WIPO Domain Name Decision D2008-1954 for laduree.net

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Laduree International S.A. v. Pinnacle Communities Case No. D2008-1954 1. The Parties

The Complainant is Laduree International S.A., of Geneva, Switzerland, represented by Casalonga Avocats, France.

The Respondent is Pinnacle Communities, of Chatham, New Jersey, United States of America. 2. The Domain Names and Registrars

The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2008. On December 22, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On December 22, 2008, Network Solutions, LLC 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” 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 January 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 27, 2009.

The Center appointed Luis Larramendi as the sole panelist in this matter on February 4, 2009. 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 relevant and incontestable facts of this proceeding are as follows:

- The Complainant, Laduree International S.A., is a Swiss company with place of business in the city of Geneva.

- The Complainant owns various trademark registrations for LADUREE and LADURÉE, the oldest of which is International Registration No. 547741 with a priority date of January 18, 1990.

- The Respondent, Pinnacle Communities, is a company with place of business in Chatham, New Jersey, United States.

The following facts should also be taken into account:

- The disputed domain name is currently inactive because on accessing the corresponding website users are met with the phrase “Under Construction! Thank you”. However, various actions taken by the owner of the disputed domain name when the site was active have been duly accredited in the evidence submitted by the Complainant.

- The evidence submitted serves to attest to the reputation of LADUREE in various jurisdictions all over the world, including the United States, country of residence of the Respondent.

- The Respondent was required by the Complainant to refrain from filing U.S. trademark application No. 77223434, and to refrain from making any use of the term “Laduree” and of the disputed domain name . 5. Parties' Contentions A. Complainant

In the Complaint the Complainant contends that:

- The Complainant is the owner of numerous trademark registrations in various jurisdictions for the terms LADUREE and LADURÉE, all of them prior to the registration date of the disputed domain name.

- In addition, both the Complainant and its affiliates Patisserie E. Laduree and Holder S.A.S. own domain names containing the term “Laduree” with generic and territorial extensions, the oldest being , registered on September 12, 1997.

- The disputed domain name is identical to the Complainant's trademark registrations except for the element “.net” which cannot be considered distinctive.

- The Respondent has no relationship whatsoever with the Complainant, nor has the Respondent been licensed or authorised to effect any use of the term “Laduree”. In addition, the Respondent has no trademark registered with the United States Patent and Trademark Office (the “USPTO”), the Office of Harmonization for the Internal Market (the “OHIM”) or WIPO. Consequently it can be concluded that the Respondent has no legitimate rights whatsoever in the term LADUREE.

- Pursuant to the filing of U.S. trademark application No. 77223434 by one of the Respondent's associated companies, Pinnacle Company Inc., the Complainant sent a communication to the Respondent setting out its earlier rights in the term LADUREE and requesting cessation of all use of the term in question as a trademark, withdrawal of the application and cessation of use of the term in question via the domain name .

- When Pinnacle Company Inc. did not proceed as requested, the Complainant filed opposition to the aforementioned U.S. trademark application, which was duly rejected by the USPTO following the applicant's failure to respond, which would not have occurred had there been a genuine intention to use the trademark LADUREE and the domain name to market goods and services in good faith. The applicant's silence represents an acknowledgement of the absence of legitimate rights.

- The widespread activity of the Respondent and its related companies in the real estate sector, specifically in the sale of luxury properties, has always been conducted via the common trademark PINNACLEand never via the term “Laduree” or the domain name .

- The Respondent registered the disputed domain name in full knowledge of the high purchasing power of the Complainant's clients and with a view to attracting said clients for commercial gain.

- The LADUREE mark can be considered reputed in view of its Internet presence and, above all, the number of searches for said term conducted in numerous developed countries. Statistics available from Google and the abundant presence of the Complainant's LADUREE mark in internationally prestigious media prove that this reputation cannot be disputed in the United States or in New Jersey (where the Respondent has its place of business).

- Bad faith in the registration of the disputed domain name is due, first of all, to the prior knowledge of the reputation of the LADUREE mark, and to the fact that the registration of the disputed domain name took place on the same day that the Complainant launched a new range of pastry products, and only a week after the Complainant filed trademark application No. 339695 LADUREE with the USPTO.

- All of this suggests that the Respondent has acted with the intention of taking advantage of the reputation of the Complainant's LADUREE mark, thus preventing its legitimate owner from using said term and protecting it via the corresponding domain name.

- The data, signs and manner of presenting the services of the Respondent via the disputed domain name testify to its intention to take advantage of the reputation of the Complainant's LADUREE mark by creating a likelihood of confusion among consumers with respect to the source, sponsorship, affiliation or promotion of the website in question.

- The Respondent even went so far as to acknowledge on its website that the choice of the name “Laduree” was inspired by that of the famous Ladurée store in Paris. The fact that the domain name has been used in bad faith is therefore evident.

On the basis of said allegations, the Complainant requests that the disputed domain name be transferred to Laduree International S.A. B. Respondent

The Respondent did not reply to the Complainant's contentions.

However, on February 9, 2009 the Respondent sent a few lines via e-mail to the parties and to the Center affirming that it had ceased using the disputed domain name and that it was in the process of eliminating any reference to the LADUREE mark. Even so, no proof whatsoever of any of its affirmations, including the cancellation of the domain name, was submitted.

On February 10, 2009, the Panelist informed the Center that the content of said communication contained no proof indicating that the proceeding should be deemed concluded. Consequently the Panelist determined that the proceeding should continue and a decision issued within the given term. 6. Discussion and Findings A. Identical or Confusingly Similar

In the instant case there is no doubt that the first requirement of paragraph 4 a) of the UDRP has been duly met.

The comparison between the disputed domain name and the LADUREE mark, protected via numerous registrations in the name of the Complainant, leads to the conclusion that they are identical. Evidently, pursuant to the criteria applied in countless decisions, the “.net” suffix cannot be taken into account since it is simply an indicator of a top-level generic domain name.

Given that identity, and the Complainant's trademark rights, the Panel considers that the Complainant has duly fulfilled the first requirement of paragraph 4(a) of the UDRP. B. Rights or Legitimate Interests

In view of the complete absence of a response to the Complaint from the Respondent, the Panel is unaware as to the reasons behind the registration of the disputed domain name, or whether the Respondent has any possible rights or legitimate interests therein.

Taking into account the arguments and documentation submitted, the Panel considers that:

- No evidence or arguments have been submitted, nor has the Panel been able to verify the existence of any trademark right or any other type of distinctive sign in the term “Laduree” in the name of the Respondent.

- Nor is there any proof on record that the Respondent has been licensed or authorised by the owner of the LADUREE mark to register or use the disputed domain name. In fact, in the Complaint, the Complainant expressly denies having provided any authorisation or consent whatsoever.

- The Panel also wishes to mention that after filing a U.S. trademark application for the term “Laduree” and receiving an opposition from the Complainant, the Respondent failed to submit any response, which can be regarded as an implicit acknowledgment of the absence of any argument to support its right or legitimate interest in obtaining rights in the trademark “Laduree”.

- Finally, reference is made to the criteria applied in numerous decisions issued by the Center stating that the absence of a response may be regarded as an acknowledgment of the absence of any right or legitimate interest in the disputed domain name, see Hipercor, S.A. v. Miguel Angel Gonzáles,WIPO Case No. D2000-0045 or Inversiones Telestrión C.A. v. SupervitualOffice Corp.,WIPO Case No. DVE2008-0002.

Consequently, the Panel concludes that the second requirement of paragraph 4(a) of the UDRP has likewise been duly met. C. Registered and Used in Bad Faith

The fact that the Respondent did not submit any response to the Complaint prevents the Panel from knowing whether there was any plausible reason for the registration of the disputed domain name.

As a result, the Panel has proceeded to analyse whether the requirements of paragraph 4(b) of the UDRP have been met in the instant case. The following conclusions have been drawn:

- There is no evidence in the record of the proceedings that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant, or to any of its competitors, for an amount exceeding the amount disbursed in the registration thereof.

- Similarly, the file contains no indication that the Respondent registered the disputed domain name with the sole purpose of preventing the legitimate owner of the earlier rights from reflecting said rights in a corresponding domain name or that, if this occurred, it was a genuine intention of the Respondent.

- Nor can the Panel conclude from the evidence before it that the Respondent registered the disputed domain name for the purpose of intentionally disrupting the business of a competitor.

- However, the Panel does indeed consider that the disputed domain name was registered by the Respondent in an attempt to attract, for commercial gain, internet users to by creating confusion in respect of the business origin of the website in question.

Such a conclusion cannot be disputed in view of the fact that:

- Respondent itself has acknowledged that the choice of the name “Laduree” was inspired by “the famous LADUREE tea and pastries cafeteria in Paris”.

- LADUREE is perhaps one of the most well-known cafeteria in Paris.

Evidently the Respondent's intention was to associate its business, whatever its nature, with the LADUREE establishments.

Consequently, the Panel has no choice but to conclude that the requirements set out in paragraph 4(b)(iv) of the UDRP have also been met.

What is more, the Panel considers that the registration and use in bad faith of the disputed domain name has also been proven to, given that the Respondent itself was fully aware of the existence of LADUREE establishments throughout the world, or at least the one located in Paris, and registered the disputed domain name with the hope and understanding that the fame and reputation of LADUREE would be to the benefit of its own website. It also happens that the clients of the Complainant, Laduree International S.A., can generally be regarded as “clients of high standing”, which is undoubtedly why the Respondent considered that these clients with a high purchasing power would be interested in the acquisition, rental, etc., of the real estate properties promoted via the website corresponding to the disputed domain name.

Consequently the Panel considers that there are sufficient grounds for concluding that bad faith was present in the registration of the disputed domain name given that the Respondent was previously aware of the reputation of the LADUREE mark. The rationale contained in the J.García Carrion, S.A. v. Ma José Catalán Frías,WIPO Case No. D2000-0239, which holds that “whosoever acts in bad faith in registering a domain name will use it in bad faith because bad faith is linked to the knowledge held when registering the domain name, namely, that the rights of a third party are being harmed without legitimate cause” is therefore also applicable here.

In conclusion, the Panel considers that the disputed domain name has been registered and used in bad faith by the Respondent and that the third requirement of paragraph 4(a) of the UDRP has also been 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 the Complainant.

Luis Larramendi
Sole Panelist

Dated: February 18, 2009

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