WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marie Claire Album v. Marie-Claire Apparel, inc.
Caso No. D2003-0767
1. The Parties
The Complainant is Marie Claire Album SA, a French corporation with an address at Issy les Moulineaux cedex, France, represented by Geneviève Raffini, France.
The Respondent is Marie-Claire Apparel, Inc., Seattle, Washington, United States of America.
2. The Domain Name and Registrar
The disputed domain name <marieclaireonline.com> is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 29, 2003. On October 1, 2003, the Center transmitted by email to Network Solutions, Inc., Registrar a request for registrar verification in connection with the domain name at issue. On October 3, 2003, Network Solutions, Inc., Registrar 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed one signed original of the Complaint on October 3, 2003. The Center verified on October 7, 2003, 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 Respondent of the Complaint, and the proceedings commenced on October 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondentís default on October 31, 2003.
The Center appointed Andrea Mondini as the sole panelist in this matter on November 24, 2003. The Panel finds that it was properly constituted. 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.
4. Factual Background
The Complainant is the owner of the trademark and service mark "MARIE-CLAIRE". Marie-Claire is a women magazine created in 1937, covering topics such as fashion, beauty, health etc. Today, there are international editions of this magazine in 25 countries including the United States of America.
The Complainant owns the two trademarks "MARIE CLAIRE" and "MARIE-CLAIRE" registered in France. The first trademark is registered with the no. 1.712.118 and covers the classes 3, 14, 16, 18, 20, 21, 22, 24, 25, 26, 27, 28 and 41. The second trademark is registered with the no. 1.712.366 and covers the classes 1 to 42. The registration of the trademark "MARIE-CLAIRE" has been internationally extended and covers classes 1 to 42 under the registration no. R 338 976. Moreover, the Complainant has registered the trademark "MARIE CLAIRE" and the same as service mark with the US Patent and Trademark Office with the Reg. No. 1.224.181 (classes 16) respectively Reg. No. 1.974.703 (classes 38 and 41). All mentioned trademarks and service marks have been renewed and are still in force.
In addition, the Complainant has registered several domain names such as <marie-claire.com>, <groupemarieclaire.com>, <marieclaire.fr>, <marieclairemagazine.com> and <marieclaire-magazine.com>.
The Respondent registered the domain name <marieclaireonline.com> on December 27, 2002. Currently, there is no active website corresponding to the address of the domain name in dispute.
On March 19, 2003, the Complainant wrote to the Respondent that its registration of the disputed domain name constitutes an infringement of Complainantís right to its well-known trademarks. At the same time, the Complainant requested the Respondent to cancel its registration of the disputed domain name and to transfer it to the Complainant until March 29, 2003. Upon receiving no answer from the Respondent, the Complainant reminded the Respondent of its request with letter of April 25, 2003. Again, the Respondent remained silent.
5. Partiesí Contentions
According to the Complainant:
- The Respondentís domain name is identical or at least confusingly similar to the Complainantís "MARIE CLAIRE" trademarks and service marks.
- The ending "online" is not distinctive and, therefore, does not diminish a likelihood of confusion.
- At the time of the registration of the disputed domain name the Respondent must have been aware of the trademark "MARIE CLAIRE" being well known in the United States.
- The Complainant has obtained the transfer of other domain names including the element "Marie Claire" under the UDRP (i.e. <marieclaire.net>: Marie Claire Album v. Byoung Ryull Moon, WIPO Case No. D2001-0884; <marieclairemagazine.com>: Marie Claire Album S.A. v. Buy This Domain WIPO Case No. D2002-0677; <e-marieclaire.com>: Marie Claire Album v. Barestel Serveis S.L.L., WIPO Case No. D2001-1452).
- Several WIPO-decisions, where the domain name at issue consisted of a trademark and the ending "online", have imposed the transfer of the domain name upon the respective Respondents (i.e. <calvinkleinonline.com>: Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Steven Heiberger and Legacy Development USA Corp., WIPO Case No. D2002-0336; <sodexhoonline.com>: Sodexho Alliance v. Entredomains, Inc., WIPO Case No. D2002-1001; <exxononline.com>: Exxon Mobil Corporation v. Joseph Fisher, WIPO Case No. D2000-1412).
- The Respondent has no rights or legitimate interest regarding neither the name "marie claire" nor the word "marieclaireonline".
- The trademarks and service marks "MARIE CLAIRE" can be considered as internationally well-known. The disputed domain name has therefore been registered and used in bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
To have the disputed domain name transferred to the Complainant, it must prove each of the following (Policy, paragraph 4(a)):
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the Respondentís domain name has been registered and is being used in bad faith.
Where the Respondent is in default, the panel is to proceed to a decision on the complaint (Rules, paragraph 14(a)). The panel must still examine whether the complaint meets the conditions set forth in paragraph 4(a) of the Policy. It may draw such inferences as it deems appropriate from the Respondentís failure to file its response in due time.
A. Identical or Confusingly Similar
The Complainant has shown that it holds valid rights in the trademarks and service marks "MARIE CLAIRE" and "MARIE-CLAIRE" and that such trademarks predate the registration of the disputed domain name. Such trademarks and service marks have been registered internationally in many countries, as well as in the United States of America. The Respondent does not contest the existence of these trademark and service mark registrations by the Complainant.
The disputed domain name incorporates the identical trademark "MARIE CLAIRE" held by the Complainant and the ending "online". The adding of the generic term "online" to Complainantís, however, does not diminish the likelihood of confusion (WIPO Case No. D2002-0336: <calvinkleinonline.com>). On the contrary, the likelihood of confusion can be considered as rather aggravated because the disputed domain name might suggest to the consumer that it would lead to an online-version of the Complainantís magazine (WIPO Case No. D2002-1001: <sodexhoonline.com>; D2000-1412: <exxononline.com>).
The Panel, thus, finds that the domain name in dispute is confusingly similar to the trademarks and service marks held by the Complainant.
B. Rights or Legitimate Interests
As the Respondent did not file a Response to the Complaint and has no obvious connections with the domain name, it is sufficient for the Complainant to prima facie show that the Respondent has no right or legitimate interest in the disputed domain name (Land Sachsen-Anhalt v. Skander Bouhaouala, WIPO Case No. D2002-0273: <sachsen-anhalt.com>; Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521: <volvovehicles.com>).
The Complainantís argumentation implies that the Respondent does not have any right or title in the Complainantís trademarks and service marks. There is nothing in the file indicating that Respondent was granted such a license. Therefore, it can be assumed that no license had been granted to the Respondent with respect to the trademark "Marie Claire". In addition, although the term "Marie-Claire" appears in the name of Respondentís company, the Respondent did not show preparations to use or the actual use of the domain name in connection with a bona fide offering of goods or services because there is no active website connected to the disputed domain name. Moreover, the Respondent did not make a legitimate noncommercial or fair use of the domain name, as no activity was performed with a respective website. The Respondent does not claim to have any legitimate interest within the meaning of paragraph 4(c) of the Policy.
Therefore, the Panel finds that the Respondent does not have legitimate rights or interests in the disputed domain name.
C. Registered and Used in Bad Faith
The magazine "Marie Claire" and the according trademark can be considered as well known in Europe and probably also in the United States. The Respondent, thus, at the time of the registration must have known that it registered a domain name consisting to the main part of a well-known trademark and that its use of this domain name might be considered as in bad faith.
The fact that the Respondent did not answer the requests of the Complainant, but passively held the disputed domain name for approximately a year indicates that it registered and used the disputed domain in bad faith in the sense of paragraph 4(b) of the Policy (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel, thus, finds that the Respondent has registered and used the Domain Name in bad faith.
For all of the foregoing reasons, this Panel decides that the domain name <marieclaireonline.com> registered by the Respondent is confusingly similar to the trademarks and services marks "MARIE CLAIRE" of Complainant, that the Respondent does not have rights or legitimate interests in respect of this domain name, and that the Respondent registered and used the domain name in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the registration of the domain name <marieclaireonline.com> be transferred to the Complainant.
Dated: December 10, 2003