WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pierre Fabre Medicament v. Pierre Fabre Case No. D2009-0146 1. The Parties
The Complainant is Pierre Fabre Medicament of Boulogne-Billancourt, France, represented by Deprez Guignot & Associés, France.
The Respondent is Pierre Fabre of Brampton, Ontario, Canada. 2. The Domain Name and Registrar
The disputed Domain Name is registered with MyDomain, Inc. d/b/a NamesDirect. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2009. On February 4, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 4, 2009, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 10, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 13, 2009. 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”).
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 February 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 12, 2009.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 17, 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 Complainant is a French joint-stock company that produces pharmaceuticals and diet products. Affiliates in the Pierre Fabre group of companies offer cosmetics and skin care products, other health products, and laboratory services. The group has its origins in a laboratory that was established in Castres, France in 1961 by pharmacist Pierre Fabre.
The Complainant and other members of the group operate websites or pages linked from a common group website at “”. According to this website, the group is the third-largest French pharmaceutical enterprise, with 9,800 employees in 2008 and global revenues of €1,680 million in 2007 and €1,750 million in 2008. Nearly half of its sales are made outside France. Although the Complainant did not provide a breakdown of sales by country, it appears from the Complainant's website that the group employs more than 100 persons in the United States and 50 in Québec to support sales in North America.
The Complainant and other members of the group hold registered PIERRE FABRE standard-character and figurative marks, including the following:
MARK
COUNTRY
REG. NO.
REG. DATE
PIERRE FABRE (words and figure)
France
International
787773
369118
Mar 6, 1970
May 14, 1970
PIERRE FABRE (words and figure)
France
International
956673
426550
Jun 9, 1976
Nov 22, 1976
PIERRE FABRE (words and figure)
France
1576822
Feb 22, 1980
PIERRE FABRE (words and figure)
France
1356813
May 29, 1986
PIERRE FABRE
France
International
95604207
657415
Dec 8, 1995
Jun 3, 1996
PIERRE FABRE
United States
1310696
May 13, 1983
PIERRE FABRE (words and design)
United States
2373105
Aug 1, 2000
It is not clear from the record how widely the PIERRE FABRE marks are used. The Complainant's website and materials attached to the Complaint feature a variety of brand names for various products offered by the group, including NAVELBINE, NICOPATCH, DRILL, CLIPTOL, CIRKAN, AVENE, DUCRAY, A-DERMA, GALENIC, KLORANE, and RENE FURTERER. It appears, however, that at least some products are marketed under names that include the standard-character PIERRE FABRE mark, such as PIERRE FABRE ORAL CARE and PIERRE FABRE DERMATOLOGIE.
The Domain Name was registered to the Complainant from 2002 to 2007. In January 2007, according to the Complaint, the Complainant failed to renew the registration due to “a technical error”. The Domain Name was then registered on April 19, 2007 in the name of “Domain Admin”, showing an address in Irvine, California, United States of America. The Domain Name no longer resolved to a website after the Complainant lost it.
Counsel for the Complainant sent emails to the email address listed in the Registrar's WhoIs database on January 14, 2009, February 3, 2009, February 5, 2009, and March 11, 2009. On February 4, 2009, the day after an email notifying the registrant of the UDRP Complaint, the WhoIs database was amended to show the Respondent, Pierre Fabre, as the registrant, with an address in Brampton, Ontario, Canada. On February 12, 2009, counsel for the Complainant received an email with the following message:
“This is Pierre Fabre, the owner of the domain . We bought this domain at $2500 for our business website Pierre Fabre Home Staging. I am surprised to receive a complaint from you about this domain name. We have legitimate rights to this domain. Our use of the domain is in no way against your right. We are positive that we can win this case.
However, to avoid all the trouble and legal fees, we prefer to settle this amicable with you provided that you are willing to buy this domain at our cost of $2500.
Please let us know whether this is ok with you. Thanks.
Best regards,
Pierre Fabre
Pierre Fabre Home Staging
”
There were no further communications between the parties, and no Response was filed in this proceeding. The amendment to the Complaint attaches evidence indicating that there is no Pierre Fabre or Pierre Fabre Home Staging listed in published directories of Brampton, Ontario, and no such enterprise is registered in the Province of Ontario.
The amendment to the Complaint attaches screen shots from the website to which the Domain Name resolved on February 10, 2009. These display the heading “Pierre Fabre Home Staging” and several interior photographs of homes. (“Home staging” is the business of cleaning and decorating homes in preparation for showing them to prospective purchasers. See Wikipedia article, “Home Staging” at “”). There is no indication of the location of the enterprise, yet home staging is an inherently localized business. The only contact information is a “contact” email address in the domain. As evidenced by screen shots furnished with the amendment to the Complaint, the photographs and layout of the Respondent's website, including a slogan, “Solutions Beyond the Limits”, are identical to those found on the same date on the website of Interu Staged Homes at “”. That domain name no longer resolves to a website, but the WhoIs database shows that it is registered to Interush Inc., using the same registrar as the Domain Name in this proceeding and with an address in the same city, Irvine, California, originally shown for the registrant of the Domain Name.
The Domain Name does not currently resolve to a website. 5. Parties' Contentions A. Complainant
The Complainant argues that the Domain Name is identical or confusingly similar to its PIERRE FABRE marks and company names, and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant contends that the Respondent must have been aware of its “famous” PIERRE FABRE marks and that the Domain Name was registered and used in bad faith “for the sole purpose of selling it to the Complainant for valuable consideration in excess of the domain name registrant's out-of-pocket costs directly related to the domain name and/or to prevent the Complainant from purchasing it.” B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Name, the Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
In addition to registered figurative marks in which the name “Pierre Fabre” is prominent, the Complainant holds trademark registrations in France and the United States, and an international registration under the Madrid Protocol for over 40 other countries, for PIERRE FABRE as a standard-character mark. The Domain Name is identical to this mark for purposes of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts, and the Respondent does not deny, that the Complainant has not authorized the Respondent's use of a Domain Name identical to the Complainant's marks.
The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including the following:
(i) before any notice to you of the dispute, your 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.”
From the evidence in the record, it appears that the Domain Name was not used for any purpose, commercial or noncommercial, at then time of filing this dispute.
An email from the Respondent and the website to which the Domain Name briefly resolved after notice of the dispute suggest that the Respondent is an individual with the same name as the Domain Name, and that the Respondent operates a home staging business using that name as well. The evidence for this is not credible, however. No such person or business appears in directories of the city given as the address of the Respondent or in search engine searches. The change in registration and the website associated with the Domain Name both appeared only immediately after notice of the dispute. The website itself appears to have been copied from a third-party website and does not indicate the location of the business, despite the fact that such a business is inherently local in nature. The Respondent did not come forward in this proceeding to submit a Response or evidence supporting his claim in the one email he sent to the Complainant's representatives.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name once the Complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Respondent has not done so, and the Panel finds that the Complainant has established the second element of the Complaint. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad-faith registration and use of a domain name, the first of which is cited by the Complainant:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.
The Respondent did not initiate contact with the Complainant to sell the Domain Name. But when contacted, the Respondent demanded a price seemingly in excess of normal out-of-pocket registration and related costs (absent evidence otherwise).
The record indicates that the Complainant's registered PIERRE FABRE trademark is long-established in the United States and Canada, as well as in France and other countries. The mark is comprised of a now distinctive French name, not common words. As the Respondent made no prior use of the Domain Name, and offered no evidence of existing plans to do so in connection with a bona fide commercial activity, it is hard to imagine a reason for acquiring the Domain Name other than the potential for selling it to the Complainant, a competitor, or a third party illegitimately interested in its value for misleading Internet users familiar with the Complainant's trademark.
The lack of plausible alternative motivations for registration supports the Complainant's inference of bad faith, even though the Respondent made no use of the Domain Name until the dispute arose. This is consistent with the “passive holding” doctrine articulated in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and subsequent UDRP decisions (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, sec. 3.2).
In this case, the Panel finds additional support for the inference of bad faith in the facts that, immediately following notice of this Complaint, the Respondent changed the name and address of the registrant and associated the Domain Name with a commercially implausible website copied wholesale from that of a third party, while claiming in an email to be a person who does not demonstrably exist. This has all the appearance of an attempt to deceive, possibly to defraud, the Complainant, and the Respondent has not come forward with evidence to the contrary.
The Panel concludes that the Complainant has established the third element of the Complaint. 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.
W. Scott Blackmer
Sole Panelist
Dated: April 1, 2009
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