WIPO Domain Name Decision: D2007-1077

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fremaux Delorme v. Ohara Gaeteno

Case No. D2007-1077

1. The Parties

The Complainant is Fremaux Delorme, of Paris, France, represented by Cabinet Dreyfus & Associés, France.

The Respondent is Ohara Gaeteno, of Dallas, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <yvesdelorme.biz> is registered with Melbourne IT trading as Internet Names Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2007. On July 24, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On July 26, 2007, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 August 2, 2007. In accordance with the Rules, Paragraph 5(a), the due date for Response was August 22, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2007.

The Center appointed Masato Dogauchi as the sole panelist in this matter on September 3, 2007. 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 a 160 year-old French company specializing in luxury bedding, towels, tablecloths, lingerie, robes, toiletries, and home accessories. YVES DELORME is one of the principle brands under which the Complainant exercises its activity.

The Complainant is the owner of, at least, following trademarks YVES DELORME:

– American Trademark YVES DELORME n◦ 1837935 registered on May 31, 1994;

– American Trademark YVES DELORME n◦ 1814967 registered on January 4, 1994;

– American Trademark YVES DELORME n◦ 2249995 registered on June 1, 1999;

– American Trademark YVES DELORME n◦ 2307680 registered on January 11, 2000;

– American Trademark YVES DELORME n◦ 2554632 registered on January 8, 2002;

– American Trademark YVES DELORME n◦ 2629900 registered on October 8, 2002;

– American Trademark YVES DELORME n◦ 2889932 registered on September 28, 2004;

– International Trademark YVES DELORME n◦ 690659, registered on December 15, 1997 for products in classes 18, 20, 24 and 25;

– International Trademark YVES DELORME n◦ 725264, registered on December 21, 1999 for products in class 21;

– International Trademark YVES DELORME n◦ 774763, registered on January 3, 2002 for products in class 3;

– International Trademark YVES DELORME n◦ 798390, registered on February 12, 2003 for products in class 20.

The Respondent is a person who registered the disputed domain name <yvesdelorme.biz> with Melbourne IT trading as Internet Names Worldwide on October 26, 2005. According to the Registrar, this registration is maintained and the expiration date is October 25, 2010. The registration agreement provides that the registrant, the Respondent, submits to the jurisdiction of the courts as provided in the UDRP Dispute Policy. The Complainant (in its mutual jurisdiction election in the Complaint) chose “the location of the domain name holder’s address”. The registered address of the Respondent under the agreement is in Texas, the United States of America. The language of the agreement is English.

5. Parties’ Contentions

A. Complainant

With regard to the first requirement (Paragraph 4(a)(i) of the Policy) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Complainant asserts that the domain name reproduces precisely and totally the Complainant’s trademark YVES DELORME registered in various ways. It also asserts that the mere adjunction of the gTLD “.biz” does not change the likelihood of confusion.

With regard to the second requirement (Paragraph 4(a)(ii) of the Policy) that the Respondent has no rights or legitimate interests in respect of the domain name, the Complainant asserts that the Respondent is not affiliated with the Complainant and the Complainant has not authorized the Respondent to use the trademark including registration of any domain name incorporating the trademark. The Respondent did not demonstrate any rights or legitimate interests regarding the domain name.

With regard to the third requirement (Paragraph 4(a)(iii) of the Policy) that the domain name was registered and used in bad faith, the Complainant asserts as follows:

– It seems obvious that the Respondent knew or must have known the Complainant at the time it registered the domain name, since the trademark is well-known world wide especially in the United States of America. Besides, the Complainant manages several stores in Texas where Respondent is domiciled.

– It is obvious that the Respondent registered the domain name in dispute on purpose to disrupt the Complainant’s business, as the domain name <yvesdelorme.biz> is linked to the website of “Bliss Linen” which offers to sell bed linens and home accessories identical to those offered by the Complainant.

– The Complainant sent a cease and desist letter dated November 3, 2005 to the Respondent asking him to transfer amicably the disputed domain name based on trademarks rights. The Respondent answered on the same day that it would cancel the domain name. The Complainant answered that it prefers to transfer the domain name. The Respondent answered on November 4, 2005 that he already canceled the domain name. However, the Complainant discovered that the domain name was still registered by the Respondent. The Complainant sent an email to the Respondent on November 9, 2005 to remind him that the domain name was not canceled and to ask him to provide more details concerning its actual position regarding the disputed domain name. Despite the Complainant reminders, the Respondent did not provide an answer. This lack of response constitutes an additional evidence of the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

As the registration agreement of the domain name <yvesdelorme.biz> incorporates the Policy, this proceeding is to be done in accordance with, in addition to the Policy, the Rules and Supplemental Rules.

This Panel was properly formulated in accordance with the Policy and has jurisdiction to decide the dispute over the domain name. And, as the domain name registration agreement in this case is in English, the language of this proceeding is to in English in accordance with Paragraph 11 of the Rules.

The Panel has found that the procedural steps taken by the WIPO Center are in compliance with the provisions of the Rules. Notwithstanding the fact that the Respondent did not submit any statement within the time periods under the Rules, the Panel will proceed to a decision on the Complaint in accordance with Paragraph 14 of the Rules.

With regard to the merits of the case, according to the Paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements are present:

– The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (“Identical or Confusingly Similar”);

– The Respondent has no rights or legitimate interests in respect of the domain name (Rights or Legitimate Interests);

– The domain name was registered and used in bad faith (Registered and Used in Bad Faith).

The Panel will verify these elements on account of the evidences submitted by the Complainant only, since the Respondent did not respond nor submit anything at all.

A. Identical or Confusingly Similar

The Complainant has proved to have rights in the trademark YVES DELORME, which is registered, at least, in the United States of America.

The disputed domain name only differs from the trademark in that the gTLD “.biz” is added to the domain name. According to the consistent practice of Panels under the UDRP, this difference is irrelevant.

The Panel concludes that the domain name is identical or, at least, confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

There is no evidence to show that the Complainant has authorized the Respondent to register or use the trademark YVES DELORME as a domain name. According to the website to which the domain name is linked, there is no indication showing any rights or legitimate interests of the Respondent in respect of the domain name.

The Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

According to the Paragraph 4(a)(iii) of the Policy, both bad faith registration and bad faith use must be fulfilled.

In respect of the bad faith registration, it is noted that the Complainant a 160 year-old French company, which has started its linen business since 1845, first as a manufacturer and at present also as a distributor thereof. The first trademark YVES DELORME in the United States of America is n◦ 1814967 registered by the Complainant on January 4, 1994. The Complainant submitted some copies of advertisement distributed in the United States of America. The Complainant also submitted the evidence showing that it manages several stores in Texas, and at least four stores name of which are “Yves Delorme”. Considering that the registered address of the Respondent under the registration agreement of the domain name is in Texas, it appears likely that the Respondent had prior knowledge of the name of YVES DELORME when the Respondent registered the domain name on October 26, 2005.

In addition, on November 3, 2005, in response to the e-mail from the Complainant’s representative asking the Respondent to transfer amicably the disputed domain name because “it [the registration and use of the domain name www.yvesdelorme.biz] constitutes a registration and use in bad faith as it could lead average consumers to think that your domain name is related to the Official Yves Delorme’s website”, the Respondent quickly answered on the same day that “Dear Sirs we will cancel our ownership of this site ASAP Thank you!”. And, in response to the e-mail on November 4, 2005 from the Complainant’s representative asking transfer of the domain name rather than cancel thereof, the Respondent answered on the same day that “I am sorry but we canceled ownership directly after our last e-mail was sent”. It appears that the domain name has not yet been cancelled in fact. The fact that the Respondent did not inquire why the Complainant had privilege over the name further indicates that the Respondent likely registered the domain knowing that the legitimate owner of the name was the Complainant.

In respect of the bad faith use, the fact that the domain name is linked to the website of “Bliss Linen” which offers to sell bed linen and home accessories similar to (and in apparent competition with) those offered by the Complainant amply shows the Respondent uses the domain name in bad faith, since visitors to the Respondent’s website are easily misled to believe that they have arrived at the Complainant’s website.

Accordingly, the Panel concludes that the domain name was registered and used in bad faith.

7. Decision

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, <yvesdelorme.biz> be transferred to the Complainant.

Masato Dogauchi
Sole Panelist

Dated: September 17, 2007