WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Charles Jourdan Holding AG v. AAIM
Case No. D2000-0403
1. The Parties
Complainant is Charles Jourdan Holding, AG, Spielhof 3, 8750 Glarus, Switzerland.
Respondent is AAIM, 180 Central Parkway South, Box 882, New York, New York, U.S.A., 10019.
2. The Domain Name and Registrar
The domain name at issue (the Domain Name) is "charlesjourdan.com".
The registrar of the Domain Name is Register.com, New York, New York.
3. Procedural History
On May 8, 2000, the Complainant filed a complaint [hereinafter the Complaint] with the WIPO Arbitration and Mediation Center [hereinafter the Center], receipt of said Complaint being acknowledged by the Center in an e-mail to the Complainant dated May 12, 2000. In a letter dated the same date the Center informed the registrar, Register.com, that the Complaint had been submitted to the Center regarding the Domain Name.
On May 12, 2000, the Registrar confirmed that the Domain Name had been registered via the Registrarís registration services and that AAIM was the current registrant of the Domain Name.
The Center then proceeded to verify that the complaint satisfied the formal requirements of the Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the ICANN Rules and the World Intellectual Property Organization Supplemental Rules for Uniform Dispute Resolution Policy [hereinafter referred to as the WIPO Rules], including the payment of the requisite fees. The verification of compliance with the formal requirements was completed in the affirmative on May 16, 2000.
The Panel has reviewed the documentary evidence provided by the parties and the Center and agrees with the Centerís assessment that the Complaint complies with the formal requirements of the ICANN Rules and the WIPO Rules.
In a letter dated May 16, 2000, the Center informed the Respondent of the commencement of the proceedings as of May 16, 2000, and of the necessity of responding to the Complaint within 20 days. Evidence provided by the Center supports the finding that the Center acted diligently in its attempts to inform the Respondent of the proceedings.
In a letter June 7, 2000, the Center informed the Respondent that he was in default pursuant to the ICANN Rules and the WIPO Rules and that an administrative panel would be appointed based on panelists designated by the Complainant. The Panel believes it was constituted in compliance with the ICANN Rules and the WIPO Rules and has also issued a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions have been received formally by the Panel from either party since its formation. However, in mid June, 2000, the Center received correspondence from a representative of ncx.com regarding the Complainantís erroneous designation of email@example.com, instead of firstname.lastname@example.org, as technical contact for the Respondent and as so advised the Panel. The Panel is of the opinion that the erroneous designation has not materially affected the proceedings and that the Respondent has suffered no prejudice, especially in light of the fact that from the outset the Center addressed all correspondence to both email@example.com and firstname.lastname@example.org.
In these circumstances, the Panel intends to fulfil its obligation to issue a decision on or prior to June 27, 2000, without the necessity of further investigations. The decision has to be rendered in the English language and the Panel is unaware of any other proceedings which may have been undertaken by the parties or others in the present matter.
4. Factual Background
The Complainant is a legal person incorporated under the laws of Switzerland. The Complainant is engaged in businesses related to footwear for women and children, fashion accessories and other luxury goods.
No information has been provided which indicates the nature of the activities of the Respondent.
Examination of Registrarís WHOIS database reveals that the Respondent registered the Domain Name with the Registrar on February 21, 2000. Prior to this registration the Domain Name had been in the name of one Antoine Ohanessian who subsequently abandoned the Domain Name. According to documentation provided with the Complaint, the Complainant had previously contacted Antoine Ohanessian regarding the Domain Name by means of letters dated September 10, 1999, and again on February 18, 2000.
In a letter dated March 14, 2000, the Complainant contacted the Respondent, informed him that the Domain Name was potentially infringing and requested that the Respondent complete the procedures necessary to have the Domain Name transferred to the Complainant.
Copies of trademark registrations provided at Annex C to the Complaint support the finding that the Complainant has been the registered owner of the trade-mark "Charles Jourdan" in the United States for over 40 years, said registration being valid and in force at the time of registration of the Domain Name.
At the time of filing the Complaint the Respondent was offering, and continues to offer, the Domain Name for sale via a web page located at www.charlesjourdan.com.
5. Partiesí Contentions
The Complainant alleges at paragraph 14 of the Complaint to be the legal owner of the mark Charles Jourdan for over 40 years and that the mark has become famous over the years as an indication of source for the Complainantís high quality goods. Additionally, at paragraph 15 of the Complaint the Complainant alleges that the Domain Name is either identical to or confusingly similar with the Complainantís registered marks.
The Complainant goes on to allege, beginning at paragraph 16 of the Complaint, that the Respondent has no legitimate right or interest in the Domain Name and that the Respondent is not making a legitimate non-commercial or fair use of the Domain Name. The Complainant bases this allegation on the belief that the Respondent as an individual, business or otherwise, has never been known by the Domain Name, nor has the Respondent ever obtained or sought to obtain any trademark rights in the Domain Name or a similar designation. The Complainant holds that, on the contrary, the Respondent intends misleadingly to divert consumers for commercial gain and tarnish the Charles Jourdan trademarks and service marks.
Finally, the Complainant, commencing at paragraph 20 to the Complaint, alleges that the domain name was registered in bad faith. The Complainant continues by alleging that the Respondent was acting in concert with the previous owner of the Domain Name, Antoine Ohanessian. Furthermore, the Complainant maintains that the Respondent acquired solely for the purposes of selling, renting or otherwise transferring registration of the Domain Name to the Complainant or a Competitor for compensation in excess of his out of pocket expenses, that the Respondent is not using the Domain Name in a bona fide way and that he does not intend to use the Domain Name for a bona fide purpose.
The Respondent failed to file a response with the Center within the foreseen delays and has failed to file a response since.
6. Discussion and Findings
In accordance with paragraph 14 of the ICANN Rules, in the absence of a response to the Complainantís allegations by the Respondent, the Panel must evaluate those claims in the light of the unchallenged evidence submitted by the Complainant. However, the Panel cannot decide in the Complainantís favour solely given the Respondentís default but is entitled to draw such inferences as it feels just from the Respondentís failure to respond.
Pursuant to the Uniform Domain Name Dispute Resolution Policy [hereinafter the ICANN Policy], the Complainant must convince the Panel of three elements if it wishes to have the Domain Name transferred. It is incumbent on the Complainant to show:
i) that the Domain Name is identical or confusingly similar to a trademark in which the it holds rights;
ii) that the Respondent has no legitimate rights or interests in the Domain Name; and
iii) that the Domain Name was registered and used in bad faith.
These three elements are considered below.
Identical or Confusingly Similar to Trademark
As stated above, the Complainant has provided evidence to the effect that at least 10 U.S. registrations have been made for "Charles Jourdan" and a number of derivatives. The Panel is of the opinion that the evidence provided by the Complainant supports a finding that the Complainant has registered the trademark "Charles Jourdan". Given that the Domain Name is for all intents and purposes identical to the registered trademark, the Panel is of the opinion that the Complainant has readily met the burden of proof as established by paragraph 4(a)(i) of the ICANN Policy.
No Rights or Interest
Paragraph 4(a)(ii) of the ICANN Policy asks whether the respondent has any rights or legitimate interests in respect of the domain name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (1) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (2) the fact that the respondent has commonly been known by the domain name; and (3) legitimate noncommercial or fair use of the domain name. The Panel finds that that the Respondent has no legitimate rights or interests in that (i) Respondent is not a licensee of Complainant, nor has he received any permission or consent to use the trademark; (ii)Complainant has prior rights in that trademark which precede Respondentís registration of the Domain Name; and (iii) Respondent is not (either as an individual, business or other organization) commonly known by the name Charles Jourdan. In this latter respect it is noted that the only use the Respondent has made of the Domain Name since its registration is as the web address for a site offering the Domain Name for sale.
Furthermore, the Panel finds it appropriate in the circumstances noted above to draw an adverse inference from the Respondentís failure to reply to the Complaint and detail any legitimate rights or interestís he may have in the Domain Name of the type defined in paragraph 4(c) of the ICANN Policy.
The Complainant argued that the Respondentís actions provided evidence of registration and use in bad faith such that they are captured by paragraphs 4(b)(i) and (ii) of the ICANN Policy. The Panel does not agree entirely with all the Complainantís allegations in these cases.
Evidence supplied by the Complainant has revealed that the Respondent has registered a small number of other domain names which may or may not give rise to a dispute under the ICANN Policy. Furthermore, as stated above, the Complainant has alleged that the Respondent was acting in concert with the previous owner of the Domain Name. However, given the small number of domain names registered by the Respondent as well as a lack of evidence which supports a finding of collusion between the Respondent and the previous owner of the Domain Name, the Panel is unable to conclude that the Respondent was engaged in a pattern of conduct to deprive the owner of a trademark or service mark from reflecting that mark in a domain name. As a result the Panel finds that paragraph 4(b)(ii) of the ICANN Policy does not apply.
However, given the relative notoriety of the Complainantís mark as well as the ease for any user of the Internet to assess on its own whether or not the registration and use of a domain name is likely to encroach on anotherís rights, the Panel is of the opinion that Respondent acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of his out-of-pocket costs directly related to the Domain Name, an act which constitutes bad faith pursuant to paragraph 4(b)(i) of the ICANN Policy. Furthermore, the Domain Name is so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net Case No. D2000-0226 and Veuve Cliquot Ponsardin, Maison Fondťe en 1772 v. The Polygenix Group Co., Case No. D2000-0163).
For the foregoing reasons, the Panel decides:
Accordingly, pursuant to paragraph 4(i) of the ICANN Policy, the Panel requires that the registration of the domain name <charlesjourdan.com> be transferred to the Complainant, and so directs Register.com, Inc., to do so forthwith.
Jacques A. Lťger, Q.C.
Dated: June 27, 2000