WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baccarat SA v. no company, Pavel Gross
Case No. D2008-0944
1. The Parties
The Complainant is Baccarat SA, Baccarat, France, represented by MEYER & Partenaires, France.
The Respondent is no company, Pavel Gross, Moscow, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names and are registered with Directi Internet Solutions d/b/a PublicDomainRegistry.Com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2008. On June 23, 2008, the Center transmitted by email to Directi Internet Solutions d/b/a PublicDomainRegistry.Com, a request for registrar verification in connection with the domain names at issue. On June 24, 2008, Directi Internet Solutions d/b/a PublicDomainRegistry.Com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2008. The Respondent did not submit any response, but sent an e-mail on July 3, 2008 saying “I cant understand any words !!!!!”. The Center, even if it was not compulsory, sent to the Respondent a Russian translation of the previous e-mail and with a following one specified to the Respondent that the language of the proceedings is English. The Respondent did not reply, neither submitted any response. Accordingly, the Center notified the Respondent's default on July 24, 2008.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on August 5, 2008. 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. The Panel agrees with the Center that, without any doubt, the language of the proceedings is English and depends on the fact that the English language has been used by the Respondent of both the Domain Name Registration Agreement as well as the Customer Master Agreement during the domain name Registration and Customer Signup process as confirmed by the registrar.
4. Factual Background
The following uncontested facts are found by the Panel and established as true.
The Complainant is a worldwide famous manufacturer of crystal wares since 1764 and is the supplier to a great majority of foreign Courts and heads of States since more than 200 years.
The Complainant owns the widely-known trademark BACCARAT registered in several countries all over the worlds and in particular:
- International nominative trademark No. 959025 dated September 7, 2007 registered in international classes 35, 36, 38, 39, 41, 43, 44 and designing Russian Federation;
- French nominative trademark registration No. 99787695 dated on April 16, 1999, live;
- French trademark registration MAISON BACCARAT filed on December 15, 2005 and registered under No. 05 3 398047 in classes 35, 43 and 44.
The Complainant registered several country code and generic top-level domain names as for example:
- registered on July 5, 2004;
- registered on December 13, 2004;
- registered on January 3, 2005;
- registered on January 26, 2004;
- registered on January 7, 1997.
The Respondent has registered the disputed domain names and on March 2, 2008.
The following uncontested facts are found by the Panel and established as true.
5. Parties' Contentions
A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the domain names subject of this dispute.
In relation to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the domain names in dispute:
- are identical to the trademark MAISON BACCARAT;
- are confusingly similar to the famous trademark BACCARAT because it is entirely reproduced in the disputed domain names which simply are a combination of the famous trademark with the word “maison”, which is the given name of the showroom Baccarat in Paris since 2003 and in Moscow since February 29, 2008 (2 days before the domain names were registered).
The addition of a generic word is insufficient to give any distinctiveness to the domain name, with the conclusion that the disputed domain names are confusingly similar to the trademarks of the Complainant.
In relation to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect to the domain names. The Respondent has never been an agent, representative or licensee of the Complainant and did not carry out any activity for, or had any business with it and has never been authorized to use the trademark BACCARAT or to apply domain names comprehensive of the trademark BACCARAT.
In relation to element (iii) of paragraph 4(a) of the Policy, the Complainant contends that evidence of bad faith registration and use is established by the following circumstances.
The Respondent, at the time of the registration of the contested domain names, was surely aware of the trademarks of the Complainant taking into consideration that BACCARAT is worldwide known and 2 days before the contested domain names have been registered, the Complainant opened a showroom in Moscow named the “Maison Baccarat Moscow” where the Respondent is located. Moreover, on April 16, 2008, the Complainant has been contacted by the Respondent who was offering for sale the contested domain names and two others in the “.ru” top level domain (see Annex E).
The Complainant has conducted investigations about the Respondent and it owns thousands of domain names and is described in an article as a “famous Russian cybersquatter” who considers that “cybersquatting is a profitable business” (see Annex F1).
The Complainant states that the Respondent does not use the disputed domain names for bona fide offering of goods and services and is not making a legitimate non-commercial or fair use of it; in particular the disputed domain names are used to resolve to a parking webpage with numerous sponsored links in Russian language.
According to the Complainant, the Respondent registered the domain names primarily for the purpose of selling it; in fact the Respondent offered the disputed domain names to the Complainant before and after receiving a cease and desist letter.
The Complainant requests the Panel to transfer the disputed domain names to it.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has several trademarks registrations for BACCARAT all over the world, including Russian Federation. Therefore it has been proved that the Complainant has rights in the BACCARAT trademark.
The only difference between the disputed domain names and the Complainant's trademark is the addition of the word “maison”. The addition of the word “maison” (which is a generic term and is used by the Complainant to named showrooms opened in Paris and in Moscow) does not add a distinctive element to the disputed domain names, but, on the contrary, increases the likelihood of confusion between the domain names and the Complainant's trademarks.
Several WIPO UDRP decisions state that confusing similarity, for the purposes of the Policy, is established when a domain name wholly incorporates a complainant's mark and only adds a generic word (see i.e., Deutsche Telekom AG v. Maggie Eliger,WIPO Case No. D2008-0173; F. Hoffmann-La Roche AG v. Bobik Marley,WIPO Case No. D2007-0694; Dr. Ing. h.c. F. Porsche v. Lyn Davis, WIPO Case No. D2006-1098; Société des Hotels Méridien v. Mr. Cuneyt Ozarici, WIPO Case No. D2005-0201; ACOR, Society Anonyme a Directoire et Conseil de Surveillance v. SEOCHO, WIPO Case No. D2002-0517; Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046).
The addition of the generic top level domain extension “.com” does not eliminate the similarity (see Deutsche Telekom AG v. Maggie Eliger,WIPO Case No. D2008-0173; Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media,WIPO Case No. D2007-0840; Crédit Industriel et Commercial S.A v. Name Privacy,WIPO Case No. D2005-0457).
There is no doubt that the domain names and are confusingly similar to the trademarks of the Complainant. Therefore, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Panel finds that as a result of the default, the Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the domain name, such as:
(i) use or preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute, or
(ii) being commonly known by the domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record that the Respondent has any rights or legitimate interests in the domain names.
The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark, or to apply for or to use the domain names incorporating said mark.
The Respondent has not submitted any evidence to demonstrate any rights or legitimate interests in the disputed domain names, and there is prima facie indication in the case file that there are no rights or legitimate interests on the part of the Respondent in the domain names, see paragraph 4(c) of the Policy (see Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Grande Media,WIPO Case No. D2007-0840; UPIB, Inc. v. Texas Internet,WIPO Case No. D2004-0073).
On the contrary, the Complainant has several trademarks registrations for BACCARAT. Therefore it has been proved that the Complainant has right in the BACCARAT trademark.
According to the evidence submitted by the Complainant, the Respondent is not making a legitimate non-commercial or fair use of the domain names in dispute, moreover there is no evidence that Respondent intends to use the domain names through any fair or legitimate use.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names and under these circumstances, finds that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Based on the evidence presented by the Complainant, the Panel considers that the Respondent registered and used the disputed domain name in bad faith.
As sufficient evidence of registration in bad faith, the Panel finds that the Respondent registered the contested domain names (which correspond to a widely known trademark with the addition of the word “maison”) most probably with knowledge of the Complainant's rights. Only someone who was familiar with the Complainant's marks would have registered the confusingly similar domain names (see Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0850; AT&T Corp. v. Xinzhiyuan Management Consulting Co., Ltd.,WIPO Case No. DCC2004-0001; British Sky Broadcasting Group plc, v. Mr. Pablo Merino and Sky Services S.A,WIPO Case No. D2004-0131; Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487). In fact the Complainant has demonstrated that the disputed domain names were registered by the Respondent only two days after the opening of a big shop in Moscow where the Respondent is located, the “Maison Baccarat Moscow”. The Respondent therefore must have had knowledge of the existence of the Complainant and its trademarks.
Moreover the Respondent, before and after receiving the cease and desist letter from the attorney of the Complainant, offered to sell the contested domain names (see annex I of the Complaint).
There are several UDRP decisions stating that it is evidence for the registration and use of a domain name in bad faith if the respondent has registered the domain name primarily for the purpose of selling it, like in this case (see Deutsche Telekom AG v. Maggie Eliger,WIPO Case No. D2008-0173; Audi AG v. Jose Santos, WIPO Case No. D2007-0344; Laboratoire Nutergia v. Jeongyong Cho, WIPO Case No. D2007-1582; V&S Vin&Sprit AB v. Stefan Bojahr,WIPO Case No. D2005-0750; Groupama SA v. Ginsu (VBI) Holdings Limited,WIPO Case No. D2005-0272;National Collegiate Athletic Association v. Dusty Brown,WIPO Case No. D2004-0491; The Nasdaq Stock Market, Inc., v. Hamid Reza Mohammad Pouran,WIPO Case No. D2002-0770; Infotechnology Pty Ltd v. Estore Pty Ltd,WIPO Case No. D2002-0069).
There is no information as to the business activity of the Respondent that would justify the registration and the use of the contested domain names; nor is there evidence of any rights or legitimate interest in said domain name by the Respondent. The Panel believes that, in the absence of any right or legitimate interest and in the absence of any contrary evidence from the Respondent, the Respondent's registration of domain names confusingly similar to the Complainant's known trademark was in bad faith (see Accor v. Howell Edwin,WIPO Case No. D2005-0980; Ferrero S.p.A. v. Publinord S.r.l.,WIPO Case No. D2002-0395; Banca Sella S.p.A. v. Mr. Paolo Parente,WIPO Case No. D2000-1157; Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226).
Based on the evidence presented by the Complainant, the Panel finds that the domain names were registered and are being used in bad faith.
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 names and be transferred to the Complainant.
Nicoletta Colombo
Sole Panelist
Dated: August 18, 2008
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