UDRP : OMPI D2003-001 01 09 2003 PRODUITS BERGER C/ RANDAL LAW
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Produits Berger v. Randal L.
Case No. DBZ2003-0001
1. The Parties
The Complainant is Produits Berger, Paris, France, represented by M. Gilles Escudier of Novagraaf France, Levallois Perret, France.
The Respondent is Randal L., Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name (lampeberger.bz) is registered with TierraNet Inc., d/b/a DomainDiscover.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the « Center ») on April 30, 2003, naming Buydomains.com as Registrar. On May 2, 2003, the Center transmitted by email to RareDomains.com LLC d/b/a BuyDomains.com a request for registrar verification in connection with the disputed domain name. After several reminders from the Center, on May 9, 2003, BuyDomains.com informed the Center that the disputed domain name is registered through TierraNet Inc., d/b/a DomainDiscover. On May 12, 2003, TierraNet Inc., d/b/a DomainDiscover confirmed this and next day transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and giving the contact details of the Respondent held in its database. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 15, 2003, naming the correct Registrar. The Center verified that the Complaint as amended 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 May 20, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2003. Although the Respondent had sent an email to the Center on May 14, 2003, and the Center had sent a copy of the formal notification of the Complaint to the Respondent at the email address from which his communication of May 14, 2003, emanated (as well as to all other known addresses of the Respondent), the Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on June 12, 2003.
On June 26, 2003, the Respondent informed the Center that he did not want to argue for this matter any more and asked if he could simply transfer the domain name. On July 7, 2003, the Complainant formally requested suspension of the proceeding and the Center next day suspended the proceeding until August 8, 2003. On August 7, 2003, the Complainant sought the re-institution of the proceeding and the Center acceded to this request on August 11, 2003.
The Complainant having sought a three member Panel, the Center appointed Alan L. Limbury, Alain Bensoussan and Yong Li as panelists in this matter on August 19, 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.
The language of the proceeding is English, being the language of the Registration Agreement.
4. Factual Background (undisputed)
The Complainant is the registered proprietor of numerous trademarks in many countries throughout the world comprising the words LAMPE BERGER or LAMPES BERGER either alone or with device, all of which were registered between September 17, 1990, and December 15, 1999. Five such « LAMPE BERGER and device » marks were registered in Hong Kong on November 30, 1999, in classes 1, 3, 5, 11 and 21.
The marks are famous in connection with perfumery products, having been used for more than a century.
The Respondent registered the disputed domain name on August 9, 2002. It resolves to an « Under Construction » page.
The Respondent did not reply to a registered letter from the Complainant dated November 15, 2002, asserting trademark infringement and seeking transfer of the disputed domain name to the Complainant.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s trademarks.
The Respondent has no rights to or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its trademark nor to apply for registration of the disputed domain name. So far as the Complainant is aware, the Respondent does not own a corresponding trademark and is not commonly known by the words in the disputed domain name.
The disputed domain name was registered and should be taken as being used in bad faith. The Complainant’s marks are famous and the Respondent must have known of them when registering the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Failure to file a response
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848.
A. Identical or Confusingly Similar
Many cases have established that « essential » or « virtual » identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113, Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, and America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd., WIPO Case No. D2000-0995; America Online, Inc. v. Andy Hind, WIPO Case No. D2001-0642; The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571.
Likewise, many cases have established that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the « Sleekcraft factors » – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO Case No. D2001-1195; Energy Source Inc. v. Your Energy Source, NAF Case No. FA 96364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No. D2001-1121, and the cases there cited.
Here the disputed domain name comprises the whole of the Complainant’s trademark LAMPE BERGER together with the ccTLD « bz », which is immaterial since it performs no distinguishing function. The Panel finds the disputed domain name to be identical to the Complainant’s LAMPE BERGER mark and to be virtually identical and confusingly similar to its LAMPES BERGER mark. The Complainant has established this element of its case.
B. Rights or Legitimate Interests
In the absence of a Response, the Panel accepts that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark nor to apply for registration of the disputed domain name and that the Respondent does not own a corresponding trademark and is not commonly known by the words in the disputed domain name. These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited.
The Respondent has made no such showing and the Panel therefore finds that the Respondent has no rights or legitimate interest in relation to the disputed domain name. The Complainant has established this element of its case.
C. Registered and Used in Bad Faith
In the absence of a Response, the Panel accepts that the Respondent was aware of the Complainant’s famous marks when he registered the disputed domain name. In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, NAF Case No. FA94956, a finding of bad faith was made where the respondent « knew or should have known » of the registration and use of the trademark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot, NAF Case No. FA94737; Canada Inc. v. Sandro Ursino, eResolution Case No. AF-0211 and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com, NAF Case No. FA95037.
The Panel accordingly finds the disputed domain name was registered in bad faith.
As to the issue of use in bad faith, this does not necessarily mean use on the Internet: Bayshore Vinyl Compounds Inc. v. Michael Ross, eResolution Case No.AF-0187. The ‘use’ requirement has been found not to require positive action, inaction being within the concept: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Barney’s, Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400; Video Networks Limited v. Larry Joe King, WIPO Case No. D2000-0487; Recordati S.P.A. v. Domain Name Clearing Company, WIPO Case No. D2000-0194 and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman,WIPO Case No. D2000-0468.
The Panel has found that the Respondent was aware of the Complainant’s famous marks when he registered the disputed domain name, by which he is not commonly known. The Respondent has made no active use of the disputed domain name and it is unlikely that he could do so without infringing the Complainant’s famous marks and without misleading Internauts into the false belief that he has some association with the Complainant. The Respondent failed to reply to the Complainant’s registered letter asserting its rights yet chose to remain as the registrant of the disputed domain name.
Under these circumstances the Panel finds the disputed domain name is to be considered as being used in bad faith.
The Complainant has established this element of its case.
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 (lampeberger.bz) be transferred to the Complainant.
Alan L. Limbury
Dated: September 1, 2003