WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John Galliano S.A. v. Michel Van de Morton, Cash Telecom SA
Case No. D2011-0161
1. The Parties
The Complainant is John Galliano S.A. of Paris, France, represented by Cabinet Germain & Maureau, France.
The Respondent is Michel Van de Morton, Cash Telecom SA of Mouscron, Belgium.
2. The Domain Name and Registrar
The disputed domain name <parlezmoidamour.com> is registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2011. On January 28, 2011, the Center transmitted by email to Gal Communications (CommuniGal) Ltd. d/b/a Galcomm a request for registrar verification in connection with the disputed domain name. On January 30, 2011, Gal Communications (CommuniGal) Ltd. d/b/a Galcomm 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 February 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2011. The Response was filed with the Center on February 24, 2011.
The Complainant filed an additional submission with the Center on March 1, 2011 in reaction to the Response.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on March 7, 2011. 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, John Galliano S.A., is a French joint-stock corporation, with its registered office in Paris, France, active in the field of designer’s fashion; the Complainant has been founded by the world famous designer Sir John Galliano in 1994.
The Complainant is the owner of the French registered trademark PARLEZ MOI D’AMOUR, n° 3025327 (the “Trademark”), registered with a priority date as of April 25, 2000 in classes 3, 18 and 25. This trademark was originally registered by Orion Parfums Cosmétiques before being transferred to the Parfums Christian Dior company and then to the Complainant.
The Respondent is an individual operating Cash Telecom, a company specialized in the field of telecommunications and Internet technology.
The disputed domain name <parlezmoidamour.com> was registered on July 10, 2000 with an expiration date on July 10, 2011. The disputed domain name was originally registered by Corporate Site, Venus Television Holding, with its registered seat in Panama, and was transferred to Respondent on February 11, 2008.
The disputed domain name automatically redirects to another domain name, <drague.com>, and its online dating site.
5. Parties’ Contentions
The Complainant first contends that the disputed domain name <parlezmoidamour.com> is identical to its registered trademark PARLEZ MOI D’AMOUR, the suffix “.com” being irrelevant in determining whether a domain name is identical or confusingly similar to a trademark.
The Complainant further contends that it has never authorized the Respondent to use its Trademark and that Respondent has neither right nor any legitimate interest in respect of the disputed domain name. The Complainant indeed argues that Respondent does not run any business or offer any goods or services under the name “Parlez moi d’amour”. In that regard, the Complainant mentions that the Respondent is in fact acting through Cash Telecom, a Belgian Company offering profitable telecom and Internet services. The Complainant points out that although the Respondent is active in the field of telecom services, it has acquired and is using the disputed domain name in relation with a website dedicated to adult content, an activity extremely different from its regular telecom business.
Finally, the Complainant argues that the Respondent has acquired and is using the disputed domain name in bad faith. On that issue, the Complainant first explains that its registered Trademark is being used in relation with a fragrance, “Parlez moi d’Amour”, created by John Galliano and promoted by Taylor Momsen, a famous young actress and singer. The Complainant then contends that the Respondent, running a website in French language, could not ignore the existence of this brand and related product, and therefore intentionally attempted to take advantage of the Complainant’s reputation to attract Internet users and direct them towards an online perfume selling website. The Complainant argues that the Respondent tried to create a likelihood of confusion with Complainant’s trademark in order to promote the sale of cheap perfumes, and obtain financial gain as a result.
The Complainant then concludes that the Respondent not only does not make a bona fide use of the disputed domain name, but its use related to an adult content website may affect the Complainant’s reputation, which therefore has an interest in requesting the transfer of the disputed domain name <parlezmoidamour.com>.
In its Response, the Respondent first expresses his regrets towards the Complainant’s choice to proceed in English, considering the strong francophone nature of the case.
The Respondent then argues that the sentence “parlez moi d’amour”, which can be translated in English as “Let’s talk about love”, belongs to the French public domain. In support of this position, the Respondent mentions among other things the French song “Parlez moi d’amour”, written by Jean Lenoir and created by Lucienne Boyer in 1930.
In its Response, the Respondent further argues that the registered Trademark has never been used before and is only registered in classes 3, 18 and 25, nothing therefore preventing it to use such denomination for the purpose of a dating site.
In addition, the Respondent contends that the Complainant has not used the Trademark for a period of five years within registration, whereas the Respondent has used the disputed domain name since the year 2000. The Respondent indeed mentions a show called “Parlez moi d’amour” created and broadcasted by VENUS Corporation, a satellite TV Channel, via the disputed domain name.
The Respondent continues by arguing that it has used the disputed domain name in good faith in relation with a dating service for a period of eleven (11) years. The Respondent also invokes the general principles of freedom of registration of a domain name and of absence of ownership of a domain name.
Finally, the Respondent concludes by arguing that the Respondent has been using the disputed domain name in good faith with a primary purpose of running an online dating site, the advertising banner not being relevant to determine the content of its activities since such banners randomly rotate on a monthly basis, the February banner containing advertising for a lingerie website.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no right or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Before addressing the above, a preliminary matter needs to be examined by this Panel, i.e. the issue of the additional submission by the Complainant, in reaction to the Respondent’s Response.
A. Procedural matter
As mentioned in the procedural history, the Complainant filed an additional submission with the Center on March 1, 2011, in order to react to the Respondent’s contentions.
Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either party to the proceeding. The Rules however do not provide for any circumstances where a party could file an additional submission without leave from the Panel.
Several panels have discussed in previous decisions whether paragraph 12 of the Rules shall be construed as denying acceptance of unsolicited additional submission.
In Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447, the panel has summarized the various views expressed on that issue. In some decisions, it has been stated that “[…] documents, whether designated “replies” or “rebuttals”, are not called for in the Rules. Paragraph 12 provides for additional submissions only at the Panel’s request, in its sole discretion.” (J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035).
Other panels however have developed a different interpretation of paragraph 12 of the Rules, considering that it does not preclude acceptance of additional uninvited submissions (see Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905). On the contrary, several panels have found that such issue should be decided in light of the circumstances of the case and that additional unsolicited submissions should be admitted to the extent that they do not address topics that the party could have addressed in its official submission (see Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447).
The present Panel decides to follow the reasoning developed in Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, supra and shall therefore analyze the content of the Complainant’s supplemental submission in order to determine whether it addresses new issues that could not have been raised in its Complaint.
After analyzing the content of this supplemental filing, the Panel finds that it does not address new issues or issues that could not have been raised in the Complaint, and therefore decides not to take into consideration the content of this additional submission.
The Panel shall therefore decide the present case on the basis of the Complaint and the Response, as well as their annexes, the Complainant’s additional submission being struck from the case file.
B. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of the French registered trademark PARLEZ MOI D’AMOUR. It is widely agreed upon that incorporating a trademark in its entirety into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purposes of the Policy (see Bayerische Motoren Werke AG, Sauber Motorsport AG v. Petaluma Auto Works, WIPO Case No. D2005-0941 and Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
The disputed domain name <parlezmoidamour.com> incorporates the trademark PARLEZ MOI D’AMOUR in its entirety (except for the apostrophe) with no additional element and can therefore be found to be almost identical to a trademark in which the Complainant has rights.
The disputed domain name being almost identical to the Complainant’s trademark, the Panel finds that the Policy, paragraph 4(b)(i) has been satisfied.
C. Rights or Legitimate Interests
According to the Policy, paragraph 4(b)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “ would require complainant to prove a negative, a difficult, if not impossible, task.” Thus, in this decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it was deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(b)(ii) of the Policy (see e.g. paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
In the present case, the Complainant attempted to demonstrate the Respondent’s absence of rights or legitimate interests in the disputed domain name by asserting that (a) it had never authorized the use of its Trademark by the Respondent, (b) the Respondent was only offering commercial services though his company, Cash Telecom, active in the field of telecommunications and Internet Technology, this company being also mentioned by the Registrar in the Respondent’s contact information, and (c) the Respondent does not even use the disputed domain name, which automatically redirects to another domain name, namely, <drague.com>.
Based on the above and on the documents contained in the case file, the Panel is satisfied that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel shall now study the Respondent’s position in that regard in order to determine whether the presumption has been overturned and whether the Respondent has brought evidence of its rights and legitimate interests in the disputed domain name.
A respondent may demonstrate its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to it of the dispute, the respondent used or made 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) the respondent is commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
In its Response of February 24, 2011, the Respondent argued that it did not need any authorization from the Complainant to use the designation “Parlez moi d’amour”, as it is a common French sentence, used by many artists in many occasions. In addition, the Respondent claims that it has made a bona fide use of the disputed domain name for eleven (11) years in relation with a dating site.
On balance, the Panel is not convinced that the Respondent has demonstrated any element that could show the existence of any right or legitimate interest.
The Panel understands that the Respondent attempted to show a use of the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Respondent argues that it has been using the disputed domain name in good faith for eleven years, but it did not provide the Panel with any evidentiary document to establish that use for the indicated period.
On the contrary, the history of the disputed domain name, produced by the Complainant under Annex 2, clearly shows that the Respondent only acquired the disputed domain name after July 2008, the previous holder being Corporate Site Venus Television Holding, a company with its registered office in Panama. Although the Respondent replied to this document by mentioning that it had a partnership with said company, it did not provide the Panel with any evidence of that fact.
In addition, the Panel notes that the disputed domain name is not directly used for the offering of online dating services but only redirects to another domain name, namely <drague.com>, which appears to be hosting an online dating website. The Respondent claims that <drague.com> is very well known around the world, with a very highly ranked dating level, but once again, does neither bring any evidence of its activities in relation to this dating service nor any material proof of its assertions.
Consequently, the Panel considers that the Respondent did not bring sufficient evidence of its rights or legitimate interests in the disputed domain name and the Policy, paragraph 4(a)(ii) is therefore fulfilled.
D. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
To have registered the disputed domain name in bad faith, the Respondent first must have been aware of the existence of the Complainant.
In that regard, the Panel first notes that the Complainant has been founded by the world famous designer Sir John Galliano, whose name constitutes the Complainant’s corporate name, and therefore benefits from Sir Galliano’s fame and reputation. The Panel notes that the trademark PARLEZ MOI D’AMOUR exists since April 25, 2000, i.e. prior to the registration of the disputed domain name.
In the present case, the Panel also notes that the Respondent seems to be perfectly aware of the existence of the Complainant as well as of its founder, Sir John Galliano, as it results from the following sentence, on page 2 of its Response: “Mr. Galliano would like to use a French domain public as a brand”. In fact, the Respondent does not deny knowing the existence of the Complainant, but only argues that the registered Trademark PARLEZ MOI D’AMOUR has not been used until 2010, year of the release of Complainant’s perfume “Parlez moi d’amour”.
Given that the trademark PARLEZ MOI D’AMOUR exists since 2000 and that the Panel is satisfied that the Respondent was aware of the existence of the Complainant while acquiring the disputed domain name in 2008, it must now be determined whether it has used the disputed domain name in bad faith.
In that regard, the Complainant mainly relies on the fact that the top of the Respondent’s website home page is composed of a large banner inviting Internet users to visit a website selling perfumes for cheap prices. The Respondent answered that this banner was only temporary and that all advertising banners turned randomly on a monthly basis. In support of its position, the Respondent produced a screenshot of the website at the domain name <drague.com> from February 2011, showing a different advertising banner.
The screenshot produced by the Respondent was however taken after the filing of the Complaint, and the Respondent did not provide the Panel with older examples of different advertising banners. In addition, the Panel notes that, although the advertising banners supposedly change on a monthly basis on the Respondent’s website, the new banner, relating to lingerie, has still not changed on the day of the decision, rendering the Respondent’s assertion highly doubtful to the Panel.
On balance, the Panel therefore finds that the Respondent is using the Complainant’s fame and reputation to attract and deceive Internet users, redirecting them to a website which has contained advertisements relating to perfumes.
All of the above facts show in the Panel’s view the Respondent’s intention to use the Complainant’s goodwill and reputation for its own commercial gain, and is evidence of the Respondent’s bad faith under the Policy, paragraph 4(a)(iii).
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 <parlezmoidamour.com> be transferred to the Complainant.
Dated: March 21, 2011