WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Haw Par Corporation Limited v. Christophe Fischer, Cedric Sevestre
Case No. D2019-2475
1. The Parties
Complainant is Haw Par Corporation Limited, Singapore, represented by CSC Digital Brand Services AB, Sweden.
Respondents are Christophe Fischer, France, self-represented and Cedric Sevestre, France, represented by LLC ET ASSOCIÉS, France.
2. The Domain Names and Registrars
The disputed domain name <balsamo-de-tigre.com> is registered with eNom, Inc. and the disputed domain names <baume-du-tigre.boutique>, <baumedutigre.boutique>, <baume-du-tigre.info>, <baume-du-tigre.online>, <baumedutigre.online>, <baumedutigre.org>, <baume-tigre.net>, <baume-tigre.org>, <boutique-baume-du-tigre.com>, and <tiger-balsam.com> are registered with Gandi SAS.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 10, 2019, and October 15, 2019, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 15, 2019, providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all disputed domain names are under common control; and/or file a separate complaint for any domain names for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all disputed domain names are under common control and if so indicate which disputed domain names will no longer be included in the current Complaint. Complainant filed an amended Complaint on October 17, 2019, including comments on consolidation of Respondents. On October 29, 2019, the Center sent to the Parties an email on prima facie consolidation of Respondents.
The Registrar (Gandi SAS) also indicated that the language of the Registration Agreement was French. The Center sent an email communication in English and French, to Complainant on October 16, 2019, inviting Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceeding. Complainant filed a request for English to be the language of proceeding on October 18, 2019, and Respondent (Cedric Sevestre) filed a request for French to be the language of proceeding on October 21, 2019.
The Center verified that the Complaint together with the amended 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 Respondents in English and French, of the Complaint, and the proceedings commenced on October 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2019. Respondent (Cedric Sevestre) requested an automatic four calendar day extension for response under paragraph 5(b) of the Rules on November 6, 2019. Respondents were granted the extension, therefore the due date for response extended until November 22, 2019. The Response was filed with the Center on November 21, 2019.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on November 29, 2019. 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.
Procedural Order No. 1 was issued on January 9, 2020, and Respondent provided a response to the Order on January 14, 2020.
4. Factual Background
Complainant has been in the business of providing healthcare products since 1969 in Singapore and internationally. The most popular and well-known of those products is the TIGER BALM topical analgesic brand. TIGER BALM branded products are marketed in more than 100 countries worldwide through a global distribution network. In France, the TIGER BALM brand is known as BAUME DU TIGRE. The Norwegian and Swedish translation of TIGER BALM is TIGER BALSAM, and in Italian the equivalent translation is BALSAMO TIGRE. In 2018, Complainant’s revenue grew 7% from USD 222.8 million to USD 237.9 million.
Complainant owns several registrations for the trademark TIGER BALM and related translations, including the following:
French Trademark Registration No. 1690773 for BAUME DU TIGRE registered December 14, 1988;
French Trademark Registration No. 95574070 for BAUME DU TIGRE registered June 1, 1995;
French Trademark Registration No. 1226807 for TIGER-BALSAM registered February 8, 1983;
Italian Trademark Registration No. 0000576128 for BALSAMO TIGRE registered October 2, 1992;
Italian Trademark Registration No. 0000915024 for BALSAMO TIGRE registered October 28, 2003;
Singapore Trademark Registration No. T8805049F for BAUME DU TIGRE registered September 16, 1988;
Singapore Trademark Registration No. T8907064D for TIGER BALSAM registered October 27, 1989;
Malaysian Trademark Registration No. R/000311 for TIGER BALM registered June 28, 1937.
Complainant owns the domain name <tigerbalm.com> and customers who are located in France can go to <tigerbalm.com/fr/> for more information about Complainant and its products. Analytics of the “www.tigerbalm.com” website indicate that during the period of time between February, 2019, and July, 2019, the website attracted 160,000 visitors. The “www.tigerbalm.com” website ranks as the 353,518th most popular website in the United States of America and 392,791st globally.
The disputed domain names are as follows:
<balsamo-de-tigre.com> was registered on October 28, 2009;
<baume-tigre.net> was registered on October 13, 2010;
<baume-tigre.org> was registered on October 13, 2010;
<baumedutigre.org> was registered on October 13, 2010;
<baume-du-tigre.info> was registered on December 12, 2010;
<tiger-balsam.com> was registered on March 1, 2014;
<baumedutigre.online> was registered on March 4, 2016;
<baume-du-tigre.online> was registered on March 4, 2016;
<baume-du-tigre.boutique> was registered on March 4, 2016;
<baumedutigre.boutique> was registered on March 4, 2016;
<boutique-baume-du-tigre.com> was registered on May 18, 2017.
The disputed domain names <balsamo-de-tigre.com>; <baumedutigre.org>; <baume-du-tigre.info>; <tiger-balsam.com>; <baume-du-tigre.boutique>; and <baumedutigre.boutique> at the time the Complaint was filed resolved to websites which promote and offer for sale Complainant’s products.
The disputed domain names <baume-du-tigre.online>; <baume-tigre.net>; <baume-tigre.org>; <baumedutigre.online>; and <boutique-baume-du-tigre.com> resolved to inactive parking pages.
5. Parties’ Contentions
Complainant is the owner of the trademarks TIGER BALM, BAUME DU TIGRE, TIGER-BALSAM, and BALSAMO TIGRE (the “TIGER BALM Trademarks”) by virtue of the registrations listed in paragraph 4 above. The disputed domain names all contain the primary elements of Complainant’s registered trademarks, except for the addition of hyphens and the various generic Top-Level Domain (“gTLD”) designations such as “.net”, “.boutique”, “.com”, and “.info”. The addition of the gTLDs and the hyphens do not negate the confusing similarity.
Respondents are not commonly known by Complainant’s registered trademarks noted above, and have never been authorized to use the TIGER BALM Trademarks, nor have they been licensed by Complainant or are they otherwise affiliated with Complainant. Respondents have not used the disputed domain names in association with a bona fide offering of goods and/or services. Respondents have used six of the disputed domain names in association with websites which feature Complainant’s products and make reference to Complainant’s trademarks, logos and other copyrighted photographs. The other five disputed domain names resolve to inactive parking pages, which is not evidence of a bona fide offering of goods and/or services. Therefore, Complainant asserts that Respondents do not have any rights or legitimate interests in the disputed domain names.
Complainant further submits that Respondents have registered and are using the disputed domain names in bad faith. Complainant’s trademarks listed in paragraph 4 have been registered for many years and the TIGER BALM-branded products have been widely marketed and sold around the world. Accordingly, it is impossible that Respondents were not aware of Complainant’s rights in the TIGER BALM Trademarks. Respondents have chosen to use copyrighted photos of Complainant’s products on the websites to which six of the disputed domain names resolve. The registration and use of a confusingly similar domain name in association with a website featuring Complainant’s trademarks and products is strong evidence of bad faith under the Policy.
Further, Respondent failed to respond substantively to Complainant’s demand letters of July 31, 2019, and August 28, 2019.
Respondents raise a number of arguments against each of the elements of the Complaint. With respect to Complainant’s alleged rights in the TIGER BALM Trademarks, Respondents argue that there is doubt about whether Complainant has established itself. Further, the Complaint lacks sufficient proof as to the existence or scope of the trademark rights in question, as no certificates of registration have been produced, and the geographic scope of the pleaded registrations is limited. Finally, Respondents submit that their operating websites make it clear that the Thai corporation FSR Web Team Co. Ltd is carrying on business merely as a reseller of genuine-TIGER BALM products, which does not generate any confusion among consumers.
With respect to rights and legitimate interests, Respondents rely on their extended period of use of the disputed domain names, beginning in 2009, as proof of their acquired rights, coupled with acquiescence on the part of Complainant. Further, Respondents argue that they purchase authentic TIGER BALM products from DKSH, Complainant’s authorized distributor in Thailand, just like every other retailer in that territory.
Respondents submit that it is necessary for them to use TIGER BALM formative marks in the disputed domain names in order to identify the products they are selling. With respect to the factors set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”), Respondents argue that their conduct fulfills all the criteria of legitimate interests, including long time use without objection, resale of authentic products and self-identification as a reseller not the brand owner.
Finally, with respect to bad faith, Respondents submit that they are legitimate resellers, who have made no attempt to sell the disputed domain names to Complainant or to otherwise interfere with or harm Complainant’s business. Respondents have taken steps to ensure that no confusion is generated among users, by clearly disclosing the role of FSR Web Team Co. Ltd as vendor and operator of the impugned websites.
6. Discussion and Findings
6.1. Language of Proceeding
Respondents have objected to the choice of English as the language of the proceedings, and have filed their materials and Response in French. Certain circumstances have been identified by Complainant which support the use of English, particularly the apprehended prejudice of having to translate all the materials and the existence of prior English correspondence between the parties. In the circumstances, it appears that both parties have been able to understand the nature of the proceedings, and the details of their respective arguments, judging by the submissions filed on both sides. The Panel is able to understand the language of both the Complaint and Response, and all incidental filings, and accordingly finds that the proceeding can be conducted so that each party may submit pleadings in the language with which it is familiar (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 4.5.1 – 4.5.2).
6.2. Supplemental Filings
With respect to the admissibility of Complainant’s Supplemental Filing, the Panel finds it will consider only those arguments set out in paragraph 4 thereof (and Annex 13 to the Supplemental Filing), and will disregard the other submissions. As a general rule, supplementary filings are not permitted under the Policy. In these circumstances, the facts surrounding the prior transfer of the domain name <tigerbalm.org> were raised as a new matter in the Response, and Complainant was therefore entitled to raise additional new arguments relating thereto. The Panel then permitted Respondent to file its own Supplemental Filing on that single point, to ensure full disclosure of relevant facts surrounding this issue.
With respect to the consolidation of the Complaint, the Panel notes that two Respondents were first identified in the Amended Complaint dated October 17, 2019. Complainant alleges that all the disputed domain names are actually controlled by one person namely Christophe Fischer, even though the other Respondent, Cedric Sevestre, appears as the registered owner of the disputed domain name <baumedutigre.org>. According to this argument, Respondent, Christophe Fischer, is using the “Sevestre” name as an alias to conceal his true identity.
Respondents have explained the situation in detail and sorted out the confusion. There is in fact no use of an alias, or any attempt to conceal anyone’s identity. Messrs. Fischer and Sevestre have been involved in the business together since 2010, and it was Christophe Fischer who was the initial registered owner of all the disputed domain names. On February 1, 2019, Christophe Fischer transferred the entire domain name portfolio to Cedric Sevestre.
However, the transfer in ownership for the portfolio has not been recorded by the concerned Registrar, except for the disputed domain name <baumedutigre.org>.
The end result is that although Complainant’s arguments about ownership were inaccurate, it turns out that there is one single beneficial owner of all the disputed domain names, Cedric Sevestre, and he has been included as a named Respondent. The consolidated proceeding can properly go forward with respect to the multiple disputed domain names because there is in fact a single owner. In reaching this conclusion, the Panel is mindful that Complainant’s allegations about the use of an alias and concealment of the identities are unnecessary.
According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondents have no rights or legitimate interest in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
As set out in paragraph 4, Complainant owns registered trademark rights in its principal brand TIGER BALM, and also in related translations including BAUME DU TIGRE, BALSAMO TIGRE, and TIGER BALSAM.
All of the disputed domain names include the dominant elements of the registered TIGER BALM marks, with minor variations. The Panel notes there are no significant additional or distinguishing words in any of the disputed domain names. The Panel concludes that the disputed domain names are identical or confusingly similar to trademarks in which Complainant has rights.
Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the second element of paragraph 4(a) of the Policy, Complainant must prove on the balance of probabilities that Respondents have no rights or legitimate interests in the disputed domain names.
Complainant has chosen to structure this proceeding to include 11 domain names, which cover a wide range of registration dates from 2009 to 2017. Of the 11 domain names, 6 are associated with active websites which promote and sell products bearing the TIGER BALM Trademarks which originate from Complainant:
(together referred to as “Active Domain Names”)
The remaining 5 domain names resolve to inactive parking pages:
Respondents operate a commercial business in connection with the Active Domain Names, reselling TIGER BALM products which they acquired from what appears to be an authorized distributor of Complainant in Thailand. There is no suggestion that Respondents hold registered trademark rights in any of the variations of “Baume du Tigre”, “Balsamo-du-tigre”, or “Tiger-balsam” they have adopted. There is also no suggestion that Complainant itself has explicitly authorized Respondents to use the disputed domain names in question.
The question squarely before the Panel is whether Respondents have otherwise acquired legitimate interests in the disputed domain names, some of which have been used over a significant period of time. Respondents’ principal argument in this regard is that Complainant has acquiesced to the registration and continuing use of the disputed domain names since at least as early as 2010, and that this Complaint is therefore prescribed under French Law, and is otherwise unfounded under the Policy. To support the acquiesence argument, Respondents have raised circumstances that suggest a degree of awareness on behalf of Complainant and a level of detrimental reliance by Respondents.
As a preliminary point, the Panel notes that laches/acquiesence does not per se constitute a viable defence under the Policy. See The Hebrew University of Jerusalem v. Alberta Hot Rods, WIPO Case No. D2002-0616. As set out below, Respondents have brought forward evidence that may possibly support a finding of acquiesence or prescription under the relevant laws of France, or Courts in other appropriate jurisdictions. However, those arguments based on equitable or statutory grounds on their own cannot avail under the Policy.
For purposes of this proceeding, facts raised in this context may nourish an argument that there is an acquired right on behalf of Respondents, or at least may raise significant doubt about Complainant’s ability to prove the absence of such rights. That must inform the focus of this analysis.
The Panel notes that when a respondent has used a disputed domain name for a significant period (such as 5-10 years) without complaint, in association with an active commercial enterprise, the burden on a complainant to prove its case on legitimate interest can be substantial (see Authorize.Net LLC v. Cardservice High Sierra, WIPO Case No. D2008-0760). The challenge for a complainant is even more onerous if it appears that it was aware of the commercial use of the disputed domain names during this long period of time. This factor weighs in favour of Respondents in this case, given the evidence of first contact between the parties dating back to 2010. In this regard, the Panel acknowledges the evidence filed in response to Procedural Order No. 1.
In its Response, Respondents lay out in some detail the contacts between Respondent, Christophe Fischer, and Complainant’s agent which lead to the transfer of the domain name <tigerbalm.org>, Respondent, Christophe Fischer, was the registered owner of the domain name, and the home page from the website at that time confirms that it functioned as a reseller portal for TIGER BALM branded goods. Significantly, the website contained a message to users “Please visit other websites”, accompanied by links to Respondents’ other related websites at the disputed domain name <baslamo-de-tigre.com> and also the French and English websites at <baume-du-tigre.fr> and <tiger-balm.org.uk> (which remain active to this day). This evidence provides a factual foundation to conclude Complainant must have known the nature of Respondents’ business, the identity of the registered owner of the disputed domain names, and the use of the trademarks in question, more than nine years ago. Complainant’s explanation for its delay in taking any action against the disputed domain names is to submit that it would have sought to recover all these domain names at the same time, “if indeed Complainant knew about Mr. Fischer’s other domain names”. The evidence on this point is contradictory, but on the limited record before the Panel, it is difficult to accept Complainant’s claim of a lack of awareness, as of 2010 and thereafter.
A number of cases have considered fact scenarios where respondents have raised evidence of long term use, particularly in the context of resellers or distributors. Prior UDRP decisions have been fact dependent and often involve a substantial volume of contradictory evidence, which is challenging in summary proceedings. The decision in Oki Data has been followed by many UDRP panels in the context of resellers and the issue of fair use and legitimate interests. In this matter, both parties frame arguments based on the case. The elements of the analysis are well-known, and are summarized in WIPO Overview 3.0., section 2.8.1:
“(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”
Although there is some degree of variation among the network of websites used by Respondent, it is possible to examine the evidence and reach conclusions on these factors. With respect to the first factor, it is clear that Respondents are carrying on the business of offering a full range of TIGER BALM-branded products. The associated websites are involved with the promotion and sale of these items to European customers, offering full descriptions of the history of the brand and the use of the products in various formats, in different languages including French, Italian, and English.
With respect to the second factor, a fair reading of the websites leads to the conclusion that it is the TIGER BALM brand (and associated products) that is the primary focus of Respondents’ efforts. The dominant impression of Respondent’s websites is that they are constructed as online platforms for TIGER BALM products. However, there are references to at least two other products which do not carry the TIGER BALM brand.
The third factor, relating to the disclosure of Respondents’ identity, the nature of their business, and their relationship to the brand owner, is particularly important because it relates to potential deception among users. There are a number of factual considerations at play in this analysis. Firstly, the panel notes that the disputed domain names themselves do not include any distinguishing elements. Nothing in the disputed domain names “signals that the domain name may be owned and operated by a third party” (See The Macallen Distillers Limited v. Andrei Costin, WIPO Case No. D2016-2119). There are no “categorically distinguishing terms (such as “parts”, “refills”, “distributor”)” which would reduce the likelihood of consumer confusion (See Société des Produits Nestle S.A. v. Domain Manager, Nespresso-Thailand.com, WIPO Case No. D2017-2429, and WIPO Overview 3.0, section 2.8.2).
Secondly, the Panel notes that the design and appearance of the home pages associated with the Active Domain Names all include graphics, artwork, packaging images and logos related to and/or copied from Complainant’s original products and materials. The overall impression conveyed by the websites is of an online retail portal dedicated primarily to TIGER BALM products; questions of source, distribution or reselling are not raised as a first impression.
Thirdly, with respect to the efficacy and prominence of explicit disclaimers, the Panel has observed a degree of variation among the active websites for the disputed domain names, but none of which qualifies as particulary robust or prominent disclosure. The best information about Respondents’ role as reseller can be found elsewhere on other related websites such as <baume-du-tigre.fr> or <tigerbalm.org.uk> which do not form part of this proceeding. On these websites, there are clear statements to the effect that Respondents are resellers and that the “brands are the properties of the company Haw Par located in Singapore”. It was possible for the Panelist to find these disclaimers on the other websites only by clicking through links on the websites associated with the Active Domain Names, and then undertaking some further searching. This form of explicit disclosure was not present on the websites associated with the disputed domain names, in terms of prominence or clear explanations. Accordingly, the Panel finds that the requisite degree of disclosure under the Oki Data factor has not been made by Respondents.
With respect to the fourth factor, Respondents have registered multiple domain names related to translated versions of the TIGER BALM Trademarks, and this could on its face be characterized as “cornering the market”. One circumstance – previously noted – offers some support to Respondents: as early as 2008 Respondents were in fact the owner of the domain name <tigerbalm.org>, obviously a name of some value as it incorporated the brand itself in its simplest form. Yet, Respondents apparently transferred this domain name for a nominal amount to Complainant upon request: conduct that is not consistent with a registrant determined to corner the market in related domain names, at least in terms of what happened in 2010, (See Assembled Products Corporation v. Uppgroup Inc., WIPO Case No. D2009-1223). However, the Panel notes that six of the disputed domain names were subsequently registered between 2014 and 2016, long after the events of 2010. The end result is that 11 disputed domain names comprising the trademarks in question remain in Respondents’ hands.
Viewing the evidence as a whole, within the framework of a summary proceeding under the Policy, and having regard to the factors set out in Oki Data, Complainant has successfully met the challenge of proving the absence of legitimate interests.
Accordingly, the Panel finds that Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under section 6.B, the Panel has set out the facts of this matter in detail, which are also relevant to the bad faith analysis. The critical elements of proof that support a finding that the disputed domain names constitute abusive registrations are as follows:
(1) the disputed domain names lack any distinguishing features aside from the trademarks in question, and can therefore be regarded as facilitating initial interest confusion and impersonation;
(2) Respondents’ active websites are visually presented in a way that does not clearly communicate Respondents’ role as a reseller;
(3) Respondents’ active websites actually use graphics, images and logos of the Complainant to promote their sales, without authorization;
(4) although Respondents know how to create clear disclaimers (as shown by their French and English websites noted above), they did not do so with respect to websites associated with the Active Domain Names.
Regarding the disputed domain names that resolved to inactive parking pages, the Panel finds that the holding of these disputed domain names by Respondents does not prevent a finding of bad faith.
Accordingly, the Panel finds that Complainant has satisfied the requirements under paragraph 4(a)(iii) of the Policy.
On the basis of the limited evidentiary record and within the confines of the Policy, the Panel does find that Complainant has made out its case. However, the Panel acknowledges that the Parties are free to pursue litigation in an appropriate jurisdiction, with the benefit of a full evidentiary record, and in a forum where issues of acquiesence, laches and prescription may be fully argued.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <balsamo-de-tigre.com>, <baumedutigre.org>, <baume-du-tigre.info>, <tiger-balsam.com>, <baume-du-tigre.boutique>, <baumedutigre.boutique>, <baume-du-tigre.online>, <baume-tigre.net>, <baume-tigre.org>, <baumedutigre.online>, and <boutique-baume-du-tigre.com> be transferred to Complainant.
Christopher J. Pibus
Date: February 14, 2020