WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perlier S.p.A. v. Ms. Darryl O'Donnell
Case No. D2003-0847
1. The Parties
The Complainant is Perlier S.p.A., of Milano, Italy, represented by Studio Legale Jacobacci & Associati, Italy.
The Respondent is Ms. Darryl O'Donnell, of Fairfield, Connecticut, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with R.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2003. On October 28, 2003, the Center transmitted by email to R a request for registrar verification in connection with the domain name at issue. On October 28, 2003, R 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 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 October 31, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2003. The Respondent did not submit any Response, apart from two e-mails sent to the Center on October 31, 2003 (before the due date) and November 25, 2003 (after the due date). Since neither email complied with the requirements that are described in the Rules, paragraph 5 and the Supplemental Rules, neither email may be considered as a formal Response and shall be disregarded by the Panel. Accordingly, the Center notified the Respondent�s default on November 24, 2003.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on December 5, 2003. 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
Complainant asserted and provided evidence in support of the following facts, which the Panel finds well established:
Complainant is a well-known Italian cosmetic company and is the owner of a number of trademark registrations including the word PERLIER for cosmetic products throughout the world among which:
- PERLIER, International Registration n�381173, registered on August 4, 1971, and renewed on August 4, 1991, for a period of 20 years;
- PERLIER NATURAL RECIPES, Registration n�1350208, registered on July 23, 1985, in the United States.
There is little doubt that Complainant is and has been for many years the owner of the trademarks PERLIER associated with its products.
PERLIER is also the distinctive part of Complainant�s trade name.
The disputed domain name has been registered by Respondent with R on October 11, 2001, and updated on October 11, 2003.
The Panel notes that the registration dates of all of the above-referenced registrations as well as the vast majority of trademark registrations containing the word "PERLIER" listed in Complainant�s attachment to the Complaint (while it shall be noted that Complainant did not produce all the related registration certificates), predate the date of registration of the disputed domain name by Respondent.
5. Parties� Contentions
A. Complainant
Complainant claims that the disputed domain name is confusingly similar to the trademark PERLIER owned by Complainant.
In addition, Complainant claims that there is no way that Respondent may not have been aware of the trademark PERLIER of Complainant, which is registered in several countries of the world and, accordingly, that registration could only have occurred in bad faith. Furthermore, Respondent�s use of the domain name is in bad faith. The default page of "www." consists in a parking place of its Registrar, R, which characterizes a holding of the domain name by Respondent at the very border between a "passive" and an "active" holding since by typing "www.", one does not receive an error page but is directed to a parking page of the Registrar offering various searches and services. Under paragraph 4(b) of the Policy, Respondent�s inaction (e.g. passive holding) in relation to a domain name registration may, in certain circumstances and alike a positive action, amount to using the domain name in bad faith. Complainant cites, in support, various WIPO decisions, among which Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Finally, Complainant asserts that, upon information and belief, Respondent has no rights or legitimate interests in respect of the domain name. In particular:
(i) there is no evidence of the Respondent�s use of, or demonstrable preparations to, use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) Respondent has never been commonly known, in the normal course of business, by the trademark, trade name or domain name PERLIER;
(iii) there is no evidence of a bona fide non-commercial or other legitimate fair use by Respondent.
Based on the foregoing, Complainant seeks the transfer of the domain name to Complainant.
B. Respondent
Respondent did not reply to Complainant�s contentions.
6. Discussion and Findings
The Panel�s findings under each heading with reference to the parties� contentions, the Policy, Rules, Supplemental Rules and applicable substantive law are the following:
A. Identical or Confusingly Similar
Complainant has proven that it owns the trademark PERLIER and trademarks incorporating the word "PERLIER" with regard to cosmetic products.
The trademark is included in the disputed domain name. The suffix is incidental to domain name and cannot serve to distinguish it.
The Panel therefore finds that the domain name is confusingly similar to Complainant�s trademark and as a consequence, the action brought by Complainant meets the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(b)(ii), the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the domain name.
Complainant merely asserts that:
(i) there is no evidence of the Respondent�s use of, or demonstrable preparations to, use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) Respondent has never been commonly known, in the normal course of business, by the trademark, trade name or domain name PERLIER;
(iii) there is no evidence of a bona fide non-commercial or other legitimate fair use by Respondent.
However, Respondent did not provide a Response to the case against it and, in any case, did not produce any evidence, as required by Paragraph 4(c) of the Policy, that it has any rights or legitimate interests in the domain name and more specifically, that:
- before any notice to Respondent of the current dispute, there was a use of, or demonstrable preparations to, use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or,
- Respondent has ever been commonly known by the domain name ; or,
- Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain in order to misleadingly divert consumers or to tarnish the trademark PERLIER.
Furthermore, evidence produced by Complainant shows that, when typing "www.", the default page of "www." consists in a parking place of its Registrar, R, offering various searches and services, enabling the Panel to conclude that, at the time of the Complaint, there was no use of the disputed domain name, and in the absence of contrary evidence submitted by Respondent, Respondent was not commonly known by the domain name .
The Panel therefore infers from Respondent�s silence and Complainant�s evidence that Respondent has no rights or legitimate interests in the domain name . The Panel therefore finds and considers that the requirements of Paragraph 4(a)(ii) of the Policy are fulfilled.
C. Registered and Used in Bad Faith
Complainant is a well-known Italian cosmetic company operating in Italy and abroad, including in the United States, which is the country of Respondent. As stated above, Complainant�s PERLIER trademark is registered in several countries throughout the world, including in the United States, since August 4, 1971 (July 23, 1985, for the United States).
Therefore, and in the absence of contrary evidence submitted by Respondent, the Panel finds that Respondent knew of, or should have known of, the Complainant�s trademark and services at the time it registered the domain name , that is on October 11, 2001, and that such registration occurred in infringement of Complainant�s trademark and trade name rights.
In addition, Respondent did not file any Response that would have proven it had the right to carry out such registration.
As a consequence, the Panel finds that the registration by Respondent of was performed in bad faith.
With regard to the use in bad faith of the disputed domain name, Complainant�s evidence shows that the default page of "www." consists in a parking place of its Registrar, R, offering various services and searches, inferring that there is no positive action undertaken by Respondent in the use of the domain name but a mere "passive" holding of that domain name by Respondent.
As stated in the decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and confirmed in subsequent WIPO decisions, "[�] the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith. [�]", such circumstances including, as held in the aforementioned decision, the fact that:
- "the Complainant�s trademark has a strong reputation and is widely known, [�]";
- "the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name".
The Panel is satisfied with Complainant�s evidence that its trademark has a strong reputation and is widely known and, in any case, should have been known by Respondent. In addition, given the numerous trademark registrations performed by Complainant for PERLIER throughout the world and the lack of rights or legitimate interests of Respondent in the disputed domain name, as established above (see � 6B), Respondent knew, or should have been aware, at the time of registration of the disputed domain name, that it could not legitimately use that domain name. Finally, Respondent did not submit any Response and evidence proving a use in good faith of the disputed domain name, while it had been given the opportunity to do so.
As a result, the Panel finds that the domain name was registered and is used by Respondent in bad faith and considers the requirements of paragraph 4(a)(iii) of the Policy to be fulfilled.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to Complainant.
Christiane Féral-Schuhl
Sole Panelist
Dated: December 15, 2003
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