WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marie Claire Album v. Barestel Serveis S.L.L.
Case No. D2001-1452
1. The Parties
Complainant is the French company MARIE CLAIRE ALBUM, Société Anonyme (hereinafter MARIE CLAIRE), having its registered offices in 10 boulevard des Frères Voisin, Issy Les Moulineaux, France.
Respondent is BARESTEL SERVEIS S.L.L., domiciled in Avda Almazora, 13b, Castellon, Spain.
2. The Domain Names and Registrars
The domain names at issue are <mariclaire.com>, <mariclaire.net>, <mariclaire.org> and <e-marieclaire.com>. The Registrar of <mariclaire.com> is Registrars.com, and the Registrar of <mariclaire.net>, <mariclaire.org> and <e-marieclaire.com> is BulkRegister.com.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received a complaint (hereinafter the Complaint) by email on December 13, 2001, and in hardcopy and exhibits on December 20, 2001. On December 19, 2001, the Center acknowledged receipt. On December 19, 2001, the Center received a communication from the Respondent. On December 20, 2001, the Center requested an amendment to the Complaint which was received on December 26, 2001, by email and on January 3, 2002, in hardcopy. On December 20, 2001, the Center transmitted via email to BulkRegister.com and to Registrars.com, a request for registrarís verification in connection with this case. On December 27, 2001, Registrars.com and on January 8, 2002, BulkRegister.com, transmitted via email to the Center, the Verification Responses, confirming the respective registrantís data and that the Domain Name registrations are in "active" status.
The Center transmitted on January 10, 2002, to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding and on January 31, 2002, the Notification of the Respondent default.
On February 14, 2002, the Center invited Mr. Luca Barbero to serve as a panelist in the instant case and, having received his Statement of Acceptance and Declaration of Impartiality and Independence on February 15, 2002, the Center transmitted on February 20, 2001, to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Luca Barbero was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel (hereinafter referred to also as the Panel) was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
4. Factual Background
The Complaint is based e.g. on the French trademark registration n. 1.712.118 in class 16 renewed on December 16, 1991, and a number of other international and national registrations for the trademark MARIE CLAIRE (copy of registration certificates were enclosed to the Complaint).
The Respondent registered the domain name <mariclaire.com> on April 20, 2001, <mariclaire.net> and <mariclaire.org> on May 18, 2001, and <e-marieclaire.com> on May 31,2001.
5. Partiesí Contentions
The Complaint states that, in light of the registrations in over ninety countries and intensive use in commerce for many years, the trademark MARIE CLAIRE should be considered well known throughout the world, especially in Europe where the Complainant sells the famous magazine MARIE CLAIRE. The French edition, created in 1937, has been sold since the 50s in Spain, and a Spanish edition has been commercialised since 1987. There is also an edition of LA CASA MARIE CLAIRE in Spain since 1988.
MARIE CLAIRE was also registered as a domain name in several generic and country code Top level Domains corresponding to many websites in different languages (such as, <marieclaire.com>, <gyj.es>, <marieclaire.de>, <marieclaire.co.uk>).
On May 4, 2001, the Complainant sent by mail and e-mail a warning letter concerning the domain name <mariclaire.com> to the Respondent. On May 18, 2001, the Respondent registered the domain names <mariclaire.net> and <mariclaire.org> and on May 22, 2001, the Respondent asked the Complainant for a translation of the warning letter. On May 31, 2001, the Respondent also registered the domain name <e-marieclaire.com>.
On June 5, 2001, the Complainant sent a Spanish translation of the warning letter to the Respondent and on June 16, 2001, the Complainant sent a new cease and desist letter in Spanish concerning all the four domain names.
On June 20, 2001, the Complainant sent a reminder copy of the cease and desist letter by e-mail.
On June 21, 2001, the Respondentís attorney sent an e-mail in which it was stated that <mariclaire.com> was not infringing upon any rights of the Complainant and furthermore the domain names were registered to dedicate a web site to a clientís cousin, whose name is Marie Claire. Moreover, it was clearly stated that had the Complainant started legal proceedings, it would have been more expensive and it would have taken longer, while an amicable agreement between the parties would have been the best way to have the domain names transferred to the Complainant.
On July 9, 2001, the Complainant sent to the representative of the Respondent a cease-and-desist letter requesting an explanation as to the relevant number of domain names registered for the cousin (including the one identical to the trademark with the addition of the prefix Ďe-í) suggesting to proceed with the registration of a new domain name including the cousinís first name and surname together.
On July 12, 2001, the Respondentís representative refused to provide such an explanation by e-mail indicating that she would have addressed those issues in the Response to any action that the Complainant would have initiated.
As to the last domain name registration, the Complainant underlines that the Respondent "has merely added the prefix Ďe-í and this prefix has become a generic or common descriptive term used to identify electronic commerce activity. In cases No. D2000-0869, Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna; No. D2000-0522, Inter-IKEA System B.V v. Technology Education Center; No. D2000-0441, Reuters Limited v. Global Net 2000, Inc. the Panelist has judged in this sense".
The Complainant concludes that these registrations infringe Complainantís trademark rights and are likely to confuse the public as to the affiliation of a possible web site about MARIE CLAIRE. According to the Complainant by using the four domain names, the Respondent wants to take advantage of the well-known trademark MARIE CLAIRE in order to attract visitors to his websites.
Respondent has not contested the allegations of the Complainant in a Response filed according to article 5 of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy and is therefore in default.
In the documentation addressed to the Panel, it is noted a communication in Spanish from Respondent received by the Center on December 19 and 20, 2001. Mr. Jorge Cuevas Trilles, on behalf of the Respondent (as "administrador unico") indicated his decision not to obey to any arbitration Panel decision in light of the absence of a prior agreement between the parties (quoting the New York Convention of 1958) and affirmed the sole jurisdiction of court proceedings. Mr. Jorge Cuevas Trilles also addressed other issues e.g. questioning the impartiality of some WIPO decisions and making reference to general principles of trademark law.
Notwithstanding the inadmissibility of such a document in the instant administrative proceedings, with reference to the Respondentís issue questioning the applicability of the present procedure, the Panel notes that the Uniform Domain Name Dispute Resolution Policy is incorporated by reference in any registration agreement since October 24, 1999. Therefore, the Panel finds the ICANN Uniform Dispute Domain Name Resolution Policy applicable in the instant case, which encompasses in article 4(k) the availability of Court Proceedings, both for the Complainant and the Respondent.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and,
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and is being used in bad faith.
6.1. Domain Names Identical or Confusingly Similar
The Complainant has provided evidence of ownership of French trademark registration n. 1.712.118 of December 16, 1991, for the word mark MARIE CLAIRE and of the following trademark registrations; French Registration Nį1.712.366 MARIE-CLAIRE, International Registration Nį 2R193.599 MARIE-CLAIRE, International Registration Nį R338.976 MARIE-CLAIRE, and United States Registrations of MARIE CLAIRE Nį1.224.181 and Nį1.974.703 for MARIE CLAIRE as a word marks and logo.
All the domain names registered by the Respondent, <mariclaire.com>, mariclaire.net>, <mariclaire.org> and <e-marieclaire.com>, are confusingly similar to the Complainantís trademark. The word "mariclaire" is phonetically identical to the Complainantís trademark and the sign "e-marieclaire" consists in the combination of the Complainantís trademark with the prefix "e-" which is commonly used to identify electronic commerce related activities.
In view of the above, the Panel finds that the Complainant has proved that the Domain Names are confusingly similar to the trademark of the Complainant according to paragraph 4(a)(i) of the ICANN Policy.
6.2. Rights and Legitimate Interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain names. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy that :
(a) He has made 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 prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.
There is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainantís trademark and name under any circumstance.
The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the Domain Names, according to paragraph 4(a)(ii) of the ICANN Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a) (iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderí s website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holderís website or location.
The Panel is not limited by the paragraph 4(b) to determine whether the domain name was registered and used in bad faith and the Panel has therefore also taken into consideration the following particular circumstances for the assessment of bad faith.
From the correspondence enclosed with the Complaint it appears evident that the Respondent has registered the domain names <mariclaire.org>, <mariclaire.net> and <e-marieclaire.com>, all confusingly similar to the Complainant trademark only after having actually received the first cease and desist letter requesting to relinquish the domain name <mariclaire.com>. The Respondentís representative has indicated that these Domain Names were registered to reflect the name of a cousin of the Respondent, without though producing, even after the Complainantís requested, any evidence of such an information.
Also in light of the lack of a Response where the Respondent could have provided the Panel with evidence of such a circumstance, the explanation does not appear convincing especially in light of the subsequent registration of a domain name incorporating the trademark of the Complainant, but consequently slightly different from the cousinís alleged name. Therefore, the Panel infers from the conduct of the Respondent a circumstance indicating the bad faith in the registration of the Domain names <mariclaire.org>, <mariclaire.net> and <e-marieclaire.com>.
The Complainantís trademark could be considered as a well-known trademark also in Spain. Therefore, the Respondent was or should have been aware of Complainantís rights in the trademark at the time of registration of <mariclaire.com>. See e.g. WIPO Case No. D2000-0059, Barneyís Inc. v. BNY Bulletin Board, where it was found that "Complainantís high profile presence in the retail market and the fame of Complainantís mark would further tend to indicate that Respondent was aware of Complainantís rights therein".
As to the use of the instant Domain Names, it is noted that <mariclaire.com> and <mariclaire.net> are pointing to the same page where there is an indication that such a page will be "dedicated" in the future (but the services of a company producing software for web sites access data monitoring are also advertised) while the domain names <mariclaire.org> and <e-marieclaire.com> contain an indication that the domain names are not currently pointing to any active page yet.
Pursuant to prior interpretation of the UDRP in cases of passive holding of domain names first provided in Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO Case No. D2000-0003) and in a number of following decisions e.g. Ingersoll-Rand v. Frank Gully, (WIPO Case No. D2000-0021); Compaq Computer Corp. v. Boris Beric, (WIPO Case No. D2000-0042); Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO Case No. D2000-0468); Banco de Chile S.A. v. Eric S. Bord, Esq (WIPO Case No. D2001-0695), the passive holding of a domain name may constitute an "use" in the sense of paragraph 4(a)(iii) of the Policy.
Furthermore, it should be considered that any subsequent use by the Respondent of the contested Domain Names would necessarily create a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of a Respondent's web site in the sense of paragraph 4(b)(iv) of the Policy (see e.g. Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163).
In view of the above, the Panel finds that Respondent registered and used the Domain Names in bad faith, according to paragraph 4(a)(iii) of the ICANN Policy.
In light of the foregoing, the Panel decides that the Domain Names registered by the Respondent are confusingly similar to the Complainantís trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names have been registered and are being used in bad faith.
Accordingly, the Panel requires that the registrations of the Domain Names <mariclaire.com>, <mariclaire.net>, <mariclaire.org> and <e-marieclaire.com> be transferred to the Complainant.
Dated: March 6, 2002