WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Estee Lauder, Inc. v. Jeremy Stamper d/b/a Pon
Case No. D2003-0036
1. The Parties
The Complainant is Estee Lauder, Inc., a Delaware corporation with its principal office in New York City, New York, the United States of America. The Complainant is represented in this proceeding by Roberta L. Horton, Esq. and Mary C. Bigelow, Esq. of Arnold & Porter of Washington, D.C. and Tysons Corner, Virginia, the United States of America.
The Respondent in this proceeding is Jeremy Stamper d/b/a Pon of Seattle, Washington, the United States of America.
2. The Domain Names and Registrar
The disputed domain names are and .
The registrar for the disputed domain names is Tucows, Inc., Toronto, Ontario, Canada.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 17, 2003. On January 20, 2003, the Center transmitted by email to the registrar Tucows, Inc. a request for registrar verification in connection with the domain names in dispute. Also on January 20, 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, billing, 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 (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 this proceeding began on January 22, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was set at February 11, 2003. The Respondent did not file a response by the due date, and was notified of his default on February 12, 2003.
The Center appointed Michelle Brownlee, Dana Haviland and Dennis A. Foster as panelists on March 13, 2003. The Panel finds that it was properly appointed. Each member of the Panel has submitted a 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 engaged in the manufacture, distribution, and sale of personal products, including skin care, makeup and perfume.
The Complainant has a number of United States federal trademark registrations for its mark, "Estee Lauder", and one for its mark "Lauder" (Complaint Exhibit E).
The Respondent registered the disputed domain names and on November 5, 2002.
5. Parties� Contentions
A. Complainant
- By virtue of Estee Lauder�s extensive and exclusive use, advertising and promotion of the Estee Lauder marks, it has achieved an enormous degree of consumer recognition and fame, and serves as an exclusive designation of origin of Estee Lauder�s goods and services, and as a symbol of the goodwill and excellent quality and reputation of Estee Lauder�s goods and services.
- The Estee Lauder marks are truly famous and are entitled to the widest scope of protection afforded by law, including protection against dilution. Indeed, it is the rare consumer who is not immediately familiar with the Estee Lauder marks, and Estee Lauder is one of the most recognized beauty companies in the world.
- The fame of Estee Lauder extends to the surname Lauder. Indeed, Estee Lauder owns an incontestable U.S. registration for Lauder cologne, after-shave lotion, moisturizing shave cream, hair shampoo, and antiperspirant in stick form.
- Estee Lauder was founded by Estee Lauder herself, and continues to operate as a family-run business with her children and grandchildren holding key leadership positions. Therefore, not only is the Estee Lauder trademark famous, but the surname Lauder is a famous trademark, as well.
- Ronald Lauder is the son of Estee Lauder and currently serves as a member of the Estee Lauder Board of Directors and as Chairman of Clinique Laboratories, Inc., a subsidiary of Estee Lauder. Although he has achieved prominence in his own right in business, politics and philanthropy, his name continues to be directly associated with Estee Lauder.
- On the same day he registered the disputed domain names, the Respondent sent an email to the Complainant offering to sell them for U.S. $750.
- Respondent has posted the disputed domain names on a message board hosted by Yahoo!, offering to sell these names for U.S. $399 (Complaint Exhibit I).
- The Respondent chose the disputed domain names containing the name "Ronald Lauder" because he is a prominent member of the Lauder family, heir of Estee Lauder, chairman of a well-known subsidiary of Estee Lauder, and, therefore, has a direct affiliation with Estee Lauder. Furthermore, the fact that Respondent contacted Estee Lauder, rather than Ronald, indicates that he was aware of the commonly-known affiliation between Ronald Lauder and his family�s company. It is this affiliation and prominence that make the disputed domain names confusingly similar to the Estee Lauder marks.
- Prior ICANN panels have found that such an addition of a generic word or modifier to a famous trademark in a domain name does not eliminate confusion and is evidence of bad faith.
- Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the company�s name or marks.
- The disputed domain names not only incorporate wholesale Estee Lauder�s trademark Lauder, but also include the name of a prominent member of the Lauder family and corporate official, which would almost undoubtedly cause consumers to expect to find an Estee Lauder website at the disputed domain names. Thus, the disputed domain names are confusingly similar to the Estee Lauder marks.
- Respondent has no connection or affiliation with Estee Lauder. Respondent has not received any license or consent, express or implied, to use the Lauder marks.
- Respondent has not used the disputed domain names in connection with a bona fide offering of goods and services.
- The Respondent sought to sell the disputed domain names back to the Complainant on the same day he registered them.
- Respondent�s actual attempts to sell or transfer the domain names for valuable consideration in excess of out-of-pocket costs is evidence of bad faith use under the Policy.
- Respondent has also used the disputed domain names in bad faith simply by holding the domain names as a cybersquatter.
- Given the fame of the Estee Lauder marks, "it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain names."
- The disputed domain names should be transferred to the Complainant.
Respondent
The Respondent is in default in this proceeding and thus has not filed any contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain names and transferred to it, the Complainant must prove the following (the Policy, paragraphs 4(a)(i-iii)):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
A. Identical or Confusingly Similar
The Complainant has exhibited at Exhibit E United States trademark registrations for the marks "Estee Lauder" (for example no. 1110604 dated June 5, 1979, in international class 14 for jewelry containing cosmetics) and one for the mark "Lauder" (registration no. 1233206 dated April 5, 1983, in international class 3 for cologne and after-shave lotion and similar products) along with use that goes back many years before the Respondent registered the disputed domain names. The disputed domain names, however, contain a man�s name, "Ronald Lauder". The Panel does not believe that the name "Ronald Lauder" is confusingly similar to the trademark "Estee Lauder". Even though they share the "Lauder" family name , the different first names clearly refer to two different persons, and Internet users viewing the domain names are therefore unlikely to believe that the Complainant is associated with them.
The Complainant also contends the disputed domain names are confusingly similar to the Complainant�s "Lauder" mark, which is based on the family name of Estee Lauder. The Complainant makes a number of arguments to support this contention. First, the Complainant argues confusing similarity because of the family affiliation between Ronald Lauder and the company Estee Lauder. The Complainant offers no legal authority for this contention and the Panel does not find it convincing. To be sure, there is affiliation between a son, Ronald Lauder, working for a company, Estee Lauder, Inc., that was founded by his mother, Estee Lauder. But, in the Panel�s view, this affiliation is not likely to confuse anyone into believing that there is a relationship between Complainant and the disputed domain names.
Next, the Complainant argues that Ronald is a generic word added to the famous Lauder mark. The Complainant cites a number of UDRP cases but they are not apposite because the first name "Ronald" certainly is not a generic term (cf. "Microsoft Home" being found confusingly similar to the mark "Microsoft" in Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (January 19, 2001))
The Complainant goes on to argue that courts have recognized that consumers expect to find a company on the Internet at a domain address comprised of the company�s name or marks. However, the Complainant provides no support for its further contention that Internet users would expect to find a website associated with Complainant at a domain address comprising the name Ronald Lauder. The Panel does not believe that Internet users would be likely to try to find a website associated with Complainant by trying to access websites associated with the disputed domain names.
If the Panel were to accept that, as a domain name, Ronald Lauder is confusingly similar to the mark "Lauder", it would mean that, on the Internet, every mark composed of a last or family name potentially is confusingly similar to every first name plus that last name, even though all the individuals involved might have different first names. The Panel knows of no legal grounds that support this contention, the Complainant does not supply any, and common sense indicates this would be a terrible burden to inflict on individuals whose last names correspond to registered marks.
The Panel finds the disputed domain names, and , are not confusingly similar to the Complainant�s marks "Estee Lauder" and "Lauder". Thus, the Complainant has not carried its burden of proof under the Policy at paragraph 4(a)(i).
Since the Complainant must prevail under every paragraph of the Policy, paragraphs 4(a)(i-iii), the Panel does not need to discuss whether the Respondent has legitimate rights or interests in the disputed domain name (Policy paragraph 4(a)(ii)), or whether the Respondent registered and is using the disputed names in bad faith, Policy paragraph 4(a)(iii).
7. Decision
The Panel finds the disputed domain names, and are not confusingly similar to the Complainant�s "Estee Lauder" and "Lauder" marks. Therefore, per Policy paragraph 4(i) and paragraph 15 of the Rules, the Panel orders that the disputed domain names remain registered to the Respondent, Jeremy Stamper, d/b/a Pon..
Dennis A. Foster
Presiding Panelist
Michelle Brownlee
Panelist
Dana Haviland
Panelist
Dated: March 27, 2003
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