ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is WPP Group Plc of 27 Farm Street, London W1X 6RD, United Kingdom. The Respondent is WPP of 9-11 rue Chaptal, Levallois Perret, 92300 France. The contested domain names are wppinternational.com and wppmultimedia.com. The Registrar of both the domain names is Network Solution Inc..
The remedy sought is the transfer of the Domain Names wppinternational.com and wppmultimedia.com from the Respondent to the Complainant.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on October 18, 2000. The hardcopy of the Complaint Form and annexes were received on November 24, 2000. Payment was received on November 3, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry leads the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions. Inc, the Whois database contains all the required contact information, the contested Domain Names resolved to inactive Web pages and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on October 18, 2000. The requested information was received on the same date.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on November 27, 2000. This date is the official commencement date of the administrative proceeding.
On August 11, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
Only the emails to the firstname.lastname@example.org and email@example.com were returned "undeliverable".
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.
On December 15, 2000, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on December 16, 2000.
On January 4, 2001, the Clerk's Office contacted a first candidate, and requested him to act as panelist in this case. On January 8, 2001, said candidate refused to act on the present case.
On January 9, 2001, the Clerk's Office contacted Mr. Nicol˛ Bellotto, and requested him to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On January 10, 2001, the Clerk's Office forwarded a user name and a password to Mr. Nicol˛ Bellotto, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On January 10, 2001, the parties were notified that Mr. Nicol˛ Bellotto had been appointed and that a decision was to be, save exceptional circumstances, handed down on January 24, 2000.
3. Factual Background
The Complainant is the owner of the trademark registration for "WPP". According to the documents supplied, the said mark has been registered in the United Kingdom on October 11, 1996, under the number GB 2018154 in the classes 35 (advertising and business), 36 (Insurance and Financial) and 42 (Miscellaneous). The Complainant asserts to be one of the largest advertising, marketing and communications groups in the world with activities in Europe, North America, South America and Asia and asserts that WPP brand, which is used by the Complainant in approximately 92 countries throughout the world, is highly identifiable throughout the world in relation to advertising, media planning and buying and research, information and consultancy, public relations and public affairs, brand consultancy, direct marketing and technology services. No evidence of the last assumptions has been disclosed by the Complainant.
According to the documentation enclosed to the response form the Respondent appears to be the registered owner of the trademark registration for "W.P.P.", registered in France on 7th September 1989 with Institut National De La PropriÚtÚ Industrielle under class 35, and appears also to be the registered owner of the trademark registration for "WPP", registered in France on 14th September 1999 with Institut National De La PropriÚtÚ Industrielle under classes 09, 35, 38, and 41. The respondents asserts that "WPP" is an acronyme for "World Publicity in Paris". Apparently, the trademark "W.P.P." has been used since 1988 by a Company known as "W.P.P. Agency SA" which deals on the business of advertising, publication and advertising production. According to the documents disclosed "W.P.P. Agency SA" had on 1998 a turnover of French francs 39,855,349, and on 1999 a turnover of French francs 35,242,707. There is no evidence as to when the Respondent commenced to use the contested domain names or when they have been registered. However, according to the Whois database, the two domains at issue have been recorded on December 16, 1998.
4. Parties' Contentions
Complainant contends that the use of the mark "WPP" in connection with the words "international" and "multimedia" on Respondent's domain names wppinternational.com and wppmultimedia.com, should cause confusion amongst those consumers and business users seeking the Complainant's website. Complainant further contends that Respondent has no legitimate interest or rights in the domain names because to the best of the Complainant's knowledge:
Finally, Complainant contends that Respondent has registered and is using the domain names in bad faith because up to 14th july 2000 on a website which is not contested in front of this panel, wppmedia.com, was hosted pornographic material. Complainant therefore contends that the use of the mark "WPP" in connection with the words "multimedia" and "international" is clearly intended to attract internet users to the Respondent's sites for commercial gain, and divert traffic from the genuine sites of the group WPP. Complainant requests that the domain names be transferred to Complainant.
Respondent recognizes that the use of the identical mark "WPP" in connection with the words "multimedia" and "international" will inevitably cause confusion amongst the consumers and users seeking the Complainant's or the Respondent's websites. However it also asserts to be the rightful and registered proprietor in France of the trademarks "W.P.P." and "WPP". As far as the bad faith is concerned, Respondent maintains that Complainant's assertions in relation with this issue are not consistent either because the use on Internet of pornographic material is not forbidden and because Complainant disquisitions on bad faith are referred to a website (wppmedia.com) which is not at issue in front of this Panel.
5. Discussion and Findings
To qualify for a remedy, the Complainant bears the burden of proving each of the three elements set forth in paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Policy"). The Complainant therefore must show that:
(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (emphasis supplied);
(2) The Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is being used in bad faith.
This Panel finds that Complainant has not proved two of the three factors necessary to entitle it to relief. The Panel will address each of the factors in turn.
(i). Is the disputed domain name identical or confusingly similar to the Complainant's trademark?
As has been proved by the documents enclosed by the parties on the Complaint and Response Forms, both of them are legitimate owners in different countries of the trademark "WPP". Even if the trademark registered by the parties is not identical to the domain names at issue, considered that the two domain names are composed by the union of the mark "WPP" and two generic words ("international" and "multimedia"), both the parties have agreed that could potentially exist a confusing similarity between the mark and the two domain names.
(ii). Does the Respondent have any rights or legitimate interests in the domain names?
Notwithstanding the assumption of the Complainant that the Respondent has no historical or trademark entitlement or connection to the mark "WPP" the documents disclosed by the Respondent has evidenced that the later is the registered owner of the trademark registration in France for "W.P.P." and "WPP". Bearing in mind that both the parties involved in this arbitration should be potentially entitled to the use for commercial reasons of their trademarks the question at issue is to ascertain which of the parties involved would be legitimate to seek for the registration of the domain names wppinternational.com and wppmultimedia.com.
To solve this question we have to consider first that the two domain names at issue are composed by the name of the mark and a generic world and then that none of the parties have proved to be known on the market exactly with the names included on the domain names (i.e. "wppinternational" and "wppmultimedia"). Considered the above this panel assumes that the principle applicable to solve this issue is the principle of first come first served.
Given Respondent's plausible explanation on its intention to develop its activities and business all over the world, this Panel finds that Respondent has rights and legitimate interest on the two domain names and that Complainant has not met its burden of proving this factor.
(iii). Was the domain name registered and is it being operated in bad faith
Pursuant to paragraph 4 (a) (iii) of the ICANN Policy it is incumbent upon the Complainant to prove that the Respondent has registered and is using the domain names in bad faith.
Paragraph 4 (b) of the ICANN Policy states:
"For the purposes of Paragraph 4 (a)(iii), 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 a domain in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
There has been absolutely no evidence presented by Complainant before the Panel to show one of the circumstances set out above or any other circumstance of bad faith. The only assumption expressed by the Complainant on this element is that on a site (wppmedia.com) which is not part of this dispute was hosted some pornographic material.
The Complainant has therefore failed to establish this element.
For all the foregoing this Panel decides that the Complainant in the present proceeding has not met its mandatory burden of proof on two of the three elements set forth in Section 4(a) of the UDRP Policy.
Therefore, pursuant to Paragraph 4(I) of the UDRP Policy, and Paragraph 15 of the UDRP Rules, this Panel must deny the Complaint.
The domain name shall remain registered to the Respondent.
Date: January 21, 2000
(s) Nicol˛ Bellotto