WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MEB v. beijingxiangyuwangke
Case No. D2012-0998
1. The Parties
The Complainant is MEB, Paris, of France, represented by Inlex IP Expertise, France.
The Respondent is beijingxiangyuwangke of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <ericbompard.net> is registered with Web Commerce Communications Limited dba WebNic.cc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2012. On May 11 and 15, 2012, the Center transmitted by email to Web Commerce Communications Limited dba WebNic.cc a request for registrar verification in connection with the disputed domain name. On May 15, 2012, Web Commerce Communications Limited dba WebNic.cc 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 May 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2012.
The Center appointed Mihaela Maravela as the sole panelist in this matter on June 19, 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.
The Panel notes that the Registrar has confirmed the specific language of the registration agreement as English. In these circumstances, the Panel is satisfied that English is appropriate as the default language of the proceedings in accordance with paragraph 11 of the Rules.
4. Factual Background
The following facts have been alleged by the Complainant and not refuted by the Respondent.
The Complainant is a joint stock company registered in France, called MEB. The Complainant is the owner of numerous rights including patronymic name ERIC BOMPARD, used particularly in the cashmere clothing field. Also, the Complainant is the majority shareholder of the French company ERIC BOMPARD S.A. the name of which is composed of the denomination ERIC BOMPARD. The ERIC BOMPARD denomination has been used for many years and has gained an unquestionable name recognition in the cashmere clothing field, due in particular to its use in a lot of countries worldwide (including in China).
The disputed domain name was registered on March 26, 2009.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to the Complainant’s trademark ERIC BOMPARD. Also, the Complainant argues that the disputed domain name is constituted of the name “Eric Bompard” and the inconsequential gTLD “.net” which may be ignored since it does not serve to distinguish the disputed domain name from the Complainant’s registered trademarks.
Also, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, based on the following arguments:
- The existence of well-known trademarks belonging to Complainant due to the fact that Complainant’s Eric Bompard products are directly distributed in around 40 stores and corners under the Eric Bompard stores sign, in Paris, in the French provinces, in Germany, in Switzerland, in Belgium, in the United Kingdom of Great Britain and Northern Ireland and in China. The Eric Bompard clothes are also sold by mail-order by means of a mail-order catalogue which exists since 1986 and an online store via the website “www.ericbompard.com” since 2004, which promotes the sales of Eric Bompard products. In this context the Respondent was certainly aware of the existence of the Complainant’s trademarks when it registered the disputed domain name.
- The Respondent has no rights or legitimate interests in the disputed domain name. The ERIC BOMPARD trademark is not a generic term but the patronymic name of Mister Eric Bompard, the creator of the companies MEB and Eric Bompard and the related trademarks. The Respondent owns no registered trademarks for the term “Eric Bompard”. To the Complainant’s knowledge, the Respondent has no rights in the trademark ERIC BOMPARD and notably the disputed domain name does not correspond at all to the Respondent’s name. Consequently the Respondent clearly has no rights or legitimate interests in the disputed domain name or concerning the use of the trademark ERIC BOMPARD.
- The Complainant has never granted any license or other kind of authorization to the Respondent to use its ERIC BOMPARD trademark as domain name or as an element of a domain name or for any other kind of use. There is no commercial relationship between the Respondent and the Complainant.
- The disputed domain name was registered three years ago in 2009 and it still does not redirect to an active website, which shows the absence of rights or legitimate interests of the Respondent in the disputed domain name.
Also, the Complainant contends that the disputed domain name has been registered and is used in bad faith, taking into consideration the well-known character of the trademarks ERIC BOMPARD. Also, the raw material, cashmere, used in the manufacture of the Complainant’s products is originating from Asia, especially Mongolia. The Respondent could not ignore that the Complainant owns many rights on the patronymic name ERIC BOMPARD.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
Based on the methods employed to provide the Respondent with notice of the Complaint, the Respondent’s obligation under the registration agreement to maintain accurate and current contact information, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by the Center. See also Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814. The Panel is satisfied that the Complaint was properly notified to the Respondent, and that beijingxiangyuwangke is the registrant of the disputed domain name and therefore the Respondent.
In this respect it should also be emphasized that the Center must attempt reasonably to contact the Respondent, but can do no better than to send communications to the email and physical address on official record or provided in the Complaint. It is noted that the words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. In the present case the Complaint and associated communications were sent to the physical, emails and fax addresses available in the WhoIs data base and provided by the Registrant and the Registrar. The Panel is satisfied that the Center has exercised the utmost care and has fulfilled its obligations under paragraph 2 of the Rules. See also Sanofi-aventis v. Protected Domain Services and Jan Hus, Husiten, WIPO Case No. D2008-0463.
Because the Respondent defaulted in providing a response to the allegations of the Complainant, the Panel will decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (paragraph 15(a) of the Rules, which reads as follows: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”).
Applied to this case, paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
A panel must find that: (a) the Complainant has a trademark or service mark; and (b) that the disputed domain name is identical or confusingly similar to that trademark or service mark.
Here, the Complainant has demonstrated ownership of the registered trademark ERIC BOMPARD by submitting the community trademark no. 4355699 registered on March 10,2006, the French trademark nos. 92417823 registered on May 5, 1992 further renewed and no. 3572983 registered on April 29, 2008 and the international trademark registration no. 784208 registered on June 27, 2002. The trademark registrations submitted predate the registration of the disputed domain name.
The question of confusing similarity for the purpose of the Policy requires a comparison of the disputed domain name with the trademark.
The Complainant’s trademark ERIC BOMPARD is entirely incorporated in the disputed domain name <ericbompard.net>. The addition of the generic top-level domain suffix (gTLD) “.net” is without legal significance from the standpoint of comparing the disputed domain name <ericbompard.net to the Complainant’s trademark ERIC BOMPARD since the use of a gTLD suffix is a technical requirement of a domain name registration, “.net” is one of only several such gTLDs, and “.net” does not serve to identify a specific enterprise as a source of goods or services. See also Ticketmaster Corporation vs. DiscoverNet, Inc., WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk, WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.
In the absence of any argument to the contrary from the Respondent, this Panel concludes that, on balance, the disputed domain name is confusingly similar to the Complainant’s trademarks. See also Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by a panel, shall demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable 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 has been 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.
The consensus view on this issue as stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) concerning the burden of establishing lack of rights or legitimate interests in respect of a domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” (See WIPO Overview 2.0)
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. (See, e.g., Barbara Brennan Inc. v. Texas International Property Associates, WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser, WIPO Case No. D2008-0210). The Complainant alleges that the Respondent’s only reason in registering and using the disputed domain name is to prevent the Complainant to reflect its trademark ERIC BOMPARD in the corresponding domain name.
By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
To fulfill the third requirement, the Complainant must prove that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for a valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name.
(ii) circumstances indicating that the Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct.
(iii) circumstances indicating that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.
However, the requirement of the Policy of a domain name “being used in bad faith” is not limited to positive actions (see, e.g., Beiersdorf AG v. Web4comm Srl Romania, WIPO Case No. DRO2005-0002). In this particular case, the following actions are considered as further evidence of registration and use in bad faith:
- The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name,
- The Respondent has not contested any of the allegations made by the Complainant,
- In the Panel’s view, any use of the disputed domain name would likely lead the public to the conclusion that it, and its connecting websites, is associated with the Complainant.
Also, the passive holding of the disputed domain name by the Respondent for more than 3 years since its registration together with the circumstances of the case represent, in the opinion of the Panel, bad faith registration and use (see also Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001; Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055).
In light of these particular circumstances, the Panel concludes that the Respondent has registered the disputed domain name in bad faith and that Respondent’s passive holding of the disputed domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name “is being used in bad faith” by the Respondent.
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, <ericbompard.net> be transferred to the Complainant.
Dated: July 3, 2012