WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guerlain S.A. v. Somsak Sooksripanich, Yahoo Thailand
Case No. D2000-1496
1. The Parties
The Complainant in this administrative proceeding is Guerlain S.A., based at 68, Avenue des Champs-Elysťes, 75008 Paris, France.
The Respondent is Mr. Somsak Sooksripanich and YAHOO Thailand, based at 3272/199 ladpraw 130rd, Bangkok, Thailand.
2. The Domain Name and Registrar
The domain names at issue are:
(hereafter "the Domain Names").
All three Domain Names are registered with Network Solutions Inc. ("NSI"), of Herndon, Virginia 20170, United States of America.
3. Procedural History
The Complainant filed a complaint ("the Complaint") with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") electronically and in hard copy on November 1 and 3, 2000, respectively.
On November 17, 2000, the Center transmitted to NSI a request for Registrar Verification in connection with this case so as to:
- confirm that the Domain Names at issue are registered with NSI;
- confirm that the person identified as the Respondent is the current registrant of the Domain Names;
- provide full contact details, i.e. postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available in the Registrarís WHOIS database for the registrant of the disputed Domain Names, the technical contact, the administrative contact and the billing contact for the Domain Names.
On November 21, 2000, NSI responded to the Centerís request for Registrar Verification and confirmed that NSI is the Registrar of the Domain Names <guerlain.org>, <guerlainsa.com> and <guerlainperfume.com>. It also confirmed that the first Domain Name was registered in the name of YAHOO Thailand, the administrative contact being Mr. Somsak Sooksripanich, who is both listed as the current registrant and the administrative & billing contact of the other two Domain Names. According to the NSI Verification Response, the technical contact for all three Domain Names is Hostmaster, Icom DNS, based in Los Angeles.
On December 1, 2000, the Center verified that the Complaint met the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
The undersigned 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 Supplemental Rules.
The administrative proceeding commenced on December 13, 2000. The same day, the Complaint was notified to Respondent.
As no response was submitted within 20 days as of the commencement of the administrative proceeding (sub-section 5 (a) of the Rules), the Center notified Respondent, on January 9, 2001 that it was in default.
Upon receipt of the necessary Declaration of Independence and Impartiality, the Center appointed the undersigned on January 30, 2001 to serve as sole Panelist in this administrative proceeding.
4. Factual Background
The Complainant is a well-known French company, founded at the beginning of the last century, which produces and sells a wide range of beauty products, such as makeup, perfumes and skin care products. Nowadays, Guerlain products are marketed in 110 countries in Europe, America, Asia and the Pacific through a network of 14í000 retail cosmetic stores, several hundred cosmetic counters, a considerable number of duty free counters and boutiques. In Bangkok, where Respondent is located, Guerlain products have been available since 1997. Currently, they are sold in at least 9 department stores and 4 boutiques, totaling several million US$ per year (Complaint p. 6, Complaint Exhibit B).
The Complainant states that the Guerlain trademark is protected in over 120 countries and provides the details of the trademark registrations for Thailand. According to this list, the Guerlain trademark has been registered for several classes, the first registration dating of May 9, 1967, the last of August 2, 1995. Those two registrations are enclosed in the Exhibits of the Complaint (Exhibit C).
The Domain Name <guerlain.org> was registered on May 15, 2000, in the name of "YAHOO Thailand". On June 23, 2000, Complainantís counsel contacted Mr. Somsak Sooksripanich, who was listed as the administrative and billing contact, informing him that the Domain Name infringed Complainantís trademark rights. Respondent was asked to transfer the Domain Name <guerlain.org> to Complainant and requested to confirm that he would refrain from registering any other domain name incorporating in whole or in part the name "Guerlain" (Complaint Exhibit F).
On June 27, 2000, Mr. Somsak Sooksripanich sent an e-mail to Complainantís counsel with his bank details, asking "how much they can afford" for <guerlain.org>. He also indicated that another lawyer had offered more money for the Domain Name (Complaint Exhibit H). The Panel does not dispose of any documentary evidence to assess whether the last sentence referred to a previous purchase offer, and if so, how much money Complainant was willing to pay for the Domain Name at that time.
However, as can be inferred from further correspondence (Complaint Exhibit I), it was agreed in August 2000, that Complainant would send to Respondent the necessary domain name transfer forms together with a prepaid FedEx label for their return and pay US$ 70 in exchange for the transfer of the Domain Name. This sum was meant to cover the NSI fees related to the transfer of the Domain Name. US$ 35 were supposed to be paid before, and the same amount after receipt of the duly filled in and signed transfer form by Respondent.
The domain name transfer form and the prepaid FedEx label were sent to Respondent on August 29, 2000.
On September 6, 2000, Mr. Somsak Sooksripanich registered the Domain Name <guerlainsa.com> in his name.
On September 20, 2000, Mr. Somsak Sooksripanich acknowledged receipt of a check for US$ 35 and signaled problems cashing it in. He indicated that he would prefer the money to be sent to him in cash, adding "actually you should pay me more than this (ABOUT $ 300-$500) because you make me missy and waste my time" (Complaint Exhibit J).
Five days later, the Domain Name <guerlainperfume.com> was registered in the name of Mr. Somsak Sooksripanich. For the period after this date, the Panel has no documentary evidence of any contacts between Mr. Sooksripanich and Complainantís counsel.
Based on these facts, it can be assumed that Mr. Sooksripanich is the true registrant of all three Domain Names, even though the first Domain Name (<guerlain.org>) was registered in the name of YAHOO Thailand. This conclusion is corroborated by the fact that YAHOO Thailandís address, as indicated in the NSI Verification Response, corresponds to Mr. Sooksripanichís address. In addition, Mr. Sooksripanich is listed as the administrative and billing contact of all three Domain Names, whose technical contact is also identical. Furthermore, all three Domain Names resolve to the same web site. For the purpose of these administrative proceedings, the term "Respondent" therefore refers to both Mr. Somsak Sooksripanich and YAHOO Thailand (for an analogous solution, see WIPO D2000-0226, Parfums Christian Dior v. Javier Garcia Quaintas and Christiandior.net).
5. Partiesí Contentions
The Complainant alleges that the Domain Names are identical or confusingly similar to the Guerlain trademark. It points out that Respondent has no rights or legitimate interests in the Domain Name. This allegation is substantiated as follows: first, Respondent is neither a licensee of Complainant nor otherwise authorized to use Complainantís mark. Second, there is neither evidence of a legitimate use of the Domain Names, nor is there any indication of at least an attempt to use the Domain Names for legitimate purposes, given that all the Domain Names connect to the same domain name reservation service.
According to Complainant, Respondent registered the Domain Names in bad faith because Mr. Sooksripanich was aware of Complainantís rights in the name when he carried out the registration. It is further asserted that Respondent used the Domain Names in bad faith since it registered the Domain Names with the purpose of selling them. In Complainantís opinion, Respondentís bad faith is also corroborated by the fact that it has registered, under various company names, a large number of domain names, which incorporate well-known trademarks.
Respondent has not contested the allegations of the Complaint and is in default.
6. Discussion and Findings
To succeed in its complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in the Domain Names;
(iii) the Domain Names have been registered and used in bad faith.
These three elements will be considered below:
(i) Identity or Confusing Similarity
Of the three Domain Names at issue in these proceedings, there is no doubt that the first Domain Name, <guerlain.org>, is identical with Complainantís trademark. As to the second and third Domain Name (<guerlainsa.com> and <guerlainperfume.com>) they both incorporate the Guerlain trademark and thus create a strong association with Complainant. The suffix "SA" stands for the corporate designation "sociťtť anonyme", whereas the word "perfume" refers to one of Complainantís main products. Both terms have no outstanding or original character, which outweighs the strong trademark Guerlain. The two Domain Names <guerlainsa.com> and <guerlainperfume.com> are therefore to be considered as confusingly similar to the Guerlain trademark in the sense of Article 4 (a) (i) of the Policy.
(ii) Rights or Legitimate Interests
The Panel does not have any evidence that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for the Domain Name incorporating this mark.
As Respondent has not submitted a response, the Panel can find no indicia that Respondent has any rights or legitimate interests in the Domain Name pursuant to Article 4 (c) of the Policy. On the contrary, Complainant's allegation, which was verified by the undersigned, that all three Domain Names are not being used but connect to the same domain name reservation and parking service, indicates Respondentís lack of legitimate rights or interests in the Domain Names. The Panel is thus of the opinion that Complainant has satisfied the second element of the Policy.
(iii) Bad Faith
The third element Complainant has to prove to succeed in its Complaint is registration and use of the Domain Names in bad faith.
Due to the fact that Guerlain is a well-known trademark and that Guerlain products have been widely marketed and sold in Thailand since 1997, Respondent must have been aware of Complainantís rights in the Guerlain trademark when it registered the domain name <guerlain.org>. Regarding the domain names <guerlainsa.com> and <guerlainperfume.com> it is beyond doubt that they were registered in bad faith (see also Article 4 (5) c of the Joint Recommendation Concerning Provisions on the Protection of Well-known Marks, adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization (WIPO), of September 20 to 29, 1999). As set out under Nį 4 above, the registration took place after Respondent had been contacted by Complainantís counsel and explicitly requested not to register any further domain names infringing the Guerlain trademark.
To satisfy the conditions set out in art. 4 (a) (iii) of the Policy, Complainant has not only to prove that the Domain Names were registered, but also that they are being used in bad faith. In other words, it is not sufficient to prove that Respondent was in bad faith when it registered the Domain Names. There must also be evidence "that the circumstances of the case are such that Respondent is continuing to act in bad faith" (WIPO D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows).
As a circumstance which indicates bad faith use, the Policy explicitly refers to domain names which have been registered or acquired "primarily for the purpose of selling, renting, or otherwise transferring the Domain Name" (Article 4(b) (i)).
In the present case, the following facts support the finding that Respondent has registered the Domain Names in question for such purpose.
Firstly, Respondent has expressed its intent of selling the first of the three Domain Names in its correspondence with Complainantís Counsel, in which it inquired about how much Complainant would be willing to pay for the Domain Name <guerlain.org> and pointed out that a third party had offered a higher amount. Moreover, during the negotiations with Complainant, Respondent asked for a price exceeding the transfer cost and registered two more domain names incorporating the Guerlain trademark, even though it had explicitly been asked by Complainant to refrain from such action (Complaint Exhibits F, H).
Secondly, it can be inferred from the circumstances set out below (1-4), that Respondentís main business activity consists in the sale of domain names incorporating famous trademarks:
1) According to the results of a Network Solutionsí WHOIS database search for the name "Sooksripanich", Respondent is using a considerable number of different e-mail addresses (i.e. <email@example.com>, <firstname.lastname@example.org>, <email@example.com>, <firstname.lastname@example.org>, <email@example.com>, <firstname.lastname@example.org">, <email@example.com> (Complaint Exhibit L)) and different nicknames (such as "Somsak", "mr anukoon nich name Oan", "mr somsak nich name yai", "mr anukoon", "mr somkak", "nick name Oan mr somsak nick n", "mr anukoon", "mr shinawatra", "thaksin sookripanich", "Drsomsak", "Mrsomsak", "dr mr somsak", "mr somsak", "mr somsak nick name yai", and further variations of these names (Complaint Exhibit O)). This indicates that Mr. Sooksripanich many times attempts to conceal his identity when conducting his business.
2) A search on Network Solutionsí WHOIS database has also revealed that Mr. Sooksripanich has registered more than 500 domain names, either in his own name or using different company names, such as <YAHOO.com>, <yahooth.com>, <Madethai.com>, <thaicenter.net> (Complaint Exhibit L and M).
3) Among the registered domain names, a substantial number incorporate famous names or trademarks:
- In Mr. Sooksripanichís name, for instance, have been registered the domain names <parischanel.com>, <Marlboro-usa.com>, <Nissan-usa.com> and <microsoftpalm.com> (Complaint Exhibit O).
- The entity <YAHOO.com> is the official registrant of the following domain names: <Dianastore.com>, <Vuittonasia.com>, <Woltkluver.com>, <Leonardvuitton.com>, <Yahoothailands.com>, <Yahoopalm.com>, <Dunhillondon.com> (Complaint Exhibit N).
- The list of domain names registered in the name of <Yahooth.com> include <sandrabulllock.com>, <mickeykids.com> (Complaint Exhibit O).
- In the name of <madethai.com>, the following domain names have been registered: <Guessjean.org>, <chivas.net>, <chivas-regal.com>, <dedior.com>, <diorchristian.com>, <diortrendy.com>, <diorprestige.com>, <diorparis.com>, <versacevuitton.com>, <louisevuitton.com>, <lvuittons.com>, <lvuitton.org>, <devuitton.com>, <guivuitton.com>, <vuittoncup.com>, <vuittonlouis.net>, <vuittonbag.com>, <cafedevuitton>, <guideguilaroche.com>, <larochevuitton.com>, <larrocheguy.com>, <lancomes.com<, <morrisphilip.com>.
- <Thaicenter.net> is the registrant of the following domain names: <Hilton.inter.com>, <nokiadesign.com>, <vuittoninc.com>, <diorparfums.com>, <parfumsgivenchy.com>, <saddamhunsen.com>.
4) Respondent is involved with a web site that auctions domain names and has previously offered domain names incorporating famous trademarks for sale (Complaint Exhibit Q).
The fact that a person or entity makes a business of registering famous trademarks as domain names with a view to selling them was considered by other Panels as sufficient evidence of bad faith use pursuant to Article 4 (a) (iii) of the Policy (see WIPO D2000-0055, Guerlain S.A. v. Peikang; WIPO D2000-0226 Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net). In the present case, this circumstance indicating bad faith use is reinforced by Respondentís attempt to sell one of the three Domain Names to Complainant.
In the view of the above, the Panel concludes that there is sufficient evidence of the Domain Names being registered and used in bad faith.
In the light of the foregoing, the Panel concludes and decides that:
(i) the Domain Names of Respondent are identical or confusingly similar to the trademark in which Complainant has a right;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names;
(iii) the Domain Names have been registered and are being used in bad faith;
(iv) the Domain Names <guerlain.org>, <guerlainsa.com> and <guerlainperfume.com> shall be transferred to the Complainant.
Dr. Thomas Legler
Dated: February 13, 2001