WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moulin Rouge S.A. and Bal du Moulin Rouge S.A. v. Owgab Ltd.
Case No. D2003-0731
1. The Parties
The Complainant is Moulin Rouge S.A. and Bal du Moulin Rouge S.A., both located in Paris, France. The Complainant is represented by Deborah A. Nilson of Rozan & Nilson, LLP, New York, New York, United States of America.
The Respondent is Owgab Ltd., a company located at Milburne House, St. Johnís, Antigua.
2. The Domain Name and Registrar
The disputed domain name is <moulinrouge.com>.
The registrar for the disputed domain name is Network Solutions, Inc. (NSI).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on September 16, 2003. Afterwards, on September 17, 2003, the Center transmitted by email to NSI a request for registrar verification of the disputed domain name. On September 22, 2003, NSI transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact. NSI also stated that the registration agreement was in English: per paragraph 11(a) of the Rules, English thus also becomes the language of this proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Complaint to the Respondent and this proceeding began on September 23, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was set at October 13, 2003. The Respondent did not file a response with the Center by this deadline, and, on October 14, 2003, the Center notified the Respondent of its default.
In view of the Respondentís default, under paragraph 5(e) of the Rules, the Panel will conduct this proceeding based on the Complaint alone.
The Center appointed Messrs. Peter D. Siemsen, Francois Dessemontet, and Dennis A. Foster as panelists in this matter on October 31, 2003. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel finds that the Center has adhered to the Policy and the Rules in administering this proceeding.
4. Factual Background
The Complainant is a famous cabaret establishment in Paris, France that has been operating for more than 100 years. The Complainant owns numerous trademark registrations for its MOULIN ROUGE trademark. The Respondent registered the disputed domain name, <moulinrouge.com>, on May 15, 1998. There was some sporadic email contact between the parties before this proceeding.
5. Partiesí Contentions
The Respondent uses the domain name <moulinrouge.com>, which is identical to the Complainantís Moulin Rouge trademark and to its identity as a famous cabaret.
The Complainant Moulin Rouge S.A. is the owner of the world-famous French trademark MOULIN ROUGE, which has been in use continuously in France in connection with its famous cabaret since 1889. The MOULIN ROUGE cabaret was immortalized by the painter Henri de Toulouse-Lautrec. Also, many international stars have performed on stage at the Moulin Rouge: Ella Fitzgerald, Liza Minelli, Frank Sinatra, Elton John. They have followed in the footsteps of French celebrities such as Maurice Chevalier, Jean Gabin, Edith Piaf and Yves Montand.
Millions of spectators have seen the Moulin Rouge show. The Moulin Rouge cabaret continues to be a very popular Parisian attraction known worldwide. (A recent program of the Moulin Rouge is attached as Complaint Annex 4).
In addition to use of the trademark in connection with cabaret and theatrical services, the Complainant uses its Moulin Rouge trademark on an extensive line of products sold at the boutique at the Moulin Rouge cabaret, including clothing, posters, compact discs, books, plates, porcelain cups and saucers, jewelry and many other articles.
The Complainant has many trademark registrations for MOULIN ROUGE in a number of countries, including France, Canada and the United States of America.
The Respondent has admitted that it knew the Moulin Rouge name was a "historical and geographical reference" when it registered the disputed domain name (Complaint Annex 2). The Respondent was undoubtedly familiar with the famous Moulin Rouge cabaret when it selected the disputed domain name, <moulinrouge.com>, as the cabaret has been famous for more than 100 years---long before the existence of the Internet and the Respondentís domain name.
Even if the Respondent now claims that it did not know of the famous Moulin Rouge cabaret at the time it registered the disputed domain name, the Respondent should have known of this trademark, given its international fame.
As held in Expedia v. European Travel Network, WIPO Case No. D2000-0137, April 18, 2000 "in the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainantís trademark and services at the time it registered the domain name <xpediatravel.com>, given the widespread use of the Complainantís Expedia website."
It is important to note that the Complainant first notified the Respondent of this issue in 1999. Complainantsí counsel sent a cease and desist letter (certified mail, return receipt) to the Respondent in November, 1999 which went unanswered (Complaint Annex 16).
Since 1999, the Respondent has continued to renew its registration for the <moulinrouge.com> domain name, knowing full well that it was violating the Complainantís rights to this name.
The Complainantís counsel recently contacted the Respondent by e-mail asserting the Complainantís rights to the disputed domain name and demanding that the Respondent transfer the name to the Complainant. Through its attorney, the Respondent initially proposed that it would sell the disputed domain name to the Complainant for a price of U.S.$2,500. However, then the Respondent later changed counsel and decided not to sell the domain name to the Complainants.
The Respondent is not a licensee of the Complainant and indeed has no association whatsoever with Complainant.
The Respondent is not making any legitimate non-commercial or fair use of the disputed domain name.
We have no evidence of Respondentís use of the domain name in connection with a bona fide offering of goods or services.
The Respondent is using the disputed domain name simply to attract viewers to its casino web site by using the Complainantsí world famous mark.
The Respondent simply wishes to use a famous trademark associated with a famous cabaret to attract potential gamblers to its web site. The Respondent has been on notice for several years that its use of the domain name is in contravention of the rights of the Complainant, yet the Respondent continues to renew its domain name registration in continuing bad faith.
With a famous mark such as MOULIN ROUGE, the very use of the mark in the form of a domain name by a third party suggests "bad faith." (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, May 17, 2000; and Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, May 1, 2000).
The Respondent may attempt to assert that the Complainantsí claims are precluded by laches, since the Respondent first registered the disputed domain name in 1999, or because the Complainant first contacted the Respondent at the end of 1999.
Given that the remedy requested in this proceeding is simply the transfer of the domain name back to its rightful owner, and that the Complainant is not seeking money damages, it does not seem inequitable that the defense of laches would not apply, which perhaps was the thought of the drafters of the Uniform Domain Name Dispute Resolution Policy.
The disputed domain name should be transferred to the Complainant Moulin Rouge S.A.
B. The Respondent
The Respondent is in default in this proceeding and thus did not submit any contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name, <moulinrouge.com>, transferred to it, the Complainant must prove the following (the Policy, paragraphs 4(a)(i-iii)):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant has exhibited a number of its MOULIN ROUGE trade and service mark registrations in various countries including France, no. 1,311,105 in international class 42 (Annex 9) with a priority date of May 3, 1983, for education and entertainment services; the European Union trademark registration no. 110,437 dated November 5, 1998, in international classes 3, 14, 18, 25, 32, 33, and 41 in countries including France, Germany, the Benelux, Spain and Great Britain (Complaint Annex 12); in the United States, federal service mark registration no. 2,667,568 dated December 31, 2002, in international class 41 for entertainment services.
The Panel finds the disputed domain name, <moulinrouge.com>, is identical to the Complainantís MOULIN ROUGE registered trade and service marks. The Panel notes that lack of a space between the two words "Moulin" and "rouge"--for technical reasons no space is permissible in domain names-- and the addition of the gTLD ".com" do not affect this finding of identity. It has long since been established that these minor changes in the context of Internet domain names do not affect identity or confusing similarity (see, e.g. Guinness UDV North America, Inc. v. UKJENT, WIPO Case No. D2001-0684, August 9, 2001 where the Panel found the gTLD,".com" was "incapable of distinguishing" between a trademark and a domain name).
The Panel finds the Complainant has shown the disputed domain name is identical to the trademark MOULIN ROUGE in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant contends it has not licensed the Respondent to use its MOULIN ROUGE trademark and, indeed, has no business relationship whatever with the Respondent.
At paragraphs 4(c)(i-iii), the Policy allows the Respondent to come forward and show that it does have rights and legitimate interests in the disputed domain name. However, as the Respondent has defaulted in this proceeding, the Panel has nothing from the Respondent to go on. In addition, based on the record before us, the Panel does not see any legitimate rights and interests on behalf of the Respondent. Certainly, using the Complainantís strong trademark to run an Internet gambling casino is not a right or legitimate interest in the disputed domain name.
The Panel finds the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name.
Registered and Used in Bad Faith
The Complainant alleges one principal ground for bad faith with which the Panel is in complete agreement. This is paragraph 4(b)(iv) of the Policy which states: "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Respondent operates an on-line gambling site or casino at the disputed domain name web site. It takes little imagination to see why the Respondent thought that the Complainantís famous trademark MOULIN ROUGE would bring the type of Internet public the Respondent seeks as potential clients, i.e., cabaret aficionados are people who might like to gamble. The Respondent registered the disputed domain name to exploit this synergy.
Secondarily, the Panel also agrees with the Complainant that its trademark, MOULIN ROUGE, is in that select class of strong, famous trademarks such that registration under the facts of this Case amounts to "opportunistic bad faith." This is not one of the bad faith grounds enumerated in the Policy at paragraphs 4(b)(i-iv), but those grounds are non-exhaustive. Paragraph 15 of the Rules gives the Panel the authority to find additional grounds of bad faith where appropriate. The Panel finds it is appropriate in this Case. (see Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, May 1, 2000, involving the famous French champagne trademark VEUVE CLICQUOT; and also Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, May 17, 2000, where the Panel found the Respondent "knew or should have known" of the Complainantís famous trademark given the "widespread use and fame of the Complainantís CHRISTIAN DIOR trademark").
The Panel finds the Complainant has registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <moulinrouge.com>, be transferred to the Complainant, Moulin Rouge S.A.
Dennis A. Foster
Peter D. Siemsen
Dated: November 13, 2003