The Complainant is BACCARAT SA of France, represented by MEYER & Partenaires of France.
The Respondent is CR Galleries of New Jersey, United States of America, represented by Shlomo Tsadok of United States of America.
The disputed domain name <baccaratcrystal.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2009. On March 23, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On March 23, 2009, 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 March 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2009. The Response was filed with the Center on April 2, 2009.
The Center appointed James A. Barker as the sole panelist in this matter on April 16, 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, formerly known as the Compagnie des Cristalleries de Baccarat, is a worldwide famous manufacturer of crystal wares since 1764. The Complainant sells its products worldwide and, including in the United States where the Respondent is located.
The Complainant operates websites at “www.baccarat.fr” and “www.baccarat.com”, displaying historical information about the Company, collections, and the location of its showrooms worldwide. The Complainant has registered other domain names in connection with its business, including <cristaldebaccarat.com>, <crystalbaccarat.com>, <baccarat-crystal.com>, <crystal-baccarat.com>, <baccaratcrystaljewelry.com>, and <baccaratcrystals.com>.
The Complainant's first trademark registration dates from December 29, 1860 for BACCARAT in France. That trademark is still in force and was last renewed on April 4, 1999. The Complainant is otherwise the right holder of more than 700 trademarks across the world, including US trademark registration 1265222 for a design mark for BACCARAT CRISTAL in class 33 relating to crystal decanters and flasks. That mark was registered in March, 1984 on the principal register of the USPTO. The registration disclaims the exclusive right to use the word “France” and “cristal” apart from their appearance in the mark. The Complainant is also the owner of US registered word mark 1130893 for BACCARAT in class 21 relating to crystal wares. That mark was registered in 1980 on the principal register of the USPTO.
Previous decisions under the Policy have accepted that the Complainant's registered BACCARAT mark is well-known. Those include cases, like this one, which combined the word “crystal” with the mark BACCARAT, or other terms associated with the Complainant's products, as follows:
- Baccarat SA v. SeriousNet, WIPO Case No. D2003-0428 <crystalbaccarat.com>. “The Respondent could not have ignored the existence of the Complainant and its well-known reputation and trademark in the field of crystalware when he filed application for registration of the domain name.”
- Baccarat SA v. MSL International, Inc., WIPO Case No. D2005-0048 <crystalbaccarat.com>. “Having considered the evidence submitted with the Complaint, the Panel accepts that the trade mark BACCARAT is well-known worldwide in relation to crystal ware.”
- Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038 <baccaratjewelry.com>. “The Complainant is the legitimate owner of the trademark BACCARAT and has, through its long use acquired a reputation and goodwill with the products it manufactures under this trademark.”
The Respondent provided no explanation of its business or intention in registering the disputed domain name.
The disputed domain name was registered on September 1, 1998. At the date of this decision, it did not revert to an active website.
The Complainant claims that the disputed domain name wholly includes its trademark BACCARAT. It adds only the descriptive term “crystal” which relates to the products manufactured and sold by the Complainant. Adding a descriptive word does not eliminate the identity or at least the similarity between Complainant's registered and well-known trademark and the disputed domain name. On the contrary it strengthens confusion, because of the direct relation between this descriptive word and the main business of the Complainant.
Secondly, the Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. In effect, the Complainant claims that the Respondent cannot demonstrate any of the circumstances set out in paragraph 4(c) of the Policy. The Complainant notes that it conducted a trademark search for “Baccarat” in the United States and found no results indicating that the Respondent has registered any corresponding mark.
Thirdly, the Complainant claims that the disputed domain name was registered and has been used in bad faith. The Respondent could not ignore the existence of the Complainant and its well-known reputation and trademark in the field of crystal wares when it registered the disputed domain name. The Complainant is the only company in the field of crystal ware well-known under the name “Baccarat” worldwide for more than two hundred years. The Complainant claims that the Respondent's passive holding of the disputed domain name is evidence of bad faith.
The Complainant cites various past cases under the Policy to support its case in relation to each of these elements.
The Respondent denies the allegations against it. The Respondent does not directly address the Complainant's arguments in relation to the first and second grounds of the Policy. In relation to the third ground, the Respondent relevantly states that:
“[…] I have engaged in NOT EVEN ONE of the elements which constitute Evidence of Registration AND Use in Bad Faith of a domain name. 1) Domain was registered in 1998 expecting to be able to use it. The domain name WAS NEVER USED because of the new regulations of 1999. 2) I never attempted to sell the domain to anyone including the complainant. 3) No damage was ever caused to complainant because of my ownership of the domain name In conclusion, this complaint has no merit under the rules of ICANN expressed in the UDNDRP and does not qualify under the JURISDICTIONAL BASIS FOR THE ADMINISTRATIVE PROCEEDING requirements.”
The Panel is satisfied that the Policy is applicable to the present dispute. The Panel formed this view on the basis of the Registrar's confirmation which sufficiently indicated that the Policy applies, even though the disputed domain name was first registered in 1998 before the commencement of the Policy in 1999. (The Panel also notes that it is typical for registration agreements incorporating the Policy to apply e.g. annual renewals of domain names.)
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These issues are discussed as follows.
BACCARAT is a very well-known mark in connection with crystal. The Complainant owns registered marks in that connection in various jurisdictions, including the United States where the Respondent has its address.
The Complainant's United States-registered marks prominently include the term BACCARAT. The disputed domain name wholly includes that term, together with the word “crystal”, which is iconicly associated with the Complainant.
The Respondent does not deny that the disputed domain name is confusingly similar to the Complainant's mark. Previous panels (supra), considering the combination of the Complainant's BACCARAT mark with the word “crystal” have found confusing similarity.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant's registered marks.
The Respondent provides no evidence that would support a finding of rights or legitimate interests under paragraph 4(c) of the Policy. At the date of this decision, the disputed domain name does not revert to a website. The Complaint provides evidence that the disputed domain name earlier (at a date not identified) did not refer to a website either. Nothing else in the case file suggested that the Respondent had a right or legitimate interest in the disputed domain name. The Respondent said that it acquired the domain name expecting to use it. But he did not say what for, nor what his legitimate interest might be.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant provided a strong case, supported by substantial evidence, of its rights and the reputation of its marks. The Respondent's case is set out in one paragraph of assertions, with no supporting evidence.
The principal inference for a finding of bad faith is that the Respondent chose the disputed domain name with the Complainant's mark in mind. This inference is easily drawn in this case. The Complainant's mark is well-known. It is well-known in the Respondent's jurisdiction. It is prominently associated with crystal. The Respondent chose to combine the Complainant's mark and the term “crystal” in the domain name. The Respondent provided no evidence of why it did so. Absent evidence to the contrary, the Complainant has established a prima facie case that the Respondent registered the domain name because of its obvious association with the Complainant's mark. The Respondent says that it did not end up using the disputed domain name because of “the new regulations of 1999”. The Panel has inferred that, by this, the Respondent means the Policy which started operation in 1999. If so, this is further evidence that the Respondent was itself aware that its registration of the disputed domain name might give grounds for a challenge under the Policy.
One of the reasons the Respondent denies bad faith is that it never used the disputed domain name. However, it is well settled that a lack of active use is not itself a defense to an allegation of bad faith. The most frequently cited case for this proposition is Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (‘the concept of a domain name “being used in bad faith” is not limited to positive action; inaction is within the concept.') That case is the most frequently cited in complaints and very frequently cited in responses. (See 25 most cited decisions in complaint, and 25 most cited decisions in response, at http://www.wipo.int/amc/en/domains/statistics/)
The Respondent also says that it never tried to sell the disputed domain name. The Panel can accept this. However, this is not itself a defense. The circumstances of this case suggest that the Respondent registered the disputed domain name with the Complainant in mind.
Finally, the Respondent says that its registration did no damage to the Complainant. The Respondent does not spell out what it means by “damage” in this context. Regardless, this is not a strong argument in defense. Under the Policy, the Complainant will succeed if it establishes all three of the elements in paragraph 4(a) of the Policy. There is no separate requirement that the Complainant establish “damage” (however defined). It is also obvious to point out that trademarks are a valuable form of intellectual property. It is implicit in the Policy that the abusive registration of domain names may damage those rights. It is for that reason that the Policy provides a remedy for such activity.
Although the Respondent did not explicitly address it, the Panel also notes that the disputed domain name has been registered by the Respondent for a substantial period: since 1998. There is no evidence that suggests this gives the registration any more legitimacy that if the registration had been held for a short period. Previous panels have found that a delay in bringing a complaint does not itself prevent a complainant from contesting a domain name registration, because the focus is to prevent future confusion. (The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057.)
Accordingly, the Panel finds that the disputed domain name was registered and has been used 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 <baccaratcrystal.com> be transferred to the Complainant.
James A. Barker
Dated: April 30, 2009