WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bush Holding v. Spiral Matrix
Case No. D2006-1314
1. The Parties
The Complainant is Bush Holding, Billancourt, France, represented by Cabinet Vittoz, France.
The Respondent is Spiral Matrix, Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name <hervechapelierbags.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2006. On October 12, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On October 12, 2006, Intercosmos Media Group d/b/a directNIC.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 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2006.
The Center appointed Eduardo Machado as the Sole Panelist in this matter on November 21, 2006. 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 owns trademark registrations for the HERVE CHAPELIER mark in France (Registration No. 1 652 670), South Africa (Registrations No. 2000/15 970 18 and No. 2000/15971 25), OHIM (Registration No. 000676320), and in the United States of America (Registrations No. 1728789 and No. 3119843). The Complainant also owns registrations for the following domain names: <hervechapelier.fr>, <herve-chapelier.fr>, <hervechapelier.com>, <herve-chapelier.com>, <hervechapelier.org>, <hervechapelier.net> and <hervechapelier.eu>.
The Complainant’s trademark HERVE CHAPELIER is also a patronymic name. The trademark HERVE CHAPELIER was first used by M. Hervé Chapelier for bags for women in nylon texture and leather in France as early as July 1, 1978, and has been regularly used in particular for men and women since then.
The Complainant’s products and more particularly the bags HERVE CHAPELIER have been sold in a lot of countries such as Germany, United Kingdom, Australia, Austria, Bahrain, Belgium, United States, Hong Kong SAR of China, Italy, Japan, Switzerland and State of Kuwait, as well as in other countries.
The Respondent registered the domain name <hervechapelierbags.com> on November 11, 2005.
5. Parties’ Contentions
(i) The Complainant argues that it is the exclusive owner of the HERVE CHAPELIER trademark, which is also a patronymic name.
(ii) The Complainant argues that the disputed domain name <hervechapelierbags.com> is identical or at least similar to its trademark HERVE CHAPELIER, which is also the patronymic name of Mr. Hervé Chapelier. The simple fact to associate the trademark HERVE CHAPELIER with the common word “bags” which are the “key” products of the Complainant was made only to try to benefit from the international fame of the bags HERVE CHAPELIER and to generate a confusion with the well known trademark and patronymic name HERVE CHAPELIER.
(iii) The Complainant also argues that it has never authorised the Respondent to file in its name a domain name comprising the trademark and patronymic name HERVE CHAPELIER.
(iv) The Complainant argues finally that the Respondent has registered and has been using the domain name in bad faith, as it could not ignore the Complainant’s trademark and patronymic name rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Although the Respondent did not reply, it is proper for the Panel to examine the Complainant’s contentions having regard to both the Policy and the Rules.
Under paragraph 4 (a) of the Policy, the Complainant must prove that each of the following three elements is present in order to prevail:
(i) the domain name is identical or confusingly similar to a trademark 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
The Panel finds that the domain name <hervechapelierbags.com> is confusingly similar to the Complainant’s trademark, which has been used as early as July 1, 1978, and is registered in several countries.
The addition of the word “bags” to the domain name HERVE CHAPELIER is not sufficient to avoid a likelihood of confusion, mainly because bags are the “key” products of the Complainant.
Thus, the Panel finds that the first element of the Policy has been met.
B. Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in the domain name at issue as enumerated in paragraph 4(c) of the Policy. The Complainant has made out a prima facie case that the Respondent lacks rights and legitimate interests in the domain name <hervechapelierbags.com>. The Respondent, by failing to file a Response, did nothing to dispute this contention nor to provide information as to its interests in using the disputed domain name. The fact that the Respondent has made every effort to divert consumers from the Complainant’s website by using a confusingly similar domain name and focusing on similar content, i.e. links to bags, leaves the Panel with the conclusion that the Respondent has no rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes the following particular circumstances in this case:
(i) the Complainant’s trademark has a strong reputation and is widely known;
(ii) the Respondent has provided no evidence whatsoever of any good faith use by it of the disputed domain name, and has not participated in this proceeding even though properly notified thereof;
(iii) the disputed domain name resolves to a commercial website, through which, the Respondent is taking advantage of Internet users, and improperly capitalizing on the reputation and goodwill established by the Complainant over its history.
In light of these circumstances, the Panel makes the reasonable inference that the Respondent was aware of the Complainant and its trademark, patronymic and domain names and that the Respondent registered and is using the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.
The third element of the Policy has been met.
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 <hervechapelierbags.com> be transferred to the Complainant.
Dated: December 5, 2006