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WIPO Domain name Dispute Case D2008-1880

By Peggy Burns,2014-10-25 19:32
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WIPO Domain name Dispute Case D2008-1880

    WIPO Arbitration and Mediation Center

    ADMINISTRATIVE PANEL DECISION

    SALOMON SAS v. Jim McManus

    Case No. D2008-1880

    1. The Parties

    The Complainant is SALOMON SAS, of Metz Tessy, France, represented by RDLUX SA(Legitiname), Luxembourg.

    The Respondent is Jim McManus, of Florida, United States of America.

    2. The Domain Name and Registrar

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

    3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center)

    on December 5, 2008. On December 5, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On the same date, 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. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondents default on January 6, 2009.

    The Center appointed David Perkins as the sole panelist in this matter on January 19, 2009. The Panel finds that it was properly constituted. The Panel has

    page 1

    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

    4.A. The Complainant

    4.A.1 The Complainant was founded in France in 1958 as Salomon S.A., now known as

    Salomon S.A.S. (Société par Action Simplifiée). It is a public limited company.

    4.A.2 The Complainant manufactures and sells sports equipment and clothing, which are

    sold in more than 100 countries worldwide under the SALOMON trademark.

    Those products include skis, snowboards, ski clothing, ski footwear and ski

    accessories. The Complainant sells through its subsidiaries and agents in countries

    outside France. It also sells online through its website at

    “www.salomonsports.com.

    Complainants SALOMON registered trademarks

    4.A.3 The Complainant is the owner of the following registered trademarks.

    Country Registration Mark Class(es) Dates of Application /

    No. Registration

    France 1 265 616 SALOMON 4, 18 and Filed: January 24, 1984

    34

    France 94 524 424 SALOMON 37, 38 and Filed: June 10, 1994

    39

    France 06 3 472 369 SALOMON 35 Filed: December 27, 2006

    Registered: June 8, 2007

    United States of 966974 SALOMON 9 and 28 Filed: January 26, 1972

    America Registered: August 28, 1973

    United States of 1180271 SALOMON 25 Filed: January 20, 1978

    America Registered: December 1, 1981

    United States of 1400337 SALOMON 18 Filed: November 21, 1985

    America Registered: July 8, 1986

    United States of 1400520 SALOMON 28 Filed: November 21, 1985

    America Registered: July 8, 1986

    United States of 1400456 SALOMON 25 Filed: November 21, 1985

    America Registered: July 8, 1986

    United States of 1404712 SALOMON 9 Filed: November 21, 1985

    America Registered: August 12, 1986

    United States of 1524886 SALOMON 41 Filed: April 22, 1988

    America Registered: February 14, 1989

    United States of 2478999 SALOMON18, 25, 28, Filed: May 24, 1999

    America SPORTS.CO35 and 41 Registered: August 21, 2001

    M

    European Union 5215496 SALOMON 9, 18, 25 Filed: July 7, 2006

    Community and 28 Registered: July 26, 2007

    Trade Mark

    International 489108 SALOMON 6, 8, 9, 12, Registered: July 19, 1984

    Trade Mark 16, 18 and

    page 2

    34

    International 940740 SALOMON 35 Registered: June 8, 2007

    Trade Mark

    Additionally, there are registered trademarks for SALOMON in the following 102

    countries (or locations):

    Albania Algeria Antigua Argentina Aruba Australia

    and

    Barbuda

    Austria Bahrain Barbados Belarus Benelux Bolivia Bosnia and Brazil Brunei Bulgaria Canada Chile Herzegovina Darussalam

    China Colombia Costa Rica Croatia Cuba Cyprus Czech Denmark Dominican Ecuador Egypt El Salvador Republic Republic

    Estonia Fiji Finland Georgia Germany Greece Guatemala Honduras Hong Hungary Iceland India

    Kong, SAR

    of China

    Indonesia Iran Ireland Israel Italy Jamaica Japan Jordan Kazakhstan Latvia Lebanon Liechtenstein Lithuania Macedonia Madagascar Malaysia Mauritius Mexico Monaco Morocco New Nicaragua Norway Oman

    Zealand

    Panama Papua New Paraguay Peru Philippines Poland

    Guinea

    Portugal Qatar Republic of Republic of Republic of Romania

    Korea Moldova Serbia

    Russian San Marino Saudi Seychelles Singapore Slovakia Federation Arabia

    Solomon South Spain Sweden Switzerland Taiwan, Islands Africa Province of

    China Thailand Tonga Tunisia Turkey Ukraine United Arab

    Emirates United Uruguay Vanuatu Venezuela Vietnam Yemen Kingdom

Complainants SALOMON domain names

4.A.4 The Complainant has registered domain names incorporating SALOMON,

    “salomonsport” and “salomonsports” in those countries where it sells its products

    and services and set out below is an extract of such domain names exhibited to the

    Complaint.

    page 3

    The earliest registered domain name was <salomon-sports.com> on

    March 17, 1995.

4.B. The Respondent

    4.B.1 In the absence of a Response, what is known of the Respondent appears from the

    Complaint and its annexes. The disputed domain name <salomon.com> was

    created on January 11, 1995. At that time, the registrant was Salomon Bros. Inc. of

    New York, New York and the Respondent, Jim McManus, was the administrative

    and technical contact.

    4.B.2 At some stage prior to September 27, 2007, the Respondent himself became the

    registrant of the disputed domain name.

    4.B.3 The disputed domain name resolves to a parking page (also known as a landing

    page) which depicts a downhill skier and links to Salomon Sports, Ski Boots,

    Salomon Ski and Salomon Snowboard.

4.C Correspondence between the Parties

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    4.C.1 On June 23, 2008 the Complainant’s representative emailed a cease and

    desist letter to the Respondent requesting transfer of the disputed domain name and offering to reach a friendly agreement with you [the Respondent] in order to transfer this domain name.

    4.C.2 In the absence of a reply to that email, on September 10, 2008, the Complainants

    Digital Marketing Manager emailed the Respondent, explaining that he represented the Complainant who was interested in purchasing the disputed domain name. The same day the Respondent replied, I am interested in receiving

    significant offers. Jim.

The Complainant’s Digital Marketing Manager replied, again the same day,

    offering USD 1,000.00.

    4.C.3 On September 23, 2008, the Complainant’s representative followed up that

    exchange of emails asking the Respondent to contact him to proceed with the sale and purchase of the disputed domain name. The Respondent replied on September 24, 2008 giving his telephone number. Then on October 7, 2008 the Complainant’s representative spoke by telephone to the Respondent. The

    Complainant’s representative account of that conversation is that he pointed out the Complainants trademark rights in SALOMON and that, in the circumstances, the Respondent could have no legitimate interest in the disputed domain name. The Complainant’s representative says that this was not disputed by the Respondent, whose response was to ask what the Complainant was prepared to pay for transfer of the domain name. The Respondent said he had previously received an offer equal to USD 10,000.00 and, in the circumstances, was looking for an offer of at least that sum from the Complainant, according to the Complainant’s

    representative, the Complainant’s representative replied that he could not envisage

    the Complainant agreeing to a sum of that magnitude and indicated that, unless the Respondent would reduce his asking price, the Complainant would resort to formal proceedings.

    4.C.4 Later the same day [October 7, 2008] the Complainant’s representative emailed the

    Respondent having reported their telephone conversation to the Complainant. By that email he counter-offered on behalf of the Complainant USD 4,000.00, requesting a reply from the Respondent within 8 days.

    4.C.5 Having received nothing in reply from the Respondent on October 14, 2008 the Complainant’s representative emailed the Respondents in the following terms:

Dear Mr. McManus,

     thWe havent received a reply from you since our last email dated the 7 of

    October. If you dont reply in the next 24 hours, we will consider your

    silence as non-acceptance of our proposal.

Best regards,

    []

    4.C.6 The Respondent replied the same day saying:

    Your overly aggressive and threatening posture has resulted in a non-acceptance of your offer.

    page 5

    Which email the Complainant’s representative acknowledged the following day.

    5. Parties Contentions

5.A Complainant

Identical or Confusingly Similar

    5.A.1 The Complainant is the owner of the SALOMON registered trademarks and

    Salomon prefixed domain names, set out respectively in paragraphs 4.A3 and

    4.A.4 above. The earliest of the registered trademarks dates from 1973 and the

    earliest domain name registration for <salomon-sports.com>, from March

    17, 1995, some 2 months after registration of the disputed domain name.

    5.A.2 The disputed domain name is identical to the SALOMON registered trademark.

    The Complainant has been in business for over 30 years. The earliest (1973) of the

    United States of America SALOMON trademarks claims first use in commerce

    from May 26, 1953 for the ski equipment specified in classes 9 and 28.

5.A.3 The Complaint also exhibits a Google search for “salomon” which prominently

    features the Complainant and its products. This, the Complainant says, illustrates

    the strong worldwide reputation it has built up with consumers for its products

    under the SALOMON name and trademark over a period of more than 30 years.

Rights or Legitimate Interests

    5.A.4 The Complainant says that it has not authorized the Respondent to use the

    SALOMON trademark as a domain name.

    5.A.5 Further, the Complainant says that there is no association between itself and the

    Respondent. In that respect, the Complaint exhibits the results of a Google search

    for Jim McManus Salomon.

    5.A.6 In the light of its extensive prior rights in the SALOMON trademark, which

    predate registration of the disputed domain name by more than 20 years, and of the

    absence of any authorization, the Complainant says that the Respondents use of

    the domain name cannot be a bona fide, a legitimate or a fair use.

    5.A.7 Additionally, there is no evidence that the Respondent has been commonly known

    by the domain name.

5.A.8 Finally, in his telephone conversation with the Respondent, the Complainant’s

    representative says that the Respondent never asserted that he had rights or

    legitimate interests in the disputed domain name, his only concern was with the

    amount of money the Complainant was prepared to pay for transfer of the domain

    name.

Registered and Used in Bad Faith

5.A.9 The Complainants case is as follows. First, the references to SALOMON

    products on the landing page to which the disputed domain name resolves is

    entirely without any connection to the Complainant. This use of the domain name

    began, the Complainant says, after the Respondent acquired the disputed domain

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    name from its previous owner in September 2007. The Complainant characterizes

    this as an attempt by the Respondent to attract Internet users to the website by

    creating a likelihood of confusion with the Complainants SALOMON trademark

    as to the source, sponsorship, affiliation or endorsement of that website.

    5.A.10 Second, given the well-known status of the SALOMON trademark by January

    1995 with first sales in the United States dating back to 1953, the Complainant says

    that the disputed domain name must have been registered in full knowledge of that

    trademark and, consequently, in bad faith.

    5.A.11 Third, in the light of the correspondence between the Parties summarized in

    section 4.C above the Complainant asserts that the circumstances set out in

    paragraph 4(b)(i) of the Policy are met on the facts of this case.

5.B Respondent

    As noted above, no Response has been submitted.

    6. Discussion and Findings

    6.1 The Policy paragraph 4(a) provides that the complainant must prove each of the

    following in order to succeed in an administrative proceeding:

(i) that the respondents domain name is identical or confusingly similar to a

    trademark or service mark in which the complainant has rights; and

    (ii) that the respondent has no rights or legitimate interests in respect of the domain

    name; and

    (iii) that the domain name has been registered and is being used in bad faith.

    6.2 The Policy paragraph 4(c) sets out circumstances which, in particular, but without

    limitation, if found by the Panel to be proved shall demonstrate the Respondents

    rights or legitimate interest in the disputed domain name.

    6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular, but

    without limitation, if found by the Panel to be present shall be evidence of the

    registration and use of a domain name in bad faith.

    6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not

    exclusive. They are without limitation. That is, the Policy expressly recognizes

    that other circumstances can be evidence relevant the requirements of

    paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

    6.5 The Complainant has rights in the SALOMON trademark which is registered in

    over 100 countries worldwide, dating from the earliest registration in 1973 in the

    United States of America.

6.6 The disputed domain name is identical with that trademark.

    6.7 Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the

    page 7

    Policy.

Rights or Legitimate Interests

6.8 As noted, the Complainants use of the SALOMON trademark dates

    from 1953 and its first registration of that trademark dates from 1973, both long

    predating registration of the disputed domain name in January 1995.

    6.9 In the absence of a Response, there is nothing from the record to indicate that any

    of the circumstances set out in paragraph 4(c) of the Policy could apply in this case.

    The evidence is to the contrary, since the Complainant says that it has not

    authorized use by the Respondent of the disputed domain name. Further, in the

    record of the email and telephone exchanges between the Parties set out in section

    4.C above there is no assertion of rights or legitimate interests by the Respondent,

    merely a refusal to transfer the domain name for the amount offered by the

    Complainant, namely USD 4,000.00.

    6.10 In these circumstances, the Panel finds that the Complaint also satisfies paragraph

    4(a)(ii) of the Policy.

Registered and Used in Bad Faith

    6.11 As to registration in bad faith, not only does SALOMON appear to be well-known

    worldwide in relation to sports equipment and clothing, but it had also been used

    and registered as a trademark for very many years before the disputed domain

    name was registered in 1995. It is reasonable to conclude that the registrant was

    likely aware of the Complainants rights in the SALOMON mark at that time and

    that, consequently, the disputed domain name was registered in bad faith. In fact,

    its registration prevented the Complainant from reflecting the SALOMON

    trademark in a corresponding domain name, necessitating registration some two

    months later (March 1995) by the Complainant of <salomon-sports.com>. These

    observations apply doubly so in relation to the Respondent’s apparent acquisition

    of the disputed domain name in 2007.

    6.12 As to use in bad faith, no indication is given in the Complaint as to what (if any) use

    was made of the disputed domain name between registration in 1995 and transfer

    to the Respondent in September 2007. However, the use which has been made of

    the domain name since September 2007 to resolve to a landing page / parking page

    linking, inter alia, to SALOMON snow products has not been made with the

    consent or authorization of the Complainant. Given that the disputed domain name

    is identical to the Complainants SALOMON mark and the above finding that the

    Respondent has no rights or legitimate interests in the disputed domain name, in

    this Panel’s view it is difficult to envisage what bona fide or legitimate use could be

    made of the domain name.

6.13 This bad faith by the Respondent is, in the Panels opinion, compounded by the

    Respondent not raising any claim to rights or legitimate interests to the domain

    name in the communications between the parties and his willingness to sell the

    disputed domain name but only for a sum exceeding USD 4,000.00. The

    Respondents asking price was USD 10,000.00, which the Panel believes is likely

    to exceed by far the Respondents out-of-pocket costs directly related to the

    domain name.

    6.14 Finally, in failing to submit a Response the Respondent has provided no evidence

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    whatsoever of any actual or contemplated good faith use of the disputed domain

    name.

6.15 In all the circumstances, in the Panels view the two requirements of paragraph

    4(a)(iii) are met by the Complaint.

Comment

    6.16 While the Panel finds for the Complainant in this case, it should be said that the

    language used in the Complaint is difficult to understand. The Panelist entirely

    appreciates that English may not be the first language of either the Complainant (a

    Company incorporated and headquartered in France) or its counsel (who have an

    address in Luxembourg). However, the language of the proceeding is English and

    it is desirable that submissions are drafted in the appropriate language as clearly as

    possible.

    6.17 Additionally, as noted in paragraph 6.12 above, the Complaint gives no

    explanation for the period between registration of the disputed domain name

    (January 1995) and when the Respondent appears to have acquired the domain

    name (September 2007). In the particular case the Complainant is fortunate that

    such omission has not proved fatal to its case. However in general, complainants

    and their legal representatives should have regard to the fact that the Rules provide

    for only one complaint and one response, any additional submission being at the

    discretion of the Panel (Rules paragraph 12). Accordingly, it is important that the

    complaint and its annexes should set out the Complainants case both fully and

    clearly from the outset.

    7. Decision

    For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <salomon.com> be transferred to the Complainant.

    David Perkins

    Sole Panelist

    Dated: January 27, 2009

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