The Complainant is Tomatis Developpement SA of Luxembourg (the “Complainant”), represented by Cabinet Harle et Phelip, France.
The Respondent is Jan Gerritsen, of Oaxaca, Mexico (the “Respondent”),
represented by Daiva K. Tautvydas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <tomatis.com> (the “Domain Name”)
is registered with TierraNet d/b/a DomainDiscover (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2006. On June 7, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 8, 2006, the Registrar 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 June 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2006. The Response was filed with the Center on July 1, 2006.
The Center appointed Tony Willoughby as the sole panelist
in this matter on July 21, 2006. 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 and its predecessors in title have been in dispute with the Respondent and others associated with him over various matters (including the Domain Name) for over a decade. The voluminous papers before the Panel cover a wide variety of matters irrelevant to the issues to be dealt with under the Policy.
The facts set out below are simply those relevant to this dispute.
The Complainant is the current owner of the Intellectual Property rights in a psychotherapeutic method developed in the 1950s by a French ENT specialist, Dr. AA Tomatis. The method is concerned with “the relationship between the ear and the voice by extension between listening and communication” and is known as the TOMATIS METHOD. The Complainant is the proprietor of a large number of trade mark registrations around the world of a device mark featuring the word TOMATIS superimposed over representation of a flame. These registrations date back to 1979/80. The Complainant is also the registered proprietor of a Benelux registration of TOMATIS (word), which was granted earlier this year. All the registrations are for psychotherapeutic services and associated goods and services.
By 1991, those Intellectual Property rights had been assigned to a French company, Tomatis International SA (“TISA”), a company in which Dr. Tomatis and his son, Christian, amongst others, had an interest.
On November 1, 1991, TISA entered into a non-exclusive Licence with the Tomatis Listening and Learning Center whereby the latter was licensed to use (inter alia) the TOMATIS and flame device mark referred to above on the terms and conditions laid down in the Licence. The Licence identified Mr. Pierre Sollier as the Licensee’s representative. It is not in dispute however that Mr. Sollier’s collaborator in the Tomatis Listening and Learning Center at that time was the Respondent.
On February 11, 1996, the Respondent registered the Domain Name.
On April 23, 1996, Mr. Sollier and the Respondent wrote to Christian Tomatis in his capacity as Chief Executive Officer of TISA drawing the latter’s attention to the website at “www.tomatis.com”, which they described as “the website of the Tomatis-Americas”. It was a website devoted to the TOMATIS METHOD and included the names and addresses of the Tomatis Centers in the USA, Canada and Mexico. It also included the name and address of TISA.
On May 14, 1996, Mr. Tomatis replied voicing certain criticisms of the content of the site. Among his requests for changes was a request that the address of TISA appearing on the site be updated.
Over the next two years (at least) correspondence ensued between TISA and its representatives on the one hand and variously the Tomatis Listening and Learning Center and other North American Centers on the other in the course of which TISA claimed that the website connected to the Domain Name constituted an abuse of the Complainant’s predecessor’s rights. The correspondence included a letter to the Respondent in his capacity as representative of the Tomatis Listening and Learning center from the TISA’s US lawyers demanding transfer of the Domain Name. The Respondent did not reply.
The Domain Name is connected to a website operated
by the Respondent and devoted to providing information on the TOMATIS METHOD
and practitioners in that therapy. Approved practitioners (i.e. those approved
by the Respondent) have the opportunity to feature webpages on the site for
a fee. The Respondent also derives income from Amazon.com in respect of book
sales made through the site.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is identical to its Benelux registered trade mark, TOMATIS (word). The Complainant also contends that the Domain Name is confusingly similar to the Complainant’s TOMATIS and flame device mark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It observes that neither the Complainant nor its predecessors in title have licensed the Respondent to use the TOMATIS trade mark. The Complainant contends that whereas Mr. Sollier was licensed under the 1991 licence agreement, the Respondent was not.
The Complainant contends that since the Respondent’s website deals with the same services as those with which the Complainant is concerned, visitors to the Respondent’s website are bound to be deceived into thinking that the website is concerned with the ‘genuine’ services of the Complainant.
The Complainant contends that the Respondent has no legitimate interest in respect of the name TOMATIS and is exploiting it by way of the Domain Name for commercial gain and in so doing is misleading the public.
Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.
The Complainant reiterates that the 1991 licence agreement (which was terminated in 1998) was personal to Mr. Sollier and was non-transferable.
The Complainant contends that the Respondent’s bad faith lies in the fact that, knowing of the rights of the Complainant’s predecessors to the TOMATIS trade mark, he registered the Domain Name, although unlicensed to do so. The Complainant states that no demand was made back in 1996, for transfer of the Domain Name because the Complainant’s predecessor thought that the Domain Name was registered by an authorized licensee and that the Domain Name was therefore within the control of the Complainant’s predecessor as Licensor.
The Complainant states that there can be no doubt that the Respondent was fully aware of the Complainant’s rights when he registered the Domain Name, because he was a collaborator with Mr. Sollier in the Tomatis Listening and Learning Center, he wrote articles about the TOMATIS METHOD on behalf of the Tomatis Listening and Learning Center and had corresponded with TISA in relation to the Domain Name.
Notwithstanding the termination of the Licence in 1998, the Respondent has continued to use the Domain Name. The Complainant contends that in registering the Domain Name the Respondent intended to deceive Internet users into believing that he was an authorized licensee and that in continuing to use the Domain Name he is acting in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
B. Respondent
The Respondent denies that the Domain Name is identical or confusingly similar to any trade mark in which the Complainant has rights. He claims that the Benelux registration of the word mark should be ignored because the Benelux registry does not conduct an examination process of any substance in relation to its applications. He claims that there is no possibility of confusion with the device mark, which, owing to the presence of the flame device, is markedly different from the Domain Name.
The Respondent asserts that when he registered the Domain Name in 1996 he registered it on behalf of the Tomatis Listening and Learning Center which was an authorized TISA licensee and of which he was a shareholder and the President. Throughout, the Domain Name has been used to connect to a website providing information on the TOMATIS METHOD.
The Respondent claims that he does have rights and legitimate interests in respect of the Domain Name. He contends that when he registered the Domain Name and first started using it he had express and implied permission from the Complainant’s predecessors. Furthermore, he claims that the Domain Name as used has been a legitimate description of the contents of the website to which the Domain Name has been and is currently connected.
On essentially the same grounds the Respondent asserts
denies the Complainant’s contention that the Domain Name was registered
and is being used in bad faith.
6. Discussion and Findings
General
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith
A. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s Benelux trade mark TOMATIS and the generic domain suffix. It is now well established by case law under the Policy that for the purpose of assessing identity, the domain suffix may be ignored.
Clearly, therefore, the Domain Name is identical to a trade mark in respect of which the Complainant has rights. The Panel notes the Respondent’s claim that Benelux trade mark registrations should be ignored for the lack of an examination process, but it is not for the Panel to question the validity of a properly obtained national registration. The indisputable fact is that the Complainant is the registered proprietor of a Benelux registration of TOMATIS (word) and has the attendant rights that go with it.
B. Rights or Legitimate Interests
In light of the Panel’s decision under the next heading it is unnecessary for the Panel to assess what the Respondent’s current rights and legitimate interests might be in respect of the Domain Name. Suffice it to say that there is nothing before the Panel to show that the Respondent’s motives have at any time been dishonest.
C. Registered and Used in Bad Faith
For the purposes of this head of complaint under the Policy, the motives of the registrant at time of registration are of crucial importance. The Policy was designed to deal with cybersquatters i.e. people who register domain names knowing them to be the trade marks of others and with the intention of causing damage or disruption to the trade mark owners and/or unfairly exploiting the trade marks to their own advantage.
Paragraph 4(b) of the Policy contains a non-exhaustive list of what shall constitute bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy. The first three examples expressly refer to the registrant’s intentions at time of registration. The fourth does not, but the preponderance of panelists nonetheless construe it as calling for a bad faith intent at time of registration. To do otherwise would open up the Policy to a far wider category of cases than it was ever intended to cover.
What was the Respondent’s intention at time of registration of the Domain Name? Was it, as the Respondent claims, to register it for the benefit of the Tomatis Listening and Learning Center, the Licensee under the 1991 Licence Agreement and a company of which he was the President and a 50% shareholder? Or was it, as the Complainant claims, to deceive Internet users into believing that the website connected to the Domain Name was in some way authorized by the Complainant’s predecessors in title?
Putting the question in that way points to only one answer. Had the Respondent’s intentions been as claimed by the Complainant, the last thing that the Respondent would have done would have been to use the Domain Name in collaboration with a Licensee. The website to which the Domain Name was connected was at that time an authorized website. Had it been otherwise, Mr. Tomatis in his letter of May 14, 1996 (referred to in section 4 above) would not have asked Mr. Sollier and the Respondent to amend the website to correct the Licensor’s address.
The Complainant argues that the Licence was a personal one to Mr. Sollier. That is not what is stated in the English translation of the document. The Licensee was the company in which both Mr. Sollier and the Respondent had substantial shareholdings. The Panel is in no doubt that when the Respondent registered the Domain Name he justifiably thought that what he was doing was something that he was entitled to do.
Mr. Tomatis’s reaction to the news of the website (as evidenced by his letter of May 14, 2006) indicates that he had no concerns about it at that time. The Complainant says that its predecessor did not seek transfer of the Domain Name at that time because it thought that the Domain Name was within its control, being in the hands of a licensee. The Panel accepts that that may very well have been the case, but it simply demonstrates that at that time all concerned understandably thought that the registration of the Domain Name was a bona fide registration.
Clearly, the situation has changed in that the Licence Agreement has now terminated and the Respondent has no surviving connection with the former Licensee. If it is the case, as the Complainant claims, that the Respondent’s use of the Domain Name since termination of the Licence Agreement infringes the Complainant’s rights, the proper forum for that dispute is the court not this administrative proceeding.
The Panel is not satisfied that the Domain Name was registered and is being
used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: August 1, 2006
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