent an e-mail to the Respondent, drawing the attention of the Respondent about the prior Complainant rights on the name since the early nineteenth century and that it has international trademarks containing the word "vallourec" and offering an amount of US$1,000 as a reimbursement of the expenses.
The Respondent answered on February 26, 2003, indicating that the domain name was registered already for some time, that a website was meant to be published but the work was temporarily halted. The Respondent indicated that a website designer and programmers were already hired to build the site, that the domain name was not registered to be resold and defined as extremely low the Complainant’s offer for the transfer and commented that such amount did not reflect a true desire of the Complainant to acquire the domain name, comparing it to two hours of consultancy of a competent intellectual property lawyer.
The Complainant reports to the Panel that it decided not to react to this provocative e-mail but only to wait and see what the result of the "construction" of the website would be. In the beginning of October 2003, the Complainant noticed that, far from linking to a constructed website, the domain name <vallourec.com> was now for sale, providing the Panel with evidence of the announcement published in the corresponding website.
On October 16, 2003, the Complainant, through the Digital Brand Management Services of VeriSign France SA, sent a second e-mail to the Respondent. In this e-mail, the Complainant referred to its first one of February 26, 2003, and requested the Respondent to immediately cease all redirection of the domain name <vallourec.com> onto its website (i.e. the one where the domain name was offered for sale) and to take all necessary steps to transfer the domain name in its favor by October 23, 2003.
On October 21, 2003, and November 14, 2003, the Complainant sent a reminder to the Respondent, who replied on November 21, 2003, indicating that it was the rightful owner of the domain name and that was willing to defend its rights in a court of law. The Respondent pointed out that the offer of $1,000 was rejected, asserting that "the value of a domain name is whatever the owner think it is – no more, no less."
The Complainant underlines that domain name <vallourec.com> is identical to the Complainant’s trademarks according to the Policy, paragraph 4(a)(i).
With reference to the rights or legitimate interest, the Complainant underlines that there has never been a business relationship between the Parties and the Respondent is not an official dealer of the Complainant’s goods. According to the Complainant, the Respondent is not commonly known by the domain name and the Respondent does not make a legitimate non-commercial or fair use of the domain name.
Furthermore, the Complainant points out that in its Response of February 26, 2003, the Respondent, probably well aware of the requirements of the Policy, alleged that the domain name had never been for sale as he had made several preparations to build a website under the domain name <vallourec.com> but a few months later, the domain name was for sale. Thus, the Complainant concludes that the Respondent did not make any 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 as indicated in the Policy, paragraph 4(a)(ii).
The Complainant highlights that the Respondent has held the domain name for nearly four years and yet does not appear to have made any real use of it nor has adduced any evidence that it is preparing to use the domain name in relation with a bona fide offering of goods or services. Furthermore, according to the Complainant it clearly appears from the unpleasant wording of the e-mails of the Respondent that the intention was to sell the domain name to the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name (Policy, paragraph 4(b)(i)). This was confirmed a few months later, when, far from being used as an address for a proper website, the domain name was linked to a website which, stated that "vallourec.com is now for sale."
The Complainant states that the bad faith of the Respondent is particularly obvious since it cannot be figured out why an Indian citizen (provided that the Respondent lives in India, which is doubtful considering the fact that all the previous and current administrative and technical contact details are said to be located in the United States) would have chosen a domain name composed of the word "vallourec," which does not mean anything in Indian and does not refer to anything in India either.
The Respondent indicates to the Panel that in February 2003 upon receipt of the first e-mail message, there was a web hosting account in the United States, an "Under Construction" message was available on line and the e-mail address [email protected] was used to send and receive e-mails, to store files on the FTP server, using <vallourec.com> as the domain name. The Panel was informed that these are all legitimate uses of the domain name and therefore, according to the Respondent, the Complainant has failed to prove that Respondent has no rights or legitimate interests in respect of the domain name.
With reference to the registration and use in bad faith, the Respondent notes that:
"… shortly after registration, work was started on building a Website. The work was temporarily halted for some business related reasons. I have resumed the work on building the site and have even contracted a Web hosting provider (Zentrifugal). Additionally, I have hired designers and programmers to build the site.
The domain name was never registered to be re-sold. Therefore I cannot put a price tag on vallourec.com."
According to the Respondent, the above clearly demonstrates that the domain name was registered for legitimate business reasons, and money was invested to host and build the site mentioning "that Domain name registration, hosting and design are activities that cost money and then there is additional time and energy that have to be spent in dealing with design and programming of the site, the associated headache with dealing with multiple parties to get the site ready, the psychological cost involved with these activities is not easily quantifiable."
Furthermore the Respondent notes that "the economy changes, the business models evolves, the technology becomes obsolete, trusted partners departs for greener pastures. Nature conspires. Family-related issues arise. Health suffers." The Respondent notes that, in light of all the above, was not able to launch the actual site, underlining that it should not be considered bad faith.
The Respondent informs the Panel that upon receiving the first e-mail from the Complainant (through Verisign), he considered it a mere flame and responded accordingly, commenting that almost on a monthly basis the Respondent was receiving e-mails from different individuals "interested" in buying the domain name. The Respondent affirms again that "The domain name was never registered to be re-sold" on the basis that the many offers he has received were not accepted.
The Respondent explains to the Panel that the website "vallourec.com is Now for Sale" was simply on line in order to get a better handle on the fair-market valuation of the domain name and therefore was not acting in bad faith. Then the Respondent declares again that the domain name was not registered to be re-sold but then indicates that the circumstances have changed and therefore, in the Respondent’s view, should be in a position to sell the property.
The Respondent also alleges that the offer for sale in the e-mail of December 17, 2003, was done in good faith in order to settle the matter amicably instead of establishing a legal action in a civil court in India.
The Respondent concludes that the Complainant has failed to prove that there was a constructive or actual knowledge of third parties rights in a trademark corresponding to the domain name prior to registration or acquisition of the domain name emphasizing that Respondent had no reason to believe that he was infringing on another’s rights in registering the domain name.
In the Response to the first procedural order first forwarded to the Center on January 12, 2004, and received by the Panel in a readable format on January 20, 2004 the Respondent essentially reiterated the assertions reported herein above but did not provide the Panel with any convincing document or new evidence. The Respondent did not submit to the Center, notwithstanding the extended time allowed any reply in connection with the second procedural order and with reference to the comments submitted by the Complainant accordingly.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(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.
6.1. Domain name identical or confusingly similar
The Complainant has provided evidence of ownership of a number of trademark registrations and applications including the International trademark registration Number 2R 212 425 for "VALLOUREC" registered on August 25, 1958, in class 1 and International Registration Number R 414 689 for "V logo over Vallourec," registered on December 18, 1974, in classes 6, 7, 9, 11, 12, 17, 19, 20, 37, 40 and 42.
The suffix "com" is to be considered immaterial in the evaluation of the confusingly similarity between the Complainant’s trademark and the domain name, since it is instrumental to the use in Internet.
In view of the above, the Panel finds that the Complainant has proved that the domain name is confusingly similar to the trademark of the Complainant according paragraph 4(a)(i) of the Policy.
6.2. Rights and legitimate interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy that:
(a) It has made 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 prior to the dispute; or
(b) It is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) It intends to make 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.
In this case, the Domain Name is identical to the Complainant’s trademark and Complainant’s company name and it not descriptive of any generic type of goods sold by or the name of the business of Respondent.
The Panel concurs with the view expressed in Educational Testing Service v. Netkorea Co., WIPO Case No. D2000-0087 stating that "it is relatively difficult for any complainant to prove beyond a shadow of a doubt that a respondent has no rights or legitimate interests in a domain name. Accordingly, the burden on a complainant in respect of these elements must, by necessity, be relatively light. In any event, Paragraph 4(c) of the Policy gives respondents ample opportunity to rebut any evidence tendered by complainants."
Furthermore, as decided in Zee Telefilms Ltd. and Wimpole Holdings Ltd (presently known as Zee Multimedia Worldwide Ltd.) v. Rahul Dholakia and Oznic.com, WIPO Case No. D2001-0624, "The majority of Panel decisions on this point have taken the position that while the complainant has the burden of proof on this issue, once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. […]." Concrete evidence "constitutes more than mere personal assertions. Just as a Panel should require a complainant to establish by means other than mere bald assertions that it is the owner of registered marks, so should the panel require that a respondent come forward with concrete evidence that the assertions made in the response are true. […]. Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion. This information is uniquely within the knowledge and control of the respondent. Failure of a respondent to come forward with such evidence is tantamount to admitting the truth of complainant’s assertions in this regard."
In the present case it is noted that two procedural orders were also issued and the first one expressly requested the Respondent establish, beyond the mere personal assertions stated in the Response, a right or legitimate interest in a disputed domain name in accordance with paragraph 4(c) of the Policy. A second chance to provide the Panel with convincing evidence of the statements provided was also granted to the Respondent with the second procedural order but it did not generate any reply by the Respondent.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the domain name, according to paragraph 4(a)(ii) of the Policy.
6.3. Registration and Use in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
The Panel finds paragraph 4(a)(i) applicable in the present case as the Respondent has requested, even if allegedly within the frame of a supposed settlement proposal in order to avoid further litigation in India, an amount of US$3000 (three thousand US dollars) as stated in the Respondent’s e-mail of December 17, 2003, which is a value clearly in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
Additional circumstantial evidence indicating that the domain name was registered and is being used in bad faith is the offer to the general public contained in the website of a domain name identical to a registered trademark, which was set up by the Respondent. As found, inter alia, in Gateway, Inc. v. David Ayers, WIPO Case No. D2000-0106 and VENTURUM GmbH v. Coventry Investments Ltd., DomainCollection Inc., WIPO Case No. D2003-0405 "by offering the contested domain name through a publicly accessible website, Respondent is offering it for sale to Complainant, any of Complainant’s competitors, and others."
Further evidence of use of the domain name in bad faith by the Respondent are some of the statements contained in the correspondence exchanged with the Complainant and its representatives such as:
"Your offer of $1’000 is extremely low and does not reflect a true desire to acquire vallourec.com. It is definitely not high enough to induce me – a domain name owner who is reluctant to sell the domain name – even to consider selling the domain name. In fact, your offer is so low that I was even not going to respond to your e-mail (I saw the name Verisign and changed my mind.)"
"Please note that my refusal to consider your low-ball offer cannot be interpreted as meaning that the domain name is for sale. It is not. If a reasonable offer were made, I might have considered it (But a mere $1’000….sheesh! That’s how much a competent intellectual property lawyer would charge for 2 hours of consultation.)."
"The value of a domain name is whatever the owner think it is – no more, no less. If an owner rejects your offer, you just have to go out and find another domain name. It is as simple as that."
In view of the above, the Panel finds that the Respondent has registered and used the Domain Name in bad faith, according to paragraph 4(a)(iii) of the Policy.
In light of the foregoing, the Panel decides that (a) the Domain Name registered by the Respondent is identical to the Complainant’s trademarks, that (b) the Respondent has no rights or legitimate interests in respect of the Domain Name and (c) that the Domain Name has been registered and used in bad faith.
Accordingly, the Panel requires that the registration of the Domain Name <vallourec.com> be transferred to the Complainant.
Dated: February 23, 2004
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