WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Yves Saint Laurent v. Javier Garcia
Case No. D2001-0911
1. The Parties
The complainant in this administrative proceedings is Yves Saint Laurent, a company organized under French law, located at 7, avenue Georges V, 75008 Paris, France, hereinafter the "Complainant", and represented by Philippe Clement of SCP Clément Vivien & Associés with offices at avenue Victor Hugo, 50, 75116 Paris, France.
The respondent is Javier Garcia, with address at Apartado de correos, 5 Playa del Ingles, 35100 Gran Canaria, Spain, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is <yvessaintlaurent.com>, hereinafter the "Domain Name". The registrar is Register.com Inc and the Domain Name was registered on December 7, 1999.
3. Procedural History
The WIPO Arbitration and Mediation Center, hereinafter "the Center" received the hard copy of the Complainant's complaint and the exhibits on July 16, 2001.
On July 19, 2001, the Center informed the Complainant that it had only received the complaint in hard copy and asked the Complainant to submit its complaint in electronic format as required under Rules for Uniform Domain Name Dispute Resolution (the Rules), Paragraph 3(b).
On July 19, 2001, the Center received the electronic version of the complaint.
On the same day, the Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules, and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the Supplemental Rules).
On the same day, the Center transmitted via email to Register.com Inc a request for Registrar Verification relating to this case. On July 26, 2001, Register.com Inc transmitted via email to the Center, Register.com's Verification Response, confirming that a copy of the complaint had been sent to Register.com, that the Domain Name is registered with Register.com, that the Respondent is the current registrant of the Domain Name. It confirmed that the Uniform Dispute Resolution Policy is applicable and that the Domain Name registration status is "Active".
On July 30, 2001, the Center transmitted to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding and a copy of the complaint via post/courier and email in accordance with the following contact details:
Registrant, administrative contact, billing contact, technical contact:
Apartado de correos, 5
Playa del Ingles
Gran Canaria, 35100
Telephone: 0034 62 91 84 860
This notification was copied to the Complainant via email in accordance with the following contact details:
Yves Saint Laurent
Mrs. Marie-José Cabrolier
Directeur juridique de la société Yves Saint Laurent
The Center advised that the response was due by August 19, 2001.
On August 20, 2001, having received no response from the Respondent, the Center issued to the email address of both parties a Notification of Respondent Default. No reply by the Respondent to the Notification of Respondent Default was received.
On August 22, 2001, in view of the Complainant’s designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist and transmitted to him the Request for Declaration of Impartiality and Independence and a Statement of Acceptance.
Having received, on August 23, 2001, Mr. Geert Glas' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted on August 24, 2001, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date by email, in which Mr. Geert Glas was formally appointed as the Sole Panelist. On the same day, the Center transmitted to the Sole Panelist the Case File and the electronic version of the complaint. The hard copy and the exhibits were received on August 28, 2001. The Projected Decision Date was September 7, 2001.
The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore the Administrative Panel shall issue its Decision based on the complaint, the Policy, the Rules, the Supplemental Rules and the verifiable facts but without the benefit of any response from Respondent.
4. Factual Background
The Complainant is the owner of several registrations of the trademark "YVES SAINT LAURENT". It has registered this trademark for goods of classes 8, 14, 16, 18, 21, 24, 25, 26 and 34. These registrations cover various countries and among others France, Germany, Austria, Benelux, Italy, Spain, Morocco, Tunisia, Switzerland, Monaco.
The Complainant uses the trademark Yves Saint Laurent to distinguish a number of luxury products (e.g., clothing, perfume, jewellery…).
It can be said that the Complainant's trademark has become an internationally well-known mark through massive advertising and through the high luxury and quality level of the products it designates.
It appears from Register.com's Verification Response that the Respondent is the registrant of the Domain Name and that he registered the Domain Name on December 7, 1999.
The website linked to the Domain Name is under construction.
On March 23, 2000, Yves Saint Laurent Parfums sent a letter to the Respondent requiring him to transfer the Domain Name.
On May 17, 2000, Yves Saint Laurent Parfums sent a reminder to the Respondent.
Both letters remained unanswered.
These letters were sent to the Respondent's address as it appears in the WHOIS database. This address is a post office box.
5. Parties Contentions
The Complainant contends that the Domain Name is identical to its trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant contends that the Respondent has registered the Domain Name in bad faith. He contends that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant or to a competitor. It contends also that the Respondent has registered the Domain Name for the purpose of preventing the Complainant from reflecting its trademark in a corresponding Domain Name and that the Respondent attempts to attract Internet users to its website.
Respondent has not contested the allegations of the complaint and is in default.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Applied to this case, Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and,
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and used in bad faith.
a) Identity or confusing similarity
The Domain Name is identical to the Complainant's prior trademark "Yves Saint Laurent".
The Administrative Panel therefore finds that the Domain Name is confusingly similar to the Complainant's trademark and finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
b) Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name corresponding to its trademark.
There is no indication that the Respondent has registered or used the name "yvessaintlaurent" as a trademark, or has ever been known by this name.
Moreover, by not filing a response, the Respondent has failed to invoke any circumstance which could indicate the existence of any right or legitimate interest he would have in the Domain Name.
Therefore the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
c) Registration and Use in Bad Faith
The Complainant's trademark is famous and widely used as evidenced by the multiple trademark registrations and the world-wide fame of the Yves Saint Laurent company. In view of the above described fame of the Complainant's trademark, the choice of the Domain Name by the Respondent could not result from a mere coincidence.
As the Respondent could not have been unaware of the Complainant's trademark, by knowingly choosing a domain name consisting of the Complainant's trademark, the Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties.
The website related to the Domain Name (while registered in December 1999) was under construction in July 2001 when the Complainant introduced this proceeding and still is while the Administrative Panel is considering this case.
The Respondent was in default to respond in this proceeding, thereby failing to invoke any element or circumstance which could indicate the good faith nature of his registration and use of Domain Name. As a consequence, the Respondent has failed to demonstrate any bona fide use of the Domain Name.
Considering the lack of interest of the Respondent in the Domain Name, in the defense of his rights and interests as to the Domain Name and the above facts, the Administrative Panel finds that the Complainant has met its burden under section 4(a)(iii) of the Policy and that the Respondent has registered and used the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name registered by the Respondent is identical to the Complainant's trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent’s Domain Name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Administrative Panel requires that the registration of the Domain Name <yvessaintlaurent.com> be transferred to the Complainant.
Dated: September 7, 2001