WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Groupe Lactalis and BSA. v. Domain Deluxe
Case No. D2003-0314
1. The Parties
The Complainants are Groupe Lactalis, Laval, France and BSA, Paris, France, both represented by e-Lex Conseil, Patent and Trademark Attorney, Paris, France.
The Respondent is Domain Deluxe, Central, Hong-Kong.
2. The Domain Name and Registrar
The disputed domain name <bridel.com> is registered with The Registry at Info Avenue d/b/a IA Registry.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 23, 2003. On April 25, 2003, the Center transmitted by email to The Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain name at issue. On April 25, 2003, The Registry at Info Avenue d/b/a IA Registry transmitted by email to the Center its verification response. 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 commenced on April 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on May 20, 2003.
The Center appointed Dimitris Oekonomidis as the Sole Panelist in this matter on June 6, 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.
4. Factual Background
Groupe Lactalis, previously (before 1995) known as Besnier Industrie SA (a public limited company), is the owner of the BRIDEL trademarks, while BSA, previously known as Besnier SA, (a public limited company), is the owner of trademarks containing the term BRIDEL.
BSA is a shareholder of Groupe Lactalis and owned the domain name before. (Annex A: copy of these Companiesí business registration certificates and document concerning their relationship).
The Groupe Lactalis corporation commercializes some of its products under the brand name BRIDEL. This is the reason why Groupe Lactalis and BSA under their previous company name Besnier Industrie SA and Besnier SA are the holders of numerous BRIDEL trademarks. Groupe Lactalis company is actually the holder of the BRIDEL trademarks, duly registered since 1968. These trademarks, either word marks or device marks, are duly registered over the world. The number of registrations and the geographical coverage demonstrate the importance of the BRIDEL trademarks. (Annex D: the listing of BRIDEL trademarks duly registered throughout the world).
The use of the BRIDEL Trademarks is spread out in terms of number of products and in terms of geographical coverage.
For the BRIDEL products the annual turnover in 1998, amounted to 2,093,200,000 French Francs, in 1999, to 2,297,200,000 French Francs, in 2000, to 3,330,200,000 French Francs (estimate). The trademarkís presence is supported by significant (in quantity and value) promotional efforts. The Groupe Lactalis website "www.lactalis.com" can be reached from any country in the world. (Annex E: copies of commercials, advertisements and print outs of the website "www.lactalis.com."
The domain name <bridel.com> was attributed to one of the Complainants, BSA following a previous Complaint before the WIPO Arbitration and Mediation Center. (WIPO Case No. D2000-1401, BSA v. Paul Tweed) (Annex F: a copy of the Decision in this Complaint and the print-out of the WHOIS mentioning the Complainants as the owner of this domain name).
The provider of the Complainants, the French company DECLIC NT has lost this domain name because of a problem with the renewal fee with the Registrar Network solutions Inc. (Annex G: a copy of the emails exchanged by DECLIC NT and Network Solutions regarding this problem).
On November 15, 2001, the Respondent registered the domain name <bridel.com>. When the provider DECLIC NT contacted this company, it proposed to sell this domain name for 2880 US Dollars. (Annex G).
On November 8, 2002, BSAís Patent and Trademark Attorney, e-Lex Conseil, sent a registered mail to the Respondent indicating that they are infringing Groupe Lactalis and BSA trademark rights. A reminder was sent by email on November 19, 2002. (Annex H: copy of this letter and emails).
The website on "www.bridel.com" displays an announcement: "www.bridel.com" - This Domain is for sale at Domain Deluxe.
By clicking on this announcement, a new web page opens corresponding to <domaindeluxe.com> website indicating: "If you wish to submit an offer for bridel.com, you must first register for a free DomainDeluxe.com account. You need an account to submit offers. The current selling prices for most of our domain names range from US$1500 to US$10,000."
On this webiste, several domain names are for sale. (Annex I: copy of these web pages and of the WHOIS look-up indicating that the Respondent is the owner of the domain name <domaindeluxe.com>).
5. Partiesí Contentions
The Complainants contend that the Respondent purely and simply reproduced, in a strictly identical way, the BRIDEL trademarks, which belong to the Complainants.
The Complainants assert that the extension indicating the gTLD ".com" is irrelevant in determining the similarity of the domain name with a trademark and to avoid confusion. This is particularly so in the Internet given the widespread use of ".com" as an indication of commercial nature of the domain name (e.g. WIPO Case No. D2000-0418, BIC Deutschland GmbH & Co KG v. Paul Tweed).
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the domain name in dispute. The Respondent is not using the bridel symbol and has no bridel trademark registered under this name. The Respondent took the opportunity to register this domain name as it was lost by the Complainantsí provider.
The Complainants have not licensed or otherwise authorized the Respondent to use the BRIDEL trademarks and there is no relationship between the Complainants and the Respondent.
The Complainants contend that the intent of the Respondent is clearly the commercial gain misleading and diverting consumers.
The Complainants assert that the domain name in dispute was registered and is being used in bad faith by the Respondent. BRIDEL trademark is a distinctive trademark and moreover has been extensively used so that it can be considered as well known for the French and International average consumers. According to the Complainants the notoriety of the signs BRIDEL clearly shows that the Respondent registered the domain name <bridel.com> knowingly and without carrying out any prior availability search.
Further the Complainants contend that on <domaindeluxe.com> webiste, it clearly appears that the Respondent sells many domain names, most of them being notorious trademarks, on which Domain Deluxe has no rights. As an example, the Complainants mention a Complaint concerning the domain name <ztel.net> that was filed with the WIPO Center against the same Respondent (WIPO Case No. D2001-1427, Z-Tel Technologies, Inc., v. Domain Deluxe). The panel in this particular case agreed that "the Respondent clearly has engaged in a pattern of the conduct of registering domain names similar to existing trademarks or service marks and offering them for sale at prices representing a considerable profit over their direct costs of registration." The Complainants assert that the given circumstances indicate clearly that the domain name was registered primarily for the purpose of selling or transferring the domain name registration to the owner of the trademark or service mark (the Complainants) or to a competitor of the Complainants, for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the domain name.
According to the Complainants the announcement on the <bridel.com> webiste that this domain name is for sale and the link provided by clicking on this domain name leading to <domaindeluxe.com> webiste where the Respondent sells several domain names, cannot be considered as a bona fide exploitation of the domain name. This website has only one goal: to attract persons willing to buy the domain name <bridel.com> or other domain names. By using the domain name, the Respondent intentionally attempts to attract for commercial gain Internet users to their website.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the 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.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances which indicate that the Respondent 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name; or
(ii) registration of 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 Respondent has engaged in a pattern of such conduct; or
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís webiste or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the webiste or location or of a product or service on the webiste or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
A. Identical or Confusingly Similar
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
The domain name at issue, is identical or confusingly similar to the trademark BRIDEL, in which the Complainants have rights. The suffix ".com," which is the only difference between the domain name <bridel.com> and the trademark BRIDEL, is an irrelevant distinction, which does not change the likelihood of confusion.
The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(i).
B. Rights or Legitimate Interests
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
Since the adoption and extensive use by the Complainants of the trademark BRIDEL predates the first entry of <bridel.com> as domain name, the burden is on the Respondent to establish the Respondent's rights or legitimate interests the Respondent may have or have had in the domain name.
A Respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a Complainant which are not unreasonable and leaves the Respondent open to the legitimate inferences which flow from the information provided by a Complainant.
In this case, the Respondent has not conducted any prior business under the name BRIDEL in connection with the bona fide offering of goods and services. It has also not used the domain name in connection with the bona fide offering of goods and services. The Respondent has not been commonly known by the subject domain name either as an individual or a business. It is not authorized by the Complainants to use it. It is not making legitimate non-commercial or fair use of the domain name. The objective of the registration appears to have been to either sell the domain name to the Complainants or to a competitor of the Complainants or to divert persons looking for the Complainants' webiste for his own commercial gain.
It is apparent that the Respondent registered the domain name <bridel.com> for the purpose of capitalizing on the Complainantsí trademark BRIDEL and profiting from the global goodwill that the Complainants have built up in their trademark.
These facts support a clear inference that the Respondent does not have a legitimate interest in the subject domain name and the Respondent has done nothing to rebut that inference.
The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
(Policy, paras. 4(a)(iii), 4(b), Rules, para. 3(b)(ix)(3))
To support bad faith, the Complainants rely on essentially the same facts upon which they rely to establish the other ingredients of their case.
A finding that a Respondent does not have a legitimate interests in a domain name which is confusingly similar to the mark of a Complainant does not automatically lead to a conclusion of bad faith, but the facts which support the finding generally are relevant to the inquiry.
The context of the registration and use of the subject domain name by the Respondent, taking into consideration the fame of the Complainantsí mark, the business activities the Complainants have carried on, the Respondentís failure to respond to the Complainantsí attempt to make contact, are facts which constitute evidence from which an inference of bad faith may be made. The Respondent has done nothing to displace the inference.
The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(iii).
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel concludes that the Complainants have established their case.
The Complainants ask that the contested domain name <bridel.com> be transferred to one of the Complainants and specifically to the Groupe Lactalis. The Administrative Panel so orders.
Dated: June 23, 2003