WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MASAI S.A. v. Peter Colman

Case No. D2007-0509

1. The Parties

The Complainant is MASAI S.A. of Luxembourg, Luxembourg, represented by Ernest Gutmann - Yves
Plasseraud S.A., France.

The Respondent is Peter Colman of Maidstone, Kent, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <henriot.com> is registered with Melbourne IT trading as Internet Names
Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2007. On
April 5, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a
request for registrar verification in connection with the domain name at issue. On April 12, 2007, Melbourne
IT trading as Internet Names Worldwide 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”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of
the Complaint, and the proceedings commenced April 19, 2007. In accordance with paragraph 5(a) of the
Rules, the due date for Response was May 9, 2007. Upon request by the Respondent and in the absence of
any comments by the Complainant, this time limit was extended by the Center until May 18, 2007. The
Response was filed with the Center on May 17, 2007.

The Center appointed Brigitte Joppich, William Lobelson and Charters Macdonald-Brown as panelists in this
matter on July 5, 2007. The Panel finds that it was properly constituted. Each member of the Panel has
submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by
the Center to ensure compliance with paragraph 7 of the Rules.

4. Factual Background

The Complainant in this administrative proceeding is MASAI S.A., a company having its registered seat in
Luxembourg. The Complainant is the owner of numerous HENRIOT trademarks that are registered in many
countries worldwide in international class 33 (mostly to designate Champagne wine), inter alia a French
word mark HENRIOT (reg. no. 1362015) filed on July 13, 1966, an international registration HENRIOT (reg.
no. 322994) filed on October 14, 1966, and a UK word mark HENRIOT (reg. no. 1120151) filed on
September 5, 1979 (the “HENRIOT Marks”). The HENRIOT Marks are used through the Complainant’s
exclusive licensee, Champagne Henriot, a French Champagne House founded in 1808.

The Respondent originally involved himself in domain names as a hobby, but since 2005 has made
considerable efforts to develop many of his names. The disputed domain name <henriot.com> was first
created on August 26, 1997.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is
present in this case:

(i) The domain name is strictly identical to the Complainant’s HENRIOT Marks, and this finding is not
affected by the specific top level domain name “.com”.

(ii) The Complainant further contends that the Respondent has no rights or legitimate interests in respect of
the domain name as the Respondent has not registered the mark HENRIOT anywhere in the world; is not a
licensee of the Complainant; and, is not otherwise authorized to use any of the Complainant’s HENRIOT
Marks. In the view of the Complainant, there is no doubt that the Respondent knows the HENRIOT Marks
and the goods in connection with which they are used by the Complainant through its exclusive licensee,
given in particular that Champagne HENRIOT is widely sold and well-known in the United Kingdom, where
the Respondent is domiciled. Finally, the Respondent does not use the domain name in connection with a
bona fide offering of goods and services.

(iii) The Complainant finally contends that the domain name was registered and is being used in bad faith as
the website at <henriot.com> displays almost exclusively links directing to Champagne producers, most of
them selling their products on the Internet. In addition, the Respondent has registered and is using the
disputed domain name primarily for the purpose of attracting, for commercial gain, Internet users to a Sedo
parking website by creating a likelihood of confusion with the Complainant’s mark. The Complainant finally
contends that the Respondent chose to cybersquat the HENRIOT Marks because of their reputation in the
Champagne industry. The Complainant also states that the Respondent has registered the domain name in
order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and
has shown a pattern of similar conduct because he has lost the domain names <laurentperrier.com> and
<laurent-perrier.com> as well as domain names reflecting other well-known names and marks in earlier
UDRP proceedings.

B. Respondent
While the Respondent accepts that the HENRIOT Marks are identical to the disputed domain name, he
argues that neither the second nor the third of the three elements specified in paragraph 4(a) of the Policy
are present in this case:

The Respondent contends that he does have rights and legitimate interests in respect of

the domain name under paragraph 4(a)(ii) for three main reasons:

- While the Respondent does not enjoy any registered rights in the HENRIOT Marks, no proof has been
offered regarding legitimate rights or interests in the name “Henriot”. Apart from two fixed links, the
Respondent has no knowledge of what appears on the website under the disputed domain name in France
or in any other country, as the algorithms of the system read the intellectual property of the user and are
geo-variable and constantly changing. The listed variable links are only a secondary aspect to the website.
They are provided through a Sedo parking page, which uses a system of optimizing algorithms largely
based on keywords. The Respondent was not in control of the advertising content at the centre of this
dispute and he could not know what advertisements were being shown on other geographical pages. The
Complainant refers to Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-
0241, where this type of system was dealt with at length with regard to the principles applying to Google
Adsense. These principles must also govern the Sedo parking page advertisements in this case. The
Respondent points out that there has never been an offer on the website under the disputed domain name
or via links to sell the domain name to any third party. The Respondent is not responsible for the automatic
assignment of the keyword “henriot” either, which has been changed by Sedo to “pottery” following the
initiation of the current proceedings.

- The Respondent further contends that, at the date of the first registration of the domain name, he did not
know the HENRIOT Marks and related goods. He states that “Champagne Henriot” is only one Champagne
producer amongst thousands and that Henriot is a very common name both in France and around the world,
appearing in various industries and therefore not exclusively associated with the Complainant.

- Finally, the Respondent states that under paragraph 4(c)(i) of the Policy a bona fide offering of services is
sufficient and that he has indeed offered personal email services for the name “Henriot” as a primary
function of the webpage under the fixed links that are not part of the Sedo algorithms. The Respondent
contends that he has made substantial efforts to develop many of his domain names and has engaged the
services of various independent companies to assist in these developments, thereby building a number of
personal or vanity email sites, amongst them <henriot.com>.

The Respondent further contends that the domain name was neither registered nor used in bad faith under
paragraph 4(a)(iii) of the Policy for the following reasons:

- The Complainant fails to show proof of any bad faith registration. The registration took place some ten
years ago, well before the website under the domain name was built, and before “Parking” pages such as
those of Sedo came into existence.

- The website at <henriot.com> has not been promoted on the Internet with the aim of attracting web traffic
(site visitors). Sedo rules forbid the Respondent from sending re-direct traffic to the website. While the
Complainant groups together the phrase “registration and use”, the Respondent contends they must
necessarily be separate events both in time and in their nature. The cases cited by the Complainant must be
distinguished from the present case. At no time has any Champagne related keyword such as “Champagne”
itself ever been applied to the parking section of the domain name in question - only “henriot” and “pottery”
have been used as keywords. Therefore, there has not been any deliberate use in bad faith by the
Respondent of the Complainant’s marks.

- The domain name was not registered in order to prevent the Complainant from reflecting any mark in a
corresponding domain name. The Complainant and the Respondent are not competitors and the domain
name was not registered by the Respondent to disrupt the Complainant’s business. When the Complainant
is attempting to group <henriot.com> with almost every domain name ever registered by the Respondent, it
does not present any supporting concrete facts or circumstances directly concerning the registration of
<henriot.com> and oversees that every case should be decided on its individual merits. Furthermore, the
disputed domain name was not registered or acquired for the purpose of selling, renting, or otherwise
transferring its registration to the Complainant for valuable consideration in excess of the Respondent’s out-
of-pocket costs directly related to the domain name. The Respondent believes he is currently making a
legitimate and fair use of the domain name, without intent to misleadingly divert consumers for commercial
gain and is not acting in any way to tarnish any trademark or service mark at issue.

To the extent the Complainant has referred to a number of the Respondent’s domain names, suggesting
they are imitating or reproducing third parties’ trademarks, the Respondent contends that all of these
domain names are fundamentally geographic in nature. While some of the names describe towns or places
which have football and other sports clubs, however, the Respondent contends that he is not aware of
anything that precludes the legitimate use of these names for his vanity email business and notes the use of
the suffix “FC” is being taken up by a number of subscribers for personal fan club email services.

Finally, relying on the doctrine of laches, the Respondent asks for a finding of reverse domain name hi-
jacking in this case: The Complainant has had almost ten years since the Respondent’s first registration to
dispute the rights or legitimate interests of the Respondent. If the Complainant believed any trade or service
marks it owned were somehow being compromised or diluted it could have directly contacted the
Respondent or his agent to complain about the Respondent’s ownership or use of the domain name. The
failure to communicate until this action leads the Respondent to believe the Complainant instigated this
Complaint in order to acquire the domain name in bad faith.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is
present:

(i) the domain name is identical or confusingly similar to a trademark or a 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 disputed domain name fully incorporates the HENRIOT Marks.

Furthermore, it is well established that the specific top level domain name is not an element of
distinctiveness that can be taken into consideration when evaluating the identity or similarity of the
complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and
Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Phenomedia AG v. Meta Verzeichnis Com, WIPO
Case No. D2001-0374).

The domain name is therefore identical to a trademark in which the Complainant has rights and the Panel
finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by
the respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of
paragraph 4(a)(ii) of the Policy, i.e.

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable
preparations to use, the 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 (as an individual, business or other organization) has been commonly known by the
domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

The Panel observes that the Respondent does not deny the Complainant’s assertions that it is not related to
the Complainant and was not authorized by the Complainant to use the HENRIOT Marks. The
Complainant’s assertions that the Respondent is not known under the name “Henriot” and does run any
commercial business under said name are also accepted by the Respondent.

The Respondent suggests that the vanity email services offered on the website at the disputed domain
name are in good faith and convey rights or legitimate interests under paragraph 4(c)(i) of the Policy on him.
Although the Panel accepts that vanity email services may constitute a bona fide offering of services, it does
not accept that the Respondent has any rights or legitimate interests in the domain name in the present case
for the following reasons:

- The principles of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, are not met here as
links lead to third parties’ products and the site is not only used to sell the trademarked goods. It is therefore
irrelevant whether or not the vanity email services are to be considered as the primary use of the website.

- As decided in previous decisions under the Policy, offering a vanity email service can be a legitimate use
(cf. e.g. International Raelian Religion and Raelian Religion of France v. Mailbank.com Inc., WIPO Case No.
D2000-1210). However, in order to qualify as a legitimate interest, the domain name must be registered
solely because it is a bona fide surname and only for use with vanity email services (cf. Champagne Lanson
v. Development Services/MailPlanet.com, Inc., WIPO Case No. 2006-0006). These requirements are not
fulfilled here either.

- The name “Henriot” is not generic even if it is a common name. It may be a bona fide surname, but given
the fact that it is not the Respondent’s surname and given the Respondent’s participation in the Sedo
parking system, this is not enough to establish rights or legitimate interests.

- The Sedo system automatically uses words contained in the second level domain name as the first
keyword. As a result, if the domain name infringes, Sedo parking can never constitute a legitimate use (and,
vice versa, use by Sedo parking cannot confer legitimate rights on the user of an infringing domain name).
The Respondent either knew the system or was under an obligation to familiarize himself with it. Therefore,
he cannot claim to have no responsibility for the assignment of the keyword “henriot”. He selected and
signed up to the Sedo system and he must be presumed to have familiarized himself with how the system
worked. It is irrelevant that the Respondent had no knowledge of the exact content of the sponsored links
that appeared on the website.

- To the extent that the Respondent cites Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO
Case No. D2005-0241, and states that “not only was the Respondent not in control of the advertising
content, but he also could not know what advertisements were being shown on other geographical pages”,
this is, contrary to the Respondent’s belief, not comparable to this case: WIPO Case No. D2005-0241 must
be distinguished from the present case because it dealt with a generic domain name (i.e. <elephant.com>),
and the use of such domain name in good faith and mainly for advertising unrelated to the complainant’s
business.

There is no other indication of any rights or legitimate interests of the Respondent in the disputed domain
name. Accordingly, the Panel finds that the Complainant has shown that the Respondent has no rights or
legitimate interests under paragraph 4(a)(ii) and paragraph 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, although not exclusive, are
evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of
the Policy, i.e.
(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain
name; or

(ii) the respondent has 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 the respondent has engaged
in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a
competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain,
Internet users to its website 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 the respondent’s website or
location or of a product or service on its website or location.

The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of
the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain
name was registered in bad faith and is being used in bad faith.

As to bad faith registration, it is the Panel’s opinion that the Respondent in all likelihood knew about the
HENRIOT Marks when he registered the disputed domain name: The Complainant has provided evidence
(including earlier UDRP cases) of a substantial number of domain names originally registered by the
Respondent that are identical or confusingly similar to third parties’ trademarks. More specifically, it is of
particular relevance that the Respondent registered <laurent-perrier.com>, a domain name containing
another famous Champagne brand, on exactly the same day as the disputed domain name, i.e. on
August 26, 1997 (cf. Laurent-Perrier S.A. et al. v. Peter Colman, WIPO Case No. D2000-0395). This
indicates that the Respondent had Champagne brands in mind on the day when he registered the disputed
domain name. It transpires from the information and documents supplied by the Parties that the Respondent
is not involved at all in the business of Champagne wines. The Panel is satisfied that the Respondent
registered the disputed domain name with full knowledge of the Complainant’s HENRIOT Marks and
therefore in bad faith under paragraph 4(a)(iii) of the Policy.

As to bad faith use, by fully incorporating the HENRIOT Marks into the domain name and by using the
website under such domain name as a parking website providing links to direct competitors of the
Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s
website to its own for the purpose of earning click-through-revenues from Internet users searching for the
Complainant’s website. The use and exploitation of trademarks to obtain click-through revenues from the
diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv)
of the Policy (cf. L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case
No. D2005-0623, with further references). This is regardless of the fact that the Respondent had no
knowledge of the exact content of the sponsored links that appeared on the website, it is sufficient in the
Panel’s opinion that he chose the Sedo system which used “henriot” as the first keyword – just as the
Respondent expected or should have known. Moreover, the use at the time the Complaint was filed is
specially taken into account for the purposes of this decision. The Panel is therefore satisfied that the
Respondent also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of
the Policy.

7. Laches

In many common law jurisdictions, the doctrine of laches (undue delay in asserting a legal claim) is
recognized but it is not an arbitrary or technical doctrine and its application will depend on the facts of each
particular case. Laches essentially consists of the lapse of time coupled with the existence of circumstances
which make it inequitable to enforce the claim.

The Panel wishes to point out that it appears that only about one year has passed since the Respondent first
participated in Sedo’s parking system in April 2006 and a likelihood of confusion with the HENRIOT Marks
and the Complainant’s activities first arose. However this may be, the Panel does not regard laches as an
appropriate defense to the Complaint made in this case.

From a legal point of view, the Complainant is based in a civil law jurisdiction but, to the extent that laches is
recognised under English law, it is an equitable doctrine and anyone seeking to rely on it would have to
come to the tribunal “with clean hands”. As the Respondent has acted in bad faith, it is self evident that such
a remedy is not available in this case. The remedies under the Policy are injunctive rather than
compensatory in nature, and the concern is to avoid confusion in the future as to the source of
communications, goods, or services; as previous Panels have found: the Policy does not contemplate a
defense of laches, which some panels have found to be inimical to the Policy’s purposes (cf. The E.W.
Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447; FabJob Inc. v. Compana LLC,
WIPO Case No. D2006-0610).

The Panel therefore concludes that the defense of laches does not apply to this Policy proceeding and will
not withhold a Policy decision in favor of the Complainant on the ground that the Complainant failed to seek
transfer of the domain name more promptly.

8. Reverse Domain Name Hijacking

The Respondent requests a finding of reverse domain name hijacking. This is defined in the Rules as “using
the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Moreover,
paragraph 15(e) of the Rules provides as follows: “If after considering the submissions the Panel finds that
the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking 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.”

In the present case, where the Complainant owns a great number of registered marks, identical with the
second level domain name, and has adequately presented a case that meets the standard for relief under
this proceeding, there is no room for a reverse domain name hijacking order.

9. 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 <henriot.com> be transferred to the Complainant.

Brigitte Joppich
Presiding Panelist

William Lobelson Charters Macdonald-Brown

Panelist Panelist

Dated: July 19, 2007