The Complainant is Joint Advisers for Perfumery and Cosmetics (JAPCO) Limited, Central, Hong-Kong, SAR of China, represented by Tmark Conseils, France.
The Respondent is Matt Moran, New York, New York, United States of America.
The disputed domain name <sergelutens.net> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2008. On December 31, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 31, 2008, eNom 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” or “UDRP”), 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 January 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2009. The Response was filed with the Center on February 2, 2009.
The Center appointed Mary Padbury as the sole panelist in this matter on February 17, 2009. 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 Complainant is Joint Advisors for Perfumery and Cosmetics (JAPCO) Limited a corporation organized and existing under the laws of Hong Kong SAR of China. The Complainant is the owner of the trademark SERGE LUTENS registered throughout the world and including:
- Community Registration No. 01 337 377, dated October 7, 1999, in classes 3, 14 and 25 notably in relation with Cosmetics; perfumer; fragrances, aftershaves; bathsalts; beauty masks; cosmetic kits, dentifrices, deodorants; eau de cologne; essential oils; make up; hare care and hair styling preparations; lipsticks; soaps; toiletries; toilet water.
- US Registration No. 2842066, dated February 9, 2000, in classes 3, 14 and 25, notably in relation with cosmetics, perfumery and frangrances, personal deodorants, essential oils for personal use.
- Japanese Registration No. 0003343018, dated June 15, 1995 (renewed), in class 3 notably in relation with cosmetics.
The trade mark SERGE LUTENS is based on the name of a well know person (see “www.sergelutens.com”) who, has, among other things, conceived his own brand perfumes.
The Respondent, Matt Moran, states in his response that he is in the business of registering expired or non-renewed domain names. He indicates in his response that he uses a search engine to analyze traffic and buys selected domain names via domain auctions with a bidding process.
The Complainant contents that the domain name registered by the Respondent is identical to a trademark in which the Complainant has rights.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant notes that it has searched and found no evidence that the Respondent has used or made preparations to use the disputed domain name in connection with the bona fide offering of goods or services or that the Respondent has been commonly known by the disputed domain name or that the Respondent is making a legitimate non-commercial fair use of the disputed domain name.
Lastly, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the trade mark SERGE LUTENS is well known throughout the world in relation to perfumes and cosmetics. Reference is made to the website “www.sergelutens.com”. This includes information about the creator, its artistic work and its products. The Complainant asserts that the Respondent must have known of the trade mark SERGE LUTENS at the time of the registration of the disputed domain name due to the fact that the mark is well known. In relation to bad faith the Complainant notes that the Respondent offers the domain name in dispute for sale to the general public. The website “www.sergelutens.net” notes “This domain may be for sale”. A copy of the first page of the Respondent's website is annex-4 to the Complaint. The Complainant notes that Internet users can find several links to various websites related to perfumes and cosmetics on this website.
The Complainant contends that such use should be considered neither as a bona fide offering of goods or services nor as a legitimate non-commercial fair use of the disputed domain name. Rather, the use involved shows that the Respondent is not interested in using the disputed domain name in connection with any legitimate purpose. Reference is made to Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044; F. Hoffmann-La Roche AG v. Titan Net, WIPO Case No. D2006-0424.
The Complainant asserts that the Respondent makes illegitimate use of disputed domain name by intentionally attempting to create a likelihood of confusion with the Complainant's mark SERGE LUTENS.
The response takes the form of an email received by the Center the text of which is as follows, excluding copies of pages showing the apparent availability of the disputed domain name for registration:
I have received your claim about <sergelutens.net>
I am responding late due to the fact that I am back from a medical procedure, and I was not in good health (71 years old).
In respond to your request, I am responding as follow:
There are over 30,000 COM/NET/ORG domains expire and non-renewed daily
A second window will self explain the abandoned domain name; please look at the difference between your domain name sergelutens.com;
I am utilizing an automate search that is analyzing traffic generated by these domains and buy selected domains via domain auctions with a bidding process such as
Pool.com, NmaeJet.com, Snapnames.com, Domainsbot.com and others.
In 99% of the cases, there is no problem with a previous owner since these domains were abandoned and not renewed on purpose.
After a search for sergelutens I am getting no records for this domain!! ..
Sometimes, since the technology is not perfect, the system I am using may buy certain domains which may potentially have a conflict.
I will be willing to transfer this domain to your client at no charge once you remove your complaint.
New York, January 8 2009”
The Panel must decide a complaint on the basis of the statements in documents submitted and in accordance with the Policy, the Rules and the Supplementary Rules. The Complainant has the onus of proving three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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 disputed domain name <sergelutens.net> is identical or confusingly similar to the trade-mark SERGE LUTENS. The disputed domain name incorporates the Complainant's trade mark in its entirety with the addition of “.net” which does not preclude confusion (see National City Corporation v. MH Networks LLC, WIPO Case No. D2004-0128 and Baudville, Inc. v. Henry Chan, WIPO Case No. D2004-0059).
B. Rights or Legitimate Interests
The Panel must decide whether the Respondent has any rights or legitimate interests to the domain name. In doing so, regard may be had to circumstances which might demonstrate this as follows:
(i) before notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or
(iii) the respondent, making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the contention of the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name. The use of a domain name which is confusingly similar to the Complainant's trade mark for a site which offers domain names for sale and displays sponsored links to competitors of the Complainant cannot in the circumstances of this case be considered to be bona fide. There is no evidence that the Respondent, as an individual, business of other organization has been commonly known by the domain name. It is apparent that the Respondent's use is commercial.
The Panel is satisfied that the domain name was registered and is being used in bad faith. The following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith, paragraph 4(b) of the Policy:
(i) circumstances indicating that the Respondent has registered 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 for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in domain name in a corresponding domain name, provided the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product of service on your website or location.
It appears that the Respondent has registered the domain name for the purpose of selling the domain name registration to the Complainant who is the owner of the trade mark, or otherwise profiting from the fame of the Complainant's well known trade mark. It is less clear on the present record that the Respondent proposes to do so for an amount in excess of the Respondent's out of pocket costs directly related to the domain name. The Respondent's statement in the letter quoted above appears to suggest a willingness to transfer the domain name to the Complainant at no charge only after the complaint is “removed”. This may simply be a ruse, or it may be a genuine offer to transfer at no cost; but if the latter, why make the offer contingent on the removal of the Complaint? Why not simply offer to transfer the disputed domain name to the Complainant? In any case, the Panel is satisfied on the present record that the Respondent knew of the Complainant's SERGE LUTENS trade mark, and registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a domain name in a corresponding domain name. The Respondent also appears to be engaged in the business of registering domain names. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on your website or location. As such the Panel finds evidence of registration and use 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 <sergelutens.net> be transferred to the Complainant.
Dated: 18 March, 2009