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 Respondent’s 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
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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”.
Complainant’s SALOMON registered trademarks
4.A.3 The Complainant is the owner of the following registered trademarks.
Country
Mark
Class(es)
France
Registration
No.
1 265 616
SALOMON
France
94 524 424
SALOMON
France
06 3 472 369
SALOMON
4, 18 and
34
37, 38 and
39
35
United States of
America
United States of
America
United States of
America
United States of
America
United States of
America
United States of
America
United States of
America
United States of
America
966974
SALOMON
9 and 28
1180271
SALOMON
25
1400337
SALOMON
18
1400520
SALOMON
28
1400456
SALOMON
25
1404712
SALOMON
9
1524886
SALOMON
41
2478999
SALOMON
SPORTS.CO
M
SALOMON
18, 25, 28,
35 and 41
9, 18, 25
and 28
Filed: July 7, 2006
Registered: July 26, 2007
SALOMON
6, 8, 9, 12,
16, 18 and
Registered: July 19, 1984
European Union 5215496
Community
Trade Mark
International
489108
Trade Mark
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Dates of Application /
Registration
Filed: January 24, 1984
Filed: June 10, 1994
Filed: December 27, 2006
Registered: June 8, 2007
Filed: January 26, 1972
Registered: August 28, 1973
Filed: January 20, 1978
Registered: December 1, 1981
Filed: November 21, 1985
Registered: July 8, 1986
Filed: November 21, 1985
Registered: July 8, 1986
Filed: November 21, 1985
Registered: July 8, 1986
Filed: November 21, 1985
Registered: August 12, 1986
Filed: April 22, 1988
Registered: February 14, 1989
Filed: May 24, 1999
Registered: August 21, 2001
International
Trade Mark
940740
34
35
SALOMON
Registered: June 8, 2007
Additionally, there are registered trademarks for SALOMON in the following
102 countries (or locations):
Albania
Algeria
Austria
Bosnia and
Herzegovina
China
Czech
Republic
Estonia
Guatemala
Bahrain
Brazil
Indonesia
Japan
Lithuania
Monaco
Iran
Jordan
Macedonia
Morocco
Panama
Papua New
Guinea
Qatar
Portugal
Colombia
Denmark
Fiji
Honduras
Antigua
and
Barbuda
Barbados
Brunei
Darussalam
Costa Rica
Dominican
Republic
Finland
Hong
Kong, SAR
of China
Ireland
Kazakhstan
Madagascar
New
Zealand
Paraguay
Argentina
Aruba
Australia
Belarus
Bulgaria
Benelux
Canada
Bolivia
Chile
Croatia
Ecuador
Cuba
Egypt
Cyprus
El Salvador
Georgia
Hungary
Germany
Iceland
Greece
India
Israel
Latvia
Malaysia
Nicaragua
Italy
Lebanon
Mauritius
Norway
Jamaica
Liechtenstein
Mexico
Oman
Peru
Philippines
Poland
Republic of
Korea
Saudi
Arabia
Spain
Republic of Republic of
Moldova
Serbia
Seychelles Singapore
Romania
Sweden
Switzerland
Taiwan,
Province of
China
United Arab
Emirates
Yemen
Russian
Federation
Solomon
Islands
San Marino
Thailand
Tonga
Tunisia
Turkey
Ukraine
United
Kingdom
Uruguay
Vanuatu
Venezuela
Vietnam
South
Africa
Slovakia
Complainant’s 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.
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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 Complainant’s
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 Complainant’s 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 Respondent’s in the following terms:
“Dear Mr. McManus,
We haven’t received a reply from you since our last email dated the 7th of
October. If you don’t 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 nonacceptance of your offer.”
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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 Respondent’s 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 Complainant’s 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
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domain 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 Complainant’s 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 respondent’s 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 Respondent’s
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.
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6.7
Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the
Policy.
Rights or Legitimate Interests
6.8
As noted, the Complainant’s 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 wellknown 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 Complainant’s 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 Complainant’s 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 Panel’s 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
Respondent’s asking price was USD 10,000.00, which the Panel believes is likely
to exceed by far the Respondent’s out-of-pocket costs directly related to the
domain name.
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6.14 Finally, in failing to submit a Response the Respondent has provided no evidence
whatsoever of any actual or contemplated good faith use of the disputed domain
name.
6.15 In all the circumstances, in the Panel’s 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 Complainant’s
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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