UDRP : OMPI D2002-0436 PRODUITS BERGER C/ SAM WONG
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Produits Berger v. Sam W.
Case No. D2002-0436
1. The Parties
Complainant in this proceeding is Produits Berger, a corporation organized and existing under the laws of France, with a principal place of business at 67, Avenue Victor Hugo, 75116 Paris, France. The Complainant is represented in this proceeding by Gilles Escudier, Novamark, 122, rue Edouard Vaillant, 92593 Levallois Perret, France.
Respondent in this proceeding is Sam W., an individual whose address is… Hong Kong, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The domain name in dispute is (lampebergerhk.com).
The registrar for the disputed domain name is TUCOWS, Inc., 96, Mowat avenue, Toronto, ON, M6K 3M1, Canada.
3. Procedural History
This proceeding is to be resolved under the Uniform Policy for Domain Name Dispute Resolution (the « Policy ») and Rules (the « Rules ») approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution (the « Center », the « Supplemental Rules »).
The Complaint was filed on May 6, 2002, in hard copy, and on May 16, 2002, by e-mail. On May 10, 2002, the Center sent a Request of Registrar Verification to the registrar of the disputed domain name, pursuant to which the Center received verification from that registrar on May 13, 2002.
On May 22, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began. On June 12, 2002, the Center sent a Notification of Respondent Default to Respondent by e-mail.
Per paragraph 3(b)(iv) of the Rules, Complainant has requested a three-member Administrative Panel for consideration of this case. The Panel submitted a Declaration of Impartiality and Independence on July 30, 2002, and the Center proceeded to appoint the Panel on that date. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
The due date of this Decision is August 13, 2002.
4. Factual Background
Complainant is a French company that, for many years, has sold perfume product accessories in France and internationally under its registered trademarks, « Lampe Berger » and « Lampes Berger ». In addition, Complainant has registered and uses various domain names, incorporating some version of its trademarks, to assist its efforts in marketing its goods.
Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on June 20, 2001.
5. The Parties’ Contentions
Complainant, a French company, contends that its trademark « Lampe Berger » has been used for more than a century and is a well-known mark in the perfumery products industry, applying particularly to the apparatus on perfume diffusers and bottles of spirits, not only in France but internationally.
Complainant has many registered trade and service marks in the names, « Lampe Berger » and « Lampes Berger », in many countries throughout the world. Those marks have been in use long before Respondent’s registration of the disputed domain name.
Complainant has also registered several web sites incorporating the basic name, « Lampe Berger », through which it markets its products.
Respondent’s domain name is identical or confusingly similar to Complainant’s trademarks. The disputed domain name is visually the same as Complaint’s trademark, « Lampe Berger », and the addition of the letters, « hk », to the end does not prevent the name from being confusingly similar. Consumers who use perfume diffusers and who know complainant’s trademarks are likely to infer that « hk » is merely a geographical descriptor indicating the provenance or destination of those goods.
Complainant’s trademark is a distinctive name, particularly associated with one line of products.
Respondent has no right or legitimate interest in respect of the domain name. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s trademarks. The disputed domain name does not correspond to Respondent’s corporate name, and Respondent does not own a corresponding trademark.
Respondent registered the (lampebergerhk.com) domain name in bad faith. Respondent did not respond to Complainant’s letter warning of infringement of Complainant’s marks, other than to deactivate the web site found at the disputed domain name from July 17, 2001, to September 20, 2001. Moreover, Respondent clearly had knowledge or reasonably should have had knowledge of Complainant’ s prior adoption, usage and registration of the Complainant’s well-known mark, as evidenced by Respondent’s offer to sell the same products manufactured by Complainant, after being warned of its wrongful actions.
Effectively, Respondent intentionally uses the disputed domain name to attempt to attract Internet users to its web site for commercial gain through selling parts with the « Lampe Berger » name.
Since Respondent did not file a response to the Complaint, the Panel is unaware of any contentions Respondent may have.
With respect to Respondent rights of due process relative to this administrative proceeding, the Center forwarded a copy of this Complaint to Respondent by hard copy and e-mail and sent Respondent a Notification of Respondent Default by e-mail. Those actions by the Center convince the Panel that Respondent has been notified fairly of these proceedings and has not been denied its right to due process.
6. Discussion and Findings
Per the Policy (¶ 4[a][i]-[iii]), Complainant may succeed and be awarded the disputed domain name, (lampebergerhk.com), pursuant to these administrative proceedings if Complainant can prove the following:
– the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
– Respondent has no rights or legitimate interests in respect of the disputed domain name; and
– the disputed domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Panel finds that Complainant owns many registrations of the trademark « Lampe Berger » and « Lampes Berger » in France (e.g., No. 93468534, dated May 14, 1993, No. 95 566 941, dated April 10, 1995, and No. 97682443, dated June 13, 1997) (Annex 5 to the Complaint). Complainant also owns similar trademarks in many other countries, including countries in East Asia such as Singapore, Korea, Japan and Indonesia (Annex 5 to the Complaint). Furthermore, Complainant filed the applications for registrations of the trademark « LAMPE BERGER & device » in Class 1, 3, 5, 11 and 21 in Hong Kong in 1999 and acquired the corresponding trademark registrations in Hong Kong (see the copies of « Certificate of Registration » in Annex 5 to the Complaint) in 2001. It is uncontested that Complainant’s rights in those trademarks pre-date Respondent’s registration of the disputed domain name.
The disputed domain name, (lampebergerhk.com), differs from Complainant’s trademark, « Lampe Berger », due to the deletion of the space between the words and the addition at the end of the letters « hk » and the gTLD « .com ». Panels overseeing proceedings under the Policy have held unanimously that the inclusion of a gTLD such as « .com » is irrelevant when considering whether a given trade or service mark is identical or confusing similar to a disputed domain name (see for example, Ticketmaster Corporation v. Discover Net, Inc., WIPO Case No. D2001-0252 [April 9, 2001] and Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF Case No. FA95856 [December 18, 2000]). Furthermore, such Panels have ignored invariably the elimination of spaces between words in a domain name for the purposes of evaluating the identity or similarity between such a name and a trade or service mark containing the same words.
The inclusion of « hk » behind « lampeberger » does not reduce the confusion that would arise among Internet users between the disputed domain name and Complainant’s trademark. The first eleven letters of the disputed domain name, i.e., those most likely to attract the attention of Internet consumer, are exactly the same as Complainant’s mark. As Complainant correctly asserts, the additional « hk » might easily be interpreted as a location reference to the same company or product. This is particularly true since Respondent’s address is in Hong Kong, or « hk » for short. See Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (March 20, 2001) (… as many cases have now concluded, the addition of a geographical descriptor does not change the confusing nature of the similarity.).
Per the foregoing, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
No Rights or Legitimate Interests
The Policy presents Complainant, under paragraph 4(a)(ii), with the burden of proving that Respondent has no rights or legitimate interests in the disputed domain name. However, given the difficulty of excluding all possible interests Respondent may have in a name, the Panel believes it proper to consider whether Respondent has demonstrated its rights or legitimate interests in the disputed domain name per paragraph 4(c) of the Policy in the overall evaluation of the evidence presented in this case (see Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628, [August 11, 2000]).
There are three ways under paragraph 4(c) by which Respondent can demonstrate to the Panel that Respondent has rights or legitimate interests in the disputed domain name. However, given that Respondent has not filed a response, no evidence has been presented by Respondent to the Panel to show that Respondent is (1) commonly known by the disputed domain name (paragraph 4[c][ii]), or (2) making a legitimate noncommercial or fair use of the disputed domain name (paragraph 4[c][iii]).
As to whether Respondent is using the disputed domain name in a bona fide offering of goods or services, although Respondent has submitted no evidence, Complainant has directed the Panel to Respondent’s having made use of the name to sell products manufactured by Complainant (Annex 10 to the Complaint). Since Complainant has asserted that Respondent has no license or permission from Complainant to make such a use, the Panel finds that Respondent has failed to demonstrate that that offering of goods is bona fide.
Thus, in view of all the evidence submitted, the Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Given the international reputation of Complainant’s trademark in its business sector and the fact that Complainant has registered the mark in many nations near Respondent’s location (and has trademark registrations in Respondent’s home city), the Panel believes that it is very likely that Respondent was well aware of Complainant’s trademark and the high probability of infringement before Respondent registered the disputed domain name. That, in itself, could lead the Panel to a finding of bad faith in this case. See Chanel, Inc. v. BuyBeauty.com, WIPO Case No. D2000-1126 (November 22, 2000); and Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No D2000-0163 (May 1, 2000).
This is proved by the copy of the Respondent’s website
– uses the domain name to provide a website reproducing exactly the Complainant’s trademarks and especially Hong Kong trademarks n°08763/2001 (appl. n°17487/1999), n°05852/2001 (appl. n°17488/1999), n°08764/2001 (appl. n°17489/1999), n°09790/2001 (appl. n°17490/1999) and n°08765/2001 (appl. n°17491/1999) i.e. a dark coloured rectangle with, on the left a white-coloured lamp and, on the right the words LAMPE and BERGER. The word LAMPE is above the word BERGER like Complainant’s trademarks and the characters used are identical which lead to think that Respondent knew Complainant’s trademarks when he registered the domain name;
– the website (lampebergerhk.com) presents Complainant’s own history and products ;the link « order LampeBerger » on the website (lampebergerhk.com) portends that Respondent intends to use the domain name to offer the same products as the Complainant.
However, as noted above, Complainant has presented the Panel with strong and non-contradicted evidence that Respondent is using the disputed domain name to sell products bearing Complainant’s trademark without a license or permission from Complainant. As such, by using that name, Respondent is intentionally attempting to attract for commercial gain Internet users to his web site by creating the likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of his web site or of the products on his web site. This is sufficient evidence for the Panel to base a finding of bad faith registration and use per paragraph 4(b)(iv) of the Policy.
The Panel thus finds Complainant has sustained its burden of proof in showing that the domain name was registered and is being used in bad faith.
The Panel concludes that the disputed domain name, (lampebergerhk.com), is confusingly similar to Complainant’s « Lampe Berger » trade and service marks. The Panel has also determined that Respondent has no rights or disputed domain name. The Panel lastly finds Respondent registered and is using the disputed domain name in bad faith because Respondent’s primary intent in registration and use of that name was to benefit commercially from the likelihood of confusion between it and Complainant’s trademark.
In furtherance of the above and per ¶ 4(i) of the Policy and ¶ 15 of the Rules, the Panel orders that the disputed domain name, (lampebergerhk.com), be transferred from Respondent, Sam W., to Complainant, Produits Berger. legitimate interests in the
Dennis A. Foster
Dated: August 13, 2002