DECISION

John Vanden Bos v. Proxyone Domain Trust a/k/a Proxy One

Claim Number: FA0307000170632

PARTIES

Complainant is John Vanden Bos, Paris, France (“Complainant”) represented by David L. Bea of Mosher & Associates. Respondent is Proxyone Domain Trust a/k/a Proxy One, Riverview, FL (“Respondent”) represented by Paul Giacomo Jr.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fusac.com> registered with Enom, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 22, 2003; the Forum received a hard copy of the Complaint on July 22, 2003.

On July 30, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <fusac.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On July 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 19, 2003, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@fusac.com by e-mail.

A timely Response was received and determined to be complete on August 19, 2003.

On August 20, 2003, a timely and complete Additional Submission was received from Complainant.

A timely Additional Submission was received from Respondent and determined to be complete on August 21, 2003.

On August 22, 2003, Complainant submitted a timely Second Additional Submission.

On August 25, 2003, Respondent submitted a timely Second Additional Submission.

On August 27, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in Complainant’s Complaint and two Additional Complaints in this proceeding:

1. That Complainant has legal rights in the FUSAC mark used by its agent, Respondent, in a domain name that is identical to the mark.

2. Respondent has no such rights to or legitimate interests in the mark and domain name.

3. Respondent acted in bad faith in registering and using the disputed domain name once the agency relationship had ended.

B. Respondent makes the following points in her Response and two Additional Responses:

1. Respondent registered and used the domain name using the mark in the United States with Complainant’s consent and knowledge.

2. Respondent acquired common law rights to and legitimate interests in the mark by use over a 14-year period.

3. Respondent could not have acted in bad faith because Respondent had Complainant’s permission to register a domain name using the mark.

4. Complainant is attempting reverse domain name hijacking with this ICANN claim.

              

FINDINGS

Complainant urges that in September of 1988, he created a twice-monthly classified ad magazine for the English-speaking communities of Paris, calling it “France USA Contacts” or “FUSAC.”  Complainant created the entity in Paris.  It distributes to “over 650 English-speaking outlets…free of charge.  The organization’s revenue comes from fees for the placing of classified and commercial advertisements” and has ten employees.

           

Complainant alleges that the named Respondent is “a third party website registration service that is used by the Operator of the site to keep the Operator’s contact information anonymous.” Complainant alleges that the Operator is Dominique LeDieu, who “does business as ‘France Contacts’.”

Complainant met LeDieu while Complainant was a student in New York, and urges that she is a “French woman who worked in the travel business and …sold tickets to students traveling back and forth to France.”  The two entered into an agency relationship, according to Complainant.

LeDieu “serviced any subscription requests from New York or elsewhere in the United States.”  In September of 1990, Complainant alleges that he “discontinued the relationship with LeDieu and hired a different agent in the United States” but concedes that he resumed the relationship with LeDieu in February 1993. LeDieu paid Complainant a “royalty fee” and was compensated with the revenue she generated in the United States, according to Complainant.

Complainant established in this proceeding that he filed application for trademark in France and Europe on September 14, 1994, and that he holds a certificate of trademark registration with the Institut National de la Propriété Industrielle for the FUSAC FRANCE-USA CONTACTS mark (Reg. No. 94,536,278 registered March 24, 1995).  Such rights embrace production of printed matter, namely, a series of printed magazines distributed primarily in France.

The trademark did not reference Internet use.  Respondent’s use is by Internet website, offering classified advertisements to customers and newspaper subscription services for third parties.

On February 13, 1997, LeDieu registered the disputed domain name.  Complainant urges that she did so without his permission and that he immediately “told LeDieu to take it off the web.” Complainant concedes that he then acquiesced to the benefits from the domain name site and notes that he was not aware of the value of the Internet site because the Internet developed faster in the United States than in Europe. In 1999, Complainant attempted to register the domain name in France and was unable to use the fusac.com designation and registered “fusac.fr” and “fusac.org.” Complainant concedes that he then did nothing for a period of time and that both he and LeDieu used their respective domain names providing the same information and services in their respective locations.

Ultimately, those attempting to contact Complainant in France ended up contacting LeDieu in the United States and in September 2002, Complainant “broke off relations with” LeDieu. 

Complainant alleges that LeDieu “presently leads unwary people to believe the FUSAC magazine no longer exists and she tells potential customers that FUSAC readers prefer the Internet service anyway.  She takes the confused customers’ credit cards and charges their accounts.”  Customers learn their mistake only when they fail to get return calls for their ads and have been unable to get their money back from LeDieu, according to Complainant.  These users then turn to Complainant for satisfaction.

Complainant sent a cease and desist letter to LeDieu and then filed this complaint.

The facts establish that Respondent registered the domain name during the period of the agency relationship.

Respondent notes that it acted independently or as Complainant’s partner for 14 years before this complaint; that Complainant’s registration does not “cover internet website products or services;” that Respondent provides services solely over the Internet; that she makes clear to those who use her services that no printed publication will follow; and that “once she realized that Mr. Vanden Bos intended to put her out of business and take for himself 14 years of her work, Ms Ledieu took action to enforce her common law trademark rights to FUSAC in the USA.”

Respondent established that her application #78160481 for trademark rights in the United States is pending.  Respondent bases her claim for rights on “continued and uninterrupted use of the trademark since 1988 and in commerce since 1991.” Further Respondent urges that Complainant has shown no legal rights to use the disputed domain name or mark in the United States and that Complainant cannot show a legal presence in the United States. 

Respondent urges that the two envisioned a bilateral presence for their business from the outset.  The parties signed no contract and entered into no covenant not to compete and Respondent urges that she “has never been an employee or licensee of Mr. Vanden Bos or any of his entities.  Instead, Ms. Ledieu has always promoted [the] trademarks exclusively in the USA and Canada and since 1997 on the World Wide Web.” 

Respondent formed the Delaware Corporation France Contacts, Ltd. and France USA Contacts, Ltd., another Delaware corporation, but dissolved it.

Complainant’s Additional Response urges that Respondent was Complainant’s agent, that Respondent’s corporate structure does not give her rights in the mark, that only Complainant owns the FUSAC mark; that Complainant is not required to have intellectual property rights in the United States to protect his mark; that LeDieu has not acquired a trademark for the website; and that his termination of the distributorship was not done in bad faith.

Interestingly, Complainant then attaches an exhibit that suggests partnership, which was written on the letterhead for France Contacts at 104 West 14^th Street, New York, NY 10011-7314, and which includes the following language: “…we are not able to make a better assessment of the U.S. operation of FUSAC, Dominique and I concluded that…”.

Respondent’s Additional Response restates her positions that were not controverted and notes that Complainant did not deny that Respondent acted independently in this country relative to the Internet use.

Complainant’s second Additional Response contained, among other things, emails in which Respondent asked for coverage for the Internet site in the printed edition.

Respondent also filed a second Additional Response.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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.

Identical to and/or Confusingly Similar

In September 1988, Complainant created a twice-weekly classified ad magazine for the English-speaking communities of Paris, called “France USA Contacts,” or “FUSAC.” Complainant produced evidence in this proceeding of a certificate of trademark registration with the Institut National de la Propriété Industrielle for the FUSAC FRANCE-USA CONTACTS mark (Reg. No. 94,536,278 registered March 24, 1995) in relation to printed matter, namely, a series of printed magazines distributed primarily in France and also on an Internet website offering classified advertisements to customers and newspaper subscription services for third parties. Such evidence establishes that Complainant has rights in the FUSAC mark for purposes of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates. It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Complainant contends that the domain name registered by Respondent, <fusac.com>, is identical to Complainant’s FUSAC mark because the disputed domain name merely adds the generic top-level domain (“gTLD”) “.com” to the mark. The addition of a gTLD such as “.com” does not sufficiently differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

Respondent urges that she worked as the exclusive owner and promoter of the FUSAC mark, individually and through entities France Contacts, Ltd. and France U.S.A. Contacts, Ltd. in the United States.  Respondent contends that she promoted the FUSAC mark in the United States beginning in September 1988. Respondent further notes that Complainant can claim no rights to the FUSAC mark in the United States under Policy ¶ 4(a)(i) because Respondent is the sole owner of all common law trademark rights developed in the United States and Canada by virtue of Respondent’s 14 years of work promoting these trademarks.  Respondent has application for trademark protection pending in the United States.

Complainant has established legal rights in the mark in France and Respondent has raised the issue that she acquired common law ownership rights by 14 years of use in the United States.  Determination of the respective rights these parties have in the mark depends on the nature of their relationship.  Complainant urges that Respondent was his agent and Respondent urges that they operated bilaterally, suggesting partnership. Resolution of this dispute concerning the relationship of these parties is not within the jurisdiction of this claim but belongs to the courts.

However, the Panel finds that Complainant met the requirements of Policy ¶ 4(a)(i) to show that the domain name is identical to a mark in which Complainant has rights in France, even if those rights may not be exclusive.

Rights to or Legitimate Interests

Complainant established in this proceeding that he has legal rights in the FUSAC mark in France and that Respondent was aware of those rights.  Complainant concedes that he once authorized Respondent to use the FUSAC mark but urges that it was as an agent, representative or distributor for Complainant in the United States. Complainant contends that the relationship between Complainant and Respondent ended and that Respondent retained no independent rights to or legitimate interests in the mark. Complainant further argues that Respondent retained no rights to or legitimate interests in the <fusac.com> domain name once Complainant withdrew the authorization that Respondent was given to use the FUSAC mark.

In 1997, when Respondent registered the domain name, Complainant urges that he told her to take it off the web.  But the facts establish that Complainant conceded to Respondent’s continued use of the mark in the domain name and that Complainant derived benefit from that use.  Complainant also registered the mark in France in two other domain names.

Without consent, Respondent cannot make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) using the mark and cannot make a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See K&N Eng’g., Inc. v. Weinberger, FA 114414 (Nat. Arb. Forum July 25, 2002) (holding that Respondent, who was not an authorized distributor of Complainant’s products, lacked rights or legitimate interests in a domain name incorporating Complainant’s mark); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from Respondent, a watch dealer not otherwise authorized to sell Complainant’s goods, to Complainant); see also Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000)   (finding that as a former employee, Respondent knew or should have known Complainant’s mark was in use as an integral part of the corporate name and as a trademark and that Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right. This is sufficient for Complainant to establish that Respondent had no rights or interest in the domain name).

Both sides agree that Respondent had the right to use the mark in the United States; Respondent asserts that she had this right beginning in 1988 and not only used the mark but became commonly known as the owner and operator of the business known as France U.S.A. Contacts or FUSAC in the United States and Canada.  Respondent urges that from 1997, Respondent used the mark on the Internet with Complainant’s knowledge and support.  Complainant’s exhibits show that he enjoyed the benefits of this use of the mark.  Respondent also provided evidence of a pending trademark registration with the United States Patent and Trademark Office for the FUSAC mark for using the mark in Internet-related commerce.

Respondent’s use of Complainant’s mark in business and on the Internet arose from Complainant’s permission, acquiescence, and ratification by taking benefits from that use. Respondent’s business was in that name as well. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name); see also Kryton Mktg. Div., Inc. v. Patton Gen. Contracting, FA 123868 (Nat. Arb. Forum Oct. 21, 2002) (holding that Respondent had rights and legitimate interests in the disputed domain name as it had been commonly known by the domain name and has been using the name "liquid siding" in marketing its goods and services since the 1990's).

As part of Respondent’s proof of rights obtained through use, Respondent produced copies of magazine references in which Complainant referred to Respondent’s operations in the United States. Respondent contends that Complainant’s publication references to Respondent’s operations shows that Complainant considered Respondent’s use of the <fusac.com> domain name to be a bona fide offering of goods or services. Business use of the disputed domain name to provide goods and services implicitly approved by Complainant’s magazines demonstrated Respondent’s rights to and legitimate interests in the domain pursuant to Policy ¶ 4(c)(i). See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that Respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that Respondent had rights or legitimate interests in the disputed domain name); see also Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO March 19, 2002) (finding that Respondent’s use of the disputed domain name to make a bona fide offering of services bestowed rights and legitimate interests in the domain name).

The Complainant established that it has legal rights to and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii) and Respondent established probable common law rights in the domain name. Whether Respondent’s rights are derivative of Complainant’s rights requires determination of the partnership or agency issue, which is a matter for the courts and not this Panel.

Complainant did not satisfy the requirements of Policy ¶ 4(a)(ii). 

Registration and Use in Bad Faith

Complainant urges that Respondent acted in bad faith in refusing to end her use of the domain name once the agency relationship between Complainant and Respondent was terminated.  If Respondent’s rights to use the <fusac.com> domain name were derivative of Complainant’s rights, such use would be in bad faith after termination of an agency relationship of the parties. See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2001) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark); see also William Hill Org. Ltd. v. Fulfillment Mgmt. Serv. Ltd., D2000-0826 (WIPO Sept. 17, 2000) (finding bad faith registration and use (even though no pattern of conduct existed) where “Respondent’s employee must have had the Complainant’s trademarks in mind when choosing the disputed domain name and that the Respondent’s interest was to deprive the Complainant of the opportunity to reflect its mark in that name until the registration expired”).  If Respondent acquired common law rights and if Respondent can show partnership rights in Court, Complainant cannot show bad faith using this ground.

Complainant also asserts that Respondent now leads unwary Internet users who attempt to access Complainant’s magazine to believe that Complainant’s magazine no longer exists in the United States. Then, Complainant maintains, Respondent sells advertising space on her website that was intended for Complainant. Respondent rebutted this contention by showing that the services that she offers are solely on the Internet and that she discloses to users that the ad will not appear in print.  Some cases have found bad faith where Respondent intentionally attempts to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).  But the relationship of these parties shows that Respondent used the mark in commerce and that Complainant at the very least acquiesced and ratified that use by accepting the benefit from such use.  It was not until Complainant realized the value of Internet commerce that he attempted to register the mark in an identical domain name in France but had to choose other alternatives.  Complainant knew from 1997 that Respondent used and promoted the <fusac.com> domain name in the United States and Complainant cannot show bad faith registration because Complainant approved Respondent’s registration of the mark in a domain name, acquiesced to it and received the benefits from it. See Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (finding that Respondent did not register the disputed domain name in bad faith where it "registered the Domain Name with the full consent and knowledge of Complainant" and therefore "did not have the requisite bad faith when he registered the Domain Name, which is an express requirement of the Policy"); see also Eddy’s (Nottingham) Ltd v. Smith, D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration of the domain name where Respondent registered the domain name in good faith, without objection by Complainant, and in the interest of promoting Complainant’s business). 

Respondent argues that Respondent acquired independent rights in the domain name as well as Complainant’s mark because Respondent had consent of Complainant to use the mark and because Complainant permitted Respondent to use the mark for a 14-year period in this country.  We do not reach those issues because their resolution requires determination of the partnership and/or agency questions, which is a subject for litigation in the courts. 

Complainant did not meet the requirements of Policy ¶ 4(a)(iii) to show registration and use in bad faith.

Reverse Domain Name Hijacking

Respondent claims that Complainant knew that Respondent had rights to and legitimate interests in the <fusac.com> domain name before bringing the complaint.  Respondent contends that this administrative proceeding has been brought in bad faith because Complainant knew of Respondent’s rights in the disputed domain name. See Deutsche Welle v. DiamondWare Ltd., D2000-1202 (WIPO Jan 2, 2001) (Complaint considered to be brought in bad faith where Complainant must have known that Respondent was not a cybersquatter prior to the filing of the Complaint). 

Complainant contends that, in order to prove a reverse domain name hijacking, Respondent must prove that Complainant brought this administrative proceeding in bad faith. See Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO March 19, 2002) (holding that the burden of proof rests with the domain name registrant to show that it has an unassailable right or legitimate interests in a disputed domain name when a claim of reverse domain name hijacking is made).

Neither party provided proof that would give them the right to prevail on this issue.

DECISION

Having established that Complainant did not satisfy all three elements as required under the ICANN Policy, the Panel concludes that relief shall be DENIED.  Accordingly, it is Ordered that the <fusac.com> domain name not be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist
Dated: September 10, 2003.

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