UDRP : OMPI D2002-0825 26 11 2002 PRODUIT BERGER C/ KELVIN D.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Produits Berger v. Mr. Kelvin D.
Case No. D2002-0825
1. The Parties
1.1 The Complainant is Produits Berger, Paris, France. It is represented by Mr. Gilles Escudier, Levallois Perret, France.
1.2 The Respondent is Mr. Kelvin D., Hong Kong, Hong Kong.
1.3 The Respondent is not represented.
2. The Domain Name and Registrar
2.1 The domain name at issue (the « domain name ») is (lampeberger.info).
2.2 The Registrar is Register.com.
3. Procedural History
3.1 The Complaint was received by email on September 3, 2002, and in hard copy on September 16, 2002, by the WIPO Arbitration and Mediation Center (the « Center »). An amendment to the Complaint was received by email on September 10, 2002, and in hard copy on September 16, 2002.
3.2 Notice of the proceedings was served on the Respondent by email in accordance with the Uniform Domain Name Dispute Resolution Policy (« the Policy ») and the Uniform Domain Name Dispute Resolution Policy (« the Rules ») adopted by the Internet Corporation for Assigned Names and Numbers (« ICANN »).
3.3 On September 20, 2002, the Respondent sent an email to the Center stating that he had « liased with the Lampe Berger Hong Kong office…and they are currently arranging for the domain transfer ». In the light of this email, the Center invited the Complainant and the Respondent to inform the Center if proceedings should be terminated. The Panel is not aware of any response received to this email.
3.4 No Response to the Complaint has been filed and notification of Respondent Default was served on October 9, 2002.
3.5 A Panel was constituted on November 7, 2002, with three Panelists, Nick Gardner, Alain Bensoussan and Yong Li. A statement of acceptance and declaration of impartiality and independence has been filed by each of the Panelists.
4. Factual Background
4.1 The Complainant is the registered proprietor of a large number of trade marks for marks consisting of or incorporating the words « LAMPE BERGER » or « LAMPES BERGER » registered in Singapore, France, the United States, Korea, Indonesia, Japan, Malaysia, the Philippines, Taiwan, China, Hong Kong and Thailand.
4.2 In particular, the Complainant filed several trademark in Hong Kong in 1999, and is the present owner in Hong Kong of the following registered trademarks:
– « LAMPE BERGER & device » in Class 1 n°08763/2001,
– « LAMPE BERGER & device » in Class 3 n°05852/2001,
– « LAMPE BERGER & device » in Class 5 n°08764/2001,
– « LAMPE BERGER & device » in Class 11 n°09790/2001,
– « LAMPE BERGER » in Class 21 n°08765/2001.
Copies of the corresponding « Certificate of Registration » are in Annex 5 to the Complaint.
4.3 It is uncontested that the Complainant’s rights in those trademarks pre-date the Respondent’s registration of the domain name.
4.4 The Complainant is also the owner of the following domain names:
4.5 The Respondent registered the domain name on October 22, 2001.
a) The Respondent has a « passive website » (the Complainant’s term) at the domain name. The web page at the domain name links to a passive website supposedly « under construction ».
5. The Complainant’s Contentions
5.1 These are set out in full in the Complaint, but may be summarized as follows:
a) The domain name is identical or confusingly similar to the trademarks owned by the Complainant as it incorporates the Complainant’s registered trademarks. Confusion may arise because consumers may assume that the domain name is associated with the Respondent.
b) The Complainant’s trademarks are highly distinctive because they are « completely fanciful » (the Complainant’s term).
c) The spelling of the trademarks and the main part of the domain name are identical. The addition of the « .info » suffix should be disregarded for the purposes of the comparison.
d) The Respondent has no rights to the domain name, nor legitimate interest thereto as it does not correspond to its corporate name, the Respondent does not own a corresponding trademark and the Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
e) The domain name should be considered as having been registered and used in bad faith for the following reasons:
(i) as soon as the Complainant learned the existence of the domain name, it sent a letter to the Respondent, outlining its position and insisting that the Respondent immediately discontinue use of the domain name (letter dated July 22, 2002). According to the Complainant, no response to this letter was ever received from the Respondent;
(ii) the Complainant has used its trade marks continuously and extensively in international commerce in connection with perfume diffusers and related products in Asia and throughout the world for more than a century, and has invested substantial sums of money in developing and marketing its goods. The Complainant believes that it has therefore developed a strong degree of trade mark recognition for these marks;
(iii) the domain name is so obviously connected with the Complainant and its products that use by someone with no connection with the Complainant suggests opportunistic bad faith;
(iv) the Respondent registered the domain name long after the Complainant’s adoption and first use of the LAMPE BERGER mark in Asia, and particularly Hong Kong;
(v) the Complainant’s mark is well known and bad faith may be presumed where a domain name consists wholly or partly of the famous trademark of a third party;
(vi) the fame and reputation of the name LAMPE BERGER coupled with Respondent’s failure to respond to the Complainant’s letter and the passive website, shows bad faith;
(vii) the passive holding of the domain name amounts to bad faith as inaction is within the concept of use in bad faith;
(viii) it is not possible to conceive of any use of the domain name that would be legitimate.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. In the light of this material, the Panel finds as set out below.
6.2 This Panel does not find there are any exceptional circumstances within paragraph 5(e) of the Rules applicable to the Policy so as to prevent this Panel determining the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Details of these proceedings have been served in accordance with the relevant requirements set out in the Policy.
6.3 Paragraph 4(a) of 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.
6.4 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.
6.5 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
6.6 The Complainant’s Hong Kong trademarks were all registered by the Complainant before the domain name was registered by the Respondent.
6.7 The domain name is identical or confusingly similar to various of the Complainant’s registered trademarks.
B. Rights or Legitimate Interests of the Respondent
6.8 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.
6.9 There is no evidence to show that the Respondent had any legitimate basis to register the domain name or any intent to use them in any manner unconnected with the Complainant’s business. Absent such evidence, the Panel concludes that the Complainant is correct and that the Respondent does not have any rights to or legitimate interest in the domain name.
C. Registration and Use in Bad Faith
6.10 Paragraph 4(b) of the Policy sets out the types of evidence required to illustrate bad faith. This list includes the following circumstances:
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.
6.11 The Respondent has used the domain name for a website which is described as « under construction ». An Internet user entering the website at the domain name is more likely than not expecting to arrive at a website hosted by the Complainant, the holder of the numerous registered trademarks similar or identical to that domain name. Moreover, the generic Top Level Domain « .info » is likely to suggest that the Second Level Domain Name which precedes the « .info » will equate to the trade name of the commercial enterprise holding the domain name and that hence the site will provide information about that enterprise or its products or services. These circumstances, and the absence of any explanation from the Respondent, suggest to the Panel that the name was registered and then used by the Respondent with the intent to attract Internet users to his website for commercial gain through likelihood of confusion with the Complainant’s marks.
6.12 Accordingly the Panel concludes the domain name was registered and is being used in bad faith. The Panel therefore concludes that the Complainant has established each of the elements of paragraph 4(a) of the Policy.
7.1 The Panel concludes that, on the balance of probabilities:
a) The domain name is identical or confusingly similar to the Complainant’s registered trademarks.
b) he Respondent does not have any rights to or legitimate interest in the domain name.
c) the domain name was registered and is being used in bad faith.
7.2 Accordingly, the Panel directs that the domain name be transferred to the Complainant.
Dated: 26 November 2002