World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marc Orian, Société Anonyme v. Bernadette Jahnke

Case No. D2012-0449

1. The Parties

The Complainant is Marc Orian, Société Anonyme of Paris, France, represented by Fidal Direction Internationale, France.

The Respondent is Bernadette Jahnke of Brandenburg, Germany.

2. The Domain Name(s) and Registrar(s)

The disputed domain name <tresorbijouxparis.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2012. On March 7, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On March 7, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on March 12, 2012.

The Center verified that the Complaint and the amendment to 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 March 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2012.

The Center appointed Fleur Hinton as the sole panelist in this matter on April 12, 2012. 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 has been creating, producing and selling jewellery under the trade mark TRESOR in France since 1992. It is the owner of the trade mark TRESOR which is registered in France from October 2, 1992 as French trade mark registration 92436040 in respect of “gold, gold jewellery, gold imitation jewellery, precious stones and gold horological instruments. It sells its jewellery through Tresor Paris boutiques in France and through its websites “www.tresor-paris.fr” and “www.tresorbijoux.fr”.

The website to which the disputed domain name leads sells jewellery under the name “Tresor Paris”.

The Respondent registered the domain name on August 15, 2011. The Complainant sent a cease and desist letter to the Respondent on February 20, 2012 at the email address given on the WhoIs records, but the email service provider could not find any such address. The Complainant then tried to contact the Respondent through the contact section of the website at the disputed domain name <tresorbijouxparis.com> but has received no response.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to its trade mark TRESOR and is used in respect of jewellery. The addition of the word “bijoux” does not serve to distinguish the disputed domain name from the Complainant’s trade mark because it means “jewellery” in French and is, therefore, generic. The other word in the disputed domain name, “paris” does not serve to reduce the risk of confusion because the Complainant is located in Paris. For those reasons the use of “bijoux” and “paris” serves to increase the risk of confusion.

The Complainant also argues that the Respondent has no rights or legitimate interests in the disputed domain name. It says that it has not found any registration by the Respondent of the trade mark TRESOR in France. The Respondent has not been authorized by the Complainant to use either the trade mark or the disputed domain name and is not a distributor, reseller or client of the Complainant. The Complainant says that the Respondent must prove that it has a commercial relationship with the Respondent. The Complainant refers to The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 . In this sort of case, the Complainant argues, the Complainant need only establish a prima facie case in order for the burden of proof to shift to the Respondent for whom it would be much easier to establish that it does have rights or legitimate interests. The Complainant submits that, in this case, it has established such a case.

The Complainant argues that the disputed domain name was registered and is being used in bad faith. The Complainant says that the Respondent’s action in registering a domain name for use on a French language website offering jewellery for sale using the Complainant’s trade mark TRESOR is of itself an act of bad faith. That is because members of the public associate TRESOR with the Complainant. Further, the fact that the Respondent gave a false email contact address to the registrar indicates that it did not want to be contacted. The Respondent also failed to respond to the Complainant’s attempts to contact it through the website at the disputed domain name. All of these factors lead to the conclusion that the Respondent was aware of the Complainant’s website at the domain name <tresor-bijoux.fr> and wanted people to think that it was that of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy requires that the Panel make its finding on the basis of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of a French trade mark registration for TRESOR in respect of jewellery. The Respondent is using the disputed domain name which incorporates the Complainant’s TRESOR trade mark. In addition to the trade mark TRESOR the disputed domain name also incorporates the generic term “bijoux” and the geographical indicator “Paris”, neither of which term forms part of the trade mark registration owned by the Complainant. However, “bijoux” and “Paris” are both terms used by the Complainant in relation to the sale of its goods on its website. Therefore, there can be no argument that the use of those terms by the Respondent suffices to distinguish between the disputed domain name and the Complainant’s trade mark.

The Panel finds that the Complainant has established the first limb of the Policy requirements.

B. Rights or Legitimate Interests

The Respondent has not replied to the Complainant’s attempts to contact it and has not lodged a Response to the Complaint. The Respondent has not, therefore provided any information as to any rights or legitimate interests in the disputed domain name. Therefore, the Complainant need only establish a prima facie case that the Respondent has neither rights nor legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (“WIPO Overview 2.0”). In this instance the Complainant has shown that it has a trade mark registration and that the Respondent has a website in respect of which a domain name that is confusingly similar to the Complainant’s trade mark is being used in relation to the goods covered by the Complainant’s trade mark. In The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 the panel found that:

“To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use of the disputed domain name must be in connection with a “bona fide” offering of goods or services. In some circumstances, a website advertising and selling financial magazines or financial products and services may constitute a bona fide offering of goods or services. In the circumstances of this case, however, the Respondent’s use of the disputed domain name is not “bona fide” within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain name is confusingly similar to the Complainant’s well known trademark and its <vanguard.com> domain name; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent or its websites or their content; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its websites. In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain name for its websites.”

In view of the confusing similarity of the disputed domain name to the Complainant’s trade mark, the similarity between the offerings of the Complainant’s offering and that of the Respondent and the fact that the Respondent has chosen not to participate in these proceedings, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The onus is on the Complainant to establish that the disputed domain name was registered and is being used in bad faith. The Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trade mark, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has given a false email address to the registrar, failed to respond to contacts from the Complainant. In addition, the Respondent has declined to take part in these proceedings. In view of these circumstances, the onus will shift to the Respondent.

The Respondent has registered a domain name which incorporates the Complainant’s trade mark. The Panel finds that the only reason for so doing is to trade on the Complainant’s trade mark and the reputation which it enjoys in its trade mark. Under these circumstances the Panel finds that the disputed domain name was registered and is being used in bad faith.

7. Decision

For 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 <tresorbijouxparis.com> be transferred.

Fleur Hinton
Sole Panelist
Dated: May 4, 2012

 

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