UDRP : OMPI D2002-0610 11 12 2002 PRODUITS BERGER C KIKAKUYA INC
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Produits Berger v. Kikakuya Inc.
Case No. D2002-0610
1. The Parties
Complainant is Produits Berger, represented by Novagraaf France, 122 Rue Edouard Vaillant, 92593 Levallois Perret, France, hereinafter the « Complainant ».
Respondent is Kikakuya Inc., Ryoko Nagashima, 3951 S. Plaza Dr, Suite 250, Santa Ana, CA 92704, United States of America, hereinafter the « Respondent ».
2. Domain Name and Registrar
The domain name in dispute is (lampe-berger.com).
The registrar for the disputed domain name is Register.com, 575 Eight Avenue, 11th floor, New York, NY 10018, United States of America.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a Complaint via e-mail, received by the WIPO Arbitration and Mediation Center (the « Center ») on July 1, 2002, and in hard copy on July 12, 2002. On July 2, 2002, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.
(b) On July 2, 2002, the Center also transmitted a Request for Registrar Verification to the registrar, with the Registrar’s Response received by the Center the same day, confirming that the domain name at issue was registered through Register.com, 575 Eight Avenue, 11th floor, New York, NY 10018, United States of America.
(c) On July 15, 2002, the Center had satisfied itself that the Complainant had complied with all formal requirements pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (« the Policy »), the Rules for the Policy approved by ICANN on October 24, 1999 (« the Rules »), and the WIPO Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy (« the Supplemental Rules »), and transmitted a Notification of the Complaint and Commencement of the Administrative Proceeding to the Respondent.
(d) In an e-mail sent to the Center on July 23, 2002, Respondent agreed to transfer to Complainant the domain name at issue, after which submitted a request for suspension of the proceedings on July 31, 2002. The Center issued a Notification of Suspension the same day.
(e) On October 9, 2002, Complainant submitted a request for reinstitution of the proceedings, and the Center sent a notification of reinstitution of the proceedings to the parties the same day.
(f) No Response has been submitted by the Respondent within the deadline for the submission of Response. Accordingly, the Center issued a Notification of Respondent Default on October 30, 2002.
(g) In view of the Complainant’s designation of a three-member Administrative Panel, the Center invited Mr. Peter Nitter to serve as presiding Panelist, and Mr. Alain Bensoussan and Ms. Angela Fox as Panelists. Having received the Panelists’ Statements of Acceptance and Declarations of Impartiality and Independence, the Center formally appointed Mr. Peter Nitter, Mr. Alain Bensoussan and Ms. Angela Fox as members of the Administrative Panel. On November 13, 2002, the Center transmitted the case file to the Administrative Panel and notified the parties of the appointed Panel.
(h) The Panelists find that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. The Administrative Panel shall issue its Decision based on the Complaint, the Policy, the Rules and the Supplemental Rules. The proceedings have been conducted in English.
4. Factual Background
After considering the Complainant’s assertions, supported by the documents enclosed as annexes to the Complaint, and undisputed by Respondent because of its default, the Panel finds the following:
Complainant is the owner of the mark LAMPE BERGER which is registered extensively as a trademark throughout the world. The mark is also registered in combination with other words in a number of countries.
In addition, the Complainant owns a global portfolio of domain names comprising the words ‘lampe berger’ or variations thereof.
The Respondent has registered the domain name (lampe-berger.com).
5. Parties’ Contentions
The Complainant asserts that:
The domain name at issue is identical or confusingly similar to Complainant’s trademarks.
The spelling of Complainant’s trade marks and the dominant part of the domain name at issue are identical and therefore likely to confuse consumers who may reasonably assume that the domain name is in some way associated with Complainant.
According to previous decisions under the UDRP, the addition of « .com » is incidental and does not serve to significantly distinguish otherwise identical domain names and trade marks.
The domain name at issue wholly incorporates a registered trademark owned by Complainant, and this is sufficient to establish identity or confusing similarity for the purposes of the Policy.
The Respondent has no legitimate interest in respect of the domain name at issue.
Complainant is the sole owner of the trademarks LAMPE BERGER, LAMPES BERGER and LA LAMPE BERGER in France, Asia and the United States, as well as many other countries around the world.
The domain name at issue does not correspond to Respondent’s corporate name, and to the knowledge of Complainant, neither to any trademarks owned by Respondent. Nor is Respondent commonly known by the domain name at issue, or the words therein.
Complainant has in no way licensed or otherwise permitted Respondent to use its trademark or a corresponding domain name.
The domain name was and is registered and used in bad faith.
Complainant has in two instances sent cease and desist letters to the proprietor of the domain name at issue to inform about its rights, upon which the domain name has been transferred to a new proprietor. Complainant has not received an answer from any of the three proprietors of the disputed domain name.
Complainant has used its trademarks continuously and extensively in international commerce in connection with perfume diffusers and related products in America and throughout the world over more than one century. Complainant has also invested substantial sums of money in developing and marketing its goods. Complainant’s trademarks have thus become famous and widely reputed.
Respondent’s registering of the disputed domain name took place long after Complainant’s adoption, use and registration of the well-known mark LAMPE BERGER in the United States. Respondent thus clearly had knowledge, or reasonably should have had knowledge, of Complainant’s trademark. By obtaining the domain name at issue, Respondent has also prevented the Complainant from registering and using it in connection with its trade mark products.
According to previous decisions under the UDRP, bad faith may be presumed in the registration and use of a domain name consisting wholly or partly of the famous trademark of a third party.
The Complainant requests the Administrative Panel issue a decision that the contested domain name must be transferred to the Complainant.
The Respondent has not submitted a Response, and is thus in default. Nor has Respondent made any submissions whatsoever after the Notification of Respondent Default.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy in order to succeed. The Complainant must satisfy that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of such domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
6.1 Identical or confusingly similar to a trademark or a service mark
The Panel has considered the allegation by the Complainant as to the identity of the domain name at issue with the Complainant’s trademarks. As a result of Respondent’s default, these allegations have not been contested.
The domain name at issue consists of a trademark in which Complainant has rights, only with the addition of a hyphen between the two words ‘lampe’ and ‘berger’, and such characteristics that are technically essential to a domain name.
In previous proceedings under the UDRP, Panels have found that for purposes of assessing the confusing similarity between domain names and trade marks, top-level domain extensions, spaces, hyphens and punctuation are to be ignored. The Complainant refers the Panel to WIPO Case No D2000-0413. Similar views have been expressed in WIPO Cases No D2000-0075, D2000-0119 and D2000-0206.
Thus, the Panel finds that Respondent’s domain name (lamp-berger.com) is confusingly similar to Complainant’s trademark LAMPE BERGER.
6.2 Rights or legitimate interest in the domain name
The Panel has considered the allegation by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the domain name at issue. As a result of default, these allegations have not been contested by the Respondent.
Pursuant to Paragraph 10(a) of the Rules, the Panel considers itself competent to independently visit the Internet in order to obtain additional information in a default proceeding (see Cases No. (D2000-0076 and D2000-0141). On November 21, 2002, the Panel visited the « www.lampe-berger.com » web site of the Respondent in order to investigate whether there could be found any evidence as to Respondents rights or the legitimacy of the interest of the Respondent in the contested domain name. No such evidence of any rights or legitimate interests in the domain name on the part of the Respondent were evident when the website was visited.
Complainant asserts that Respondent has nothing to do with Complainant, or Complainant’s products. It is generally difficult for Complainant to prove that a business relationship is not in existence, while Paragraph 4(c) of the Policy at the same time gives Respondent ample opportunity to demonstrate any actual rights or legitimate interests in the domain name.
Where Respondent has failed to give any Response, it is therefore, as shown in previous decisions under the UDRP (see e.g. Case No. D2000-0270), sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the domain name at issue.
There are no indications whatsoever that Complainant has granted Respondent any rights to use its trademarks, nor the right to register or use the domain name at issue. This very proceeding is based on the assertion by Complainant that Respondent lacks such rights. In the circumstances, this Administrative Panel is thus satisfied that Complainant has established a prima facie case that the Respondent has no rights or legitimate interest in the contested domain name.
Hence, the Panel finds that the Respondent has no rights or legitimate interest in the contested domain name.
6.3 Registration and use in bad faith
Complainant’s allegations with regard to the Respondent’s registration and use of the domain name in bad faith has been considered by the Panel. These allegations have not been contested by the Respondent because of his default.
The web page corresponding to the domain name at issue is redirected to a URL. Here, various lamps and fragrances much like the original products of the Complainant are offered for sale, ». The home page also features an article called ‘History of Lampe Berger’ elaborating on the more than hundred year old tradition of LAMPE BERGER, thus leaving an overall impression that the web page is a retailer of genuine LAMPE BERGER products. Hence, Complainant’s trade mark LAMPE BERGER is evidently known by Respondent.
The remaining question is therefore whether the Respondent knew about Complainant’s trademarks at the time of the registration of the domain name at issue. Complainant has documented that it is the holder of several registrations for the trade marks LAMPE BERGER and LAMPES BERGER and LA LAMPE BERGER in the United States, France and several Asian countries, as well as a portfolio of domain name registrations comprising variations of said trade marks.
Said trade mark and domain name registrations are however not sufficient evidence of Complainant’s contentions regarding the reputation of its trademarks. Complainant has not provided any detailed information on the length and scale of use of said trademarks to support its assertions that Respondent must have known about the trademarks when registering the domain name at issue.
The trademarks corresponding to the domain name at issue are however fanciful marks with an inherent distinctiveness. The Panel finds that said marks seem sufficiently unusual that it would be highly surprising if the Respondent had not been aware of them when registering the domain name at issue. Said domain name is highly unlikely to have been registered if it were not for Complainant’s trade marks.
Respondent’s registration of the domain name at issue, and continuous use of the same, thus appears to be an attempt to exploit the fame and goodwill of Complainant’s trademarks by attracting the public to his web site for commercial gain.
The Respondent is offering lamps and perfumes for sale through the web page corresponding with the domain name at issue. The domain name thus creates a strong likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site.
The Panel therefore finds that the Respondent has registered and used the domain name at issue in bad faith.
The Panel has found that the domain name (lampe-berger.com) is confusingly similar to the trademark of the Complainant, and that the Respondent has no rights to or legitimate interests in said domain name. The Panel has further found that the domain name has been registered in bad faith, and that it has been and is being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides to request that the domain name (lampe-berger.com) be transferred to the Complainant Produits Berger.
Peter G. Nitter
Dated: November 26, 2002