The Complainant is Artemides Holdings Pty Ltd of Abbotsford, Victoria, Australia, represented by Griffith Hack Patent and Trade Mark, Australia.
The Respondent is Gregory Ricks of College Station, Texas, United States of America.
The disputed domain name <bardot.com> is registered with Moniker Online Services, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2008 electronically and on August 29, 2008 in hardcopy. The Respondent named in the Complaint was Gee Whiz Domains Privacy Service. On August 18, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On August 18, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that Gee Whiz Domains Privacy Service was listed as the registrant and providing the contact details. On August 21, 2008, the Center received another email from Moniker Online Services, LLC stating that the domain name was previously covered by a third party privacy service that had been removed and that the disputed domain name is registered in the name of Mr. Gregory Ricks. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 27, 2008. The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 2, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 23, 2008.
The Center appointed Brigitte Joppich as the sole panelist in this matter on September 30, 2008. 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 paragraph 7 of the Rules.
On September 25, 2008, the Center received a supplemental submission from the Complainant. The Center acknowledged receipt of this submission on September 26, 2008 and forwarded it to the Panel on request on October 13, 2008.
On October 14, 2008, the Panel issued Procedural Order No. 1 to the parties, requesting the Complainant to submit further evidence regarding the issue of bad faith registration (as distinct from bad faith use). In particular, the Complainant was invited to supply evidence as to why the Respondent should have known of the Complainant's trademark rights at the time of the registration of the disputed domain name <bardot.com>. The Complainant filed a supplemental submission in reply to Procedural Order No. 1 within the set time frame, whereas the Respondent, who had been invited to submit a reply thereto, did not respond to the Complainant's further supplemental submission.
The Complainant in this proceeding was established in 1996 and is the parent company of Bardot Pty Ltd (“Bardot”), a trading company incorporated in Australia also in 1996. Bardot operates 25 stores all over Australia and sells its products through third parties in Australia. The Complainant owns numerous domain names incorporating the name “Bardot” and operates a website at “www.bardot.com.au”. Furthermore, the Complainant has developed an online store at “www.bardot.net.au” attracting a national as well as international clientele. The annual turnover for the BARDOT brand is around AUD 30 million. The advertising expenditure relating to the two most recent marketing campaigns amounted to approximately AUD 1 million.
The Complainant is the proprietor of numerous trademark applications and registrations for the marks BARDOT, BARDOT GIRL and BABY BARDOT in many countries worldwide, inter alia in Australia, New Zealand, Canada, Japan, Singapore, the United Kingdom of Great Britain and Northern Ireland, Indonesia and South Africa, covering mainly goods in international classes 14 and 25. Many of the Complainant's trademarks were registered or applied for after the Respondent registered the disputed domain name on May 15, 2000. However, some of the Complainant's trademarks predate the registration of the disputed domain name, namely Australian trademark No. 780055 BARDOT GIRL with priority of December 3, 1998, Australian trademark No. 804337 BARDOT with priority of August 20, 1999, Australian trademark No. 822876 BARDOT with priority of February 9, 2000, Australian trademark No. 823512 BARDOT GIRL with priority of February 15, 2000, New Zealand trademark No. 614981 BARDOT with priority of November 23, 2000 and New Zealand trademark No. 614982 BARDOT with priority of November 23, 2000 (the “BARDOT Marks”).
It appears from the record that the Respondent registered the disputed domain name on May 15, 2000. The identity of the Respondent was originally protected by a privacy shield. Having been informed of the Complaint by the Center, the registrar identified Gregory Ricks as the underlying registrant of the disputed domain name. Therefore, the Panel is satisfied that Gregory Ricks is the owner of such domain name and will treat Gregory Ricks as the sole Respondent in this administrative proceeding.
The Respondent operates a parking website at “www.bardot.com”.
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The domain name is confusingly similar to the Complainant's BARDOT Marks and the gTLD “.com” does not affect the assessment that a domain name is confusingly similar to a particular trademark.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as he has no connection with the Complainant or the BARDOT Marks, since he has not been licensed or authorized by the Complainant to use the disputed domain name, and since he neither bears the name BARDOT nor has been commonly known by such name or the disputed domain name. Furthermore, the Complainant contends that it is not aware of any trademarks in which the Respondent may have rights that are identical or similar to the disputed domain name, that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name, and that the Respondent is intentionally engaging in a conduct misleading consumers by creating the impression that the use of the domain name is authorized by the Complainant.
(3) The Complainant finally contends that the domain name was registered and is being used in bad faith.
With regard to bad faith registration of the domain name, the Complainant contends that the Respondent has registered the disputed domain name primarily for the purpose of disrupting the Complainant's business and with the primary aim of diverting Internet traffic intended for the Complainant to the Respondent's website containing sponsored links. Furthermore, the Complainant contends that it is unlikely that the Respondent was not aware of the BARDOT Marks in view of its high profile status in the fashion industry and that the choice of the Respondent's domain name is in itself evidence of the Respondent's knowledge of the BARDOT Marks. The Complainant finally contends that the Respondent's “willful blindness” in registering a domain name without having done any searches and in apparent disregard of third-party rights constitutes bad faith under the Policy, while the website at the disputed domain name referring to the Complainant's marks reveals that the Respondent was aware of the Complainant's BARDOT Marks.
With regard to bad faith use, the Complainant contends that the website at “www.bardot.com” consists of a standard linking page containing sponsored links and that the Respondent has, by using the disputed domain name and pursuant to paragraph 4(b)(iv) of the Policy, intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainant's BARDOT Marks. Moreover, the Complainant contends that the Respondent has been a party in numerous proceedings issued under the Policy and that he therefore acted in a pattern of registering domain names identical or confusingly similar to third parties' trademarks. Finally, the Complainant contends that the Respondent offered the disputed domain name to the Complainant through a solicitor for the sum of USD 75,000 and, after the Complainant made a counter offer in the amount of USD 10,000, for the sum of USD 25,000, which shows that the Respondent registered the disputed domain name primarily to sell it to the Complainant for an amount that exceeds the Respondent's out-of-pocket costs related to the domain name, thereby acting in bad faith.
The Respondent did not reply to the Complainant's contentions.
The first point to be discussed is the admissibility of the first supplemental submission filed by the Complainant. The Rules do not allow the parties to file supplemental submissions on their own volition and paragraph 12 of the Rules provides that a panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admission of additional arguments or evidence.
One of the grounds justifying new submissions is the existence of new pertinent facts that did not arise until after the complaint was filed. For instance, if the respondent raises objections that could not have been anticipated when the complaint was filed, the panel can give the complainant a right to reply to the submission or may accept the complainant's unsolicited additional submission (see Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; QNX Software Systems Ltd. v. Future Media Architects, Inc. and Thunayan K AL-Ghanim, WIPO Case No. D2003-0921; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151).
The Complainant provided evidence that the disputed domain name was offered to him by the Respondent for sale on September 3, 2008 i.e. after the Complaint was filed with the Center. This is a new fact sufficiently justifying the acceptance of the supplemental submission by the Panel. The supplemental submission has therefore been taken into consideration when drafting this administrative decision.
The second point to be dealt with is the Panel's Order, in which the Complainant was requested to submit further evidence regarding the issue of bad faith registration. Although both parties are requested to submit all facts with regard to an administrative proceeding themselves, it is consensus view that the Panel can issue a panel order to the parties if it feels that it requires further information to make a decision in a proceeding (cf. Fredericia Furniture A/S v. Belize Domain Whois Service Lt, WIPO Case No. D2007-1515; AshBritt, Inc. v. Arborturf, WIPO Case No. D2005-0657; Multi-Vet Ltd. v. PW/ Budget Pet, WIPO Case No. D2008-0559; Gulf Air v. American Global Trading Network, WIPO Case No. D2007-0438).
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to a trademark 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.
The disputed domain name fully incorporates the Complainant's distinctive BARDOT Marks in which the Complainant has exclusive rights.
It is well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
In the light of the Panel's finding under the head of “Bad Faith” (cf. 6.C. below) it is not necessary for the Panel to come to a decision in this regard.
The two parts of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (cf. also Telstra Corporation Limited v. Adult Web Development and Telstraexposed, WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle, WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang, WIPO Case No. D2003-0758).
On the balance of evidence in this case, the Panel is not convinced that the domain name was registered by the Respondent in bad faith, mainly for two reasons:
Firstly, the Complainant provided evidence that it was the registered owner of trademark rights in Australia and New Zealand only, at the time of the registration of the disputed domain name by the Respondent, who is located in the United States of America. The Complainant has neither demonstrated business activities in the United States of America in the year 2000, when the disputed domain name was registered, nor contented that it was well known in the United States of America then (or even is well known there now). The Complainant's annual turnover for the BARDOT brand and its advertising expenditure relating to such mark as evidenced do not cover a period of time around the date of the registration of the disputed domain name but only much more recent periods. In the Panel's view, the Complainant's submissions are not sufficient to establish that the Respondent knew of the Complainant's trademark rights (or website) in 2000 and that he registered the disputed domain name in bad faith.
Secondly, the name “Bardot” also is a common French family name, often connected to the famous French actress Brigitte Bardot. The Respondent may well have had reasons for registering the disputed domain name other than the Complainant's trademark rights. Although the Panel is satisfied that the Respondent cannot rely on rights of its own in the name “Bardot” and is aware that the registration and use of the domain name may infringe third parties' rights, the Panel is not convinced that the Respondent acted in bad faith with specific regard to the Complainant's marks (as required by the Policy) when he registered the disputed domain name on May 15, 2000.
Accordingly, the Panel concludes that the first condition of the third requirement of the Policy has not been established. This Complaint must therefore be rejected.
For all the foregoing reasons, the Complaint is denied.
Dated: October 29, 2008