WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clairol Incorporated v. Jean-Pierre Fux
Case No. DTV2001-0006
1. The Parties
The Complainant in this proceeding is Clairol Incorporated ("Complainant"), a Delaware corporation and a wholly owned subsidiary of Bristol-Myers Squibb Company ("BMS"), with a registered office at 1 Blachey Road, Stamford, Connecticut, 06922, USA.
The Respondent in this proceeding is Jean-Pierre Fux ("Respondent"), the registrant of the domain name in issue with a listed mailing address of 1159 Trofeo Circle, Palm Springs, California, 92262, USA.
2. The Domain Name and Registrar
The domain name in issue is <clairol.tv>.
The registrar of the domain name in issue is the .TV Corporation ("Registrar") located at 1100 Glendon Ave., 8th Floor, Los Angeles, California 90024, USA.
3. Procedural History
On March 6, 2001, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain name <clairol.tv> and paid the required filing fee for appointing a single member Panel. On March 7, 2001, the Center sent an "Acknowledgement of Receipt" of the Complaint to the Complainant.
On March 8, 2001, the Center sent a "Request for Verification" concerning the domain name in issue to the Registrar. On March 8, 2001, the Registrar provided a Verification for the domain name in issue to the Center indicating, in pertinent part, that: (i) it had received the Complaint from the Complainant; (ii) it is the registrar of the domain name <clairol.tv>; (iii) the Respondent, Jean-Pierre Fux, is the named registrant of the domain name in issue with a listed mailing address of 1159 Trofeo Circle, Palm Springs, CA 92262, USA; (iv) the Policy applies to the domain name; and (vi) the domain name is currently in "active" status.
Please note that the disputes arising under the .TV top-level domain are governed by the Uniform Domain Name Dispute Resolution Policy ("Policy") of the Internet Corporation for Assigned Names and Numbers ("ICANN") and the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), approved by ICANN. This Policy and these Rules were adopted on a voluntary basis by the registration authority of .TV. In addition to the Policy and Rules, the Center has developed its Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") that entered into effect on December 1, 1999.
On March 12, 2001, the Center found the Complaint to be in compliance with the formal requirements of the Policy, the Rules and Supplemental Rules. On March 12, 2001, the Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" and the Complaint to the Respondent at the postal address and e-mail address listed in the domain name registration. Copies of the Notification and Complaint were also sent to the Registrar and the Complainant. The Center did not receive an error message or notice of non-delivery when the Notification and Complaint were sent to the e-mail and postal addresses listed in the registration for the Respondent.
On March 14, 2001, the Complainant proceeded to send a further letter with exhibits ("Letter") to the Center citing twenty-one other domain names registered to the Respondent in the .TV domain. In the Letter, the Complainant requested the Panelist to consider the Letter as a supplement or amendment to the Complaint based upon such registration information not being available at the time of filing of the Complaint.
On April 2, 2001, after the twenty day period had expired as required by paragraph 5(a) of the Rules and no response from the Respondent was received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainant.
On April 2, 2001, the Center invited the undersigned Panelist to serve as a single member panel in this proceeding. On April 3, 2001, the Panelist submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" with the Center. On April 6, 2001, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.
Based on a review of the record for this proceeding, the Panelist concurs with the Center's finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the panel was properly constituted and appointed. The Panelist also finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a response. The Panelist shall accordingly draw such inferences from the Respondent's default, as the Panelist considers appropriate based upon paragraph 14(b) of the Rules.
With respect to the Complainant's additional submission, it is noted that acceptance and consideration of any additional submission is discretionary with the Panelist. Based upon the Panelist's review of the record and confirmation thereof with the Registrar on its policy concerning registrant information, the Panelist has decided to accept the Letter and shall issue a decision based on the Complaint, the Letter, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complaint is based on the mark CLAIROL which is registered in over 120 countries. A schedule of the Complainantís worldwide trademark registrations for this mark as well as a copy of the registration certificate for U.S. Registration No. 302,399 (issued April 18, 1933), for the mark CLAIROL used in connection with pharmaceutical preparation, namely, hair dyes and hair lotions were attached as Exhibits 1 and 2, respectively, to the Complaint.
The domain name in issue was registered on September 24, 2000, to the Respondent and there is currently a "Domain Name Holder" Web page accessible at this domain name. A copy of the Whois information for the domain name as well as a printout of the corresponding Web page were attached as Annexes A and Q, respectively, to the Complaint.
5. Partiesí Contentions
The Complainant asserts that it is the owner of over 120 worldwide trademark registrations for the mark CLAIROL. A schedule of the Complainantís trademark registrations and a copy of the United States registration certificate for the earliest registered CLAIROL mark were attached as Exhibits 1 and 2, respectively, to the Complaint.
The Complainant asserts that it is a leading company in the beauty care industry with recent annual sales of $2 billion and that it is the number one hair care company in the United States. The Complainant asserts that its CLAIROL trademark is among the most famous and well-respected marks in the world and that it has been used extensively on television and the Internet, in magazines and various other media. The Complainant further asserts that, by reason of the extensive use and advertising of its products, the CLAIROL mark has come to be recognized and relied upon as identifying the Complainant and its beauty products.
The Complainant asserts that it has an active presence on the Internet with <clairol.com> being its principal domain name since it was registered on March 21, 1997. The Complainant asserts that it also owns the domain names <clairol.net> and <clairol.org> as well as other domain names incorporating the CLAIROL mark.
The Complainant asserts that, without its authorization, the Respondent registered the domain name in issue. The Complainant asserts that the domain name is identical to the Complainantís CLAIROL trademark, which was both famous and distinctive at the time the Respondent registered the domain name.
The Complainant asserts that, on October 30, 2000, attorneys for BMS wrote to the Registrar requesting deletion of the domain name in issue and its Web page, disclosure of the identity of the registrant and assurances from the Registrar that there would be no subsequent registrations of the domain name in issue or any other name likely to infringe the Complainantís CLAIROL mark (a copy of letter attached as Annex I). The Complainant asserts that the Registrar thereafter provided the Complainant with the name and address of the registrant.
The Complainant asserts that, on November 1, 2000, attorneys for BMS wrote to the Respondent stating that the Respondentís registration of the domain name violated its rights and demanded that the Respondent transfer the domain name in issue to BMS or its designee (a copy of letter attached as Annex J). A copy of the Federal Express tracking receipt showing that the letter was delivered to the Respondentís address was attached as Annex K. The Complainant asserts that, after receiving no response, the Respondent was sent another letter dated December 4, 2000, requesting a response to the first letter (a copy of letter attached as Annex L).
The Complainant asserts that, on December 15, 2000, Mr. Trad, a business associate of the Respondent, telephoned one of its attorneys and stated that he was authorized by the Respondent to handle this matter based upon the Respondentís limited English language capabilities. The Complainant asserts that during the conversation Mr. Trad acknowledged that the Respondent registered the <clairol.tv> domain name because it was a famous trademark and offered to sell the domain name to the Complainant, stating its value as $10,000. A declaration from the attorney was attached as Exhibit M. The Complainant then asserts that, on December 18, 2000, it received an e-mail message from the Respondent that stated his willingness to settle the matter for $5,000 (a copy of message attached as Annex N).
The Complainant asserts that, on December 19, 2000, it sent a letter to the Respondent rejecting its offer to sell the <clairol.tv> domain name, citing this as bad faith under the Policy, but, however, offering to reimburse the Respondent for his registration costs if he would transfer the domain name (a copy of letter attached as Annex O).
The Complainant asserts that, on December 20, 2000, Mr. Trad, again on behalf of the Respondent, telephoned the Complainantís attorney and demanded payment in excess of the Respondentís registration costs. (Exhibit M). The Complainant asserts that, on December 21, 2000, it received another e-mail message from the Respondent offering to "negotiate" the return of the domain name but only for an amount far in excess of his initial registration fee (a copy of message attached as Annex P). Particularly, in the message, the Respondent stated, inter alia:
We had previously given you the negotiation starting price for the domain name of <clairol.tv>. Bad faith would be to not negotiate for this domain name at this point. With the legal expenses & arbitration hearings (up to 3) for this matter. [sic] I would think that you would be willing to settle this quickly [sic] amiably for much less expense. In regards to the legality of our owning this domain name. [sic] My wife has used your clients [sic] Products so much for many years that they had nicknamed [sic] "Clairol," we are actively putting together a web site for <clairol.tv> as a personal family site, as per arbitration laws & cases-if we show a rested [sic] & legitime [sic] interest for owning that domain name (which we have) then 50% of the cases have been in favor of the domain name holder. Now we understand the trademark aspect of that name however, a 40% change [sic] that you may get it in arbitration should compel you to work this out amiably [sic] big legal hassles & getting our attorney involved. We are very willing to negotiate, but certainly not your offer of what we paid for the domain name. Lets [sic] work together so we each can go on with our lives.
The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name because there is no evidence to indicate that the Respondent: (i) has, at any time, used or made demonstrable preparations to use, the domain name or any name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) has made any legitimate noncommercial or fair use of the domain name.
The Complainant asserts that the Respondentís arguments in his e-mail message of December 21, 2000, that he has rights to the domain name due to his wifeís "Clairol" nickname (based on her longtime use of CLAIROL products) and his plan to establish a personal family page at the site have no merit. The Complainant asserts that such explanations are inadequate to rebut a showing of bad faith insofar as the Respondent has made clear the sham nature of such explanation by admitting in the e-mail that his sole purpose in creating the "personal family page" is his belief that it will establish the minimum interest needed to avoid an unfavorable arbitration result. (Exhibits M and Q).
The Complainant asserts the Respondent had registered and used the domain name in bad faith because: (i) pursuant to Paragraph 4(b)(i) of the Policy, the circumstances clearly demonstrate that the Respondent registered the domain name with the intention of selling it in excess of out-of-pocket costs directly related to the domain name; (ii) the Respondent failed to develop its Web site since September 24, 2000; and (iii) pursuant to Paragraph 4(b)(ii) of the Policy, the Respondent is a cybersquatter who seeks to take advantage of an owner of a famous mark and prevent the owner from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct by registering other famous marks as domain names. The Complainant asserts that the Respondent has also registered an additional twenty-one domain names in the .TV domain. The Complainant asserts that one domain name is a misspelling of the famous mark AIWA and the other twenty domain names consist of internationally famous trademarks of seventeen American and European companies (<weleda.tv>, <shorenstein.tv>, <cbrichardellis.tv>, <folgers.tv>, <pelikan.tv>, <vonroll.tv>, <uncle-bens.tv>, <unclebens.tv>, <pierre-lang.tv>, <technogym.tv>, <pantene.tv>, <schiltknecht.tv>, <lonza.tv>, <alusuisse.tv>, <emschemie.tv>, <schindler.tv>, <julius-baer.tv>, <princesshotels.tv>, <ems-chemie.tv> and <juliusbaer.tv>) (copy of list attached as Exhibit A). The Complainant attached trademark registrations from the U.S. Patent and Trademark Office for thirteen of the domain names as Exhibit B. With respect to the remaining seven domain name registrations, the Complainant asserts that these registrations consist of trademarks of international companies or variations of trademarks that are not registered in the United States and attached information about each of these companies from their respective Web sites as Exhibit C.
No response was received from the Respondent with respect to this proceeding.
6. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:
(i) the domain name holderís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").
The Panelist, however, can only rule in a complainantís favor after the complainant has proven that the above-listed elements are present.
Element (i) - Domain Name Identical or Confusingly Similar to the Mark
The Complainant has presented evidence to show that it is the owner of the mark CLAIROL registered with the U.S. Patent and Trademark Office and that the mark CLAIROL is registered in over 120 countries. Such evidence is sufficient for the Panelist to find that the Complainant has rights in the CLAIROL mark. Comparing the second-level domain "clairol" of the domain name in issue with the Complainantís mark CLAIROL, the Panelist finds that the domain name in issue is identical to the Complainant's mark CLAIROL and that Element (i) has been satisfied.
Element (ii) - Rights or Legitimate Interests in the Domain Name
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proven based on its evaluation of all of the evidence presented, can demonstrate the holderís rights to or legitimate interests in the domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holderís 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 holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder 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.
Although no response was submitted by the Respondent, the Complainant did submit a December 21, 2000, e-mail message from the Respondent to one of the Complainantís attorneys in which the Respondent asserted that his wife has used Complainantís products "so much for many years that they had nicknamed [sic] ĎClairolí" and that the Respondent is "actively putting together a web site for <clairol.tv> as personal family site." Without supporting evidence, however, such assertions are not sufficient to demonstrate or support a right or legitimate interest in the domain name in issue.
Looking to the circumstances listed in Paragraph 4(c) of the Policy, the Panelist therefore finds that the Respondent: (i) before notice of this dispute, was not using or making demonstrable preparations to use the domain name in issue in connection with a bona fide offering of goods or services; (ii) was not making legitimate noncommercial or fair use of the domain name; and (iii) has not been commonly known by the domain name. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain name in issue and that Element (ii) has been satisfied.
Element (iii) - Domain Name Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(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 holderís website or other online location, by creating a likelihood of confusion with the complainant's 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.
Reviewing the evidence submitted by the Complainant, particularly, the Respondentís e-mail messages, along with the uncontested evidence showing the Complainantís mark CLAIROL having a strong reputation and being widely recognized and known, the Panelist finds that the Respondent had actual knowledge of the Complainantís mark when registering the domain name in issue. This finding is strengthened by the evidence submitted by the Complainant of the additional domain names in the .TV domain that the Respondent has registered incorporating marks or misspellings or variations of marks of eighteen other U.S. and European companies.
The Complainant has also submitted a declaration from one of its attorneys describing a telephone conference with the Respondentís authorized representative who offered the domain name in issue for sale for $10,000 as well as e-mail messages from the Respondent subsequently offering the domain name for sale for $5,000. Furthermore, as previously mentioned, the Complainant has submitted evidence of the additional domain names in the .TV domain that the Respondent has registered and in which the Respondent apparently has no rights or legitimate interests therein. Additionally, the Complainant has submitted evidence of a "Domain Name Holding" Web page accessible at the domain name in issue to show that, other than for offering the domain name for sale, the Respondent has not made any other use of the domain name. The Panelist notes that the additional domain names registered to the Respondent also resolve to the same type of "Domain Name Holding" Web page.
Based upon the above, the Panelist finds that the Respondent has registered the domain name in issue for the purpose of selling or transferring the domain name registration to the Complainant for valuable consideration in excess of documented out-of-pocket costs. The Panelist also finds that the Respondent has registered the domain name in issue to prevent the Complainant from reflecting its mark in a corresponding domain name and that the Respondent has engaged "in a pattern of such conduct." The Panelist therefore concludes that the Respondent registered and is using the domain name in issue in bad faith and that Element (iii) has been satisfied.
The Panelist concludes that: (i) the domain name <clairol.tv> is identical to the Complainantís mark CLAIROL; (ii) the Respondent has no rights or legitimate interests in the domain name <clairol.tv>; and (iii) the Respondent has registered and is using the domain name <clairol.tv> in bad faith. The Panelist therefore requires the registration of the domain name <clairol.tv> be transferred to the Complainant.
Dated: May 7, 2001