WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Guerlain S.A. v. SL, Blancel Web

Case No. D2000-1191

 

1. The Parties

The Complainant is Guerlain S.A., 68 Avenue Des Champs Elysťes, 75008, Paris, France.

The Respondent is SL, Blancel Web, Velasquez, 138, Madrid, Spain.

 

2. The Domain Name and Registrar

The domain name at issue is missguerlain.com (Domain Name), which Domain Name is registered with Network Solutions Inc. (NSI or the Registrar).

 

3. Procedural History

A Complaint made 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), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the Rules) and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), was submitted electronically to the WIPO Arbitration and Mediation Center (the Center) on September 8, 2000. The signed original with attachments was received by the Center on September 12, 2000.

On September 18, the Center requested Complainant to send one additional copy of the Complaint, which Complainant submitted via DHL courier on the same date.

On September 15, 2000, the Center transmitted to NSI a request for Registrar Verification in connection with this case. On September 18, NSI confirmed that: (i) NSI is the Registrar of the Domain Name missguerlain.com; (ii) the current registrant of the Domain Name is SL, Blancel Web; and (iii) the administrative and billing contacts are SL, Blancel Web .

On September 18, 2000, the Center completed the Formal Requirements Compliance Checklist and on September 21 transmitted to the Respondent a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) electronically, by courier and fax. In the Commencement Notification the Center advised the Respondent that a response was due on October 10, 2000. On the same date the Commencement Notification was copied to the Complainant and to ICANN and the Registrar.

Having received no response from the Respondent, on October 12, 2000, the Center transmitted electronically to the Respondent a Notification of Respondent Default, copy to the Complainant.

On October 27, 2000, the Center received an e-mail from a Mr. Amos Blanco originating from the Respondentís e-mail address and stating:

"Sorry, the registrant of the domain name of this llc, was sadly passed away a few weeks ago. Weí re now trying to resolve all the troubles relacionated with trademarks, but i don*t understand anything about all this world of domains. Be patient please, we will do what you want with that domains, you only have to inform me, and the steps that i have to do, and i will do it. Sincerely, A. Blanco. Thank you"

A copy of the above e-mail message was sent to the Complainant on October 30. The Center also requested the Complainant whether, due to the unusual circumstances, the Complainant would have liked to suspend the case for 30 days in order to explore the possibility of an amicable solution of the case. On the same date, the Complainant requested that the proceeding continued.

On October 31, 2000, the Center notified the parties that Ms. Anna Carabelli had been appointed as the Panelist in this proceeding, indicating that, absent exceptional circumstances, the Panelist is required to send its decision to the Center by November 14, 2000.

The Panelist independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.

Having reviewed the communications records and considered the e-mail dated October 27 signed by Mr. Amos Blanco, the Panelist deemed it appropriate to seek more detailed information and clarifications regarding the circumstances referred to in the above e-mail also for the purpose of determining whether all formal requirements of the Administrative Proceeding have been met. The above mentioned e-mail states in fact that the domain name holder deceased a few weeks prior to the date on which the e-mail was sent, and that the signatory of the mail would be ready to surrender the domain name under dispute.

In this connection, considering that the e-mail is extremely vague as to: i) the identity of the registrant of the domain name, ii) the date on which he allegedly passed away, and iii) the relationship between the registrant and the signatory of the e-mail, the Panelist requested the Center to ask Mr. Amos Blanco to submit the following information, no later that seven days from request:

- the identity of the domain name registrant;

- the date of his decease;

- the relationship between the registrant and Mr. Blanco (e.g.: is he the legitimate heir, are there any other heirs, has Mr. Blanco any power to dispose of the domain name and if so, on which grounds);

- supposing that he has the appropriate powers, is Mr. Blanco ready to transfer the domain name to the Complainant.

The Panelist consequently postponed the date for decision to November 21.

On November 10, the Center transmitted to Mr. Amos Blanco, copy to Complainant, the request of the Panelist.

No reply was ever received by the Center.

 

4. Factual Background

The Complainant has provided evidence of the US registration for six Guerlain trademarks owned by the Complainant or by its wholly owned subsidiary Guerlain Inc. (Attachment E to the Complaint) i.e.:

Guerlain (Stylized)

Reg. No. 192,772 December 9, 1924

Renewal date Dec. 9, 1984

Guerlain (Stylized)

Reg. No. 193,391 December 30, 1924

Renewal date Dec. 30, 1984

Guerlain

Reg. No. 1,733,835 November 17, 1992

Petit Guerlain (Small)

Reg. No. 2,100,589 September 30, 1997

Guerlain

Reg. No. 1,942,534 December 19, 1995

Guerlain Twin Set

Reg. pending Ė November 9, 1999

The Complainant has also provided evidence of registration of Guerlain trademark in Spain owned by the Complainant (Attachment F to the Complaint), i.e.:

Guerlain

Reg. No. 1664505, October 39, 1991

In addition, the Complainant has provided evidence of long use of Guerlain trade name and marks for cosmetic products worldwide (Attachments C,D,G, H and I to the Complaint).

The Complainant also submitted documents indicating that Guerlain products are sold in Spain since 1929, (Attachments F and G to the Complaint), long before the Respondent obtained the misguerlain.com domain name (in June 2000), and there is no current web site available at the Domain Name (Attachment B to the Complaint).

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that:

i the Respondentís Domain Name is confusingly similar to the Complainantís Guerlain registered marks and long used trade name;

i Guerlain has a strong reputation and is widely known worldwide;

i by incorporating the Complainantís trademark in its domain name, the Respondent is attempting to create an association with the Complainant since consumers will believe it is related to the Complainant;

i in addition, the word "miss" followed by the company name is commonly adopted in the fragrance business. Therefore, consumers would be lead to conclude that missguerlain.com is related to a fragrance created and offered by the Complainant under that name;

i the Respondent has no right or legitimate interests in the Domain Name;

i in particular, Respondent does not have authorization to promote the Complainantís products, has not made legitimate fair use or non commercial use of the Domain Name, has not been known by the name missguerlain.com;

i in addition, Respondent has not developed a website under the Domain Name;

i the Domain Name has been registered and is being used in bad faith;

i in particular, evidence of bad faith registration and use can be drawn from the fact that i) Guerlain is a famous trademark that can only refer to Complainantís products and services; ii) as such, Guerlain trademark has a substantial commercial value; iii) Respondent certainly knew the fame of Guerlain mark when it registered the Domain Name; iv) Respondent has registered over 50 domain names (many of which are of a pornographic nature), which fact indicates that it has no good faith intent to use any of them; v) Respondent has made no actual good faith use of the Domain Name; vi) there is no current web site available at the Domain Name, only an "under construction" page without any indication that the site has no relation to Complainant; vii) Respondent has failed to respond to the demand letter sent on August 23, 2000, by Complainantís counsel (Attachment M to the Complaint).

To support its propositions the Complainant cites a number of Panelsí decisions on the matter.

Based on the above, the Complainant requests the transfer of the Domain Name.

B. Respondent

Respondent did not file any response and is in default.

The e-mail dated October 30 and signed by a Mr. Amos Blanco technically cannot be considered as a response also because it does not come from the Respondent, although it originates from the Respondentís e-mail address.

The Panelist, however, in view of the unusual and exceptional circumstances referred to in the above e-mail, has deemed it appropriate to request clarifications in order to determine:

i whether notification of Complaint took place before Respondentís alleged death (in the Panelistís opinion such a fact may be relevant as to establishing whether Respondent actually received notice of the Complaint);

i which weight has to be given to the content of the e-mail;

i whether the signatory of the e-mail was authorized (and if so, on which grounds) to surrender the Domain Name.

In the light of the incompleteness and vagueness of the e-mail of October 30 and failing any reply or clarifications, in the Panelist Ďs opinion two possibilities only are left:

i either to ignore the above mentioned e-mail due to its vagueness and inaccuracy;

i or to give credit to the e-mail and in this case the most relevant point is the statement by Amos Blanco that he is willing to surrender the Domain Name. From this it may reasonably be inferred that i) he is entitled to freely dispose of the Domain Name as successor in interest of the registrant; ii) he has knowledge of the Complaint and therefore could have filed a response.

In both cases the Panelist concludes that all formal requirements of the procedure have been met and the Panelist may decide the case.

 

6. Discussion and finding

1. Art. 15.a. of the Rules instructs the Administrative Panel 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.

Under paragraph 4.a of the Policy, the Complainant must prove each of the following:

(i) The domain name in issue is identical or confusingly similar to the Complainantís trademark or service mark; and

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

(ii) the domain name has been registered and is being used in bad faith.

Paragraph 4.b of the Policy identifies in particular but without limitation four circumstances which for the purposes of paragraph 4.a shall be evidence of the registration and use of a domain name in bad faith, as follows:

(i) circumstances indicating that respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondentís documented out-of-pocket costs directly related to the domain name; or

(ii) respondent has 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 respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondentís web site or on the on line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of the respondentís web site or location or of a product or service on the respondentís web site or location.

Paragraph 4.c sets out in particular but without limitation three circumstances which if proved by respondent, shall be evidence of the respondentís rights to or legitimate interests in the domain name for the purpose of paragraph 4.a(ii), namely:

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

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial 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.

(a) Identity or confusing similarity

The Domain Name is composed by the word "miss" followed by the word "guerlain" which obviously constitutes the principal part of the Domain Name. In this connection it should be noted that the Complainant has provided evidence that in the fragrance business it is common to adopt as a name for a perfume the word "Miss" followed by the company name (Attachment K to the Complainant). The registration of the Domain Name by Respondent causes confusion since people would be led to conclude that "missguerlain" relates to a fragrance created and commercialized by the Complainant.

The Panelist finds therefore that the Domain Name is identical or confusingly similar to the numerous trademark registrations of the word "Guerlain" held by the Complainant.

(b) Rights or legitimate interests

The Panelist finds that Complainant has established a prima facie evidence that Respondent has no rights or legitimate interest in the Domain Name based on the following circumstances:

(i) Respondent has made no use of the Domain Name since there is no current web site available at the Domain Name;

(ii) Respondent does not have any authorization or license to use the Complainantís Guerlain trademarks or to incorporate them in the Domain Name nor to promote Complainantís products;

(iii) it appears that Respondent is not commonly known by the Domain Name.

The Panelist also considers that (i) Complainant is a "well known perfumer" as noted by the United States Court of Appeals for the Ninth Circuit in the case Saxony Inc. v. Guerlain (Attachment J to the Complaint) and (ii) the Guerlain mark has a strong reputation and is widely known, as evidenced by its substantial use in most countries (Attachments C, D, G, H and I to the Complaint) including Spain where Guerlain products are being sold since 1929, that is far before Respondentís registration of the Domain Name.

Therefore, in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent. (Guerlain S.A. v. Peikang WIPO D2000-0055; America Online Inc. v. AOL International WIPO D2000-0564).

On the other hand, the Panelist considers that by not submitting a response, Respondent has failed to invoke any circumstance under paragraph 4 c) of the Policy, which can demonstrate any rights or legitimate interests in the Domain Name (Spadel S.A v. Peter Kisters WIPO D2000-0526; Deutsche Bank AG v. Diego-Arturo Bruckner WIPO D2000-0277; Talkcity Inc. v. Robertson WIPO D2000-0009).

The Panelist therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.

(c) Bad Faith

(1.) Under the Policy, Complainant is required to prove also the third element provided for in paragraph 4.a(iii), namely that the domain name "has been registered and is being used in bad faith".

The Domain Name incorporates the trademarks registered and used by the Complainant to identify its products. The Panelist finds that the Complainant has brought satisfactory evidence that its trademarks are famous worldwide (including in Spain) and are extensively used, which facts the Respondent must have known. The Respondentís choice to incorporate in the Domain Name the Guerlain mark cannot be the result of a mere coincidence but suggest opportunistic bad faith (Veuve Cliquot Ponsardin v. The Polygenix Group Co. WIPO D2000-00163; Parfums Christian Dior v. javier garcia WIPO D2000-0226).

Complainant has also proved (Attachment B to Complaint) that Respondent has not developed any web site under the Domain Name.

It is an established principle since the Telstra Corporation Ltd. v Nuclear Marshmallows case (WIPO D2000-0003) that the passive holding of a domain name can constitute bad faith use. Telstra decision has also established that whether inaction can constitute bad faith, registration and use in bad faith can only be determined by analyzing the facts in a given case.

In this case the Panelist finds that the Respondentís activity amounts to bad faith registration and use of the Domain Name, based in particular on the following circumstances: a) the Complainantís trademarks are widely known and have a strong reputation; b) the Respondent has made no actual or contemplated good faith use of the Domain Name and the fact that the Respondent has registered many domain names in addition to the Domain Name leads to conclude that it has no good faith intent to use any of them.; c) Respondent has no rights or legitimate interests in the Domain Name; d) as a consequence, the Respondent could not possibly make any plausible actual or contemplated active use of the Domain Name other than illegitimate, under fair competition and trademark law principles, in order to attract for commercial gain Internet users to the Respondentís web site by creating an association with the Complainantís marks.

Therefore, the Panelist concludes that the Domain Name has been registered and used in bad faith.

 

7. Decision

The Panelist decides that: (a) the domain name missguerlain.com registered by the Respondent is identical or confusingly similar to the Guerlain marks of the Complainant; (b) Respondent has no rights or legitimate interests in respect of the domain name missguerlain.com; and (c) the domain name missguerlain.com has been registered and is being used in bad faith by the Respondent.

Accordingly the Panelist requires that the domain name missguerlain.com be transferred to the Complainant.

 

 


 

 

Anna Carabell
Sole Panelist

Dated: November 21, 2000