WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BACCARAT SA v. VALUE-DOMAIN COM Case No. D2009-1186 1. The Parties
The Complainant is BACCARAT SA of France represented by MEYER & Partenaires of France.
The Respondent is VALUE-DOMAIN COM of Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba . 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2009. On September 8, 2009, the Center transmitted by email to Key-Systems GmbH dba a request for registrar verification in connection with the disputed domain name. On September 11, 2009, Key-Systems GmbH dba 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 September 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 16, 2009.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on October 29, 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.
The Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement was Japanese. However, the Panel considers that the language of the present proceeding should be English, considering that the Complainant has submitted arguments that the English language should be used in these proceedings and that the Center notified the Complaint using the Center's Notification of Complaint document in both its English and Japanese version, and taking into account the Respondent's default. If the Respondent wished to opt for the Japanese language to be used in these proceedings, it should have requested that the language of the proceedings be Japanese. As such, the Panel concludes that, according to Rules, paragraph 11(a), the language of the proceedings shall be English. (See Inter-IKEA Systems B.V. v. SC Agis International Sport S.R.L., WIPO Case No. DRO2006-0001 ()) 4. Factual Background
The Complainant is a limited company registered under the laws of France under No. 760 800 060. It has been a manufacturer of crystal ware since 1764. The Complainant has registered the trademark BACCARAT & Device in class 21 for the first time on December 29, 1860, in France for goods made of crystal glass. The Complainant began to use the registered trademark as of that year in connection with the aforementioned goods. It has further registered the aforementioned trademark in many countries. The Complainant has more than 700 registrations of the trademark BACCARAT alone covering various classes.
The Complainant is the holder of 29 trademark registrations in Japan where the Respondent is located. Among them are Japanese trademark registration number 2700602 for BACCARAT CRYSTAL & Device in respect of wines and liquors in class 33 (formerly Japanese class 28) registered on December 22, 1994 and Japanese trademark registration number1907200 for BACCARAT + its Japanese phonetic equivalent for crystal wares and others in classes 11, 20, and 21 registered on October 21, 1983.
The Respondent offers services related to domain names. The disputed domain name was registered on December 27, 2008. 5. Parties' Contentions A. Complainant
The Complainant contends that:
- The disputed domain name is confusingly similar to its trademark as the trademark BACCARAT is entirely reproduced and the descriptive word “crystal” is added to the trademark where the word “crystal” consists in the type of products manufactured by the Complainant. It is also very close to the Japanese trademark BACCARAT CRYSTAL & Device held by the Complainant. The only distinctive element of the disputed domain name is the trademark BACCARAT which belongs to the Complainant and which is a well-known trademark.
- The Respondent has no rights or legitimate interests in the disputed domain name as it has never been known under the name Baccarat and it is in no way related to the Complainant's business. No license or authorization was granted to the Respondent by the Complainant to register or use the disputed domain name.
- The Respondent registered and has been using the disputed domain name in bad faith as it could not ignore the existence of the Complainant and its well-known trademark at the time of registering the disputed domain name especially because it is located in Osaka where Complainant's 6 points of sale have been selling the Complainant's products. Furthermore, the Respondent has been using the disputed domain name in order to attract the maximum of Internet users to its website where they are diverted through commercial links to other websites owned by the Respondent connected to a pay-per-click mechanism. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The trademark BACCARAT belongs to the Complainant who registered it for the first time on December 29, 1860 in France for goods made of crystal glass. The Complainant is the holder of 29 trademark registrations in Japan where the Respondent is located. Among them are Japanese trademark registration number 2700602 for BACCARAT CRYSTAL & Device in respect of wines and liquors in class 33 (formerly Japanese class 28) registered on December 22, 1994 and Japanese trademark registration No.1907200 for BACCARAT + its Japanese phonetic equivalent for crystal wares and others in classes 11, 20, and 21 registered on October 21, 1983. In addition, the Complainant has been using its trademark for more than two centuries throughout the world. As such, the Panel finds that the Complainant is the legitimate owner of the trademarks BACCARAT and BACCARAT CRYSTAL.
In determining similarity of the disputed domain name and the Complainant's trademarks, non-distinctive elements such as gTLD “.net”, and the word “crystal” used in relation to crystal products, etc. must not be considered. The difference between the disputed domain name and the Complainant's trademark BACCARAT is in the addition of the word “crystal” and the suffix “.net.” Adding the suffix “.net” does not create any distinctiveness. The word “crystal” being a generic name of crystal products does not constitute a distinctive element either. As such, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant, and the first element of the Policy has been established. B. Rights or Legitimate Interests
It is found that the Respondent has never been known under the name Baccarat Crystal or Baccarat and that no license or authorization was granted to the Respondent by the Complainant to register or use the disputed domain name. Neither of the trademarks BACCARAT CRYSTAL nor BACCARAT is registered in the name of the Respondent according to the outcome of the search conducted by the Complainant by using a Japanese Trademark Database. The Respondent does not appear to use the disputed domain name in a legitimate way. There is no demonstrable use or preparation for use of the disputed domain name in connection with a bona fide offering or goods or services. (See Baccarat SA v. Serious/Net, WIPO Case D2003-0428 ()). As such, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and the second element of the Policy has been established. C. Registered and Used in Bad Faith
The Complainant has been a manufacturer of crystal ware since 1764. The Complainant registered the trademark BACCARAT & Device in class 21 for the first time on December 29, 1860 in France for goods made of crystal glass. BACCARAT is one of the oldest trademarks in the world. Its two centuries old, wide and consistent use throughout the world is another factor indicating the well-known status of the Complainant's trademark. The Complainant has cited several WIPO cases having recognized its well-known reputation, i.e., Baccarat SA v. MSL International, Inc., WIPO Case No. D2005-0048 ()
The notoriety of the Complainant's trademarks in respect of crystal products is such that a prima facie presumption is raised that the Respondent registered the disputed domain name for the purpose of using it in some way to attract for commercial gain users to its website by creating a likelihood of confusion with the Complainant's trademark.
The Respondent should have been aware of the existence of the Complainant and its trademark BACCARAT or BACCARAT CRYSTAL at the time of registering the disputed domain name due to the following facts:
i) the well-known reputation of the Complainant and its trademarks,
ii) the Respondent was located in Osaka where Complainant's 6 points of sale were selling the Complainant's products when it registered the disputed domain name in 2008, and
iii) the website attached to the disputed domain name displays a brief description of the history of and the company Baccarat.
In this respect, the Panel finds that the registration of the disputed domain name was made in bad faith for the purpose of gaining unjust commercial gains.
It is recognized that the Respondent has been using the disputed domain name in order to attract Internet users to its website where they are diverted through commercial links to other websites owned by the Respondent or third parties connected to a pay-per-click mechanism. According to the Complainant's investigations conducted about the links displayed on the website operating at the disputed domain name, the Respondent appears to have engaged in a “mousetrapping” scheme involving the websites for 82,000 pages. From this fact, the Respondent appears to have built an enormous network of websites to attract Internet users to its own websites. Some of the links suggested on the website operating at the disputed domain name lead to commercial websites which, according to the Complainant, have included “”, “”, “”, “”, and “”, etc.
In light of the fact above, it is recognized that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Whether or not the Respondent has actually had income does not matter. (See Bayerische Motoren Werke AG v. bmwrider llc ,WIPO Case No. D2008-0610 (); Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857 ( et. al); Express Scripts, Inc. v. Windgather Investments Ltd./Mr.Cartwright, WIPO Case No. D2007-0267 ()).
The Respondent has never replied to any of the Complainant's three cease-and-desist letters sent by e-mail prior to the filing of the Complaint.
The Respondent has apparently registered some 215,000 domain names. Some of those domain names are reproducing other famous marks. The Respondent has been involved in various domain name disputes where the Respondent failed. These domain name registrations and disputes are additional evidence of the Respondent's bad faith in that they show the Respondent's practice of using other parties' trademarks in domain names.
For all of the above considerations, the Panel finds that the third element of the Policy has been established. 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.
Ho-Hyun Nahm
Sole Panelist
Dated: November 6, 2009
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