WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bourjois SAS v. Whois Privacy Services Pty Ltd., Domain Hostmaster, Customer ID: 55322140417992 / Lisa Katz, Domain Protection LLC
Case No. D2015-2301
1. The Parties
The Complainant is Bourjois SAS of Puteaux, France, represented by Boehmert & Boehmert, Germany.
The Respondent is Whois Privacy Services Pty Ltd., Domain Hostmaster, Customer ID: 55322140417992 of Fortitude Valley, Queensland, Australia / Lisa Katz, Domain Protection LLC of Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <bourjoise.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2015. On December 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 21, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 22, 2015.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 23, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 13, 2016.
The Center appointed Jon Lang as the sole panelist in this matter on January 21, 2016. 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
The Complainant is a French company operating in more than 50 countries. It has been distributing cosmetics and perfume for more than 150 years. It has a large worldwide portfolio of BOURJOIS trademarks including International Registration (for BOURJOIS) under Registration Number 201146, (filing date June 15, 1957). The Complainant operates a website at “www.bourjois.com”, the domain name being registered on August 4, 1998.
The disputed domain name <bourjoise.com> (hereafter the “Domain Name”), was registered on November 23, 2005.
5. Parties’ Contentions
The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
The Domain Name is confusingly similar to the Complainant’s name and its trademarks. The Domain Name includes the name “Bourjois”, a term that has no meaning (and which should not be confused with the French word “bourgeois”). The only difference between the Complainant’s BOURJOIS mark and the Domain Name is the addition of the letter “e” at the end of the word “bourjois”.
The Domain Name resolves to a website which refers to cosmetics and which contains links to third party sites. The average consumer will assume that the Domain Name is owned, endorsed or controlled by the Complainant and there thus exists a likelihood of confusion. In particular, there is a high risk that Internet users will be deceived as to the true origin and source of the Domain Name.
Moreover, consumers could think that all goods offered on the Respondent’s website are offered by the Complainant or under its authorization and click on the links on the website.
It appears clear that the Respondent intends to redirect consumers who erroneously type “bourjoise”, i.e. the Complainant’s mark but with the addition of the letter “e” on the end in order to create click-through traffic.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent’s website uses the Complainant’s company name and mark yet is not operated by the Complainant and none of the links on the website are to the Complainant.
The Respondent’s website is a parking or pay-per-click site. It includes sponsored listings with links to third party websites offering the same goods as the Complainant, i.e. cosmetics. The websites to which the links resolve include those of direct competitors of the Complainant. The Respondent’s intention is clearly to exploit and benefit from the reputation and good standing of the Complainant and to derive a financial benefit therefrom.
There is no relationship between the Complainant and the Respondent and no license, permission or any sort of authorization exists by which the Respondent could own or use a domain name consisting of the BOURJOIS mark.
The Domain Name was registered and is being used in bad faith.
The circumstances clearly indicate that the Respondent has registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant and/or to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.
At the time of registration of the Domain Name, the Complainant had been established for several years and had built up an international reputation.
Given the use to which the Domain Name has been put and the fact that the Complainant’s mark is used as a keyword, the Respondent was clearly aware of the Complainant and its marks. In any event, a registrant has a responsibility to determine whether its registration infringes the rights of others and should not wilfully close its eyes to interference with third party rights.
A simple Internet search would have revealed the existence of the Complainant and its BOURJOIS trademark. Moreover, the Complainant has numerous other Top-Level Domains containing its mark, including but not limited to, <bourjois.fr>, <bourjois.co.uk>, <bourjois.es> etc.
It is evident that the Respondent uses the Domain Name primarily for the purposes of making a profit, through generating pay-per-click advertising revenues, by misleading Internet users who are looking for the Complainant’s website and/or its products. The Respondent therefore has no legitimate interest in holding the Domain Name.
The Respondent has been the subject of many recent UDRP decisions as it has registered several domain names in bad faith, all relating to famous trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the BOURJOIS trademark for the purposes of the Policy.
Ignoring the generic Top-Level Domain “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s BOURJOIS mark but with the addition of the letter “e” at the end. As the BOURJOIS mark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine the likelihood of Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Similarly, the addition of a mere letter is unlikely to assist a respondent. Turning to the facts of this Complaint, the question is whether the addition of the letter “e” at the end of the Domain Name renders it something other than confusingly similar to the Complainant’s BOURJOIS mark. In the Panel’s view, it clearly does not – it merely creates a misspelling of the Complainant’s mark but does not cure the confusing similarity. This is a clear case of “typosquatting”.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s BOURJOIS mark for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does, in fact, have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Before doing so however, the Panel will consider whether such a finding would, in any way, be inappropriate.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it 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 in issue.
Here, however, the Respondent is not known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolves as earlier described, the Panel would not accept that there is a legitimate noncommercial or fair use. In any event, any noncommercial or fair use must be without intent to mislead, but it is likely in fact (in the absence of any alternative explanation), that the very purpose of the Respondent choosing the Domain Name it did was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. That seems to be the case here given the nature of the website to which the Domain Name resolves.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that the Respondent’s website, to which the Domain Name, which is confusingly similar (indeed almost identical) to the Complainant’s BOURJOIS mark, resolves, could be a bona fide offering in the circumstances of this Complaint. The Respondent clearly takes advantage of the Complainant’s trademark in connection with its website, without permission so to do.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent certainly has not provided any. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above.
Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. The Panel finds that these are the circumstances in the present case.
Accordingly, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
The Policy sets out other grounds upon which a finding of bad faith registration and use may be based, but given the finding above, it is unnecessary to go on to consider alternative bases for such a finding. Accordingly, whether a sale of the Domain Name to the Complainant was the primarypurpose of the registration, as alleged by the Complainant, need not be analyzed in this Decision.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <bourjoise.com>, be transferred to the Complainant.
Date: January 29, 2016