WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dominique Baudoux v. SA Cybertech Corporation
Case No. D2007-1267
1. The Parties
The Complainant is Dominique Baudoux, Ghislenghien, Belgium, represented by Hoche Demolin Brulard Barthelemy, Belgium.
The Respondent is SA Cybertech Corporation, Fujisawa, Kanagawa, Japan, represented by SUGANOYA Atsushi, Japan.
2. The Domain Name and Registrar
The disputed domain name is registered with PSIJapan.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2007. On August 29, 2007, the Center transmitted by email to PSIJapan a request for registrar verification in connection with the domain name at issue. On August 30, 2007, PSIJapan transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Complainant filed an amendment to the Complaint on September 17, 2007, discussed in the following paragraph. 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”), 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”).
Respondent submitted its Response on September 6, 2007. As this date preceded Complainant’s filing of its amendment, upon receipt of the amendment the Center notified Respondent that it had the right to modify its Response to take account of the amendment and, for the sake of good order, permitted Respondent a full twenty days from the filing of the amendment to supplement its Response.1 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 September 18, 2007. No supplement to or modification of the Response was submitted.
The Center appointed Richard G. Lyon as the sole panelist in this matter on November 9, 2007. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his 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 holds a Benelux trademark registration for PRANAROM, for essential oils and cosmetics (Class 3), pharmaceutical preparations, sanitary, dietetic substances adapted for medical use (Class 5), and eatable oils and fats (Class 29). Complainant or her licensee has sold products in these categories under the name PRANAR�M in July 1995.
Respondent registered the disputed domain name on October 1998. Since some date soon after that Respondent has sold Complainant’s products at this site. Respondent acquires Complainant’s products “legally from an agent in the Complainant’s region,” but not from Complainant. Today an Internet user who accesses Respondent’s website reaches a home page with “PRANAR�M.COM L’Aromatherapie, Huilles Essentielles Ch�motyp�es” below the picture. The home page has directions for English, French, and Japanese text, but the first two of these are “currently being prepared” and “en construction,” respectively. Therefore an Internet user may access the site only in Japanese. An Internet user who enters the site may purchase aromatherapy products including those of Complainant. Almost all of these products carry Complainant’s name.
The only correspondence between the parties prior to initiation of this proceeding was a telefaxed exchange of messages in August 1999, ten months after Respondent registered the disputed domain name. The English translation of Complainant’s email is quoted in the margin.2 It includes a request to transfer the disputed domain name to Complainant and a statement “our agency in Japan told [Complainant] about [Respondent’s support in distributing “[Complainant’s] products and supplying information. I am really grateful to [Respondent] for that.”
5. Parties’ Contentions
A. Complainant. Complainant contends as follows:
Rights in a Mark. The disputed domain name is confusingly similar to Complainant’s registered trademark, differing only by Respondent’s not using the word international and adding a generic top-level domain identifier, .com.
No Rights or Legitimate Interests. Quoting Complainant’s contention in full: “Respondent is making [sic] a legitimate non-commercial or fair use of the [disputed domain name], without intent for commercial gain misleadingly to divert customers or to tarnish the trademark at issue.”
Bad Faith. The domain name was registered primarily for the purpose of disrupting the business of the Complainant.
B. Respondent. Respondent contends as follows:
Rights in a Mark. The disputed domain name is not confusingly similar to the Complainant’s mark because it does not contain the word international. By seeking to enforce the Policy based upon use solely of one of two words in the mark “Complainant excessively stretches the interpretation of its trademark rights.” Furthermore pranarom is a combination of prana, a secret principal of yoga from ancient India, and arom, a shortened version of the general word aromatherapy. Because of this pranarom is not a trademark but rather a general concept and as such the public will not confuse the products of Complainant and the products of Respondent.
Rights or Legitimate Interests. Respondent legally obtained the disputed domain name under the first-to-file principle applicable to domain name registration, and has owned it for nine years. Respondent registered the disputed domain name “with a strong wish to preserve and pass down the concept of Pranarom and the wisdom of ancient Asia.”
Bad Faith. Respondent is not a cyber squatter; he has never attempted to sell or rent the disputed domain name to anyone, including Complainant. Eight years of silence following the 1999 telefax exchange amounts to an admission of Respondent’s rights.
Reverse domain name hijacking. Respondent characterizes this proceeding as “an attempt to steal the disputed domain name from the Respondent who were [sic] honest in the official registrant of the name.” This is ground for a finding of reverse domain name hijacking.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has established this element of the Policy by reason of its Benelux-registered trademark. It is beyond the jurisdiction and competence of a panel under the Policy to set aside a nationally registered mark. As the dominant word in the mark is pranarom, use of that word in the disputed domain name renders it confusingly similar to Complainant’s mark. Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests. Respondent is not commonly known by the disputed domain name, Respondent is using the disputed domain name for commercial purposes, and Complainant has never authorized Respondent to use the disputed domain name. Within a reasonable period of time after discovering Respondent’s registration, Complainant requested Respondent to transfer the disputed domain name to Complainant.
Respondent has not overcome this prima facie showing with any evidence, and the very limited available evidence supports Complainant. Respondent is admittedly not an authorized dealer, and the statement of gratitude for distribution is not authority for any use of Complainant’s mark. Complainant requests transfer in the same letter. Under the undersigned panelist’s view, in 1998, when the disputed domain name was registered, express contractual authority of a manufacturer was required for even an authorized distributor to make use of the manufacturer’s mark in a domain name (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.2, Minority View). Even the Majority View, as currently articulated, provides little aid to Respondent; an unauthorized reseller cannot claim implied rights by virtue of a distributorship agreement or tacit complicity.
Respondent’s use of Complainant’s exact mark, including the French spelling complete with accent circonflexe (PRANAR�M), belies its assertion here that the site’s purpose is anything but that of an Internet retailer.
The prevailing practice under the Policy is not to recognize a defense at the nature of laches or estoppel.3 While nine years’ use might in some circumstances generate a right or legitimate interest under paragraph 4(c)(ii) of the Policy, none of those circumstances obtains in this proceeding. Respondent, an unauthorized reseller of Complainant’s products, has not provided evidence that it is “commonly known” by the disputed domain name and in light of Complainant’s letter shortly after registration of the disputed domain name Respondent cannot claim actual or implied consent. Paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith.
For these same reasons the evidence also shows that Respondent registered and has used the disputed domain name in bad faith. It registered a disputed domain name incorporating the principal and distinctive word in Respondent’s mark in order to sell, without Complainant’s authority, products that, though genuine, compete with Complainant’s own sales or those of its authorized resellers. Selling Complainant’s branded products indicates Respondent knew of Complainant and her mark at the time the disputed domain name was registered. Respondent has continuously sold such products since registering the disputed domain name, indicating bad faith in subsequent use. Under paragraph 4(b)(iv) of the Policy this is classic evidence of bad faith.
The Panel’s granting Complainant the relief she has requested moots Respondent’s request for a finding of reverse domain name hijacking.
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.
Richard G. Lyon
Sole Panelist
Dated: November 23, 2007
1 The amendment was a change of the relief requested from cancellation (in the Complaint) to transfer of the disputed domain name (in the Amendment). As this might affect the merits, the Center properly allowed Respondent a full twenty-day period to respond.
2 “Sirs, I'm glad to hear that things are going well for you. An our agency in Japan told me about your support in distributing our products and supplying information. I am really grateful to you for that.
Matter of the domain name "PRANAROM.COM"
It is our wish to continue to supply latest information to people in the Aromatherapy industry all over the world through the Internet. We would like to request you to transfer the right of use of your domain name "PRANAROM.COM" to our company. We have a plan to establish a company in the United States in a near future and the domain name is really necessary for us for that purpose. We sincerely hope that you understand the situation and help us in this matter.
Sincerely,
PS : We have our general agency in Japan. Please send your answers by FAX to the agency
specified below.
President HONOBE, KENSOIGAKUSHA”
3 Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091; Iogen Corporation v. IOGEN,WIPO Case No. D2003-0544.
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