UDRP : OMPI D2002-05180608 2002 PROD BERGER C STANDERD PROJECT

WIPO Arbitration and Mediation Center

Marque LAMPE BERGER opposée à lampebergerchina.com. Transfert du nom de domaine au profit de la requérante, la société Produits Berger.

ADMINISTRATIVE PANEL DECISION

Produits Berger v. Standard Project Limited

Case No. D2002-0518

1. The Parties

The Complainant in this administrative proceeding is PRODUITS BERGER, 67 avenue Victor Hugo, 75116 Paris, France.

The Respondent is STANDARD PROJECT LIMITED, Room 210, Block, Tak Fung Industrial Centre, 168 Texaco Road, Tsuen Wan, Hong Kong, SAR of China.

2. The Domain Name and Registrar

The domain name in dispute is (lampebergerchina.com).

The Registrar with which the domain name is registered is TUCOWS, INC.

3. Procedural History

The WIPO Arbitration and Mediation Center (the « Center ») received the Complaint on June 3, 2002, by e-mail and on June 12, 2002, in hardcopy. The Center had acknowledged receipt thereof on June 6, 2002.

On June 6, 2002, the Center sent the corresponding Request for Registrar Verification in connection with this case to Tucows, Inc. On that same date the Registrar’s verification response confirmed that the Registrant was STANDARD PROJECT LIMITED and that the domain name (lampebergerchina.com) was in « lock » status.

On June 13, 2002, after having verified whether the Complaint was satisfying the formal requirements, the Center notified by e-mail and courier the Commencement of Administrative Proceeding to the Parties, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy (the « Rules »).

On July 9, 2002, the Center issued by e-mail and courier the Notification of Default to the Respondent for having failed to submit a response to the Complaint within the deadline granted.

On August 1, 2002, the Center proceeded with the appointment of the Administrative Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment of said Panel in accordance with Paragraph 6 (f) of said Rules.

Transmission of the file to the Administrative Panel was made on August 1, 2002, by e-mail and registered post/courier.

The Administrative Panel forwarded his decision to the Center within the time limit fixed.

4. Factual Background

The Complainant bases its Complaint on the following trademarks (Complainant’s Annex 5) :

– Japanese trademarks registration LA LAMPE BERGER n°1984623 filed on September 21, 1997, and duly registered in class 4.

– Trademark registration LAMPE BERGER + device n°T96/08143E filed in Singapore on August 5, 1996, and duly registered in class 21.

– Trademark registration LAMPE BERGER +device N°T96/08144 C filed in Singapore on August 5, 1996, and duly registered in class 5.

– French trademark registration LAMPES BERGER + device n°93468534 filed on May 14, 1993, in classes 1,3,5 and 11.

– French trademark registration LAMPE BERGER ASIA n°00 3007236 filed on February 14, 2000, in class 38.

– French trademark registration LAMPES BERGER parfum de maison + device n°97682443 filed on June 13, 1997, in classes 1, 3, 5,11 and 21.

– Trademark registration LAMPES BERGER + device n°21200/94 filed on May 30, 1994, in Korea and duly registered under N°357 902 in local class 10.

– Trademark registration LAMPES BERGER + device n°36716/95 filed on September 27, 1995, in Korea and duly registered under n°359 480 in local class 12.

– Indonesian trademark registration LAMPES BERGER + device n°11814/94 filed on July 1, 1994, and duly registered under n°341 902 in class 5.

– Indonesian trademark registration LAMPES BERGER + device n°11813/94 filed on July 1, 1994, and duly registered under n°341241 in class 21.

– Japanese trademark registration LAMPES BERGER + device n°105353/90 filed on September 17, 1990, and duly registered under n°2502177 in class 1.

– Japanese trademark registration LAMPES BERGER + device n°112360/93 filed on November 8, 1993, and duly registered under n°3300796 in class 21.

– Japanese trademark registration LAMPES BERGER + device n°112359/93 filed on November 8, 1993, and duly registered under n°3228673 in class 5.

– Malaysian trademark registration LAMPES BERGER + device n°94/05246 filed on June 28, 1994, and duly registered in class 5.

– Malaysian trademark registration LAMPES BERGER + device n°94/05247 filed on June 28, 1994, and duly registered in class 21.

– Trademark registration n°94647 LAMPES BERGER + device filed in the Philippines on August 18, 1994, and duly registered under n°66834 in class 5.

– Trademark registration N°5260/94 LAMPES BERGER + device filed in Singapore on June 24, 1994, and duly registered under n°75260/94 in class 21.

– Trademark registration n°5259/94 LAMPES BERGER + device filed in Singapore on June 24, 1994, and duly registered under n°75259/94 in class 5.

– Trademark registration LAMPES BERGER + device n°82055777 filed in Taiwan on November 11, 1993, and duly registered under n°655098 in local class 5.

– Trademark registration LAMPE BERGER + device n°82055778 filed in Taiwan on November 11, 1993, and duly registered under n°639623 in local class 16.

– Trademark registration LAMPE BERGER + device n°268818 filed in Thailand on July 19, 1994, and duly registered under n°KOR 53432 in class 5.

– Trademark registration LAMPE BERGER + device n°268819 filed in Thailand on July 19, 1994, and duly registered under n°KOR 39810 in class 21.

– Korean trademark registration n°47752/99 LAMPE BERGER + device filed on December 14, 1999, and duly registered under n°482712 in classes 3, 5 and 11.

– French trademark registration, LAMPE BERGER n°95566 941 filed on June 15, 1999, in classes 1, 3, 5, 11 and 21.

Furthermore, the 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 copies of « Certificate of Registration » in Annex 5 to the Complaint) in 2001. It is uncontested that the Complainant’s rights in those trademarks pre-date the Respondent’s registration of the disputed domain name.

The Complainant is also the owner of the following domain names: (lampeberger.fr), (lampeberger.t.fr), (ampeberger.com), (lampe-berger.com), (lampeberger-asia.com), (lampebergerasia.com), (lampe-berger-asia.com) and (produitsberger.com) (Complainant’s Annex 6).

5. Parties’ Contentions

A. Complainant

The Complainant submits the following :

(i) The domain name (lampebergerchina.com) is confusingly similar to the trade marks of the Complainant as it reproduces the dominant distinctive elements of these marks which are the words « lampe berger ».

The domain name is almost confusingly similar if not quasi-identical to the Complainant’s marks. The only difference consists of the addition of the geographic identifier « china » which is not apt to influence the overall impression left by the domain name, as the essential and distinctive element of the trademarks is LAMPE BERGER.

The consumers who use perfume diffusers and know the Complainant’s trade marks LAMPE BERGER are likely to recognize such marks and infer that China is merely a geographical descriptor indicating the provenance or destination of the goods. Moreover, the inclusion of the suffix «CHINA» is placed after the dominant element «LAMPE BERGER» and consequently has a lesser impact on the overall impression left by the domain name.

The risk of confusion must therefore be admitted.

(ii) The Respondent has no rights to the domain name, nor legitimate interest thereto as it does not correspond to its corporate name, and the Respondent does not own a corresponding trademark.

Furthermore, the Complainant has not licensed or otherwise authorized the Respondent to use its trademark, nor has the Respondent been licensed to apply for the registration of the domain name at issue.

The Complainant is the sole owner of the above trademarks in France and Asia as well as in many countries in the world.

Therefore, the Respondent, which has no link of any nature with the Complainant, does not have a legitimate interest to use the name LAMPE BERGER.

(iii) The domain name should be considered as having been registered and used in bad faith for the following reasons :

– as soon as the Complainant learned the existence of the disputed domain name, it sent out a letter to the Respondent on April 19, 2001, outlining its position and insisting that the Respondent immediately discontinue use of the dispute domain name; no replied to this letter was ever received from the Respondent;

– as result of having used its trade marks continuously and extensively in international commerce in connection with perfume diffusers and related products in China and throughout Asia for more than a century and having invested substantial sums of money in developing and marketing its goods, the Complainant believes that it has developed a strong degree of trade mark recognition for these marks;

– it is obvious that the Respondent knows perfectly well of the Complainant’s trademark rights and the Complainant believes that the Respondent has registered the domain name in order to prevent Produits Berger from using it;

– although not activated, the domain name is still registered in the name of the Respondent, thus preventing the Complainant from registering (lampebergerchina.com) for legitimate use in connection with its trade mark products.

The Complainant concludes therefore that the domain name in dispute be transferred in its favor.

B. Respondent

The Respondent has not submitted any response to the Complaint.

6. Discussion and Findings

Paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy (« the Policy ») sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4 (a) of the Policy.

The Administrative Panel has to 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, pursuant to Paragraph 15 (a) of said Rules.

A. Identity or Confusing Similarity

The Complainant has established its trademark rights to LAMPE BERGER with various registrations worldwide for the name (see Complainant’s Annex 5).

The domain name in dispute reproduces the Complainant’s trade name and mark with the addition of a geographic term.

As rightly pointed out by the Complainant in its Complaint (see Complainant’s Annex 7: Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046), the addition of a geographic descriptor does not change the confusing nature of the similarity (e.g. Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Wal-mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM, WIPO Case No. D2000-0838; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927; Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050; Viacom International Inc. v Sung Wook Choi and M Production, WIPO Case No. D2000-1114; Amway Corporation, Inc. v. Business Internet Connection and Rex Mehta, WIPO Case No. D2000-1118; Jefferson Smurfit Group plc v. Stephen Davidson Inc., WIPO Case No. D2000-1117; see also Yahoo! Inc v. Eitan Zviely et al., WIPO Case No. D2000-0273).

It is the Administrative Panel’s finding that there is no reason to depart from these authorities in the present case under the circumstances described above.

The Administrative Panel considers therefore that is confusingly similar to the Complainant’s trade marks « lampe berger ».

B. Rights or Legitimate Interests of the Respondent

Paragraph 4 (c) of the Policy provides a non-exclusive list of circumstances which, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (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 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.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4 (c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute.

This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14 (b) of the Rules (see e.g. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Isabelle Adjani .v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867).

The Administrative Panelist considers that the Complainant has established that its trade marks for « LAMPE BERGER » have been known throughout the world, especially in Asia, for a significant period of time.

Furthermore and absent evidence to the contrary, the Complainant, as underlined in its Complaint, has not granted any license or otherwise permitted the Respondent to use such trade and service marks or to apply for any domain name incorporating the said trade and service marks.

Moreover, the domain name in dispute has not been used by the Respondent as it is inactive.

Under these circumstances, the Administrative Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.

C. Registration and Use in Bad Faith

Paragraph 4 (b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

The Administrative Panel finds there are no exceptional circumstances for the failure of the Respondent to submit a Response.

It is to be noted that the Respondent already failed to respond the Complainant’s letter of April 19, 2001, mentioned above.

This Administrative Panel draws from this failure the following two inferences: (i) the Respondent does not deny the facts which the Complainant asserts, and (ii) the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts. Nevertheless, the Administrative Panel has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Complainant submits that by obtaining the domain name (lampebergerchina.com), the Respondent has used it in bad faith and prevented the Complainant from registering it for the legitimate use in connection with its trade mark products; it further contends that the evidence of registration and use in bad faith is also demonstrated, in accordance with paragraph 4 (b) (ii) of the Policy, even if the domain name is not in use.

In the instant case, the Complainant’s trademark has a strong reputation and is widely known whilst the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name in dispute.

Typically, this is one of those cases where the Respondent has done nothing other than register the domain name in dispute. The issue then is whether passive use constitutes bad faith registration and use. This may be so according depending on the circumstances of the case (see Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

The Complainant has cited, in its Complaint, DM Entertainment Pvt. Ltd. v. Mr. Hemant Kumar, WIPO Case No. D2001-1267 which itself refer to Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (Complainant’s Annex 11).

After having considered the circumstances of the instant matter, the Administrative Panel is of the opinion that the reasoning adopted in WIPO Case No. D2000-0028 is applicable mutatis mutandis to this case and whose relevant parts provides as follows:

« While in most situations of non-use, it may be impossible to draw any conclusion about a party’s intent to sell, the facts here do permit such an inference. It has been noted that the Domain Name contains only Complainant’s coined registered trademark and the country name « China. » It would be difficult, perhaps impossible, for 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. Accordingly, in the absence of any claim by the Respondent that he intends to do otherwise, it is a permissible inference to conclude, and the Panel does conclude, that subparagraph (i) is applicable to the instance situation.

The Panel, however, also notes that subparagraphs of Paragraph 4(b) are not intended to be the exclusive criterion of bad faith use. The Panel believes that bad faith use can also exist in situations, such as the instant one, where (i) the Domain Name contains in its entirety, and is for all essential purposes only, Complainant’s trademark, (ii) such trademark is a coined word, has been in use for a substantial time prior to the registration of the Domain Name and is a well know mark, and (iii) Respondent has alleged no good faith basis for use by it of the Domain Name. Among other things, in these circumstances and absent a transferal, Complainant is deprived of the use of the Domain Name and must always be concerned about the possibility of a confusing future site. And this harm to the Complainant is not balanced by a showing of any legitimate use or potential use by Respondent. »

The three situations mentioned above in the WIPO Case No. D2000-0028 are present in the instant matter and the registration of the domain name in bad faith proves the passive use in bad faith of this domain name.

As a result, transfer of the domain name in favor of the Complainant shall be ordered.

7. Decision

In light of the foregoing, the Administrative Panel decides that the domain name registered by the Respondent is confusingly similar to the corresponding trademarks of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.

Accordingly, pursuant to Paragraph 4 (i) of the Rules, the Administrative Panel requires that the registration of the domain name shall be transferred to the Complainant.

Christophe Imhoos

Presiding Panelist

Alain Bensoussan

Panelist

Yong Li

Panelist

Dated: August 16, 2002