WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baccarat SA v. Domains by Proxy, Inc. / Sevi Fraylich
Case No. D2010-1475
1. The Parties
Complainant is Baccarat SA of Baccarat, France, represented by MEYER & Partenaires, France.
Respondent is Domains by Proxy, Inc. / Sevi Fraylich, of Scottsdale, Arizona, United States of America, and of Brooklyn, New York, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <shopbaccarat.com> (hereinafter called the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2010. On September 3, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On the same day, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 27, 2010.
The Center appointed Lorenz Ehrler as the sole panelist in this matter on October 5, 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
Baccarat SA is a manufacturer of crystal wares founded in 1764. It owns numerous trademarks, in particular in class 21 for crystal ware, registered in many countries. Among other things, BACCARAT is registered in international class 21 in many European and other countries (e.g. International Registration no. 418717) and in the United States of America (e.g. United States trademark no. 1130893). Furthermore, Complainant holds various domain name registrations incorporating BACCARAT, such as <baccarat.com>, <baccarat.fr>,and <baccaratshop.co.uk>.
The Domain Name, <baccaratshop.com>, was registered with the registrar GoDaddy.com, Inc. on January 24, 2008. The website to which the Domain Name resolves is a parking page which contains sponsored links to third party websites, among other things to commercial websites offering for sale crystal ware of various manufacturers, e.g. Lalique, Daum, etc. as well as non-branded crystal ware.
5. Parties’ Contentions
Complainant contends that the Domain Name is identical or confusingly similar to its own trademarks. It stresses the facts that the Domain Name entirely comprises the trademark BACCARAT, that the gTLD “.com” is not distinctive and should not be taken into account in the analysis, and that the descriptive word “shop”, contained in the Domain Name is either irrelevant because it is not distinctive or relevant only in the sense that it aggravates the risk of confusion.
Furthermore, Complainant submits that Respondent does not have any rights or legitimate interests in respect of the Domain Name because it is not known under the name BACCARAT and because there is strictly no business connection between the parties, and in particular because Complainant did at no time grant Respondent any right to use the Domain Name. Complainant contends that Respondent registered the Domain Name in order to take advantage of Complainant’s well-known trademarks to confuse and divert Internet users to, at least partly, competing commercial websites in the field of crystal ware, through a “pay per click” domain parking solution.
At last, Complainant argues that Respondent has registered and is using the Domain Name in bad faith. It submits that, given the notoriety of the BACCARAT trademark, there is a prima facie presumption that Respondent registered the Domain Name for the purpose of selling it to Complainant or one of its competitors, or that it was intended to be used to attract for commercial gain users to the website by creating a likelihood of confusion with Complainant’s mark. The use of a privacy service to register the Domain Name should, in Complainant’s view, also be regarded as an indication of bad faith. The use of the Domain Name should be regarded as made in bad faith because Respondent uses Complainant’s trademark to divert Internet users to a parking webpage on which hyperlinks are displayed that point to online sales of crystal products, and it does so with an intention to generate commercial gain.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
A. The Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
B. Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant holds several trademarks consisting (in whole or part) of BACCARAT which are registered, among other things, for crystal ware in international class 21, for example in the United States of America. In the present proceedings, Complainant puts forward the United States trademark no. 1130893 (word trademark) as well as the international word trademark BACCARAT, International Registration 900778. Additionally, the Panel has noted that a quick search on Madrid Express allows the finding that there is an international registration, namely International Registration 418717, for the word trademark BACCARAT for crystal ware in international class 21. This trademark is registered in 24 countries. The above-mentioned trademarks are sufficient to substantiate Complainant’s claim that it has registered trademark rights in BACCARAT.
The Domain Name is <shopbaccarat.com>.
Under the UDRP, the identity or confusing similarity requirement under paragraph 4(a) of the Policy only requires identity or confusing similarity between complainant’s trademarks and the Domain Name. In particular, there is no requirement of similarity of goods and/or services (e.g., AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485 (<vincotte.com>)).
The Panel has no doubt that the Domain Name is confusingly similar to Complainant’s trademark, within the meaning of paragraph 4(a) of the Policy, given that the distinctive element in the Domain Name, i.e., “baccarat”, is identical to Complainant’s trademarks. The other elements of the Domain Name, i.e. the generic word “shop” and the gTLD “.com”, which has a technical function, are not sufficient to avoid confusing similarity (e.g., Nokia Corporation v. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 (<nokiagirls.com>) and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (<rollerblade.net>).
The Panel thus finds that the Domain Name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Complainant contends that Respondent does not have any rights or legitimate interests in the Domain Name. Complainant has shown that it owns BACCARAT trademarks, and it has explicitly contested having granted Respondent any right to use its trademarks. Whether BACCARAT is a famous trademark or not does not need to be established here, it being sufficient to state that the trademark BACCARAT is commonly known. The fact that Complainant’s products are available in more than 470 points of sale throughout the United States, and specifically in Arizona where Respondent is located, confirms that such common knowledge also exists in the United States. Therefore, the Panel finds that Complainant made a prima facie showing that Respondent knew about Complainant’s trademark when registering the Domain Name, and that its intention was to take advantage from the well-known BACCARAT trademark. Furthermore, as Complainant rightly points out, Respondent cannot argue that the Domain Name was being used for legitimate noncommercial or fair use purposes, as it is using the Domain Name to direct the public to a website which contains links to other, partly competitive websites. It seems very likely that Respondent receives commercial revenue from the display of these links (Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038 (<baccaratjewelry.com>). For this reason, there is no bona fide offering of goods or services according to paragraph 4(c)(i) of the Policy (Baccarat SA v. Speedeenames.com / Troy Rushton, WIPO Case No. D2010-0953 (<mybaccaratcrystal.net> et al.).
Under these circumstances, although the burden of proof initially lies with Complainant, since Complainant has established its prima facie case, the burden of producing evidence rebutting such prima facie case shifts to Respondent (Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 (<belupo.com>)). Not having filed any response, Respondent has failed to make such demonstration.
The Panel thus finds that Respondent does not have any right or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
In the Panel’s view it results from the factual findings that Respondent primarily registered and is using the Domain Name to redirect Internet users to other websites which feature commercial offers, among other things in the field of crystal ware, and that it thereby intends to generate commercial revenue. The Panel therefore finds that by using Complainant’s trademark as the distinctive element of the Domain Name, Respondent creates a risk of confusion, at least in the sense that the visitors to the website will, at least initially, expect a website operated by Complainant or by one of its retailers. In any case, the visitor will have the impression that the website to which the Domain Name resolves is associated with, or endorsed by, the owner of the BACCARAT trademark, i.e. Complainant. The fact that the sponsored links contained on the website to which the Domain Name resolves redirect the user to third party websites where products competing with Complainant’s are offered, shows bad faith conduct on Respondent’s part (e.g. Deceuninck NV v. William Vaughan, smtm investments ltd, WIPO Case No. D2007-1911 (<deceunick.com>)).
As Complainant rightly argues, the same is the case for the registration of the Domain Name through a privacy service provider, as it most likely was Respondent’s sole intention by using the privacy service to hide its true identity, and thus to obstruct Complainant’s investigations and legal steps (Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743 (<wwwwired.com>)). The Panel finds that in the circumstances of this case, the use of a privacy or proxy service constitutes additional evidence of bad faith.
Because Respondent Domains by Proxy, Inc. in reality never owned the Domain Name but merely registered the Domain Name in a fiduciary capacity, there is no need to inquire into its good or bad faith. In this Panel’s view, only the bad faith of the beneficial owner and current registrant, Respondent Sevi Fraylich, is at issue, and the Panel finds that this has been established.
The Panel thus finds that Respondent registered and is using the Domain Name to intentionally attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website (paragraph 4(b)(iv) 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 <shopbaccarat.com> be transferred to Complainant.
Dated: October 27, 2010