WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lise Charmel Industrie v. Laurela Inc., Alexander Kargin-Utkin / Domains By Proxy LLC
Case No. D2012-1874
1. The Parties
The Complainant is Lise Charmel Industrie of Lyon, France, represented by WITETIC, France.
The Respondent is Laurela Inc., Alexander Kargin-Utkin of Brooklyn, New York, United States of America, represented internally / Domains By Proxy LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <lisecharmel.org> is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2012. On September 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2012, 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 and confirming that Laurela Inc., Alexander Kargin-Utkin was in fact the Respondent.
The Center sent an email communication to the Complainant on October 1, 2012, 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 October 1, 2012.
The Center verified that the Complaint, together with 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 October 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2012. The Response was filed with the Center on October 23, 2012.
The Center appointed Alistair Payne as the sole panelist in this matter on November 1, 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 operated since 1975 from France as the manufacturer of its LISE CHARMEL range of women’s undergarments. It distributes its products in numerous jurisdictions including the United States of America and owns a range of trademark registrations for the range worldwide including in particular a word mark registration for LISE CHARMEL in France under registration number 1555185 since 1989. The Complainant also owns a range of domain names incorporating the LISE CHARMEL mark.
The Respondent, based in the United States, has since August 2008 operated an on-line business from a website at the domain name “www.laurela.com” selling various ranges of women’s undergarments, including the Complainant’s garments since 2008. Subsequently the Respondent set up a blog site concerning the Complainant’s products under the disputed domain name. It registered the disputed domain name on June 6, 2009.
5. Parties’ Contentions
The Complainant submits that the operative elements of the disputed domain name are identical to its LISE CHARMEL registered trademark.
It says that to its knowledge the Respondent has no trade mark or trade name rights in the LISE CHARMEL mark and has not been authorized or licensed to use the mark by the Complainant. The Complainant submits that the Respondent has without authority used the disputed domain name to sell products identical to those of the Complainant. In short the Complainant maintains that the Respondent used the disputed domain name to attract Internet users to its website to sell goods in direct competition to the Complainant. It says that the Respondent by using a pseudo blog site at the disputed domain name then diverted Internet users to its retail site from which it sells not only the Complainant’s range but also other product ranges. In doing so the Complainant submits that the Respondent has attempted here to divert traffic away from the Complainant and its products, or at the least to prevent the Complainant from owning the disputed domain name, none of which is consistent with the Respondent having a bona fide interest in the disputed domain name. As a result says the Complainant the Respondent has no rights or legitimate interests in the disputed domain name.
As far as bad faith is concerned the Complainant submits that the Respondent either registered the disputed domain name primarily for the purpose of disrupting a competitor or intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant notes in support of these contentions that (a) the Respondent chose to set the disputed domain name to an “under construction” page following the complainant’s written notifications of its rights; (b) used a pseudo blog to divert Internet traffic to its online web store at “www.laurela.com” from which it is selling identical or similar goods to those of the Complainant; (c) the look and feel of the Respondent’s fan site was aimed at confusing Internet users; (d) the Respondent was using the disputed domain name in connection with its own online retail service, in direct competition with the Complainant’s products while reproducing the trademark LISE CHARMEL on its website; (e) the Respondent has attempted to divert traffic away from the Complainant or at the least to prevent the Complainant from owning the disputed domain name. As a consequence the Complainant submits that the Respondent has registered and used the disputed domain name in bad faith.
The Respondent submits that it registered the disputed domain name in good faith in order to use it to assist promotional display for LISE CHARMEL brand merchandise sold through the website at “www.LAURELA.COM”. It says that in August 2008, the company set up a retail dealer account in order to purchase LISE CHARMEL products from the LISE CHARMEL authorized distributor in the United States, Milltex Group, Inc. The Respondent says that its marketing and retailing of the LISE CHARMEL products was known by the Complainant and that in any event the Complainant does not sell on a retail basis, but only on a wholesale basis to authorized distributors. It further says that the Respondent explicitly approved of its activities by in particular endorsing five promotional videos created by the Respondent that feature on the “www.youtube.com” website. In addition it says that it was provided with product images and with other promotional images by the Milltex Group, Inc. which it displayed on its website.
The Respondent submits that it is a bona fide authorized agent or reseller of LISE CHARMEL products and in fact carries the largest variety of these products of any retailer in the world, currently amounting to 43 collections and 626 unsold products at the time of submitting the Response. It says that it has a legitimate interest in respect of the disputed domain name as a promotional display advertising platform and reference guide to these collections and also to the products available for retail sale at LAURELA.COM. The Respondent submits that it sells genuine LISE CHARRMEL products purchased from the Complainant’s official distributor in the United States and has been invited by the appointed Lise Charmel Export Area Manager in the United States, Mr. Xavier Zorn, to view the Complainant’s new collections with a view to ordering them, but due to ill health has been unable to do so. The Respondent says that it has expended considerable resources on developing its page at the disputed domain name into a reference page that aims to create a positive image of the LISE CHARMEL products and to encourage product sales.
As for bad faith the Respondent says that it has registered and used the disputed domain name in good faith is not a competitor of the Complainant and has in no way set out to divert Internet users to the detriment of the Complainant, to disrupt the Complainant’s business or to resell the disputed domain name at a profit. The Respondent rejects the suggestion of the Complainant that its use of the disputed domain name for its informational website only assists in promoting the Complainant’s reputation. Further the Respondent says that considering that the Complainant has either neglected and not updated its main website or has failed to use its other domain names containing the LISE CHARMEL mark and therefore it is very hard to see how he has prevented the Complainant from using the disputed domain name. The Respondent submits that overall the manner in which the disputed domain name is being used only enhances the Complainant’s reputation and genuine product sales.
The Respondent also says that he responded to the first communication from the Complainant concerning the disputed domain name dated 22 March 2012 and otherwise has only acted in a bona fide manner.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant owns registered trademark rights in the LISE CHARMEL trade mark in a number of countries and in particular in France under word mark registration number 1555185 since 1989 . Further, the Panel finds that the substantive elements of the disputed domain name (not including the top level element) are identical. As a consequence the Panel finds that the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent is not an authorized dealer for its products and has never been authorized to register the LISE CHARMEL mark in a domain name. Essentially, the Complainant asserts that the Respondent’s conduct in using a pseudo blog site at the disputed domain name then diverting Internet users from that site to its retail site at which it sells products other than the Complainant’s products amounts to bad faith and is illegitimate.
On the contrary, the Respondent submits that the LISE CHARMEL products that it sells are legitimately obtained from the Complainant’s official distributor and that it has obtained marketing materials from that distributor and is in active communication with the Complainant at least through its Export Manager. It also asserts that the Complainant has indicated approval of its website blog at the disputed domain name in a social media context. The Respondent says that links in relation to each LISE CHARMEL product discussed on the blog lead to the relevant page on its on-line store and it is in no way attempting to do anything other than promote and sell more of the Complainant’s products which can only benefit both parties.
Does the Respondent reseller have no rights or legitimate interests in the disputed domain name? Previous panels considering the legitimate interests of distributors or resellers have tended to taken into account the factors identified by the panel in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903 (“Oki Data”) as set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. A respondent who is a distributor or reseller, whether officially sanctioned or not, may have a legitimate interest in the particular factual circumstances if the following circumstances apply:
(a) the respondent is actually offering the goods or services at issue;
(b) the site accurately discloses the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents;
(c) the respondent uses the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
(d) the respondent does not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Applying these factors to this case the Panel considers that factors (a),(b) and (d) are fulfilled. This is because the Respondent in this case is supplying legitimate LISE CHARMEL products purchased from the Complainant’s official distributor and based on the evidence it appears that the Complainant was aware of this activity for quite some time prior to its initial communication in early 2012. Neither the website at the disputed domain name, nor the Respondent’s retail store site to which it links, misrepresent the Respondent’s relationship with the Complainant and there is no evidence before the Panel that the Respondent has tried to corner the market in domain names containing LISE CHARMEL or any other brand.
Applying factor (c) is more difficult on the particular facts of this case. The website to which the disputed domain name resolves is as the Complainant portrays it effectively a “pseudo blog” and the Respondent admits that it is clearly for promotional purposes. This blog apparently only promotes genuine LISE CHARMEL products but also contains a link from each product displayed to the appropriate product page in the Respondent’s on-line retail store on which genuine LISE CHARMEL products are sold by the Respondent. The Complainant says that this amounts to the Respondent seeking to gain traffic or customers by using its mark and goodwill and then illegitimately switching them through to its website on which other products are sold. Although the Complainant may be correct that other products are sold from the Respondent’s on-line retail store, these other products are apparently not sold from the same pages (or, indeed, under the disputed domain name) on which the LISE CHARMEL products are sold. Does this amount to a sale of other sorts of trade marked products such as amounts to bait or switch selling for the purposes of factor (c)?
The Panel finds the case on this question to be finely balanced. The Oki Data factors provide a very useful guide in determining the rights or legitimate interests of distributors or re-sellers, although at the same time, they are intended to be applied contextually. In applying them, the Panel believes it is important to keep in mind the overarching purpose of the Policy to defeat cybersquatting and the focus of the second element of the Policy, namely that if it cannot be determined that a respondent has “no” right or legitimate interest in a domain name then the claim should not succeed.
Following this approach the Panel’s overall view is that on balance the Respondent’s links from its promotional blog page to the relevant product pages of its on-line store does not amount to bait or switch selling, or to the Respondent attempting to divert Internet users contrary to the Complainant’s interests.
In the Panel’s view this is rather a case of the Respondent seeking to promote and sell the complainant’s products in the interests of both parties. If the Complainant had really not wanted the Respondent to promote and distribute its products in this manner then it could have attempted earlier communication with the Respondent in this regard, or in the alternative it could have taken alternative legal action at any point over the last couple of years. This possibility may still be open to it, but if it wishes to do this then it is a matter for the courts and is beyond the scope of the Policy.
The Panel notes that it has reached this view after careful consideration of a finely balanced case, under the second element of the Policy, in which there is also no persuasive indication before the Panel of the Respondent having acted in bad faith towards the Complainant. This case arises in a narrow category of case involving reseller arrangements and turns on its particular facts. It should not be interpreted in any way as a charter for re-sellers to indulge in a spot of cybersquatting for the purposes of diverting Internet users to their own site in order to sell or endorse alternative products or services.
For the foregoing reasons, the Complaint is denied.
Dated: November 15, 2012