WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Objet USA, LLC, L’Objet IOM Limited v. ”L'objet”, Ets. George Abou Arrage
Case No. D2011-2016
1. The Parties
The Complainants are L’Objet USA, LLC of Irving, Texas, United States of America, and L’Objet IOM Limited of Douglas, Isle of Man, Overseas Territory of United Kingdom of Great Britain and Northern Ireland, represented by Edward T. Saadi, LLC, United States of America.
The Respondent is ”L'objet”, Ets. George Abou Arrage of Beirut, Lebanon, represented by Souhaid & Sayssa Law Firm, Lebanon.
2. The Domain Name and Registrar
The disputed domain name <lobjet.com> is registered with TierraNet d/b/a DomainDiscover (“the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2011. On November 16, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16 and November 21, 2011, the Registrar 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. After the Center had exchanged several email communications with the Registrar as to the identity of the registrant, the Center sent an email communication to the Complainant on November 23, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On November 24, 2011, the Complainant sent an email to the Center stating that the Complaint had no deficiency and that the identity of the Respondent in the Complaint reflected the Registrar’s WhoIs data as of the date of the filing, adding that such data had been modified after the filing. On November 25, 2011, the Center invited the Registrar to provide information with regards to a potential breach of paragraph 8 of the UDRP, which prohibits any transfer of a domain name after the filing of a UDRP Complaint. On November 26, 2011, the Registrar informed the Center that the registrant had not changed, but that the WhoIs data had only been updated to reflect the status as of the date of the filing of the Complaint; this information was subsequently confirmed in the email communications of December 6, 7 and 8, 2011. As a result, the Center invited the Complainant on November 28, 2011 to file an amended Complaint within five calendar days, which the Complainant did on December 3, 2011.
The Center verified that the Complaint 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, and the proceedings commenced December 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response December 29, 2011. On December 9, 2011 a first Response was filed with the Center. On December 28, 2011, the Respondent filed a revised Response with the Center, requesting to have a three member Panel rule upon the dispute.
The Center appointed Philippe Gilliéron, Gary J. Nelson and Isabelle Leroux as panelists in this matter on January 27, 2012. The Panel finds that it was properly constituted. Each member of 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
Complainant L’Objet USA, LLC is in the business of manufacturing, marketing and selling household goods.
It owns a verbal US trademark L’OBJET (Reg. No. 3091135) that was registered on May 9, 2006 under class 21 of the Nice Classification with a priority date as of March 28, 2004. It also owns the combined trademark L’OBJET that was registered in the United States on May 6, 2008 under class 14 of the Nice Classification with a priority date as of March 27, 2006 ((Reg. No. 3424483), as well as in Canada under the same class on October 14, 2009, with a priority date as of September 18, 2006.
Complainant L’Objet USA LLC carries out its activities through the website “www.l-objet.com”,,registered on March 23, 2004.
Complainant L’Objet IOM Ltd owns numerous combined trademarks L’OBJET in the rest of the world under different classes of the Nice Classification, namely classes 3, 4, 8, 14, 20, 21 or 24.
Complainant L’Objet IOM Ltd applied on May 16, 2011 for a Lebanese combined trademark L’OBJET under classes 4, 8, 14, 20, 21, 24 and 35 of the Nice Classification. To the Panel’s knowledge, this application has not been granted so far.
The Respondent registered the name “Galerie L’Objet (L’Objet)” as a trading store in the Commercial Registry of Beirut, Lebanon, on March 10, 1973 (Reg. No 28865/R.C). The Respondent has marketed its business under the name “L’Objet” in different type of media and has become the exclusive distributor in Lebanon of several brand owners, in particular in the field of leather products and watches.
The disputed domain name was registered on 13 May 1999 by the Respondent Ets. Georges Abou Arrage. Respondent uses several email accounts under the extension “@lobjet.com” to communicate with his suppliers.
5. Parties’ Contentions
The Complainants first assert that the disputed domain name is confusingly similar to their verbal trademark L’OBJET since it fully incorporates such term. The same goes with regards to the combined trademarks, as it incorporates the literal element “l’objet” in its entirety.
The Complainants then contend that the Respondent would have no rights or legitimate interests in the disputed domain name. They would never have authorized the Respondent to register the disputed domain name and, as of the date of the filing, there would be no evidence whatsoever of any use of, or demonstrable preparations to use the disputed domain name. Furthermore, the Respondent would not be known as “lobjet.com”, “L’Objet” or any similar term.
The Complainants finally state that the Respondent registered and is using the disputed domain name in bad faith. Considering the number of trademarks consisting in whole or in part of the term “L’Objet” held by the Complainants and their wide reputation, the Complainants consider it highly improbable that the Respondent would have selected the disputed domain name without having first learnt of their trademarks. The passive holding of the disputed domain name by the Respondent would be further evidence of the Respondent’s bad faith, as well as the absence of any response to the emails sent to him by the Complainants.
For all these reasons, the Complainants request the transfer of the disputed domain name to the Complainant L’Objet USA LLC.
While the Respondent recognizes that the disputed domain name is identical to the business name “L’Objet”, it argues that it enjoys rights and has legitimate interests in the disputed domain name.
The Respondent has been constantly using this term to carry out his activities for more than thirty-seven years. He has therefore clearly demonstrated to have used the disputed domain name and name corresponding with a bona fide offering of goods, to have made a legitimate and fair use of the disputed domain name. As a result, the Respondent alleges to have been commonly known under that name for many years.
For all these reasons, the Respondent argues that there has been no registration and use in bad faith, all the more than the first trademark application filed by the Complainants took place in 2004, i.e. five years after the registration of the disputed domain name and thirty-seven years after the Respondent began its business under “L’Objet”.
As a result, the Respondent invites the Panel to dismiss the Complaint.
6. Discussion and Findings
A. Procedural issue
Prior to dealing with the substantive merits of the case, the Panel considers it worth addressing a procedural issue.
The Complaint has been filed by two distinct entities, i.e. L’Objet USA, LLC and L’Objet OIM Ltd respectively.
The transfer of the disputed domain name has however only been requested in favor of L’Objet USA, LLC. As a result, one may wonder whether L’Objet OIM Ltd should also be considered as entitled to file a UDRP Complaint and, in the negative, whether L’Objet USA LLC should be entitled to deduce any right from the trademarks owned by L’Objet OIM Ltd.
According to the WIPO Overview 2.0, paragraph 4.16 (and quoted decisions): “In order for the filing of a single complaint brought by multiple complainants or against multiple respondents […], such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met”. These criteria require the complainant to demonstrate that: “(i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation”.
In the present case, the Complainants have expressly alleged that they had a common grievance against the Respondent, resulting from the registration of the disputed domain name, which would have infringed both their rights.
As a result, the Panel agrees to consider both Complainants as joint complainants in these proceedings.
B. Substantive elements of the Policy
To succeed in its complaint, a complainant has to prove in accordance with paragraph 4 of the Policy that:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(b) the 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.
B.1. Identical or Confusingly Similar
The Complainants have proved to hold several trademarks consisting in whole or in part of the term “L’OBJET”. Complainant L’Objet USA LLC in particular holds a verbal trademark L’OBJET that was registered in the United States on May 9, 2006 under class 21 of the Nice Classification with a priority date as of March 28, 2004 (Reg. No. 3091135).
The mere absence of the apostrophe in the disputed domain name does obviously not exclude the likelihood of confusion resulting from the incorporation of the trademark L’OBJET in its entirety in the disputed domain name.
As a result, the Panel considers paragraph 4(a) (i) of the Policy to be satisfied.
B.2. Rights or Legitimate Interests
While the Complainants assert in their Complaint that Respondent did not come with any evidence whatsoever that would demonstrate his rights or legitimate interests in the disputed domain name, it is the Panel’s opinion that, to the contrary, the Respondent provided ample evidence of such interests.
First, the Respondent has been carrying out his activities under the name “L’Objet” in Lebanon since at least 1973, when his trading store got registered in the Commercial Registry of Beirut under the term “Galerie L’Objet (L’Objet)”, i.e. far before the first trademark application of the Complainants in that term, including the one apparently still pending in Lebanon.
Second, the Respondent has brought convincing evidence to the Panel’s attention to demonstrate that he has been marketing and promoting his activities in the media under the business name “L’Objet” for several years and that he now enjoys a wide reputation under that term. His reputation has enabled him to become the exclusive distributor of numerous brand owners in Lebanon.
As a result, there is no doubt, in this Panel’s view, that the Respondent has been known for several years and is still commonly known under that name to carry out his activities. The mere fact that the disputed domain name does not lead to any active website does not change this conclusion and cannot deprive the Respondent of his interest in the disputed domain name, all the more than he has proved to use several email accounts with the extension “@lobjet.com” to communicate with his suppliers.
Consequently, the Panel is of the opinion that the Complainants have not met the requirement foreseen under paragraph 4(a) (ii) of the Policy and, therefore, their Complaint has to be denied.
B.3. Registered and Used in Bad Faith
Considering that the Complainants have not satisfied the second requirement, the Panel considers the potential satisfaction of the third requirement, more than dubious in any case for the reasons described above, to be of no help to the Complainants. The third requirement shall therefore not be put under scrutiny by the Panel.
For all the foregoing reasons, the Complaint is denied.
Gary J. Nelson
Dated: February 10, 2012