WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bénédicte Bogard v. Domain Discreet / Alcone Company, Michele Gay
Case No. D2011-1211
1. The Parties
The Complainant is Bénédicte Bogard of Paris, France, represented by Cabinet Lavoix, France.
The Respondent is Domain Discreet / Alcone Company, Michele Gay, of Madeira, Portugal, and New York, United States of America respectively.
2. The Domain Name and Registrar
The disputed domain name <visioramakeup.com> is registered with Ranger Registration (Madeira) LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2011. On July 15, 2011, the Center transmitted by email to Ranger Registration (Madeira) LLC a request for registrar verification in connection with the disputed domain name. On July 15, 2011, Register.com (authorized Registrar of Ranger Registration (Madeira) LLC) transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 26, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 29, 2011.
The Center verified that the Complaint together with the amended 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 together with the amended Complaint, and the proceedings commenced on August 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2011.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on September 2, 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 trademark VISIORA, originally owned and used by Parfums Christian Dior, was commercialized by means of license agreements to third parties during the years 1979 until 1990, date when the product was discontinued and consequently ending all licensing contracts with their dealers and agents.
However, on a request by Bogard, company owned by Bénédicte Bogard, the Complainant, Parfums Christian Dior recommenced manufacturing the VISIORA range of products granting said company an exclusive distribution agreement as of December 2, 1991 terminating such contract on December 27, 2001.
During the existence of the above mentioned distribution agreement, Bogard signed a sales contract for VISIORA products with Alcone Company, from the United States. The duration of this contract was set forth in paragraph 7 stating that it would last from October 1, 1996 to September 30, 1998 and renewable by default if no notice of termination was sent. However, it also mentioned that the contract would only be renewed under the condition that Parfums Christian Dior renewed the license agreement with Bogard. (See annex 10).
Since the distribution agreement between Parfums Christian Dior and Bogard terminated on December 27, 2001, and consequently, so did the sales agreement between Alcone Company and Bogard, in accordance with clause 7 of their contract.
On April 8, 2011, Parfums Christian Dior assigned all its VISIORA trademarks to Bénédicte Bogard. (See annex 5).
Therefore, the Complainant, Bénédicte Bogard is the owner of a series of VISIORA trademarks. She is also the owner of the following domain names <visiora-makeup.com>, <visiora.fr> and <visiora.net>.
The trademark VISIORA was and is used worldwide for professional makeup products.
The disputed domain name <visioramakeup.com> was registered on November 6, 2009.
5. Parties’ Contentions
The Complainant states that the disputed domain name <visioramakeup.com> is identical to her registered trademarks VISIORA. The disputed domain name <visioramakeup.com> consists of the VISIORA trademark followed by the term "makeup", which is simply the description of the products covered by said trademark.
The Complainant further states that the disputed domain name <visioramakeup.com> is being used for selling and advertising make up bearing her trademark VISIORA, and that these products are sold and advertised without her authorization.
The Complainant alleges that the Respondent is not a licensee of the Complainant’s trademarks, nor it is authorized to use her trademarks. Complainant states that the Respondent is not commonly known by the disputed domain name <visioramakeup.com>.
The Complainant further states that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. Instead, the Respondent uses the disputed domain name for commercial gain by misleading consumers and tarnishing the VISIORA trademark.
Finally, the Complainant states that during sometime the Respondent was an authorized sales agent for VISIORA products but once such agreement terminated, the right to distribute VISIORA products also ended as mentioned in clause 7 and 10 of the distribution agreement, and which reads as follows: Clause 10 “Mr. […] Mallardi agrees in no way use the Manufacturers trademark VISIORA […] or make any further reference to VISIORA once the present contract has been terminated” (see annex 10 of the Complaint). The Complainant states that the disputed domain name was therefore registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three elements is present:
(i) the domain name registered by the Respondent 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 names in question; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This first element requires that the Complainant demonstrate that (1) it has trademark rights and (2) that the disputed domain name is identical or similar to a trademark in which the Complainant has rights.
The Panel finds that the Complainant has established that she is the owner of the registered trademarks VISIORA based on the evidence provided by her. (Annexes 5 and 8 of the Complaint)
The disputed domain name <visioramakeup.com> consists of two different words, one consisting of the Complainants registered trademark VISIORA and the second of a generic term “makeup”. The issue often turns to the question of whether the addition of generic terms would change the overall impression of the disputed domain name as being connected to the Complainant or the trademark owned by the Complainant.
The Panel considers that the addition of a generic term, especially when added to the well-known trademark, is not sufficient to avoid likelihood of confusion between the disputed domain name and the Complainant’s trademark, especially when the generic word added to the trademark specifically refers to the types of products sold under the VISIORA trademark.
The Panel therefore finds that the disputed domain name <visioramakeup.com> is confusingly similar to the Complainant’s trademark VISIORA.
B. Rights or Legitimate Interests
The second element requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
By the terms used in paragraph 4(a) of the Policy, it is clear that the overall burden of proof is on the Complainant. However the Policy provides the Respondent means to demonstrate its rights and legitimate interests in the disputed domain name by responding to the Complaint. If the Respondent does not make use of these means and the Complainant has established a prima facie case under paragraph 4(a)(ii), the burden of production is consequently shifted to the Respondent in order to prove the contrary.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name and has not registered it as a trademark, service mark or company name anywhere in the world. The Respondent is not commonly known by the name “visioramakeup”. The Complainant has not licensed or otherwise permitted the Respondent to use the trademark VISIORA. There is no current relationship between the Complainant and the Respondent.
The Respondent has not provided a Response to the allegations set forth by the Complainant, though given the opportunity.
There is no evidence in the case file demonstrating that the Respondent might have rights or legitimate interests in the disputed domain name.
In the absence of Response, this Administrative Panel finds that the Complainant has satisfied the second element, paragraph 4(a) of the Policy and that she has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
This third element requires that the Complainant demonstrates that (1) the disputed domain name has been registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The disputed domain name is composed of two words, “visiora” and “makeup”. The first is a registered trademark owned by the Complainant; the second is a generic term.
The Complainant has proven that during a period of time a commercial relationship did exist between the parties, a Sales Contract. However such sales contract was valid and existed as long as the license agreement between Parfums Christian Dior and Bogard was valid. Such license agreement ended on December 2001, terminating automatically the contract between the Respondent and the Complainant.
The Respondent had apparently complete knowledge of the existence of the trademark VISIORA and the types of products it referred to when registering the disputed domain name. Therefore one can only conclude that the disputed domain name was registered in bad faith and is being used in bad faith.
Furthermore, the Panel considers that by registering a domain name identical to a well known trademark, the Respondent has intentionally tried to divert Internet users to its webpage, for commercial gain. This behavior constitutes, in the Panel’s opinion, bad faith use and may tarnish the Complainant’s reputation by, among other things, attracting Internet users to a webpage that does not correspond to what they are supposed to be looking for.
The above reasoning can only lead the Panel to conclude that the Respondent is attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the services provided on its website.
Finally, the Panel can not overlook the fact that the Sales Contract signed between the parties included a clause which specifically prohibited the use of the VISIORA trademark once the said contract ended, evidencing a clear breach of such clause by registering and using the Complainant’s trademark without her authorization.
Therefore, in accordance with paragraph 4(b)(i) and (iii) of the Policy, this Panel considers that the above findings lead to the conclusion that the disputed domain name has been registered and 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 disputed domain name, <visioramakeup.com>, be transferred to the Complainant.
Rodrigo Velasco Santelices
Dated: September 15, 2011