lacolline.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société Anonyme de La Colline Champel v. Robert Angelini

Case No. D2005-1059

1. The Parties

The Complainant is Société Anonyme de La Colline Champel, Geneva, Switzerland, represented by Etude Lachat Harari & Associes, Switzerland.

The Respondent is Robert Angelini, Brandon, Florida United States of America, represented by Albert A. Zakarian a legal representative, United States of America.

2. The Domain Name and Registrar

The disputed domain name <lacolline.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2005. On October 7, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On October 7, 2005, Network Solutions, LLC transmitted by email 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 October 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2005. The Response was filed with the Center on November 7, 2005.

The Center appointed John Terry as the sole panelist in this matter on November 21, 2005. 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.

4. Factual Background

The Complainant runs a clinic in Geneva under the name “Clinique la Colline” offering various services and has done so for over a century. Clients include clients located outside Swiss borders. The Complainant is the holder of the service mark “Clinique la Colline” registered in Switzerland and has held the domain name <lacolline.ch> from 1997.

The Respondent registered <lacolline.com> in 1999 some 6 years before the present complaint and contends he was developing a website to highlight major restaurants in the Washington DC including a French-style restaurant known as “Lacolline”. The Respondent’s uncontested assertion is that the website being developed was to be used as a non-commercial commentary. In about 2002 the Respondent started to offer for sale the present domain name. The Respondent denies any prior knowledge of the Complainant or its name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name <lacolline.com> is partly identical and confusingly similar to the service mark “Clinique la Colline”, in which the Complainant has rights and relied on the approach in a prior decision namely. Dell Computer Corporation v John Barry, d/b/a High Traffic Pro-Life Domains Only $999/Pro-Life Domains RockBottom Prices, WIPO Case No. D2003-0282).

The Complainant further contends that:

- There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name <lacolline.com> or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

- The Respondent has not been commonly know by the domain name <lacolline.com>.

- The Respondent is not making a legitimate non-commercial or fair use of the domain name.

Furthermore, the Complainant contends that the only use the Respondent was making of the domain name in issue is on a website “www.lacolline.com” to indicate that the domain name is for sale.

Accordingly the Complainant contents the Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant contends that the domain name was registered and is being used in bad faith because of the nature of usage of the website referred to above. Specifically, the Complainant contents that the circumstances fall within the example of bad faith pursuant to the Policy paragraph 4(b)(i).

B. Respondent

It is sufficient to summarise a lengthy contention of the Respondent. In summary, the Respondent submits that the domain name in issue is neither identical to nor confusing similar to the Complainant’s trademark, there is a lack of confusing similarity by comparing Complainant’s activities to its trademark, particularly in Switzerland, in relation to usage in USA by others further that the Respondent’s domain name <lacolline.com> is a non-commercial commentary page about the Respondent’s favourite Washington DC restaurant. The differences of geographical markets and types of markets are asserted to make the likelihood of confusion among potential customers of the Complainant to be highly unlikely.

Regarding the second element to be proven by the Complainant, the Respondent contends it indeed has made legitimate non-commercial or fair use of the domain name in issue and the certified response states that the Respondent was developing a website to highlight major restaurants in the Washington DC area including his favourite Washington DC area restaurant “La Colline”. The Respondent contends this is a bona fide legitimate non-commercial or fair use.

As to the third element to be proven by the Complainant, the Respondent denies that the domain name was registered and/or used in bad faith. The Respondent relies on the proposition that offer for sale of a domain name does not by itself amount to bad faith and as an example refers to the decision in Mark Warner 2001 v Larson, FA 95746 (Nat. Arb. Forum, November 15, 2000). The Respondent relies on the fact that he did establish an active website of the type described above.

The certified response states that the Respondent had no knowledge of the Complainant and its activities at least prior to receiving some correspondence from June 2005 from the Complainant and that he had no reason to become aware.

The Respondent further contents he has not engaged in conduct such as cybersquatting in the past and, indeed, neither does the Complainant suggest this to be the case.

Finally, the Respondent asserts that the Complainant is guilty of reverse domain name hijacking and contends the Complaint was not filed in good faith but instead to try and hijack the domain name and to harass the Respondent.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel concludes that the present domain name <lacolline.com> is confusingly similar to the trademark in which the Complainant has established rights namely “Clinique la Colline”. It is immaterial as to the jurisdictions in which registration and/or use may have occurred under the Policy. The prefix “Clinique” is clearly an essentially descriptive French word meaning “clinic” and the distinctive portion of the registered trademark “Lacolline” is identical to the characterising part of the present domain name. The Panel finds it immaterial that “Lacolline” in French means “the hill” since that designation is not specifically generic or descriptive and thus the first element required to be proven by the Complainant is made out. It is not relevant to consider actual likelihood or confusing usage in one area such as the United States of America as it is the comparison between the trademark and the domain name which is relevant.

B. Rights or Legitimate Interests

Paragraph 4(c) provides a non-limiting list of circumstances in which a Respondent may establish it has rights and legitimate interests in the domain name. Of the three alternative subparagraphs, clearly subparagraph (i) is not relevant as there has been no evidence that the Respondent made any bona fide offering of goods or services under the domain name in dispute. Furthermore there is not evidence that supports any finding under paragraph (ii) because the Respondent has not established it has been commonly known by the domain name in dispute. However, under subparagraph (iii) it may be that the Respondent has established it was making a legitimate non-commercial and fair use of the present domain name without any intention for commercial gain to misleading consumers or tarnish the trademark at issue. The Respondent explains that it registered the domain name with the French restaurant in the Capital Hill area of Washington DC in mind. Be that as it may, as the Complaint is denied under the third element of the Policy (see below), there is no need to conclude under subparagraph 4(c)(iii) of the Policy.

C. Registered and Used in Bad Faith

The Policy provides in paragraph 4(b) four specific circumstances which if established by the Complainant lead to a conclusion of registration and use of a domain name in bad faith. In the present case none of the four non-limiting examples apply. The Panel observes that under paragraph (i) the fact that a reasonable inference may be that the Respondent registered the domain name in issue for the purpose of selling or renting or transferring the domain name for more than out of pocket expenses is not sufficient, since the Complainant must also establish that the primary intent was to transfer or sell the domain name to the owner of the trademark or to a competitor of that Complainant and there is no evidence of such activity. It is not enough to assert that the Respondent was concerned with registering for the purpose of sale of transfer of the domain name to some other third party.

There is no evidence to substantiate any of the other three paragraphs. Although the failure to meet the four exemplification paragraphs for evidence of registration or use in bad faith is not fatal, it would be a special case for the Panel to find established on the facts that the general requirement of registration and use in bad faith. In the present case the facts demonstrated in the light of the Respondent’s evidence are not sufficient for the Panel to find this element established.

On the balance of probabilities, it seems more likely than not that the Respondent did not have the Complainant and its trademark in mind when the Respondent registered the domain name. This seems particularly probable if one takes into account the descriptive meaning of La Colline in French (hill, peak, rounded mountain top). This is valid regardless of whether the Respondent actually had the intention when it registered the domain name 6 years ago, to devote the web page to the French Restaurant on Capitol Hill.

The Respondent has contended that the facts should lead to a finding of reverse domain name hijacking, defined in the UDRP Rules as “using the policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. Pursuant to Rule 15(e) the Panel may consider whether the complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder. In the present case, the Complainant has established an extremely long period of usage and has the domain name <lacolline.ch> and asserts it does have an international notoriety and client base. Since “.com” domain names are very popular in many countries and many owners of such domain names are not based in the United States of America, it is not unreasonable for the present Complainant to desire to adopt a domain name such as <lacolline.com>. However, in the present case the Panel has been satisfied that the Respondent has established a sufficient response and, as a consequence, transfer should be denied but the Panel is not satisfied that the circumstances amount to reverse domain name hijacking. The circumstances contrast with those in a prior decision where reverse domain name hijacking was established for example, according to the majority view only, in Koninklijke KPN N.V. v. Telepathy Inc.WIPO Case No. D2001-0217.

7. Decision

For all the foregoing reasons, the Complaint is denied.

John Terry
Sole Panelist

Date: December 5, 2005