WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baccarat SA v. Hiro
Case No. D2010-1315
1. The Parties
The Complainant is Baccarat SA of Baccarat, France, represented by MEYER & Partenaires, France.
The Respondent is Hiro of Osaka, Japan.
2. The Domain Name and Registrar
The disputed domain name <baccarat-love.com> is registered with Melbourne IT Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2010. On August 5, 2010, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On August 9, 2010, Melbourne IT Ltd 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 August 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2010.
The Center appointed Enrique Ochoa de González Argüelles as the sole panelist in this matter on September 15, 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.
4. Factual Background
The Complainant, formerly known as the Compagnie des cristalleries de Baccarat, is a famous manufacturer of crystal wares and it has been engaged in this business since 1764. The Complainant sells its products worldwide, including in Japan, where the Respondent seems to be located.
The Complainant has started to register its trademarks in 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 all over the world including Japan as indicated below:
(a) Japanese trademark registration number 2’700,602 for BACCARAT CRYSTAL (+Logo) in class 33 for crystal decanters and flasks, filed September 17, 1980, last renewed December 22, 2004.
(b) Japanese trademark registration number 1’907,200 for BACCARAT + katakama transcription in classes 11, 20 and 21 including crystal wares, filed October 21, 1983, last renewed October 24, 2006.
(c) Japanese trademark registration number 2’331,063 for BACCARAT in classes 14, 20, 21 and 24 for jewelry and crystal ware, filed July 30, 1985, last renewed September 25, 2001.
Several UDRP decisions have acknowledged that the BACCARAT mark is well-known (see in this sense Baccarat SA v. CR Galleries, WIPO Case No. D2009-0378, Baccarat SA v. SeriousNet, WIPO Case No. D2003-0428, Baccarat SA v. Value Domain Com, WIPO Case No. D2009-1186, Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038.
The Respondent is, according to the Melbourne IT WhoIs records, located in Osaka, Japan.
The disputed domain name was registered on March 31, 2010.
5. Parties’ Contentions
The Complainant contends that:
- Respondent made an abusive registration and use of the domain name <baccarat-love.com>.
- Baccarat SA is a worldwide famous manufacturer of crystal wares since 1764 and operates a web portal located at ”www.baccarat.fr” and ”www.baccarat.com”, displaying historical information about the Company, collections, showrooms, etc.
- Baccarat’s websites located at ”www.baccarat.co.jp” and ”www.baccarat.jp” are especially dedicated to the Complainant’s activity in Japan. Baccarat’s products are available in 45 points of sale throughout Japan and specifically 6 boutiques and department stores in Osaka, where the Respondent is located.
- The Respondent has no relationship with the Complainant.
- The disputed domain name points to a commercial website which offers for sale most of Baccarat’s tableware items collections, with discounted prices and to promote third party and competing products.
- The Complainant is the holder of more than 700 trademarks across the world, especially 29 in Japan.
- The domain name is identical or confusingly similar to the Complainant's trademark as it entirely reproduces the Complainant's trademark BACARRAT in combination with different terms descriptive and/or generic or of other kind.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name as it has no legitimate connection with the trademark BACARRAT.
- The Respondent has no right or legitimate interests in respect of the disputed domain names as it does not use the domain names in connection with bona fide offering of goods and services.
- The Respondent registered the disputed domain name in bad faith, knowing the fame of the BACARRAT trademark and the Complainant's business in crystal ware.
- The Respondent is engaged in a pattern of registrations where the Respondent registered domain names which correspond to well-known trademarks in which same has no apparent right. Furthermore, the Respondent is the holder of <lecreuset-love.com> and <tenga-love.com>, domain names which redirect to the same kind of market place as <baccarat-love.com>.
- The Respondent is using the disputed domain name in bad faith because it is seeking to attract for commercial gain, users to its pay-per-click websites, by taking advantage of the worldwide reputation of the Complainant's trademark.
- The Respondent is responsible for the content of its web pages, regardless of how such content is generated.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
It is for a complainant to show that all three elements of the Policy have been proved before any order can be made to transfer a domain name.
Therefore, in order to obtain the relief requested, a complainant 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.
A. Identical or Confusingly Similar
A1. The Complainant holds rights in the BACARRAT trademark.
The Panel is persuaded by the evidence submitted by the Complainant in connection to its ownership of the worldwide registered BACCARAT trademark, to which reference has been made.
A2. The disputed domain name is confusingly similar with the Complainant's BACARRAT trademark.
The Respondent used the Complainant's trademark BACARRAT and added a generic word such as “love” to the Complainant's trademark BACARRAT. The addition of such generic word and hyphen cannot in this case transform the disputed domain name in a distinctive combination in comparison to the Complainant's trademark.
It has also long been held by UDRP panels that gTLD suffixes do not generally preclude a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds therefore that the Complainant has proved the first of the three elements that it must establish.
B. Rights or Legitimate Interests
The Panel agrees with the Complainant that the Respondent seems not to hold any rights or legitimate interests in connection to the disputed domain name. In this sense, the Respondent is not commonly known by the disputed domain name and it was not authorized in any way to use the Complainant's trademark BACARRAT to register the disputed domain name.
The Panel also notes that the disputed domain name is currently not active and therefore, cannot verify the Complainant's statements in connection to the current content of the website under which the disputed domain name used to resolve.
From the statements and evidence submitted by the Complainant, the website to which the disputed domain name resolved at the time the Complaint was filed did seem to contain information about the Bacarrat products but also about the products of the Complainant's competitors. Considering the fact that the Complainant's statements in the Complaint and the evidence submitted in connection to the website content has not been denied by the Respondent or otherwise, the Panel considers these statements and evidence as accurate and finds that the activity once displayed on the website associated to the disputed domain name cannot be considered bona fide preparation or use of the disputed domain name.
The Panel finds therefore that the Complainant has proved also the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
With a view to the afore-mentioned point B above, the Panel considers that the disputed domain name has been registered and used in bad faith, with the purpose to benefit from the Complainant's well-known trademark BACARRAT by attracting Internet users to the Respondent’s website.
In its consideration, the Panel points out also to a certain pattern of conduct apparently developed by the Respondent to register domain names potentially infringing trademark rights of third parties.
As stated by other UDRP panels, this Panel shall consider the website associated to the disputed domain name under the Respondent' s control and shall hold the Respondent ultimately responsible for the content of the website within its control. (see Sanofi-Aventis v. Transure Enterprise Ltd, WIPO Case No. D2008-1636)
The Respondent's use of the disputed domain name is clearly not bona fide. This indicates that the Respondent has registered and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and the Complainant's mark in order to profit from the goodwill associated with the mark. This behavior amounts to bad faith under paragraph 4(b)(iv) of the Policy. See PRL USA Holdings, Inc. v. Ron Lee, WIPO Case No. D2009-0269; see also Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159. The fact that the disputed domain name is currently inactive does not prevent a finding of bad faith registration and use.
The Panel finds therefore that the Complainant has proved also the third element of 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 <baccarat-love.com> be transferred to the Complainant.
Enrique Ochoa de González Argüelles
Dated: September 30, 2010