WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Elie Bleu, EBI v. Alfred Mitchell Inc.
Case No. D2003-0811
1. The Parties
The Complainants are the companies Elie Bleu SA and EBI SA, Maisons-Alfort, France, represented by Inlex Conseil, France.
The Respondent is Alfred Mitchell Inc., Minnesota, United States of America.
2. The Domain Name and Registrar
The disputed domain name <eliebleu.com> is registered with Direct Information Pvt Ltd. dba Directi.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 13, 2003. On October 13, 2003, the Center transmitted by email to Direct Information Pvt Ltd. dba Directi.com a request for registrar verification in connection with the domain name at issue. On October 14, 2003, Direct Information Pvt Ltd. dba Directi.com 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. 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 Respondent of the Complaint, and the proceedings commenced on October 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2003. The Response was filed with the Center on October 31, 2003.
The Center appointed Edoardo Fano as the sole panelist in this matter on November 12, 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.
The Panel has not received any requests from the Complainants or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties.
The language of the proceeding is English, being the language of the Registration Agreement.
4. Factual Background
The Complainants are Elie Bleu SA and EBI SA, both French stock companies internationally well-known in the very small and specialized field of manufacturing high quality cigar humidors as well as other sort of caskets for cigars and cigars accessories, which have been worldwide created, advertised and distributed for more than 25 years under the protected trademark ELIE BLUE.
Among others, the company EBI is the owner of the following trademark registrations, duly licensed to the company Elie Bleu:
- French registration for ELIE BLEU No. 1.247.996;
- French registration for ELIE BLEU No. 1.365.716;
- French registration for ELIE BLEU No. 3.171.265;
- United States registration for ELIE BLEU No. 75189310;
- United States registration for ELIE BLEU No. 73474795;
- International registration for ELIE BLEU No. 484.216.
One of the Complainants, namely the licensee company Elie Bleu, enjoys also company name rights in the wording "ELIE BLEU" and is the owner of the French domain name <eliebleu.fr>.
The license agreements between the companies EBI (licensor) and Elie Bleu (licensee), dated 1998 and 2003, are provided by the Complainants as enclosures of the Complaint.
The Respondentís domain name <eliebleu.com> was registered on May 18, 2002. It redirected users to another Respondentís website, namely "www.jtcigars.com", through which the Respondent was advertising and selling tobacco products.
5. Partiesí Contentions
The disputed domain name is identical to the trademark ELIE BLEU of the company EBI as well as to the company name of the company Elie Bleu, licensee of the former with regard to the trademarks ELIE BLEU.
To the Complainants knowledge, the Respondent has no ELIE BLEU trademark registered nor is known under this name: none of the Complainants has ever licensed or otherwise authorized the Respondent to use the ELIE BLEU trademarks as domain name.
Even if the Respondent were an Elie Bleuís products duly authorized reseller he would not have been authorized to make this registration (see for example Motorola, Inc. v. NewGate internet, Inc. WIPO Case No. D2000-0079 "the right to resell products does not create the right to use a mark more extensively than required to advertise and sell product").
In conclusion, the Respondent knew the ELIE BLEU trademarks, has no rights regarding the term ELIE BLEU and wasnít authorized to use it. There is no doubt that he registered this domain name without any right or legitimate interest.
When the Complainantsí representative sent a letter to the Respondent requesting the immediate transfer of the disputed domain name to the company Elie Bleu in exchange for the reimbursement of the registrationís expenses, the Respondent recognized his knowledge of the trademark ELIE BLEU (describing himself as a "great fan of Elie Bleu Humidors" and, being "an Internet retailer of fine cigars and accessories", he was "quite surprised to find the domain name eliebleu.com available") and asked for advantageous commercial terms and expensive products from the Complainants.
The Complainantsí trademark ELIE BLEU enjoys a great notoriety in France and all over the world in the field of cigar accessories, including the United States market where the Respondent is located. The corresponding website "www.eliebleu.com" was redirected to the Respondentís website "www.jtcigars.com", where some Elie Bleuís products are sold as well as competitorsí products.
Considering the above statements of the Respondent and the fact that he is selling Elie Bleuís products, he cannot ignore the existence of the relevant trademarks as well as of the company Elie Bleu.
The first registration of ELIE BLEU trademarks dates back to 1983, therefore well in advance of the date when the disputed domain name was registered, namely May 2002.
The Respondent cannot be considered as a naive website operator concerning intellectual property rights as he indicated the Ò on ELIE BLEU and Ô on his website "www.jtcigars.com". This is another proof of his bad faith as already pointed out in WIPO decisions (see for example Six Continents Hotels, Inc. v. Hotel Partners of Richmond, WIPO Case No. D2003-0222).
The fact that competitors products are also sold on this website creates a significant risk that internet users will believe that it is the official website of Elie Bleu, or at least an authorized distributor, or that the various products featured in the site are associated with one another, that they are all made by the same organization.
Following the exchanges with the Complainantís representative, the ELIE BLEU mention and link to "www.jtcigars.com" website disappeared on the web page attached to the disputed domain name but the Respondentís phone number still appears and the visitors are invited to call "for available inventory" of Elie Bleu products.
This confirms that the Respondent registered and use the domain name in bad faith, clearly and intentionally attempting to attract Internet users for commercial gain. When he received a letter from the Complainantsí representative, he modified the redirection of the disputed domain name but let his phone number on the web page in order to make as much commercial gain as possible through this website.
Moreover, when he agreed to release the disputed domain name, the Respondent requested in exchange Elie Bleuís original products, i.e. two Flor de Alba 200 cigars which are the Complainantsí top products worth more than 2000 USD as well as direct delivery to his customers and 30 days terms payment. The Complainants considered unacceptable both these conditions, being much more than the out-of-pocket costs directly related to the domain name and an unusual commercial practice.
The Respondent made a one page informal response to the Complaint, stating that his position was very straightforward in the exchange of correspondence with the Complainantsí representative.
The Respondent did not purchase the disputed domain name to gain financially at the expense of Elie Bleu, but because it was available and, at the time, unwanted by the Complainants.
The Panel is specifically invited by the Respondent to take note that the latter never received the last e-mail communications of the Complainantsí representative, in which the settling proposal conditions of the Respondent are refused, and to notice that, notwithstanding what stated by the Complainants in the Complaint, the registered trademark symbol Ò does not appear close to the trademark ELIE BLEU in the material enclosed to the Complaint.
However, whatever the decision of the Panel will be, the Respondent declares that he will make arrangements to transfer the disputed domain name to the Complainants.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy in order to succeed:
i the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
ii the Respondent has no rights or legitimate interests in respect of the domain name; and
iii the domain name has been registered and is being used in bad faith.
A: Identical or Confusingly Similar
As far as the first of these tests is concerned, the Panel finds that one of the Complainants, namely EBI SA, is the owner of the trademark ELIE BLEU, and the other Complainant, namely Elie Bleu SA, is the licensee with regard to the trademark at issue: moreover, the latter also enjoys company name rights in the wording "Elie Bleu".
The disputed domain name <eliebleu.com> is identical to both the trademark ELIE BLEU and the company name Elie Bleu.
The Complainants have therefore met the burden of proving that the domain name at issue is identical to the Complainantsí trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
In his Response, the Respondent did not even try to demonstrate his rights or legitimate interests in the disputed domain name.
Moreover, the fact that the Complainants persuasively assert that the Respondent has no right or legitimate interest in the domain name is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists.
However, since the Respondent has not presented any evidence of rights or legitimate interests in using the disputed domain name, the Panel therefore finds that also test (ii) of the Policy's paragraph 4(a) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy, "the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product or service on the Respondentís website or location."
As regards the registration in bad faith of the disputed domain name, the reputation of the Complainantsí trademark in the very specialized field of cigar accessories has been already established and the Panel finds that the Respondent, especially because located in United States where the products bearing the Complainantsí trademark ELIE BLEU are widely advertised and sold, knew or should have known that the disputed domain name <eliebleu.com> was identical to a well known trademark of a third party. As a matter of fact, the Respondent is not only operating in the same field as the Complainants (in fact he described himself as being "an Internet retailer of fine cigars and accessories"), but also admitted in the correspondence exchanged with the Complainantsí representatives as well as in the Response to the Complaint at issue that he knew that the disputed domain name <eliebleu.com> was identical to a well known trademark of the cigar accessoriesí field (as he said he was a "great fan of Elie Bleu Humidors") and he is himself advertising and selling products bearing the trademark ELIE BLEU.
In his defence he just stated that he was "quite surprised to find the domain name eliebleu.com available" and that he "purchased it because it was available and, at the time, unwanted by the Complainant".
The Panel does not consider the above explanation a good enough reason for registering a domain name, especially given the fact that the Respondent knew it corresponded to a well known trademark in which he had no rights whatsoever.
As regards the use in bad faith of the disputed domain name, the Complainants find a proof of it in the fact that the Respondent cannot be considered as a naive website operator concerning intellectual property rights as he indicated the Ò on ELIE BLEU and Ô on his website "www.jtcigars.com". The Respondent however points out to the Panel that in Annex J (of the Complaint) the registered trademark symbol is missing from the ELIE BLEU logo, although in the text of the Complaint the Complainants state the opposite. The Panel notices that almost all pages of Annex J do not show a portion of their the right side (probably cut when they were printed) and in one of them the ELIE BLEU logo appears just as "ELIE", so that it is possible to presume that the registered trademark symbol Ò , that is in fact missing, was in the missing portion of that page. Even if that were not the case, the purpose of the Complainants reasoning was to prove that "the Respondent cannot be considered as a naive website operator concerning intellectual property rights": the Panel finds it proved by the fact that the Respondent is clearly using the trademark symbol Ô beside the denomination JTCIGARS.COM in many pages of his website "www.jtcigars.com".
Moreover and more importantly, a further evidence of use in bad faith is to be found in the Respondentís request of an amount exceeding the out-of-pocket costs directly related to the domain name in exchange for transferring the latter to the Complainants.
The Panel considers irrelevant to the purposes of the present Complaint the fact that the Respondent declares to have not received the last e-mail communications of the Complainantsí representative, in which the settling proposal conditions of the Respondent were refused, since the use in bad faith of the disputed domain name is clearly proved not only considering the above, but also by the Respondentís behaviour subsequent to the exchanges of correspondence with the Complainantsí representative.
In fact, while the ELIE BLEU mention and link to "wwwjtcigars.com" website disappeared from the web page at the URL "www.eliebleu.com", the Respondentís phone number still appears and the visitors are invited to call "for available inventory" of Elie Bleu products.
Furthermore the Complainants provided evidence of competitorsí products being sold under the disputed domain name by means of redirecting the user to another Respondent's website: even if the Respondent is selling also Elie Bleuís products through a redirection from the web site "www.eliebleu.com", the fact that competitorsí products are also advertised and sold would constitute use in bad faith (Paragraph 4(b)(iv) of the Policy), as already stated by the relevant Panel in the Nikon, Inc. and Nikon Co. v. Technilab, Inc. WIPO Case No. D2000-1774 ("the use of the <nikoncamera.com> domain name for a site that sold Nikon products and those of its competitors constitutes an improper use of Complainantsí mark to attract Internet users to Respondentís site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site").
The Respondent is also preventing the Complainants from reflecting their trademark in the corresponding most popular top level domain.com, which constitutes bad faith in accordance with Paragraph 4(b)(ii).
Considering the above, the Panel finds that the Complainants have presented sufficient evidence to satisfy the burden of proof with respect to the issue of whether the Respondent has registered and used the disputed domain name in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <eliebleu.com> be transferred to one of the Complainants, namely Elie Bleu SA.
Dated: November 18, 2003