WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bernardaud Porcelaines de Limoges S.A. and Bernaudaud N.A. Inc. v. Chapman Capital LLC
Case No. D2001-0247
1. The Parties
The Complainants are Bernardaud Porcelaines de Limoges S.A., a French société anonyme, having its principal place of business in Limoges, France and its US subsidiary, Bernardaud N.A. Inc., having its principal place of business in New York, USA.
The Respondent is Chapman Capital LLC, a Delaware company, having its principal place of business in El Segundo, California, USA.
2. The Domain Name and Registrar
The domain name at issue is <bernardaud.com>. The domain name registrar is Network Solutions, Inc.
3. Procedural History
Complainants filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") which was received by email on
February 15, 2001, and in hard copy on February 19, 2001.
On February 23, 2001, the Center transmitted a request for register verification to Network Solutions, Inc. in connection with this case.
On February 27, 2001, Network Solutions, Inc. sent via email to the Center a verification response confirming that the Respondent is the registrant, that the Respondent’s agent
Mr. Robert Chapman is the administrative and billing contact and that the technical contact is Earthlink Network.
On February 28, 2001, the Center verified that the Complaint satisfies 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 (the "Supplemental Rules").
On March 1, 2001, the Center formally commenced this proceeding and notified Respondent that its response would be due by March 20, 2001. The notification was sent to the Respondent by courier and by email. The email appears to have been transferred without receipt of any "undeliverable" notice.
Respondent filed a Response with the Center by email on March 20, 2001 and in hardcopy on March 21, 2001.
Complainants filed a Reply with the Center by email on March 23, 2001 and in hardcopy on March 26, 2001.
Respondent filed a Response to Complainants' Reply with the Center by email on
March 28, 2001 and in hardcopy on April 2, 2001.
Complainants elected a single-member Panel. On April 3, 2001, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the Panelist, and set April 16, 2001 as the deadline for issuance of a decision.
4. Procedural and Factual Background
Both parties filed submissions in this matter without the invitation of the Panelist. This is contrary to the provisions of the Policy and undermines one of the goals of the policy. However, on review of such submissions, it would not have changed the decision set out below.
Complainants' Factual Statements
The following facts are taken from the Complaint and are generally accepted as true except as otherwise noted below.
"Bernardaud first used the BERNARDAUD mark in France in 1863, when the Bernardaud family began manufacturing fine china and porcelain goods at its Limoges factory. The mark has been in continuous use since that time throughout the world.
Bernardaud owns numerous registrations throughout the world…
Bernardaud has used its BERNARDAUD mark for fine table ware and porcelain goods in the United States since 1905 and for fine goods since 1920. The BERNARDAUD trademark has been registered in the United States since 1989. Bernardaud's many U.S. registrations include:
(a) BERNARDAUD, Reg. No. 1,550,195, registered in Class 21 since August 1, 1989;
(b) BERNARDAUD, Reg. No. 2,139,170, registered in Classes 29 and 30 since 1998;
(c) BERNARDAUD, Reg. No. 2,338,274, registered in Class 14 since April 4, 2000;
(d) PORCELAINES BERNARDAUD LIMOGES FRANCE & Design, Reg. No. 1,553,765, registered in Class 21 since August 29, 1989;
(e) LES RESIDENCES DE BERNARDAUD & Design, Reg. No. 2,120,903, registered in Class 21 since December 16, 1997.
Bernardaud has registered the domain name <bernardaud.net> and maintains a web site at that address…
In March, 1999, Bernardaud first attempted to register <bernardaud.com> in order to launch a website, but was prevented from doing so because Respondent had registered the domain name in May 1996. Bernardaud discovered that Respondent had not launched a web site under that name, and that Respondent maintained a stable of over 50 other domain names, several of which refer to the names of famous people, for example: <andreotti.com>, <grisham.com>, <midler.com>, and <murdoch.com>. A list of Respondent's domain names is attached to the hard copy of this Complaint as Exhibit D. To date, Respondent still has not used <bernardaud.com> for any web site or other venture, commercial or otherwise."
Complainants' counsel sent cease and desist letters to the Respondent on April 14, 1999, May 11, 1999 and June 24, 1999.
Respondent's Factual Statements
The following statements are taken from the Respondent’s Reply and the factual elements are generally accepted as true in the circumstances of this case.
"During a business trip to Europe in late 1991, Mr. Chapman became acquainted with a French individual who used the surname "Bernardaud."
In early 1996, Respondent registered domain names for potential use by Respondent itself, and for business associates and friends/family who did not have either the immediate knowledge or means to register domain names themselves at that early stage of the Internet. Respondent did not investigate for trademark rights at this time, particularly given the preponderance of surnames and generic financial terms registered (see Complaint Exhibit D). The domain name BERNARDAUD.COM was one of these domains.
Respondent maintains no presence on the Internet’s World Wide Web through any domain name at this time..."
5. Parties’ Contentions
Complainants and Respondent make the following allegations. The legal issues are discussed in the next section of this decision.
A. Similarity of the Domain Name and Trademark.
In respect of the domain name being identical or confusingly similar to a trademark or service mark in which the Complainants have rights, Complainants allege that:
"The BERNARDAUD.COM domain name is identical to Bernardaud's trade name and trademarks and is confusingly similar to Bernardaud's composite trademarks that incorporate the term BERNARDAUD…"
The Respondent accepts that the trademark and domain name are identical.
B. Respondent's Rights and Legitimate Interests.
Complainants contend that the Respondent has no rights or legitimate interests in the domain name and rely on the following elements:
"Bernardaud has not licensed its trademark to Respondent nor authorized Respondent to use the BERNARDAUD trademark in any manner."
"Respondent has not used the BERNARDAUD.COM domain name in connection with a bona fide offering of goods or services. No commercial web site is attached to the BERNARDAUD.COM address. Indeed, Respondent's principal has himself acknowledged that the domain name is in "commercial non-use." See Exhibit I.
Respondent does not state anywhere in any of its communications that BERNARDAUD forms part of Respondent's principal's family name, or that Respondent itself has been commonly known by the domain name.
It is apparent from Respondent principal's statement that he had formulated a not-yet-implemented commercial business plan for the domain name, and that he plans to make commercial rather than non-commercial or fair use of the domain name. See Exhibit I.
It is not reasonably possible that Respondent could demonstrate a legitimate interest in the domain name, because Bernardaud's trademarks have been in use and registered in the United States long before Respondent registered the BERNARDAUD.COM domain name."
Respondent contends that:
"…the fact that Respondent has not used the BERNARDAUD.COM domain name in connection with a bona fide offering of goods or services is not evidence that no legitimate interest exists. Rather, …Respondent simply has not possessed the time and other resources necessary to finish and post a web site which would use the Domain Name….
Respondent maintains no presence on the Internet’s World Wide Web through any domain name at this time (including registered domains CHAPMANCAPITAL.COM, ROBERTCHAPMAN.COM, BOBCHAPMAN.COM and numerous others) based on its desire to a) examine and analyze others’ web site developments during this developmental stage of the Internet before creating its own presence thereon, and b) the significant financial and time constraints based on the Respondent being a small business operated by only one individual. Thus, the absence of any content linked to BERNARDAUD.COM or any other registered domain names provides no evidence of illegitimacy just as the void of any content linked to Respondent’s registration of CHAPMANCAPITAL.COM provides no evidence of illegitimacy either."
C. Bad Faith Registration and Use.
Complainants further allege that the domain name was registered and used in bad faith by the Respondent based on various elements. The Panelist considers that only Complainants' allegations on bad faith registration of the domain name in dispute need be considered in this case. Complainants' allegations are as follows:
"Respondent has registered the BERNARDAUD.COM domain name in bad faith. In Telstra, ICANN Case No. D2000-0003, the Panel based its conclusion of bad faith registration in part on the fact that the respondent must have been aware that it could not legitimately use a domain name that was identical to Complainant's well-known and widely used trademark. Given the fame and long use of the BERNARDAUD trademark, Respondent must have been aware that it could not legitimately use the BERNARDAUD.COM domain name. This fact inevitably leads to the conclusion that its registration was in bad faith. "
"There is ample evidence that Respondent has registered the domain name in order to prevent the owner of the trademark . . . from reflecting the mark in a corresponding domain name," and has "engaged in a pattern of such conduct" within the meaning of Policy Paragraph 4(b)(ii).
First, Respondent's registration of BERNARDAUD.COM does in fact prevent Bernardaud from incorporating its famous trademark in a "dot com" domain name.
Second, the inference of bad faith is reinforced by Respondent's "pattern" of such conduct. A recent search of Network Solutions' "Whois" data base reveals that Respondent is also the registrant of over 50 other domain names, many of which correspond to the names of famous people. For example, Respondent has registered the domain name ANDREOTTI.COM, corresponding to the name of the famous race car driver Mario Andreotti, GRISHAM.COM, corresponding to the name of the famous novelist John Grisham, MIDLER.COM, corresponding to the name of the famous entertainer Bette Midler, and MURDOCH.COM, corresponding to the name of the famous publisher, Rupert Murdoch. Like BERNARDAUD.COM, these domain names do not appear to be attached to operating web sites.
The large number of domain names registered to Respondent and the number of domain names corresponding to the names of famous persons raise the compelling inference that Respondent is engaged in a pattern of preventing third-party trademark owners from using their marks as domain names. Similar circumstances in other proceedings have established as much."
Respondent contends that:
"Complaint attempts to prove bad faith by referring to the Telstra Corp. Ltd. v. Nuclear Marshmallows case…However,…to compare the visibility of the Telstra trademark, which was part of almost every Australian’s everyday life (Telstra could be considered AT&T of Australia), to that of Complainant (which makes china dinnerware) is absurd…Respondent never had heard of Complainant or its product before being contacted by Complainant in June 1999…
Complainant’s citation of the simple existence of other domain names registrations by Respondent…provides nothing more than circumstantial evidence. Complainant has no knowledge as to either a) the intended use or b) the business association between Respondent and the companies whose names are encompassed by some of the domain names registered by Respondent. Complainant has presented no evidence of any party making any claim that Respondent is in violation of the Policy through its registration of any domain name, rendering its claims purely speculative.
"In early 1996, Respondent registered domain names for potential use by the company itself, and for business associates and friends/family who did not have either the immediate knowledge or means to register domain names themselves at that early stage of the Internet." …While the surnames listed in Complaint…may match those of people the Complaint considers "famous," they also happen to be the surnames of literally thousands of non-famous, regular citizens (see Response Annex J). While my friends and business associates have the right to remain anonymous, I am allowed to provide the example of Andrew Midler (MIDLER.COM), a former business partner of Mr. Chapman’s, who is not a famous person by any stretch of the imagination. This is the case in the GRISHAM.COM, MURDOCH.COM and all other domain name registrations as well…[T]he domain name registration ANDREOTTI.COM (cited by Complainant as evidence of bad faith) is not the surname of a "famous race car driver," who instead possesses the surname "Andretti" (i.e., Mario Andretti).
If, as Complainant attempts to argue…Respondent truly was "cyber-squatting" on the names of "famous people," then Respondent would have been likely to register domain names referring to the full, proper names of these individuals. However, as can be seen in Response Annex K, the domain names referring to the full, proper names all four "famous people" to whom Complainant refers as evidence of cyber-squatting were available at the time Respondent registered surnames only. Yet Respondent did not register those full "famous names." MARIOANDRETTI.COM was created on July 3, 1997, well after Respondent created ANDREOTTI.COM on May 3, 1996; JOHNGRISHAM.COM was created on November 16, 1999, well after Respondent created GRISHAM.COM on May 3, 1996; BETTEMIDLER.COM coincidentally was created on November 16, 1999, well after Respondent created MIDLER.COM on March 18, 1996; and RUPERTMURDOCH.COM was created on May 18, 1997, well after Respondent created MURDOCH.COM on May 3, 1996."
6. Discussion and Findings
The burden for the Complainants under paragraph 4(a) of the Policy is to prove:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
A. Similarity of the Domain Name and Trademark.
Complainants have established its rights in the trademark "BERNARDAUD" with an initial trademark registration in the United States in 1989 and subsequent US registrations as of 1997. Respondent acknowledges that <bernardaud.com> is identical to the trademark of the Complainants.
This Panelist finds that <bernardaud.com> is identical to the trademark "BERNARDAUD". The use of lower case letter format and the addition of the gTLD ".com" are not significant in determining whether the domain name is identical or confusingly similar to the mark: see CBS Broadcasting Inc. v. Worldwide Webs, Inc., Case No. 2000-0834 (WIPO, Sept. 4, 2000).
Therefore, the Complainants have satisfied the first requirement.
B. Respondent's Rights and Legitimate Interests.
Since the Complainants have failed in respect of the third requirement as discussed below, the Panelist is not required to consider whether the Complainants have met the second requirement of Section 4(a) of the Policy and the Panelist will not do so.
C. Bad Faith Registration and Use.
This case is particular in that it deals with the registration of domain names in 1996, when the Internet was in early stages of commercial development.
Moreover, it deals with the registration at that time by an American of a domain name containing a trademark that is well-known in France, but does not appear to be well-known in the United States outside of the porcelain area.
This is a basic point as all of the examples of bad faith under Section 4 (b) of the policy appear to require some familiarity either with the complainant or with its trademark.
To infer that the Respondent was familiar with the Complainants or their trademarks, the Complainants rely on Telstra, Case No. D2000-0003 (WIPO, Feb. 18, 2000). However, in Telstra the complainant was one of the largest and most well-known companies in the country where the respondent resided and had numerous trademark registrations both domestically and internationally. That is not the case of the BERNARDAUD trademark which, although well-known in France, does not appear on the basis of the Complainants' evidence to be well-known and widely used in the United States or internationally except in the area of porcelain. Indeed the first U.S. registration for the trademark was in 1989. That is prior to the date of registration of the domain name in question. However, it hardly supports the argument that BERNARDAUD is a famous trademark that should have been recognized as such by the Respondent when it registered the domain name.
The Panelist accepts as possible the Respondent's claim that it was unaware of the Complainants' existence or products in 1996 and did not know of the Complainants' mark at the time it registered the domain name at issue.
But the real factor that assists the Respondent in this case is the timing. The Respondent registered numerous domain names at a very early period in the commercial development of the Internet when the many of the issues addressed by the Policy were not as apparent as they are today.
Therefore, the registration of over 50 domain names in early 1996, is not sufficient in this Panelist's view to establish that the Respondent has engaged in a pattern of bad faith registration under paragraph 4(b)(ii) of the Policy. The simple fact is that the Respondent filed these names at a time when not only the full names of various famous people but also the corporate names of many famous companies were available as the various domain name cases attest. If the Respondent had registered the domain names with the intention to cybersquat, it is not clear why he would not have chosen 50 more merchantable domain names to register. Nor is it clear why he would have held on to the domain name for three years without contacting the Complainants. (And the evidence in the case is even then it was the Complainants who contacted the Respondent.)
Therefore, although the Panelist is not satisfied with some of the Respondent's explanations – and agrees with counsel to the Complainants that circumstancial evidence is probative evidence – in this case, due to the time frame of the registrations, the Complainants have failed to establish their case in accordance with the Policy.
The Complainants have not proved the initial requirement that the domain name was registered in bad faith. The Panelist is not therefore required to consider the additional requirement of whether the domain name was used in bad faith by the Respondent.
Therefore, the Complainants have failed to meet the third requirement of paragraph 4(a) of the Policy.
Despite the fact that the Complainants have failed in this case, this is not a case of "reverse cybersquatting". The Complainants are well known producers of porcelain with a legitimate interest in acquiring the domain name and it is difficult to see what legitimate interest that the Respondent has in the domain name. The Complainants have simply failed to satisfy their burden of proof with regard to the registration in 1996.
For the foregoing reasons, the Panelist holds that this dispute is not within paragraph 4(a) of the Policy and that the domain name <bernardaud.com> shall remain registered to the Respondent.
Thomas H. Webster
Dated: April 27, 2001