The Complainant is Baccarat SA of Baccarat, France, represented by Meyer & Partenaires, France.
The Respondent is Vine and Weaver of Ashland, Oregon, United States of America.
The disputed domain name <glass-baccarat.info> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2010. On April 14, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 14, 2010, GoDaddy.com, Inc. 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 April 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 6, 2010.
The Center appointed The Hon Neil Brown QC as the sole panelist in this matter on May 19, 2010. 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.
Some of the following statements are taken from the Complaint.
The Complainant is a very famous manufacturer of crystal products and it has been engaged in that business since 1764. The Complainant sells its products worldwide, including in Oregon in the United States of America where the Respondent is located.
The Complainant's earliest trademark registration was on December 29, 1860 when it became the registered owner of the trademark for BACCARAT in France. Since then, the Complainant has become and is now the registered owner of many trademarks for BACCARAT, including:
(a) trademark registered number 73182634, registered with the United States Patent and Trademark Office (“USPTO”) on February 12, 1980 for BACCARAT with respect to glasses among other goods; and
(b) trademark registered number 1265222, registered with USPTO on January 24, 1984 for a design mark for BACCARAT CRISTAL in class 33 relating to crystal decanters and flasks.
Several UDRP decisions have acknowledged that the BACCARAT mark is well-known. One of the more recent of those decisions was, BACCARAT SA v. CR Galleries, WIPO Case No. D2009-0378, where the panel noted and endorsed that fact by observing:
“...- 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 is a Limited Liability company incorporated under the law of the State of Oregon and it registered the domain name on February 10, 2010.
According to the information provided by the concerned registrar, the Administrative contact for the registration of the domain name and the Respondent both share the same address.
The Complainant alleges that the domain name <glass-baccarat.info> should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant's registered trademarks, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered BACCARAT trademarks to which reference has already been made. It then says that the domain name <glass-baccarat.info> is confusingly similar to the BACCARAT marks as the spelling of that word in the domain name is the same as the spelling of the same word in the trademarks with the preceding addition of one of the Complainant's products, namely glass, which is at the same time a word widely recognised as being associated with crystal.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name, because the facts show an obvious intention by the Respondent to benefit from the reputation of the well-known BACCARAT mark and to use it in an illegitimate way, namely by using it to promote the products of the Complainant and Complainant's competitors as a means of earning “click through” revenue.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. In support of this proposition, the Complainant submits that the BACCARAT trademark is very well-known, the Respondent has registered a domain name consisting solely of that trademark, together with a word that immediately connotes the Complainant's products and that the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website 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 locations or of a product or service on the website or location in breach of paragraph 4(b)(iv) of the Policy.
The Respondent did not file a Response to the Complaint. However, the Administrative contact for the registration sent an email to the Complainant's lawyers on April 15, 2010, the terms of which were as follows:
When I purchased the domain name glass-baccarat.info I didn't realize it could be a problem. I thought it would send traffic to your sites and I would get a few pennies along the way. I soon as I heard of the dispute, I took the site down immediately.
I would like to cancel or transfer the domain ASAP. How do we proceed?
I am just a college student trying to earn extra money for school. I am sorry for any trouble it has caused.
As well as the email referred to above, the Administrative contact sent a further communication to the Complainant's lawyers on May 19, 2010 expressing a willingness to transfer the domain name to the Complainant. The Panel has therefore considered whether it should simply make an order for the transfer of the domain name, rather than proceed to examine each of the three elements prescribed in paragraph 4(a). Panels have followed both of these courses. In this case, the Panel will proceed to make the normal examination in view of the fact that there are several issues in the proceeding that deserve examination and decision.
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not filed a formal Response does not avoid the necessity of examining the issues and of doing so in the light of the evidence, including the two communications from the Respondent referred to above. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that a complainant must show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(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.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
The Panel accepts the evidence submitted by the Complainant that it owns the registered BACCARAT trademarks to which reference has been made, that they are all current and that the Complainant therefore has rights in those marks (collectively referred to as “the BACCARAT marks”).
The Panel also finds that the disputed domain name is confusingly similar to the BACCARAT marks. The spelling of the substantial part of the domain name is the same as that of the mark; all that has been done to create the domain name is to add to the BACCARAT marks, a word that describes what is widely known as one of the Complainant's products, namely glass, which makes the domain name confusingly similar to the specific BACCARAT mark. The domain name is also confusingly similar to the BACCARAT CRISTAL mark as glass is a product widely recognised as being associated with crystal and the word “cristal” is instantly recognised as the equivalent of the English word “crystal”.
Moreover, the objective bystander, faced with the domain name and the BACCARAT marks, would assume that the domain name was referring to the well-known manufacturer of crystal and glass as well as other prestigious products that are sold under the trademark, including the very product whose designation is part of the domain name. That same principle has been applied in many UDRP decisions on analogous facts, such as the decision cited by the Complainant, Speedo Holdings B.V. v. Speedo Boyz, WIPO Case No. D2003-0439 and Sony Kabushiki Kaisha, also trading as Sony Corporation v. Richard Mandanice, WIPO Case No. D2004-1046, where, in the latter case, the addition to the SONY trademark of its product designated as Z5, was held to show that the domain name thus created, <sony-z5.com>, was confusingly similar to the trademark.
It has also long been held that suffixes such as the gTLD suffix “.info” cannot negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the Complainant has therefore made out the first of the three elements that it must establish.
Under paragraph 4(a) (ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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”.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.
The Panel's task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until May 5, 2010 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default. The Respondent did not file a formal Response, but the Administrative contact, purporting to act on behalf of the Respondent had earlier sent the email to the Complainant's lawyers that is set out above and of course the Panel will take that email into account as an expression of the position of the Respondent.
It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
The prima facie case is based on the facts that:
(i) the BACCARAT marks are well-known internationally and are one of the oldest and most prestigious trademarks in the world;
(ii) they indicate the name of a well-known manufacturer and provider of crystal, glass and other related products including in Oregon in the United States of America where the Respondent is domiciled;
(iii) the Respondent chose this prominent name for its domain name and added only a word that describes what is widely known as one of the Complainant's products, namely glass, a word that is also associated with the Complainant's principal product, namely crystal;
(v) the Respondent was not authorized by the Complainant to use the BACCARAT name or marks in a domain name or anywhere else; and
(vi) the Respondent has clearly been using the domain name for an illegitimate purpose, among others, namely to promote the products of the Complainant's competitors.
The Administrative contact has explained her intention in registering the domain name, ostensibly on behalf of the Respondent, namely to make money, albeit a small amount of money to help her with her studies. For present purposes it must be said that this explanation does not rebut the prima facie case that the Respondent does not have a right or legitimate interest in the domain name, for to use another person's trademark without permission and to use it to make money is not a right and cannot be considered as a legitimate interest under the Policy.
The Panel finds that the Complainant has therefore made out the second of the three elements that it must establish.
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or acquired 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 of that complainant, for valuable consideration in excess of the respondent's documented 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 a corresponding domain name, provided that 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, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's 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 the site or location”.
The Complainant relies on paragraph 4(b)(i) and (iv) of the Policy and also on the general notion of bad faith, which it is clearly entitled to do, for there have been many UDRP decisions that have held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy.
The Panel finds that the evidence submitted by the Complainant makes out a strong case that the Respondent both registered and is using the domain name in bad faith.
The case may not be one that comes within the provisions of paragraph 4(b)(i) of the Policy, for it may be that the Respondent's primary intention was not to sell the domain name, but to continue to own and use it to make money. But even if that were so, the BACCARAT mark and name are so well-known that it must be concluded that, in registering the domain name the Respondent knew that it was appropriating a well-known trademark without permission. Such conduct amounts to registration of a domain name in bad faith, as was confirmed in the case cited by the Complainant, Arthur Guinness Son & Co. (Dublin) Limited v. Steel Vertigogo, WIPO Case No. D2001-0020.
It is also clear that the Respondent's intention in both registering and using the domain name was, as the Administrative contact has stated, to use it to make money by using it for a website on the Internet. In fact, the totality of the evidence brings the case squarely within the provisions of paragraph 4(b)(iv) of the Policy. That is so for the following reasons.
The evidence shows, first, that the Respondent registered as a domain name the Complainant's well known BACCARAT marks to which it added only a word that describes what is widely known as one of the Complainant's products, namely glass, a word that is also associated with the Complainant's principal product, namely crystal.
Secondly, the Respondent has then used the domain name to provide links to a website which, on the evidence annexed to the Complaint, advertises the Complainant's products, but also similar products provided by its competitors. Nor are these links occasional happenings, for on the face of the website it is made plain that they are provided by the advanced commercial links service provided by Speedlings.com. The Administrative contact's concession in the above email confirms that her intention in using the domain name in the manner just described was to make money, albeit, as she claims, a small amount and to help her through her studies. Even giving the Respondent the benefit of the doubt on those two aspects, it is clear that such actions were wrong.
That conclusion makes it clear that the facts of the present case bring it squarely within the provisions of Paragraph 4(b)(iv) of the Policy, for it shows that the Respondent was using the BACCARAT marks to attract visitors to its website by generating confusion as to whether it was an official Baccarat site or not. Such a conclusion is justified by the words of the Policy, a view confirmed in many UDRP decisions, some of which, such as Asian World of Martial Arts Inc. v. Texas International Property Associated, WIPO Case No. D2007-1415, are cited by the Complainant.
The Panel therefore finds that the Respondent has registered and used the domain name in bad faith.
The Panel finds that the Complainant has thus made out the third of the three elements that it must establish under the Policy.
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 <glass-baccarat.info> be transferred to the Complainant.
The Hon Neil Brown QC
Dated: May 25, 2010