The Complainant is Societe Nouvelle d’Etudes, d’Editions et de Publicite Sneep of Paris, France, represented by CABINET STRATO-IP, France.
The Respondent is Salenia AB of Buffalo, United States of America (“United States” or “US”)1, represented by Advokatfirman Lindahl, Sweden.
The disputed domain name <largus.com> (the “Disputed Domain Name”) is registered with Ascio Technologies Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2018. On July 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 31, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 31, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 1, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2018. On August 3, 2018, the Respondent sent an information communication to the Center. The Response was filed with the Center on August 23, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on August 31, 2018. 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.
The Complainant is a French company. It is a publisher and one of its publications is a French magazine called “L’Argus de l’automobile et des locomotions”, commonly called “L’Argus”. This is a publication which specialises in the field of second-hand vehicle transactions. It is a bi-weekly publication available in France (and possibly other French speaking countries) largely comprising listings of motor cars for sale. Its publication has been uninterrupted since 1927, except briefly during the Second World War. The Complainant is the owner of a number of registered trademarks which are either for, or which include, the term L’Argus including for example L’ARGUS, French trademark n° 09 3 638 230 filed on March 20, 2009 in classes 16, 35, 36, 37, 38, 39, 41 and 42. These trademarks are referred to in this decision as the L’ARGUS trademark. The Complainant has registered <largus.fr> and has used that domain name since 2007 in connection with its business. Its website linked to that domain name receives more than 7 million visitors per month.
The Disputed Domain Name was registered on November 28, 1996. It does not resolve to any active website.
Details as to the Respondent appear below.
The Complainant says the Disputed Domain Name is confusingly similar to its L’ARGUS trademark. The Disputed Domain Name contains that trademark (simply omitting the apostrophe) and the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not authorized to use the L’ARGUS trademark. The Complainant does not have any connection with the Respondent. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent has not been commonly known with the Disputed Domain Name.
The Complainant says that the Disputed Domain Name was registered and is being used in bad faith. The Respondent knew or should have known about the Complainant’s earlier rights in the L’ARGUS trademark. It says it is the French leader in the publication of advertising for used cars and publishes thousands of adverts a week. It relies upon a survey which it says shows it is extremely well known. This is discussed further below. The Respondent relies on the fact the Disputed Domain Name has never been used. It says that the Disputed Domain Name has never been linked to an active website. The Complainant says that the passive holding of the Disputed Domain Name is itself indicative of bad faith registration and use and refers to various previous UDRP cases in this regard.
The Respondent is a Swedish holding company. It is privately owned.
The Respondent says that the Disputed Domain Name is not similar to the Complainant’s trademark. It points to the absence of apostrophe and says that there is a strong conceptual difference between the Disputed Domain Name and the Complainant’s trademark. It says the word “argus” is descriptive in French as a word used for price guides. It also says the word “largus” is both the name of a Roman physician and writer, Scribonius Largus, and a genus of American true bugs in the family Largidae.
The Respondent says that it is part of a family owned group of companies it describes as the “Salen companies” whose origins date back to 1915. It says its business has included investments in more than 150 companies in different industries for the last century. It says that in 2017, the Salen companies had a total turnover of approximately EUR 200 million. It says that the Salen companies’ business includes companies which use the term “Largus” as a trade name and which rent out airplanes for operational leasing. These subsidiaries, operating under the brand “Largus Aviation”, comprise the following companies: Largus Holding AB, Largus AB, Largus Aviation AB, Largus Innovation AB and Largus, Inc (jointly referred to as the “Largus companies”). The first Largus company was established in 1984, and the Largus companies had a turnover of approximately EUR 20 million in 2017. Registration certificates for the Swedish Largus companies have been placed in evidence.
The Respondent says it is the registered holder of the domain name <largus.com>, as well as the majority of the other domain names used by the Salen companies. The Respondent says it grants the other Salen companies rights to use these domain names. The Largus companies are thus granted a right to use the domain name <largus.com> from the Respondent. It is currently used e.g. for an email account used by the managing director of the company ([name]@largus.com). Documentation showing that use is placed in evidence.
The Respondent says the Disputed Domain Name is thus used in connection with a bona fide offering of services and has been used for such purposes since before the Respondent received notice of this dispute. It also says the Largus companies are commonly known by a trade name corresponding to the domain name. It goes on to say that the Respondent is making a fair use of the Disputed Domain Name, e.g. through the email address mentioned above, without any intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark. The Respondent therefore has a right to and legitimate interest in the Disputed Domain Name.
The Respondent denies registering the Disputed Domain Name in bad faith. It says that so far as it is aware, the Complainant mainly operates in France and/or French-speaking countries. It says that the only trademarks invoked by the Complainant in support of the complaint that are valid in Sweden were registered in 2008 and 2014. Consequently, the Complainant had no valid trademark rights in Sweden at the time of the registration of the Disputed Domain Name in 1996 and the Largus companies thus have earlier rights to the word “largus” in Sweden. It also points out that the Complainant states that it has been the owner of the domain name <largus.fr> since 2007, i.e. eleven years after the Respondent registered the domain name <largus.com> in 1996 and 23 years after the first Largus company was established in 1984.
The Respondent disputes that the Complainant’s trademarks are well-known. It says the evidence invoked in support of the Complainant’s allegation that its L’ARGUS trademark is well-known and enjoys a reputation cannot be considered sufficient to prove the existence of such a reputation. The excerpt from a market survey (Annex 11 to the Complaint) does not include any information regarding how and within what target group the respondents were chosen, nor which questions they were asked (e.g. what other trademarks were presented to the respondents and in what context).
The Respondent says that when it registered the Disputed Domain Name in 1996 it was unaware of the Complainant and its business. In fact, the Respondent says it was unaware of the Complainant and its business until the present complaint was received. It repeats that the Disputed Domain Name corresponds to the Largus trade name which is used for a bona fide offering of services. The Disputed Domain Name was registered for use, and is still used, in business within the Salen companies, and thus not with the intention of creating a likelihood of confusion to the detriment of the Complainant’s rights or to unduly appropriate any reputation that the Complainant may be considered to enjoy. There is no link between the Respondent’s business and the Complainant’s business. Moreover, the Respondent has no interest in preventing the Complainant from registering domain names corresponding to its trademarks nor has it otherwise engaged in any such conduct.
Consequently, the Respondent says the Disputed Domain Name was not registered and is not being used in bad faith.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel finds that the Complainant has rights in the L’ARGUS trademark. The Disputed Domain Name is confusingly similar to this trademark, simply involving the omission of the apostrophe from the term.
Accordingly the Panel finds that the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the L’ARGUS trademark. The Complainant has prior rights in the L’ARGUS trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Overall if the account given in the Response is accepted at face value the Panel would have no hesitation in finding the Respondent had clearly established it satisfied paragraph 4(c)(i) of the Policy. However beyond some certificates of incorporation for the Largus companies, and a single email dated in 2018, no corroborating evidence has been filed to support what the Respondent says in the Response. So far as the Respondent’s reasons for use of the term “largus” are concerned, the Panel is provided with no information. All the Respondent says is that the word “largus” is both the name of a Roman physician and writer, Scribonius Largus, and a genus of American true bugs in the family Largidae. That appears to be an argument derived from a scouring of dictionaries and is clearly not advanced to explain why the Respondent’s associated companies chose it, which is a much more pertinent fact. The Panel simply does not know. Overall given the paucity of corroborating evidence and a lack of explanation as to why the name was chosen the Panel is doubtful that the Respondent has rebutted the Complainant’s prima facie case. It is not however necessary to reach a conclusion on this issue, given the Panel’s finding under section C below.
The Panel finds that there is no evidence to suggest that the Disputed Domain Name has been registered and used in bad faith. The Respondent says it had never heard of the Complainant or its use of the term “L’Argus” when it registered the Disputed Domain Name. Given the evidence before the Panel that account seems to the Panel to be entirely credible, and the Panel sees no reason to doubt the Respondent’s statement.
In reaching this conclusion the Panel has considered the Complainant’s case that the Respondent must have had the Complaint’s use of the term “L’Argus” in mind when it registered the Disputed Domain Name. The Panel finds that case to be unconvincing. The difficulty with that case is that the Complainant’s evidence is directed entirely to its fame and reputation in France. The Panel has no difficulty in accepting that evidence is correct and that the Complainant’s L’Argus publication is well known in relevant circles. There is not however any evidence of any kind that suggests it enjoys a more global reputation. The Panel can see no basis on the evidence before it for concluding that the Respondent, based in Sweden, would have had any knowledge of the Complainant or its publication so as to support a finding of bad faith.
In reaching this conclusion the Panel notes that various previous UDRP proceedings that the Complainant relies upon, where it has been successful, are all against francophone respondents and do not assist the Panel. The Panel also notes the results of a survey the Complainant has relied upon which it says establishes the term L’Argus is extremely well known. This survey, as the Respondent has pointed out, has limited evidential value as not enough information is provided about how it was carried out, how the sample surveyed were selected, or what questions they were asked. However more fundamentally this survey appears to be a national survey conducted of a representative sample of 1,000 people, presumably in France. As such it does not advance the Complainant’s case that it has a wider reputation outside France.
Accordingly the Panel concludes there is no credible evidence to establish bad faith on the part of the Respondent and the Complainant has failed to discharge its burden of proof and has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.
The circumstances of this case have led the Panel to consider whether the filing of the Complaint constitutes “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name” – see the Rules, paragraph 1, definition of Reverse Domain Name Hijacking (“RDNH”). Paragraph 15(e) of the Rules provides that if after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at RDNH, or was brought primarily to harass the domain name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The Rules, paragraph 15(e), call for this analysis even when the respondent has not expressly requested a finding of abuse – see Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603.
The Panel, having considered this issue, declines to make a finding of RDNH. It does so because it considers that the Complainant cannot reasonably have known the true position when it brought the Complaint. The fast that the Disputed Domain Name was registered as long ago as 1996 should have alerted the Complainant to the fact this Complaint might not be straightforward. However, it seems to the Panel it was not easy for the Complainant to establish the factual position. The publicly available information as to the registrant of the Disputed Domain Name did not disclose the Respondent’s identity or contact details, and no active web page was associated with the Disputed Domain Name. It seems to the Panel this meant that the Complainant was not in a position to realise that a bona fide Swedish company was the registrant in question. Further, no response was received by the Complainant when it sent a cease and desist letter to the relevant address provided by the publicly available WhoIs data for the Disputed Domain Name. Accordingly the Panel does not consider the Complaint was brought improperly.
For the foregoing reasons, the Complaint is denied. The Panel declines to find that the Complaint was brought in bad faith.
Nick J. Gardner
Date: September 14, 2018
1 The Respondent is in fact a company incorporated in Sweden although the relevant data disclosed by the Registrar listed a US address. Nothing turns on this fact.
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