WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Baccarat SA v. Serious|Net

Case No. D2003-0428

 

1. The Parties

The Complainant is Baccarat SA, a duly registered French company of Baccarat, France, represented by Meyer & Partenaires, Patent & Trade Mark Attorneys, of Strasbourg, France.

The Respondent is Serious|Net of Artesia, California, United States of America, represented by Raymond Marc King of Toronto, Ontario, Canada.

 

2. The Domain Name and Registrar

The disputed domain name, <crystalbaccarat.com>, is registered with Tucows Inc. It was registered on December 29, 2002.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 4, 2003. On June 5, 2003, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name at issue. On June 5, 2003, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. 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 June 13, 2003. In accordance with the Rules, paragraph 5(a), the due date for a Response was July 3, 2003. An extension of the due date was granted by the Center until July 6, 2003. The Response was filed with the Center on July 4, 2003.

The Center appointed the Honourable Sir Ian Barker QC as the sole panelist in this matter on July 16, 2003. 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.

The Complainant sought leave from the Panel to file further submissions by way of Reply. The Respondent filed a reply to these submissions. The Panel has taken both these documents into account.

 

4. Factual Background

The Complainant, formerly known as "Compagnie Des Cristalleries De Baccarat" is and has been a manufacturer of crystalware since 1764. The name "Baccarat" is that of the French city where the Complainant has manufactured crystalware since 1764.

It has been the supplier of crystalware to foreign courts and Heads of State for more than 200 years. Its products have received many awards worldwide. Over 60,000 people visit the two crystal museums at the factory (Baccarat) and in Paris annually. Many visit the special exhibits of historical crystal at the Complainantís New York premises.

The Complainant operates a web site at "www.baccarat.fr" displaying historical information about itself and its locations worldwide. The Complainant has registered several country code top-level domain names and generic top-level domain names, like <cristaldebaccarat.com>.

The Complainant holds more than 700 subsisting trademarks across the world, including marks registered in the United States, BACCARAT and BACCARAT CRISTAL.

The Respondent is the unregistered trading name of Mr. Ravi Lahoti who is the registrant of multiple domain names. He has been a Respondent in other domain name disputes.

 

5. Partiesí Contentions

Complainant

Confusing Similarity

The disputed domain name is confusingly similar to the Complainantís marks. BACCARAT and BACCARAT CRISTAL Ė both of which are registered in the United States. The word "crystal" in the disputed domain name is the English word for the French word "cristal" in the trademark.

Rights and Legitimate Interests

The Respondent is not currently and has never been known either under the name "Baccarat", or in combination of Baccarat with the name "Crystal".

The Respondent is not, in any way, related to the Complainantís business; it is not one of its agents; it does not carry out any activity for nor have any business with the Complainant.

The Complainant has never given any authorization to the Respondent to make any use of, or apply for registration of the disputed domain name.

Panels have decided in earlier cases that the Respondent had no rights or legitimate interests in disputed domain names.

Bad Faith

The Respondent registered the disputed domain name in bad faith. The Respondent could not have ignored the existence of the Complainant and its well-known reputation and trademark in the field of crystalware when he filed application for registration of the domain name.

The Respondent should have been also aware of the existence of the Complainant when he registered the domain name in question. The Complainant has several stores located in California.

The word "Baccarat" is also the name of a card game. It is also used and understood on the Internet through this secondary meaning. The Complainant does not claim any exclusive rights over the word "Baccarat" in relation to all products and services, and particularly in regard to card games.

The word "Crystal" does not mean anything especially in relation to card games or gambling. By registering the disputed domain name, the Respondent did not refer to the card game but to the Complainantís trademarks. The Complainant is the sole company in the field of crystalware worldwide which has been using the name "Baccarat" for more than 200 years. It has exclusive rights over the name "Baccarat" in relation to all crystal products.

The English version of the word Baccarat is spelled without the final "T" letter : Baccara.

The registration of the disputed domain name was made in bad faith, mainly to attract Internet users to the Respondentís web site. The notoriety of the Complainantís trademark in the range of crystal products is such that a prima facie presumption is raised that the Respondent registered the domain name for the purpose of using it in some way to attract for commercial gain users to the web site by creating a likelihood of confusion with the Complainantís trademark.

The domain name is currently being used in bad faith by the Respondent. He is not making any fair nor non-commercial use of the disputed domain name. There is a web site available through the disputed domain name on which some links forward to others of the Respondentís web sites "www.efunny.com", "www.eattack.com" or to third partiesí web sites to which the Respondent may be affiliated. The Respondent attracts Internet users to its own web sites. It makes a profit if Internet users spend money on its affiliated web sites.

The homepages of the Respondentís web sites linked to the disputed domain name (via <webpicture.com>, <efunny.com>, <eattack.com>, <dmvonline.com>, <shocklighter.com>) all offer goods for sale (lights) or display advertisements for business web sites, thus generating revenues for the Respondent.

Otherwise, the web site under the disputed domain name displays links to affiliated third partiesí business sites. By making links to them, the Respondent earns revenues.

The Respondent has registered more than 2,500 domain names. Some of those domain names are offered for sale by Serious|Net on a dedicated web site "www.domainsale.org" available through the disputed domain name. The Respondent has thus engaged in a pattern of such conduct and has, in the words of the Policy;

"intentionally attempted to attract for financial gain, Internet users to the registrantís web site 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 registrantís web site or location or of a product or service on the registrantís web site or location."

Respondent

General

By using the word "Baccarat," the Respondent makes no claim to any relationship with the Complainant. The Respondent understands the rights of the Complainant to use the name as a trademark in the crystalware industry.

The Respondent registered the disputed domain name specifically for use in conjunction with the card game called "Baccarat" which has become extremely popular in the gaming and casino industries. The Respondent is currently "evaluating various business options within these industries and registered the disputed domain name to be used within the online gaming industry."

The word "Baccarat" is a common English word meaning "a card game in which the winner is the player who holds two or three cards totaling closest to nine."

A search at <google.com> provided 998,000 unique results for the term "Baccarat," of which none of the initial results provided any information pertaining to the Complainant or its goods and services. Each of the initial results suggested a relation of the term identifiable to the gaming and casino industries.

A different search for the terms "crystal" and "baccarat" returned over 67,000 different results, mostly for companies selling or offering crystal and glassware, something the Respondent has never done.

These examples demonstrate that the term "Baccarat" has become synonymous with the gaming industry, much more than with the crystal glass industry. The Complainantís claims of a "distinctive or famous" trademark are wholly unfounded. The Complainant has not provided any evidence for the term "Baccarat" as having any "secondary meaning" related to Baccarat S.A..

Confusingly Similar

In response to the Complainantís claims about whether the domain name <crystalbacarrat.com> is identical or confusingly similar to the trademarks BACCARAT and BACCARAT CRISTAL, the disputed domain name is entirely reproducing the generic term for a card game called "Baccarat." The Respondent is not using this term in relation to the registered trademark as suggested by the Complainant.

Each set of two words making up the disputed domain name and the trademark are completely different in terms of meaning and context: In the trademark, the term "BACCARAT" pertains to the origin of the goods offered. The term "CRISTAL" reflects the goods themselves. In the disputed domain name, the term "Baccarat" pertains to a game of chance as previously outlined. The term "Crystal" is that used as a descriptive element, and does not, in any way, connote a relationship to the crystal or glass industries.

The Complainant further claims that the "domain name creates a likelihood of confusion with the Complainantís trademark by adding a descriptive word directly related with the main business of the Complainant." If the main business of the complainant is crystal, this would be counter-intuitive simply because the main business of the Respondent for the disputed domain name is gaming. The term "Baccarat" used by the Respondent is not being used as a descriptive word related to "Crystal," but as a noun used to identify the game the Respondent is going to promote. The term "Crystal" is, in fact, a popular term within the gaming industry as evidenced by such domain names as <crystalpalace.com>, <crystalcasino.com> and <crystalgaming.com>.

The examples the Complainant provides do not illustrate the intended use of the mark as a "passing-off," or confusion-causing term. The term "Baccarat" has been shown to relate primarily to the gaming industry and not to the Complainantís mark. The Respondent has made no claims in respect to the mark as pertaining to the Complainant, or to the crystal and glass industries.

The majority of Internet web sites and information relating to the term "Baccarat" are for gaming-related web sites and information. The Respondent has never used or suggested that the disputed domain name be affiliated with the Complainant, or the crystal or glass industries.

The Respondent claims that the disputed domain name is entirely different from the Complainantís marks and does not cause confusion in any way that would suggest the Respondent is trying to pass-off or initiate potential confusion.

Rights and Legitimate Interests

First, that the Respondent has never been known under the name "Baccarat" is hardly a reason to suggest the Respondent has no rights or legitimate interest in the name. The name "Baccarat," as previously outlined, is used in over 998,000 different web pages, of which the overwhelming majority have nothing to do with the Complainant or its wares. The fact that the term "Baccarat" is the generic term for a card game would suggest that the Respondent would have little interest in being known as the game, as opposed to a provider of the game or of information pertaining to the game.

The Respondent did not know of the Complainant before or at the time of the registration, and registered the name wholly because the Respondent felt this would be a good domain to house information or links to the "Baccarat" game and related gaming web sites. The Respondent had used the domain name and redirected it to a page that housed primarily links to various gaming entities, casinos and gaming-related web sites, some of which pertain to the Baccarat game itself.

Many trademarks for the term "Baccarat" are, in fact, for gaming-related goods and services. The fact that the Complainant had not opposed the majority of trademarks using the term "Baccarat," indicates a lack of protection of what they consider a "famous trademark." Considering the longstanding use of the term, it is striking to find live trademarks for the terms, BACCARAT GAME, BACCARAT CASINO and BACCARAT BAR, all having direct relation to the card game or gaming industries.

Bad Faith

In response to the Complainantís claims of "bad faith registration and use":

The Respondent did not register the name in bad faith. In fact, before the Complainantís filing, the Respondent had never heard of the Complainant and believed the term "Baccarat" to be a specific term for the card game.

The Respondent also claims the term "Baccarat" to be identifiable to the card game, but to a lesser extent. Of the 998,000 web sites that use the term "Baccarat," the overwhelming majority specifically relate to the card game. The Complainantís claims that the term "Baccarat" has a secondary meaning" to "some extent" is clearly refuted by such statistics.

The Complainantís claim that the English spelling of the term "Baccarat" be spelled without the "t" is false. It is derived from the French term "Baccara" spelled without the "t".

The Complainantís claims that the Respondentís registration of the domain name referred to the Complainantís trademarks are unfounded and untrue. The Respondent makes no claim to using the word "Baccarat" to suggest any relationship with the Complainant.

The Respondent has not lured consumers to the disputed domain name by using any terms, guises or direct liaisons relating to crystal or glasswares; nor has he engaged in any efforts to raise any likelihood of confusion as to the origin of the owner of the domain name. The Complainant specifically states that the Respondent has somehow acted in bad faith numerous times, but fails to provide any direct evidence to support such claims.

The Respondent has never offered the domain name for sale, nor has he contacted the Complainant with regard to the domain name. The Respondent has never created any likelihood of confusion as to source, sponsorship, or affiliation with the Complainantís web site, services, wares or goods. The Respondent has never referenced any information, links, products or services relating to the Complainantís business, web site or other device used by the Complainant to promote its goods and services.

The Respondent had never heard of the Complainantís business, trademarks, goods or services before registration. It had not engaged in any behaviour that would suggest deceptive tactics to cause confusion. The Respondent had not registered any other similar names, nor attempted to contact the Complainant in any way. It is inconceivable that the Panel could find any evidence of bad faith.

The Complainant has made several accusations and has provided previous UDRP examples, but has failed to demonstrate any evidence relating to a registration in bad faith in this case.

Complainantís Reply

Regarding the 998,000 search results which the Respondent alleges for Baccarat, a majority of Google searches based on the two words Crystal Baccarat show the Complainantís products described or offered for sale on the Internet. The combination of the two words refers to the Complainant and its products. The fact that the Respondent never sold crystalware is irrelevant, as is the fact that some gaming enterprises or web sites use the word "crystal."

The disputed domain name was used to promote third partiesí web sites through affiliated links and the Respondentís products such as lights. The Complainant questions the use of Mr. King as the Respondentís agent. He was ordered to transfer a domain name in a previous WIPO proceeding.

Respondentís Response to Complainantís Reply

The Respondent repeats the assertion that it had never heard of Complainant before registration. It was registered with the card game in mind solely.

The Google searches were for the same terms, but different results were obtained in the United States and Canada. Mr. Kingís involvement has no bearing on the case; WIPO Case No. D2000-0288 in which he had been involved was decided in his favour.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable."

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

- that the domain name has been registered and is being used by the Respondent in bad faith.

Identical or Confusingly Similar

In the Panelís view, the disputed domain name <crystalbaccarat.com> is clearly confusingly similar to the Complainantís registered trademark, BACCARAT CRISTAL.

It is the combination of the two words "Baccarat" and "Cristal/Crystal" that causes the confusing similarity. Because the word "baccarat" denotes a card game associated with organized gambling, there could not be confusing similarity with the mark BACCARAT. However, the combination "Baccarat" with the word "Cristal (pronounced similarly to crystal) changes the focus from gambling to crystalware. The word "cristal/crystal" does not have a well-known association with the card game or with gambling generally. There are gambling institutions which may use the word crystal Ė e.g., Crystal Palace, but the combination of Baccarat and Crystal has no particular gambling connotation.

Rights and Legitimate Interests

The Complainant gave the Respondent no legitimate rights or interests in respect of the domain name. The fact on its own can be sufficient to prove the second criterion. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved based on an evaluation of all evidence presented, could demonstrate a Respondentís rights or legitimate interests to a domain name. None of these has been demonstrated. The second criterion is therefore proved.

The Respondent sells many goods on a web site accessed by the disputed domain name. The alleged statistics about the number of web sites featuring the word "Baccarat" do not help the Respondent. It is the combination of the words Crystal/Cristal and Baccarat which is crucial. As the Complainant points out, searches for these two words show sites referring to the Complainantís products.

Because of the Panelís finding on Ďbad faith,í the Panel cannot see how the present use by the Respondent of the disputed domain name could come within paragraph 4(c) of the Policy.

Bad Faith

The Respondentís various web sites accessed through the disputed domain name are operated clearly for financial gain. They attract Internet users who could easily be confused with the Complainantís mark as the source of sponsorship by, application with or endorsement by the Complainant. Accordingly, the quotation from paragraph 4(c) of the Policy recorded above in the Complainantís submissions applies.

The Panel comes to a similar view in this respect to the Panelists in the following cases:

(a) WIPO Case No. D2001-0193 Microsoft Corporation v. MindKind <microsofthealth.com>.

(b) WIPO Case No. D2001-1492 The Nasdaq Stock Market, Inc. v NSDAQ.com et al <nasaq.com> and others.

The latter was more a case of "typosquatting," but the principle is the same.

It is no use for the Respondent to claim it had no notice of the Complainantís mark at the time of registration. He is an experienced dealer in domain names and is familiar with the UDRP through previous cases. The Complainantís trademark was registered in the United States. It would not have been too difficult for the Respondent to have searched the US trademark register and discovered BACCARAT CRISTAL registered there at the time of the domain name registration.

Accordingly, the Panel infers that the disputed domain name was registered and is being used in bad faith.

The Panel specifically notes that it has not taken any account of previous UDRP cases with which the Respondent or his associates may have been involved. To do so would be risky and potentially unfair. Every case must rest on its own facts. Nor does the Panel draw any adverse inference from Mr. Kingís involvement for the Respondent who was entitled to obtain whatever advice he chose. However, the Panel is entitled to infer that the Respondent has notice of the UDRP.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain name <crystalbaccarat.com> is confusingly similar to the trademark in which the Complainant has rights; and

(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) that the domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <crystalbaccarat.com> be transferred to the Complainant.

 


 

Hon. Sir Ian Barker QC
Sole Panelist

Dated: July 29 2003