WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bourjois SAS v. Whoisguard, Inc. / Business World Club LLC
Case No. D2015-0895
1. The Parties
The Complainant is Bourjois SAS of Puteaux, France, represented by Boehmert & Boehmert, Germany.
The Respondent is Whoisguard, Inc. of Panama, Panama / Business World Club LLC of Wilmington, United States of America.
2. The Domain Names and Registrar
The disputed domain names <bourjoisprestige.com> and <prestigebourjois.com> are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2015. On May 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 29, 2015, the Registrar transmitted by email to the Center its verification response 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 the Complainant on June 3, 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 June 3, 2015 replacing the originally named Respondent (Whoisguard, Inc.) with the newly identified registrant (Business World Club LLC).
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2015.
The Center appointed Antony Gold as the sole panelist in this matter on July 1, 2015. 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 that operates in over 50 countries and has been distributing cosmetics and perfumes for more than 150 years. It owns over 200 trade marks which feature the word BOURJOIS. The trade marks have been registered in many jurisdictions. They include, by way of example, International Registration number 168650 for BOURJOIS first registered on April 20, 1953 in class 25. Full details of a further 9 trade mark registrations for BOURJOIS owned by the Complainant are provided in the Complaint.
The disputed domain names were both registered on May 4, 2015. The originally named Respondent Whoisguard, Inc. is a company which, as its name suggests, provides services to domain name registrants whereby it conceals their identity from public view. There is no information available about the Respondent Business World Club LLC, which was confirmed as the registrant of the disputed domain names by the Registrar and replaced as the Respondent in the amendment to the Complaint. The Panel finds it appropriate to record in his decision both the name of the privacy registration service appearing in the WhoIs at the time the Complaint was filed, and of the disclosed underlying registrant later named as Respondent in the amendment to the Complaint. Therefore, save where the context requires otherwise, all references to the “Respondent” are to be taken as references to both named Respondents.
The Complainant has provided screen prints of the websites to which each of the disputed domain names pointed as at the date they were accessed by the Complainant. These comprise parking pages which contain links to third party products (such as“Cosmetics Eyeshadow” and “Prestige Eye Shadow”) as well as to, seemingly at least, products of the Complainant (such as “Bourjois make up” and “Bourjois New Mascara”).
5. Parties’ Contentions
The Complainant says that both disputed domain names are confusingly similar to its BOURJOIS trade marks. In this respect it points out, first, the distinctive character of BOURJOIS. It draws attention to the difference between its mark and the French word “bourgeois” and says that BOURJOIS is a term with no meaning which is widely recognized as the Complainant’s trade mark in the perfumery and cosmetics sector. It says that adding the word “prestige”, whether after BOURJOIS (in the case of the first disputed domain name) or before BOURJOIS (in the case of the second disputed domain name), does not render either of the disputed domain names dissimilar to its trade mark. This, says the Complainant, is because “prestige” is a word commonly used in the fields of perfumery and cosmetics to illustrate characteristics such as importance, luxury and superiority. For this reason, each disputed domain name comprises a component (“bourjois”) which is identical to the Complainant’s BOURJOIS marks and a further element (“prestige”) which is simply a descriptive word and one which is readily associated by consumers in this field with the Complainant’s products.
In support of its contention that the Respondent has no rights or legitimate interests in respect of the disputed domain names, the Complainant says that the Respondent is not connected in any way with it. Moreover, it says that, because there is no relationship between the Complainant and the Respondent, there is thus no license, permission or other authorization by which the Respondent could legitimately own or use a domain name which includes the trade mark BOURJOIS, not least because the Respondent merely acts a “front company” for domain name registrants by appearing as the domain name registrant itself, whilst the real operator of the disputed domain names is not revealed to third parties. Moreover, the Complainant says, it is clear from the use to which the disputed domain names have been put that the disputed domain names have been registered for fraudulent purposes and that the Respondent cannot have any rights or legitimate interests in respect of them. This is because the websites to which the disputed domain names point do not contain any links which point to the Complainant but merely comprise parking websites featuring sponsored links to third party websites which offer cosmetics, including to competitors of the Complainant. These generate per-per-click income for the Respondent. The Complainant says that pay-per-click Internet advertising of this type is intended to exploit and benefit from the reputation and good standing of the Complainant and does not signify any rights or legitimate interests on the part of the Respondent in the disputed domain names.
Lastly, the Complainant says that the disputed domain names have been registered and are being used in bad faith.
The Complainant points out that, as at the date of registration of the disputed domain names, it had been established for more than a century and had built up an international reputation. Its first trade mark registration for BOURJOIS was filed approximately 60 years ago. Moreover, it owns and operates websites at numerous other Top-Level Domains which include or comprise the word BOURJOIS, such as “www.bourjois.com”, “www.bourjois.fr” and “www.bourjois.es”. For these reasons it says that the Respondent must have been fully aware of the Complainant and its trade mark rights as at the date of registration of the disputed domain names and that this is confirmed by the Respondent’s use of the BOURJOIS trade mark as a keyword. In addition, the Complainant says that a simple search on the Internet would have revealed the Complainant and its BOURJOIS trade marks. Moreover, it says that even if the Respondent was not aware of it, paragraph 2 of the Policy imposes an obligation on a registrant to determine whether a proposed domain name registration will infringe third party rights and it refers to a number of cases in which panels have found that a failure to conduct adequate searching may give rise to an inference of knowledge, including mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
With these points in mind, the Complainant says that the Respondent clearly registered the disputed domain names in order to establish parking websites generating pay-per-click income for the Respondent as a result of the association of both the disputed domain names and the website content with the Complainant’s well-known BOURJOIS trade marks and that this constitutes bad faith registration. The Complainant also says that the Respondent registered the disputed domain names for the purpose of selling, renting or otherwise transferring the disputed domain names to the Complainant, as the owner of the BOURJOIS trade marks and that such registrations fall within the example of bad faith registration set out at paragraph 4(b)(i) of the Policy.
In terms of bad faith use, the Complainant says that the Respondent is deriving income from misleading Internet users who visit the websites to which the disputed domain names point looking for the Complainant’s products and that this amounts to bad faith use under paragraph 4(b)(iv) of the Policy, namely that the Respondent is intentionally attempting to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites. The Complainant cites a number of cases in which previous panels have found that registering a domain name which includes a well-known trade mark owned by a third party for the purpose of attracting users to the respondent’s website in order to generate pay-per-click revenue amounts to bad faith registration and use; see, for example, Villeroy & Boch AG v.Mario Pingerna, WIPO Case No. D2007-1912 and Rolex Watch U.S.A. Inc v.Vadim Krivitsky, WIPO Case No. D2008-0396.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and
(ii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided ample evidence to substantiate that it has rights in the trade mark BOURJOIS. In particular, it has produced specific details of 10 trade mark registrations, either national or international, for BOURJOIS. In addition, the Complainant has over 200 BOURJOIS trade marks in total.
The disputed domain names are not identical to the Complainant’s trade mark. In assessing whether they are confusingly similar it is necessary to consider the differences between the trade mark and the disputed domain names. In this respect, it is both usual and appropriate to disregard the applicable generic Top-Level Domain (“gTLD”) suffix (in this case, “.com”) for the purpose of making a comparison between the Complainant’s trade mark and the disputed domain names.
Each of the disputed domain names comprises the entirety of the Complainant’s BOURJOIS trade mark coupled with the word “prestige”. In one of the disputed domain names “prestige” precedes BOURJOIS and, in the other, it follows it. The Panel agrees with the Complainant that the use of “prestige” does not serve to prevent either of the disputed domain names from being confusingly similar to the Complainant’s mark. “Prestige” is a laudatory term commonly applied to luxury goods. An Internet user seeing the Complainant’s distinctive BOURJOIS trade mark as a component of a domain name in conjunction with “prestige” would not be any less likely to regard the domain name as associated with the Complainant than if the domain name comprised solely the trade mark BOURJOIS. In fact, the connotations of the “prestige” component arguably serve to further reinforce the association of the disputed domain names with the Complainant.
Accordingly the Panel finds that the disputed domain names are confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides non-exhaustive examples of how a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
None of these examples are applicable to the facts of this case. The use to which the disputed domain names have been put, namely to host parking page in the form described earlier, is not a bona fide offering of goods and services. The Respondent Whoisguard, Inc. as a paid nominee for the actual registrant has plainly not been commonly known by the name BOURJOIS and there is no evidence that the Respondent Business World Club LLC has been commonly known by such name. Moreover, the use to which the disputed domain names have been put does not constitute a legitimate noncommercial or fair use of them.
The Respondent has chosen not to serve a Response in which it could have challenged the Complainant’s assertions and sought to explain why it might have rights or legitimate interests in the disputed domain names. For this reason, there is no material before the Panel which could conceivably point towards a right or legitimate interest on the part of the Respondent in registering them.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names.
C. Registered and Used in Bad Faith
It is evident from the evidence and submissions of the Complainant that, as at the time of registration of the disputed domain names, the Complainant’s BOURJOIS trade mark was both long established, having first been registered over 60 years previously, and very well known in the perfumery and cosmetics sector. It is also a distinctive trade mark.. The fact that, very shortly after the Respondent registered the disputed domain names, they pointed to websites hosting pay-per-click links to products competing with those of the Complainant clearly points to the Respondent having registered them for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of those web sites. Such conduct falls within the example of both bad faith registration and bad faith use set out at paragraph 4(b)(iv) of the Policy. The earlier decisions under the UDRP cited by the Complainant support its contentions in this respect.
The Panel accordingly finds that the disputed domain names were both registered and are being used in bad faith. It is not therefore necessary for the Panel to consider the additional arguments put forward by the Complainant in respect of this element of the Policy and particularly paragraph 4(b)(1).
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, <bourjoisprestige.com> and <prestigebourjois.com>, be transferred to the Complainant.
Date: July 13, 2015