UDRP : D2003-0392 28 08 2003 PRODUITS BERGER C WELLMARK SUPPLIES
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Produits Berger v. Wellmark Supplies
Case No. D2003-0392
1. The Parties
The Complainant is Produits Berger, of Paris, France, represented by Mr. Gilles Escudier, Novagraaf, France.
The Respondent is Wellmark Supplies, of Singapore.
2. The Domain Name and Registrar
The disputed domain name is (elampeberger.com). It is registered with Tucows, Inc., Ontario, Canada (the « Registrar »).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the « Center ») on May 22, 2003. The Center received a hard copy of the Complaint on June 4, 2003.
On May 23, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On May 26, 2003, Tucows transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of the domain name and providing the contact details for the administrative and technical contacts. The Registrar also confirmed that the domain name is registered with Tucows.
Between May 27 and June 18, 2003, the Parties and the Center exchanged e-mails concerning a possible suspension of the proceedings, which was eventually requested by the Complainant on June 16, 2003. On June 18, 2003, the Complainant asked the Center to resume the proceedings.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 20, 2003. The Center verified that the Complaint, together with the amendment to 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 the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2003. In accordance with the Rules, Paragraph 5(a), the due date for filing the Response was July 13, 2003. On July 10, 2003, the Center received an e-mail from the Respondent answering the Complaint.
The Center appointed Fabrizio La Spada, Alain Bensoussan and Susanna H.S. Leong as panelists in this matter on August 14, 2003. 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 the Rules, Paragraph 7.
4. Factual Background
The Complainant is the owner of several trademarks consisting of or containing the words LAMPE BERGER, registered throughout the world, including Singapore. Most of the trademarks are registered for perfumery products, perfume burners, products aimed to be used in apparatus or lamps for disinfection, cleaning and purification of air, room deodorants, and similar products. The Complainant has produced evidence from the Patent Offices of several countries, including Singapore and other Asian countries, establishing its trademark rights in several LAMPE BERGER trademarks. According to these documents, the Complainant is, amongst others, the owner of the trademark LAMPE BERGER and device registered in Singapore on August 5, 1996, in Class 21.
The Complainant is also the registrant of several domain names containing the words « Lampe Berger », including amongst others (lampeberger.fr), (lampesberger.com), (lampes-berger.com) and (lampeberger.biz). Several of the domain names held by the Complainant and containing the words « Lampe Berger » have been transferred to it as a result of previous UDRP proceedings.
The Respondent registered the domain name on May 28, 2002. The domain name is active, but does not resolve to a website.
On October 23, 2002, the Complainant sent a cease and desist letter to the Respondent, requesting the latter, amongst other things, to cease its use of the domain name and to transfer it to the Complainant. The Complainant did not receive an answer to this letter.
5. Parties’ Contentions
The parties have set out in their submissions all the factual and legal elements in support of their position. Below is a summary of these arguments.
A. Complainant
The Complainant submits that the domain name is confusingly similar to its trademarks. It alleges that the LAMPE BERGER trademarks are highly distinctive as they are completely fanciful, and points out that the domain name incorporates these trademarks in full. According to the Complainant, the letter « e » certainly represents the concept of « electronic » and is not distinctive. Further, the addition of an « ordinary descriptive » word does not detract from the trademark itself.
The Complainant also contends that the Respondent has no rights on, nor legitimate interests to the domain name, as the latter does not correspond to its corporate name and the Respondent does not own a corresponding trademark. Moreover, the Respondent is not commonly known by the domain name. In addition, the Complainant states that it has not licensed or otherwise permitted the Respondent to use its trademark or to register the domain name.
The Complainant alleges that the domain name has been registered and is being used in bad faith. According to the Complainant, the fact that the Respondent did not reply to its cease and desist letter of October 23, 2002, is evidence that the Respondent does not deny the facts asserted by Produits Berger, and that it does not deny the conclusions which the Complainant asserts can be drawn by these facts. In addition, the Complainant submits that the Respondent’s bad faith is evidenced by the fact that it registered the domain name after Complainant’s adoption and first use of the trademark LAMPE BERGER. The Complainant stresses that its trademark is a famous and widely reputed mark, in which it has invested substantial sums of money. According to the Complainant, the Respondent knew or should have known of the trademark at the time it registered the domain name. The Complainant also considers that the fact that the domain name is still registered in the name of the Respondent is evidence of bad faith. Finally, the Complainant points out that there can be evidence of registration and use in bad faith even if the domain name is not in use, since it would be difficult, or even impossible, for the Respondent to use the domain name as the name of any business, product or service for which it would be commercially useful without violating Complainant’s rights.
The Complainant mentions that it has already succeeded in obtaining the transfer of several domain names incorporating the trademark LAMPE BERGER, including (lampe-berger.com).
The Complainant seeks the transfer of the domain name.
B. Respondent
The Respondent has filed a Response, in which it disputes the Complainant’s position.
It alleges that it is an authorized independent distributor of Lampe Berger products, and that it carries cards and brochures that bear the Lampe Berger logo/trademarks, approved by the Lampe Berger Agent in Asia.
The Respondent explains that it registered the domain name
The Respondent indicates that it will be glad to transfer the domain name to the Complainant when it stops distributing Lampe Berger products. It also states that it is willing to negotiate with Produits Berger on immediately returning the domain name, « but one of the conditions is that they must provide all distributors with a company email address ».
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A); and
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and
3. The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy states that the burden of proving that all these elements are present lies with the Complainant.
The Panel notes that, pursuant to Paragraph 15(a) of the Rules, it shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As regards the first question, the Complainant has provided satisfactory evidence that it is the owner of several trademarks, including LAMPE BERGER trademarks registered in France, the USA, and several Asian countries, including Singapore. In particular, the Complainant is the owner of the trademark « LAMPE BERGER + device » registered on August 5, 1996, in Singapore in class 21 under Nr. T96/08143E. It is also the owner of the word mark LAMPE BERGER ASIA, registered in France in Class 38 under Nr. 00 3 007 236 (filing date February 14, 2000).
As to the second question, the Panel finds that the domain name is confusingly similar to the Complainant’s trademarks.
The domain name is almost identical to the Complainant’s LAMPE BERGER trademarks. The only differences between the designations are the deletion of the space between « Lampe » and « Berger », the addition of the letter « e » at the beginning of the domain name, and the addition of the generic top level domain « .com ». It makes no doubt in the Panel’s opinion that these elements are not sufficient to distinguish the domain from the Complainant’s trademark.
First, prior panels consistently have held that domain names that contain obvious misspellings or close variants of a trademark owner’s mark are identical or confusingly similar to that mark (see, e.g., Estee Lauder Cosmetics Ltd; Make-Up Art Cosmetics Inc. v. Telmex Management Services, WIPO Case No. D2001-1428; AltaVista Company v. Geoffrey Fairbairn, WIPO Case No. D2000-0849; Aurora Foods, Inc. v. David Paul Jaros, WIPO Case No. D2000-0274). In this case, the Panel finds that the deletion of the space between the words « Lampe » and « Berger » and the addition of the letter « e » cannot avoid a finding of confusing similarity. This is especially the case since (1) it is customary to delete spaces between words in domain names, and (2) the use of the prefix « e » has become a common descriptive term used to identify electronic commerce activity (Inter-IKEA Systems B.V v. Technology Education Center, WIPO Case No. D2000-0522; see also Telstra Corporation Limited v. Peter Yellowlees, WIPO Case No. D2002-0638).
Second, it has been consistently held that the addition of the generic top level domain « .com » is irrelevant to a Policy Paragraph 4(a)(i) analysis (see, e.g., Paramount Pictures Corporation v. Buy This Domain aka Domains Best Domains, WIPO Case No. D2003-0058).
Third, although the trademarks owned by the Complainant are trademarks including a device, it appears from the evidence on record that the words « Lampe Berger » are clearly predominant in several of those trademarks (including the Singapore trademark cited above).
The Panel therefore finds that the domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name.
It is notoriously difficult for a complainant to prove such a negative fact. Consequently, Panels have required complainants to establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the respondent to rebut the presumption of absence of rights or legitimate interests (see, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070).
In this case, the Complainant relies on the fact that it has not licensed or otherwise permitted the Respondent to use its trademarks, nor to register the domain name.
According to Paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
« (i) before any notice to you [Respondent] of the dispute, your use 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. »
On the basis of the statements and documents submitted, the Panel is satisfied that the Respondent has no rights or legitimate interests in the domain name, for the following reasons.
First, the Respondent has alleged that it is an authorized independent distributor of Lampe Berger products. It has also stated that it is using the Lampe Berger logo/trademark with the authorization of the Lampe Berger Agent in Asia. However, the Respondent has not provided any evidence in support of these allegations, even though submitting such evidence should have been easy.
In any event, the Panel notes that, according to previous decisions, the mere fact to be an authorized reseller or distributor of trademarked products is not as such sufficient to give a Respondent rights on or legitimate interests to a domain name consisting of the Complainant’s trademark (see, e.g., Allen-Edmonds Shoe Corporation v. Takin’ Care of Business, WIPO Case No. D2002-0799). On the contrary, in determining whether a reseller or service agent of trademarked goods can use the trademark at issue in its domain names, previous panels have held that a respondent must at the minimum: (i) actually be offering the goods or services at issue; (ii) use the site to sell only the trademarked goods; (iii) accurately disclose the registrant’s relationship with the trademark owner; and (iv) not try to corner the market in all domain names (Consorzio del Prosciutto di Parma v. Matthias Gasser, Hanslmeier Fleischwarenfabrik, WIPO Case No. D2003-0474; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
Thus, even if the Respondent were an authorized dealer, its use of the Complainant’s trademark would not be legitimate, absent any evidence that the conditions mentioned above are met or that there exists an agreement between the parties.
Second, there is no evidence on record that the Respondent was at any time commonly known by the domain name.
Third, there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain names.
According to the Respondent’s allegations, the only purported use for the domain name is to provide distributors with a « corporate » email address. However, the Panel considers, in the absence of any evidence that the Respondent is authorized to use the Complainant’s trademark, that such use cannot be characterized as a fair use. In addition, the Respondent alleges that it is not profiting from its email service, since it has « so far » been provided to « only 20 distributors ». However, the Respondent also states that there are more than 15’000 distributors in Singapore alone and that it estimates the distributors in Asia to be more than 80’000. On this basis, the Panel considers that the Respondent did not make a likely showing that it uses the domain name without intent for commercial gain.
In accordance with the elements set out above, the Panel finds that the Respondent has no rights nor legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Under Paragraph 4(a)(iii) of the Policy, Complainant must prove that the domain name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four criteria are nonexclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295).
For the reasons set out below, the Panel is satisfied that the Respondent has registered and used the domain name in bad faith.
First, the record shows that the Respondent not only was aware of the Complainant’s trademarks when it registered the domain names, but even purposely chose to register a domain name which incorporates the Complainant’s trademark. Indeed, as set out above, the Respondent stated that it registered the domain name to use it to offer email addresses to distributors of Lampe Berger products. When the Respondent has no rights on or legitimate interests to the domain name (as is the case in this matter – see above), registration of such a domain name with actual knowledge of an existing trademark is evidence of bad faith (see, e.g., UMG Recordings, Inc. v. Brenda Michelson, WIPO Case No. D2003-0369; BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295; PepsiCo, Inc. v. Paul J. Swider, WIPO Case No. D2002-0561; Amazon.com, Inc v. Sung Hee Cho, WIPO Case No. D2001-1276).
Second, the Respondent has alleged that it is using the domain name to provide email addresses to Lampe Berger distributors, since the Complainant does not itself provide this service. In the Panel’s opinion, it is not for the Respondent to decide how the Complainant’s trademark should be used or licensed. The use of the Complainant’s trademark in email addresses creates the impression that the « distributors »- as alleged by the Respondent – are related to the Complainant or authorized by the latter to use such email addresses. The Respondent creates this impression even though it knew that the Complainant chose not to provide a « corporate email address ». The Panel considers that the Respondent is attempting to create an association with the Complainant that, on the face of the record, does not exist. This is evidence of bad faith (Chanel, Inc. v. Buybeauty.com, WIPO Case No. D2000-1126).
This finding of bad faith is further supported by the fact that the Respondent stated in its Response that it was willing to negotiate with the Complainant on returning the domain name only if the latter provided all distributors with a company email address. This shows that the Respondent’s purpose in registering the domain name was to try and force the Complainant to allow the use of its trademark by the Respondent and third parties.
On the basis of the elements set out above, the Panel finds that the domain name was registered and used in bad faith.
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, (elampeberger.com), be transferred to the Complainant.
Fabrizio La Spada
Presiding Panelist
Alain Bensoussan
Panelist
Susanna H.S. Leong
Panelist
Date: August 28, 2003
