WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pierre Balmain, S.A. v. Bart Wentholt
Case No. D2003-0278
1. The Parties
The Complainant is Pierre Balmain, S.A. of Paris, France, represented by Magnin, Dunand & Partners of Geneva, Switzerland.
The Respondent is Bart Wentholt, previously of Balmain, of Vancouver, British Columbia, Canada (WHOIS Administrative Contact address) and presently of Den Haag, The Netherlands.
2. The Domain Name and Registrar
The disputed domain name is <balmain.net>. The Registrar is Network Solutions, Inc.
3. Procedural History
The Complaint was filed in hardcopy with the WIPO Arbitration and Mediation Center (the "Center") on April 10, 2003, and by email on April 15, 2003. On April 10, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On April 14, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and verifying the address details for the Respondent as administrative contact for the domain name. In response to notifications from the Center dated April 11, 2003, of certain formal deficiencies in the Complaint, the Complainant filed an amendment to the Complaint which was received by the Center on April 16, 2003. The Complainant confirmed payment of the required fees to the Center. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 initially commenced on April 17, 2003. In accordance with the Rules, paragraph 5(a), the Center notified the Respondent that the due date for any Response to be sure of consideration in these proceedings would be May 7, 2003. An email reply from the Respondent was received by the Center on May 5, 2003, with a draft for a Response attached. The Respondent noted that he had moved from the original Canadian address and to an address in The Netherlands. He requested an extension of time to submit a formal Response on the basis that none of the earlier postal correspondence had reached him after consultation with the Complainant, who also sent a further copy of the Complaint to the Respondentís address in The Netherlands, the Center agreed to extend the deadline for a Response to May 18, 2003. A formal Response was filed with the Center by email on May 15, 2003.
The Center appointed Keith Gymer as the Sole Panelist in this matter on June 13, 2003. 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.
Subsequently, on June 19, 2003, the Complainant submitted Additional Comments of The Complainant. The Panel has reviewed these Additional Comments, but does not consider that they add anything material to the case and these comments have not influenced the Panelís decision.
4. Factual Background
According to the WHOIS record, the domain name <balmain.net> was first registered to the Respondent on July 15, 1998.
The Complainant submitted evidence of registration of a number of trademarks for PIERRE BALMAIN and BALMAIN in various forms with and without additional elements (including the letters P B). These included:
FR 1551543 PIERRE BALMAIN (stylised); Classes 14, 26 dated September 20, 1989* FR 1526016 PIERRE BALMAIN (& device); Classes 9, 14, 16, 18, 20, 24, 25, 26, 27, 33, 34 dated April 25, 1989, renewed March 19, 1999
FR 1560170 BALMAIN (stylised); Classes 6, 9, 11, 14, 16, 18, 20, 24, 25, 27, 34 dated November 15, 1989, renewed September 24, 1999
FR 99 776 880 BALMAIN (stylised); Classes 9, 14, 16, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 30, 33, 34 dated February 16, 1999
FR 1589161 PIERRE BALMAIN+PB (stylised); Classes 9, 11, 14, 16, 18, 20, 21, 23, 24, 25, 26, 27, 33, 34 dated April 27, 1990, renewed November 29, 1999
IR 583755 PIERRE BALMAIN + device; Classes 16, 21, 24, 33, 34 dated March 23, 1992
IR 451759 balmain; Classes 6, 9, 11, 14, 16, 18, 20, 24, 25, 27, 34, renewed April 25, 2000
IR 758712 BALMAIN (stylised); Classes 9, 14, 16, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 30, 33, 34 dated April 10, 2001
IR 572948 PIERRE BALMAIN + PB (stylised); Classes 9, 14, 18, 25, 27 dated July 19, 1991
IR 440345 PIERRE BALMAIN + device; Classes 9, 14, 25 dated October 16, 1978*
IR 278611 PIERRE BALMAIN PARIS (stylised); Class 18 dated January 17, 1984
IR 439276 PIERRE BALMAIN + device; Classes 18, 20, 34 dated June 28, 1978*
IR 477309 pierre balmain + device; Class 21 dated May 10, 1983
IR 183835 PIERRE BALMAIN (stylised); Class 25 dated April 2, 1995
IR 455133 pierre balmain + device; Class 28 dated September 26, 1980*
IR 541639 PIERRE BALMAIN + device; Class 33 dated July 19, 1989
IR 560360 PIERRE BALMAIN + PB (stylised); Classes 14, 18, 25, dated September 17, 1990
CTM 1262039 BALMAIN (stylised); Classes 9, 14, 16, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 30, 33, 34 dated July 30, 1999
CTM 1584549 PIERRE BALMAIN PARIS + PB (stylised); Class 14 dated March 30, 2000
CTM 390229 PIERRE BALMAIN + PB (stylised); Classes 9, 14, 16, 18, 21, 23, 24, 25, 26, 28, 33, 34 dated October 8, 1997
(*evidence of renewal of these registrations was not provided).
The International Registrations designated a variety of states party to the Madrid Agreement and, in some cases, were subject to various refusals and limitations, the extent of which was not specified.
None of the registrations listed related to rights in Canada or Australia.
5. Partiesí Contentions
The Complaint is based on the trademark BALMAIN registered all over the world in the name of the Complainant for goods and services in various international classes, as listed above.
By registering the domain name <balmain.net>, the Respondent submitted to mandatory administrative proceedings in accordance with the resolution policy governing uniform rules of disputes relating to domain names.
On April 25, 2000, the Complainant addressed a mail to the Respondent stating that it is aware of the use of the trade name PIERRE BALMAIN on the Internet web by the Respondent and inviting the Defendant to cease its unlawful use. No answer was ever received by the Complainant. [Panel note: In fact, the copy of the mail attached to the Complaint was addressed to a "Mr Kevin Tang," who is not the Respondent.]
On November 27, 2000, the Complainantís Attorney [then SCP Bizet] sent a registered mail with acknowledgement receipt to Mr. Kevin Tang, 401-1845 Robson Street, Vancouver, asking for the Respondent to immediately stop any reference to trade names BALMAIN and Pierre BALMAIN. He did not receive any answer either.
On August 23, 2001, the Complainant sent an email requesting the Respondent [this time properly identified as Bart Wentholt] to stop the use of the trade name BALMAIN or PIERRE BALMAIN on the internet web.
On August 31, 2001, the Respondent sent an e-mail to the Complainant with the following content [the full text was appended to the Complaint Ė the paragraphs below are only a partial extract]:
( Ö )
"Although I am not using your name, but the name of a city and an abbreviation and even though I am not sure my trade can in any way cause an infringement of your trade mark, I am aware that protecting your trademark is of the utmost importance to you. I am also aware, as I am sure you are, that recent legal battles around domain names have led to high legal cost and not necessarily to clarity around the subject of domain name protection in conjunction to trade mark protection.
"I am not interested in lengthy legal battles with an uncertain outcome and I am sure you are not interested in that either. Therefore, I would like to propose to you that we come to an agreement under which I give you all the rights to the domain name and change the name of my company and company registration and will refrain from using the name Balmain in any way. In return I ask from you a contribution for costs to be incurred for registering a new company name, a new domain name, altering and or redesigning my web site content, redesigning and reprinting of business cards, folders and a mailing to all my clients informing them about the change.
On July 10, 2002, in view of the obvious pointless arguments of the Respondent and him continuing to use the domain name <balmain.net>, the Complainantís Attorney addressed a mail to NETWORK SOLUTIONS INC. inviting them to cease the registration of the domain name <balmain.net>. [In fact, no evidence was provided of any additional arguments having been made by the Respondent to the Complainant, or even of any further correspondence at all between the parties, in the period August 31, 2001 to July 10, 2002].
On January 15, 2003, the Complainantís Attorney [then changed to Bizet & Moreau] asked again Mr. Wentholt by registered mail [the evidence shows this letter was also sent by email] with acknowledgement receipt to immediately cease the unlawful use of the domain name <balmain.net> and warned him about the present procedure for arbitration before the ICANN.
On January 16, 2003, the Respondent sent an e-mail to the Complainantís Attorney [Bizet & Moreau] with the same content as his here above quoted mail dated August 31, 2001.
In accordance with the [UDRP Rules], a domain name might be contended:
1. if it is identical or confusing by [sic] similar to a trademark or a service mark, and
2. if the Respondent has no rights or legitimate interests in respect of the domain name, and
3. if the registration of the domain name was done in bad faith.
In the present case, the Complainant is the holder of a famous trademark registered worldwide in different classes of goods.
The domain name chosen by the Respondent is identical to the trademark of the Complainant.
The Respondent, Mr. Bart Wentholt, has no rights or legitimate interests to use the domain name <balmain.net>, that could exceed the interest of Pierre BALMAIN S.A. to protect its registered name and worldwide reputation.
Indeed, the excuses about the city called BALMAIN and the abbreviation of the activity of Ďbalance maintenanceí are not only insufficient for the Respondent to appropriate the name of a famous registered trademark to take advantage of its good reputation, but are obviously bad faith arguments in order to abuse the Judge.
Some personal attachment to a particular city fortunately does not give the right to anyone to appropriate its name, especially if it is already duly registered and if it corresponds to an international well-known trademark.
Concerning the confused explanation of the Respondent related to his way of restoring the body balance with his hands, which would ensure him, according to his explanation, the right to use the registered name BALMAIN because it would suggest somewhat the terms "balance maintenance," it is absolutely misleading and it clearly shows that the Respondent tries to fake some good faith.
The fact that Mr. Bart Wentholt was ready to change the name of his company and his domain name in return of a financial contribution, as per his e-mail dated August 31, 2001, and January 16, 2003, also shows that he has no particular attachment to the domain name <balmain.net>, except for all the obvious unlawful advantages that it implies in terms of reputation, credibility and high-class image.
The domain name is used in bad faith for the following reasons:
a) As per the ICANN case law, there is evidence of the registration and the use in bad faith if the domain name corresponds to a well-known trademark and if it is very unlikely that the domain name holder did not know about this trademark before registering the contentious domain name.
In the present case, the Respondent could not ignore the existence of the trademark BALMAIN, which is duly registered and well known on an international level in the field of fashion and ready-to-wear.
b) The evidence for the registration and use in bad faith is also established if by using the domain name, the holder intentionally attempted to attract, for commercial gain, internet users to the website by creating likelihood of confusion with the Complainantís mark (resolution policy governing uniform rules of disputes relating to domain names 4.b) iv)).
In the present case, the use of the domain name identical to the trademark of the Complainant, is conceived to attract for commercial gain Internet users to a particular website by creating a confusion with a famous worldwide trademark.
The content of the Respondent website, which concerns his sect-like way of restoring the energy balance of the human body, engenders an important discredit of the trademark BALMAIN.
Since Mr. Wentholt explained that he chose this domain name as an abbreviation of "BALance MAINtenance" and since he is obviously aware of the existence of the well known trademark BALMAIN, he simply should refer to his activity with the domain name "Balance Maintenance." The fact that he did not proceed this way proves that he actually tries to take advantage of the existing trademark BALMAIN, in order to unfairly attract peopleís attention on his website regarding his activity of Balance Maintenance.
c) In the present case, the domain name holder also offered to stop using the domain name if the Complainant would provide him with an amount corresponding to huge costs covering the registration of a new company name, a new domain name, altering and or redesigning his website content, redesigning and reprinting of business cards, folders and a mailing to all his clients informing them about the change.
This offer shows that the Respondent is perfectly aware of his unlawful use of the domain name <balmain.net>.
The Complainant requests the cancellation of the domain name <balmain.net>.
Competence of the arbitration panel.
The WIPO Arbitration and Mediation Centerís competence is based on Uniform Domain Name Dispute Resolution Policy as adopted by the Internet Corporation for Assigned Names and Numbers ICANN of October 24, 1999.
It is stated in the Complaint that this Policy is incorporated in my registration agreement. As my domain name was registered in July 1998, I contend that this Policy could therefore not be incorporated in the registration at the time of the initial registration. I therefore request the panel to explicitly decide whether or not and if yes on what grounds it is the competent panel to decide this case.
In the email of August 23, 2001, I was summoned by Complainant to refrain from using my then 3-year-old site. In my reply I stated I was not infringing on their supposed rights. As they did not reply to that email I consider the matter closed. To wait almost a year and a half to reply, Mr. Bizetís email from January 2003 was the first correspondence I received, is unreasonable.
Content of the case.
Correspondence from WIPO, other than email, concerning this case only reached me on May 9th and from Pierre Balmain on the 12th after my request for an extension to respond. This has left me only a week to respond which I will do here below. Because of time constraints and the fact that I am currently in the Netherlands I have no access to my files regarding this because they are in storage in Canada.
Complainant contends that he has sent me documents by registered mail, which he claims were received by me, but to which I never responded. The address used was 401-1845 Robson St, Vancouver. As said address was vacated by me on 1 September 1999, none of the correspondence sent by regular or registered mail ever reached me.
Furthermore as you can see from Complainantís exhibit 2 and 3 the correspondence was not even addressed to me but to a certain Mr. Kevin Tang. The individual Kevin Tang is unknown to me and stands in no relation to me. Any correspondence sent to Mr. Tang at my old Robson Street address and accepted by him, according to Complainant on my behalf, never reached me.
The e-mails sent by Valerie Constant, legal advisor at Pierre Balmain SA on August 23, 2001, and by Mr. Dunand in January 2003, were promptly responded to. This proves that the lack of response to the mail sent to the address on Robson Street was due to the use of an incorrect address and addressee by Complainant rather than unwillingness of me to respond. Please note that exhibits 4 and 7 offered by the Complainant speak of letters. This however is not right because the mail referred to is electronic and thus email. No letters were ever received.
In my email of August 2001, I stated I was not infringing on Complainantís trade mark. As I did not receive any reaction to the contrary from Complainant within a reasonable time I contend that Complainant has implicitly agreed to my conclusion in that email. To wait 16 months to respond is not a reasonable time.
Trade name protection and rights to a site name.
Complainant bases this case on the assumption that Complainant is the sole proprietor to the use of the word Balmain. As proof for that it has attached several copies of its trade mark registration.
After reviewing the exhibits I can only conclude the following:
a) In none of the registrations proof is made that Complainant also registered the name for Canada.
b) None of the products or services for which the name Balmain was registered include the services I offer, which is balance maintenance of the human bodyís energy system through therapeutic touch by methods used world wide of Cranio-Sacral-Therapy, Polarity Therapy, Touch for Health and other forms of Kinesiology.
How did I get in contact with the name Balmain? In 1997 I visited Sydney Australia and particularly its suburb Balmain. It was there that I decided to leave my previous high paid job as a senior manager for structured trade finance out of conviction to help others and not to get rich (for that I should have stayed in my previous profession). I started Balmain Energy Work in Vancouver, BC, Canada as a single proprietorship. I filed for a business name registration for "Balmain Energy Work" with the registrar of the Province of British Columbia. Before a name can be registered the Registrar performs a name search to assure the new name does not infringe on any existing names. As the name was approved, registration was done, no infringement under the law was made as the Balmain name is not registered in Canada and is involved in a totally different line of business.
Furthermore it is clearly stated on my website and in my correspondence with Complainant that the word Balmain as used by me is an abbreviation of my business name Balmain Energy Work. In that name Balmain stands for balance maintenance, which I do with my hands or in French balance a main. Furthermore the word used by me refers to the city of Balmain, NSW, Australia. I contend that my site name <balmain.net> is a logical abbreviation of my business name and as such not an infringement on the trade mark of Pierre Balmain. The thought of Pierre Balmain never crossed my mind.
I kindly refer to the Strickland case and an article in the "legal inteligenceríí of August 31, 2001 [this was attached as exhibit 1 to the Response].
At the time of my registration of the <balmain.net> site the city of Balmain was the holder of the <balmain.com> registration. No other sites with reference to the word Balmain were registered at that time except for those related to the city. I am not sure whether Complainant came to an agreement with that city to have the .com transferred to them, but the registration of <balmain.com> as a site name for Pierre Balmain SA is from September 2000 and thus 2 years after my registration.
I contend that:
I registered my business name in 1998 in accordance with the laws of Canada.
The subsequent registration of my site name was a logical business name abbreviation. As there were no other registrations with a similar name besides those related to the city of which I was aware I did not have any reason to think I was infringing on anybodyís right, for the simple reason that I was not.
Pierre Balmain SA when they decided to become active on the internet, probably mid 2000 they must have noticed that there were already sites registered under the Balmain name. At least one for a city and one for a business totally different than their own in a jurisdiction for which they did not have a trade mark registration. Therefore the statement of Complainant that I could have easily used the site name balance maintenance applies to them. They could have easily used another site name. How about <pierrebalmain.com>?
Complainant claims that I am using the name Balmain to gain from the reputation of the Pierre Balmain brand. The opposite is true. The fashion and perfume industry are, besides with beautiful clothing and nice smells, associated with high usage of chemicals, environmentally unfriendly dyes, sweatshops and under-nourished mannequins. This association is unlikely going to lead to financial benefit for me.
People who search the internet do this with a purpose. Someone who suffers from severe headaches due to whip-lash or someone who suffers from insomnia will search for alternative therapies if their regular therapy does not alleviate the problem. They will not be enticed by the name Balmain as in Pierre Balmain, but they will be motivated to come for treatment based on the content of the site and the therapies explained therein.
The opposite also applies. Someone who searches the internet for information on how to obtain information on Pierre Balmain products or vendors of those products will, when they come to my site see the first page and realize it has nothing to do with what they are looking for and do another search. Should they however continue to read the site, then reading about a holistic view on health is very unlikely to discredit the name of Pierre Balmain.
No consumer will be confused about the difference between the products of Pierre Balmain and my services. Furthermore no consumer will in any way link my line of work with the products of Pierre Balmain. Hence it is unlikely that they will be motivated to come to me for a treatment when they really want to buy a dress. Nor is there any chance that someone who wants to buy a dress or perfume refrains from doing so after they read my website. I contend that the typical customer of Pierre Balmain will not search the web about the Balmain products, but will know where to find it.
Last but not least, 99% of my clientele stems form referrals and word of mouth advertising. People who had a beneficial experience will advise their friends and relatives to come to me. The <balmain.net> site functions predominantly as a source of information for my existing clients and the ones they refer to me.
Therefore I state there is no trade effect to either the Complainant or the Respondent caused by the similarity of the trade mark of Pierre Balmain and the site name of Respondent. During the years that I have had this site I have had a couple of reactions to it from people that live in Balmain, Australia. One message from someone in Quebec who has Balmain as last name and was wondering whether I wanted to sell the name, which I did not. Never have I had anyone inquire about the Pierre Balmain products.
Willingness to sell the site name.
After receipt of the email of Valerie Constant of Pierre Balmain SA in 2001 I did some research on the net. I found out that there have been several cases with regards to registration of site names where Complainant lost the case and Respondent won. (<armani.com>, <strick.com>, <chambord.com>). However the legal costs and time spend on both sides were enormous. To avoid spending that time and incurring these legal costs, which would only benefit the lawyers and no one else, I asked whether we could come to a solution that would be workable for all parties concerned. I did not want to sell the site name, just asked for assistance in registering a name that would be acceptable to both parties.
I like to stress that in those cases mentioned Respondent won. Contrary to what Complainant alleges that this willingness to give up the name construes a proof of bad faith, it was only done to avoid making costs on both sides.
Complainant states that I was trying to get huge amounts of money from them. Again Complainant is ill-informed about the workings of the internet. For your information the total costs of registering the name and site name, designing the website and printing information materials were a lot less than the arbitration fee of USD1500 Complainant is paying now.
If for example Pierre Balmain would have agreed to have the site name changed into <balmainenergywork.com> or net that would have meant a simple new registration and transfer of the site to the new name. I would think that could have been done for an amount less than they are now paying their lawyers to pick up the phone. However Complainant opted not to communicate.
As I received no reply from Complainant to my email in 2001, I considered the matter closed and still do. This is what I confirmed to Complainant in my reply to the email of legal counsel Dunant in my email of January 16, 2003. I did not renew my invitation to come to a less costly solution.
Complainant fails to prove the existence of bad faith. Firstly Complainant claims that it is likely that I was familiar with the name Balmain. A likelihood does not prove that I was aware of it, it surely does not proof bad faith. Secondly Complainant claims that I am running a sect-like operation that would benefit from the use of the name Balmain. This clearly proves that Complainant has not sufficiently researched the sort of business I do and therefore cannot establish bad faith. For your information sects are typically religious groups. I am a one person operation without any religious base to that operation.
Thirdly Complainant states that my offer to come to an understanding to hand over the site name is a proof of bad faith is also unfounded. As I already stated under 4 above the offer was based on other cases which were won by the site name holder, thus proving good faith on their behalf, who never the less had to pay for enormous legal cost to their lawyers. Lastly Complainant fails to proof that I intended to, or do benefit from their reputation nor does it proof that I intended to, or do harm their reputation. On the contrary, it will benefit the Complainant if their name is associated with a health oriented approach to life such as I help my clients regain.
As I already stated above under 3 the use of the word Balmain refers to the abbreviation of balance maintenance and balance a main and the city of Balmain, the similarity to Pierre Balmain and its trade mark is purely coincidental. A trade mark does not protect against the use of existing words when that use is in no way related or detrimental to the holder of the trade mark.
The inception of Balmain Energy Work and its registration of its site name in 1998 was done in good faith in accordance with the law, to inform people about the possible ways of allowing the body to maintain a healthy balance.
Based on the above I conclude.
- Complainant has implicitly agreed to the statement of Respondent that he is not infringing on Complainants trademark by not responding within reasonable time to Respondentís email of August 2001.
- Complainant does not have the sole right to the name Balmain on the bases that the trademark registrations were done outside of and not including Canada, nor do they include the therapeutic services rendered by Respondent.
- A trademark protection does not protect against every coincidental similarity of words or use of existing words in a site name registration when that use is in no way related or detrimental to the holder of the trademark.
- Complainant failed to appropriately deliver the documents to Respondent, by addressing them to the wrong address and the wrong individual. This has severely restricted the Respondent to prepare his response.
- Respondent did not act in bad faith nor can bad faith otherwise be established.
C. Complainantís Additional Comments
Competence of the arbitration panel -
The Panelist appointed by the WIPO Arbitration and Mediation Center is clearly competent to decide the present case.
The time delay used by Pierre BALMAIN S.A. to reply to the Respondent e-mail does obviously not mean that the Complainant accepted the detrimental situation nor the misleading arguments of Mr. Wentholt.
Content of the case Ė
The official address registered by the Respondent in the Whois information NetNames database is in Vancouver, Canada.
The trademark BALMAIN is registered all over the world in the name of the Complainant for goods and services in the international classes, as per the corresponding registration certificates.
According to the Respondentís explanation, he uses the domain name <balmain.net> because it would suggest the terms "balance maintenance." Then he would only have to use the domain name <balancemaintenance.net>, <balamain.net>, <bamaint.net>, or anything but <balmain.net>, in order to solve the problem. The fact that he refuses to use a domain name corresponding to "balance maintenance" is not innocent and implies that he wants to take advantage of the reputation, credibility and high-class image of the trademark BALMAIN.
Canadian laws have nothing to do with the fact that Mr. Wentholt unlawfully uses the registered trademark BALMAIN. This unlawful use is totally misleading for the consumers, who may think that BALMAIN started a new activity of sophrology or such parallel activities which would engender an important discredit of the trademark BALMAIN.
The use of the domain name identical to the trademark of the Complainant, is clearly conceived by Mr. Wentholt to attract for commercial gain Internet users to his particular website by creating a confusion with a worldwide famous trademark.
The fact that Mr. Wentholt was ready to change his domain name in return of a financial contribution shows that he has no particular attachment to the domain name <balmain.net>.
BALMAIN did not have to pay US$1,500 in order to retrieve its own name and trademark, and this proposal from Mr. Wentholt proves that he could easily work without using the name of BALMAINís registered trademark.
The existence of the Respondentís bad faith is obvious in the present case, since he refuses to cease the unlawful use of BALMAIN trademark, which he tried to give back against a financial compensation, and since he could use any other abbreviation referring to his activity of balance maintenance.
Indeed, while he explains that his domain name <balmain.net> is deeply connected to his activity, he was ready to give it up for a small financial compensation and he is perfectly aware of the existence and reputation of the BALMAIN trademark (in Canada and in the Netherlands).
The fact that he even though keeps on with his unlawful use of this trademark makes him a conscious and declared infringer.
Thus, the Respondent does not supply us with any element which would counter the legal reality that Pierre BALMAIN S.A. is the holder of its trademark BALMAIN.
6. Discussion and Findings
The Respondent has explicitly queried the competence of the Panel to decide this Complaint under the UDRP in view of the fact that the domain name was first registered before the UDRP came into force.
Before the UDRP was established and before the Registrar, Network Solutions, adopted the UDRP into its terms and conditions, Network Solutions did have its own Dispute Policy, which it also amended on several occasions. To the Panelís knowledge, at that time, and certainly since (see "www.networksolutions.com/en_US/legal/static-service-agreement.jhtml"), Network Solutions applied a registration agreement which required domain name registrants both to be bound by the then current domain name Dispute Policy and to accept that Network Solutions, in its own discretion, was free to amend its Policy on 30 days notice. Following the establishment of the UDRP in October 1999, Network Solutions did give notice of amendment of its Dispute Policy to apply the UDRP terms with effect from January 2000.
In these circumstances, the Panel sees no reason to doubt that the UDRP may be validly applied to decide this Complaint and the Panel considers itself competent to do so.
In order for the Panel to decide to grant the remedy of transfer to a Complainant or, in this case, of cancellation of a domain name under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name is <balmain.net>. The evidence provided by the Complainant demonstrates that it is certainly entitled to claim registered trademark rights in PIERRE BALMAIN and, indeed, in BALMAIN in various forms in respect of a significant range of goods.
Consequently, the Panel is readily prepared to accept that the domain name is substantially identical or confusingly similar to a trademark in which the Complainant has rights and that the requirements of Paragraph 4(a)(i) of the Policy are met.
B. Rights or Legitimate Interests
The Complainant has made repeated and strongly worded assertions that the Respondent has no legitimate interests in the domain name and has denigrated the explanations offered by the Respondent for his choice and use of the domain name. Extraordinarily, however, the Complainant has not included any evidence of the content of the Respondentís website and how the domain name has actually been used to allegedly exploit some supposed benefit from the claimed association with the Complainantís mark.
In the absence of any such evidence, the Panel does not consider that any alleged benefit to the Respondent, or purported damage to the Complainant can be assumed simply because the Complainant owns some trademark registrations. The Complainant has asserted that it has a worldwide reputation in the mark BALMAIN, but it has only provided evidence of some registered rights in some jurisdictions (but no evidence of registered or unregistered rights in Canada or Australia Ė where Balmain is a well known suburb of Sydney).
Contrary to the Complainantís assertions, the ownership of trademark registrations for a mark for some goods is not sufficient by itself to prevent use of the same mark in other jurisdictions for unrelated goods and services, and it would certainly not be applicable to prevent ordinary geographically descriptive uses.
Cranio-Sacral-Therapy, Polarity Therapy and other forms of Kinesiology would fall to be considered as "Physical Therapy," for example, according to Class 44 of the latest NICE Classification. The Complainant has provided no evidence of having rights in respect of such services.
There is no evidence whatever that the Respondent has sought to pass himself off as having any connection or association with the Complainant and no evidence whatever of any actual confusion or damage resulting from the Respondentís use of the domain name <balmain.net> for his own activities.
The Panel sees no reason to question the legitimacy of the Respondentís alternative therapeutic activities and no reason to doubt the reasonableness of the derivation of the domain name. A simple Google search for Balmain Energy Work, for example, reveals third party references to the Respondentís activities which all appear to support his statements about the nature of his business and further references to Energy Balancing and a leading practitioner in Balmain, Sydney!
The Panel therefore considers that the Respondentís actions fall within Paragraph 4(c)(i) of the Policy and demonstrate sufficient rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) in that before any notice to the Respondent of the dispute, he had made 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.
Consequently, the Panel finds that the Complainant has failed to prove the requirements of Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In view of the finding in B. above, it is not strictly essential for the Panel to take a view on this issue. However, as the Complainant made extensive and aggressive assertions of "bad faith" on the part of the Respondent, the Panel considers that it is important for the Respondent that the Panel should give its opinion on the matter.
Any assertion of "bad faith," even within the limited context of the Policy, inevitably carries imputations of deliberate misconduct. Such assertions should not be made lightly without good evidence. In this respect, the Panel considers that the evidence submitted by the Complainant is marginal at best, and the arguments of alleged "bad faith" are exaggerated.
The Complainant misleadingly claimed to have written to the Respondent in 2000, when in fact its correspondence was addressed (inexplicably) to a Mr. Kevin Tang. The Complainantís correspondence was invariably presented in an aggressive and threatening tone and the Complainantís case on this issue relied on a selected extract of one email response. In the circumstances, faced with threats from a much larger business, it is not surprising that the Respondent (without being professionally advised) should offer terms for settling the dispute without legal action. Taken alone, such an offer is certainly not convincing evidence of any "bad faith" sufficient for the Policy.
Furthermore, the Panel considers that it is quite inappropriate for the Complainant to make sweeping allegations of alleged "unlawful use" and to make claims that Respondent is somehow "a conscious and declared infringer" of the Complainantís trademarks in the context of the present proceedings. As the Complainant will be well aware, the UDRP is NOT a competent forum for taking decisions on alleged trademark infringement Ė the UDRP provides solely for an administrative remedy in cases of dispute over registration and use of a domain name. As the Respondentís commercial activities were in Canada then, if the Complainant wanted to pursue a trademark infringement action, it would need take action before the Canadian Courts and it would certainly need to show proof of rights in Canada, which it has not shown in these proceedings.
However, the Respondent is not entirely blameless for his present predicament. It is no good for the Respondent to complain that correspondence was mailed to an old address in Vancouver or that it has had insufficient time to prepare a response because of the addressing errors. It is unequivocally the Respondentís responsibility under the terms of his contract with the Registrar, Network Solutions, to ensure that the currently correct contact address is recorded for his domain name. Fortunately for the Respondent, his email address was still functional and both the Complainant and the Center have been able to make contact that way. The Panel therefore does not consider the Respondentís failure to correct its address on the WHOIS record to be evidence of "bad faith" (i.e. it was not a deliberate attempt to avoid the Respondent being traced by the Complainant). However, the Respondent would clearly be well advised to ensure that corrected address details are provided for the future.
In conclusion, on the evidence in this case, the Panel considers that the Complainant has failed to show proof of "bad faith" for the purposes of the Policy and the requirements of Paragraph 4(a)(iii) have not been met.
For all the foregoing reasons, the Complaint is denied.
Dated: June 23, 2003