WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Baccarat SA v. S / Troy Rushton Case No. D2010-0953 1. The Parties
The Complainant is Baccarat SA of Baccarat, France, represented by Meyer & Partenaires, France.
The Respondent is S / Troy Rushton of Sydney, Australia. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , and are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2010. On June 10, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On the same day, eNom 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 June 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2010. On July 9, 2010, the Respondent sent an email communication to the Center in relation to this dispute.
The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on July 21, 2010. 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.
On August 6 and 9, 2010, two email communications sent on behalf of the Respondent regarding this matter were received by the Center and were forwarded to the Panel. The Panel has decided not to consider such email communications as they were received after the Decision due date. 4. Factual Background
The Complainant, formerly known as the Compagnie des cristalleries de Baccarat, is a famous manufacturer of crystal wares and it has been engaged in this business since 1764. The Complainant sells its products worldwide, including in Australia, where the Respondent seems to be located.
The Complainant has started to register its trademarks in 1860 when it became the registered owner of the trademark for BACCARAT in France. Since then, the Complainant has become and is now the registered owner of many trademarks for BACCARAT, all over the world including Australia as indicated below:
(a) Australian trademark registered number 291476, registered on October 23, 1975 and renewed October 23, 2006, with respect to class 21 related to drink ware, decanters and other,
(b) Australian trademark registered number 291475 on October 23, 1975 and renewed October 23, 2006 with respect to class 11 relating to candelabra and lamp-shades, all from crystal
Several UDRP decisions have acknowledged that the BACCARAT mark is well-known (see in this sense Baccarat SA v. CR Galleries, WIPO Case No. D2009-0378, Baccarat SA v. SeriousNet,WIPO Case No. D2003-0428, Baccarat SA v. MSL International, Inc.,WIPO Case No. D2005-0048, Baccarat SA v. Web Domain Names,WIPO Case No. D2006-0038, Baccarat SA v. Vine and Weaver,WIPO Case No. D2010-0540).
The Respondent is, according to the WhoIs records, located in Sydney Australia. 5. Parties' Contentions A. Complainant
The Complainant contends that:
- the Respondent is S represented by a person named Troy Rushton which has 15 years experience in the media and publishing sector according to its Internet curriculum vitae;
- the websites available under the disputed domain names provide prima facie same content in connection to the general information about Baccarat products, numerous sale offers, commercial links, news and the Complainant's competitors' products;
- the domain names are identical or confusingly similar to the Complainant's trade marks as they are all entirely reproducing the Complainant's trademark BACARRAT in combination with different terms descriptive and/or generic or of other kind;
- the Respondent has no right or legitimate interests in respect of the disputed domain names as it has no legitimate connection with the trademark BACARRAT;
- the Respondent has no right or legitimate interests in respect of the disputed domain names as it does not use the domain names in connection with bona fide offering of goods and services;
- each website associated to the disputed domain names displays also a multitude of sponsored links, which is supposed to bring some “click through” revenue;
- each website associated to the disputed domain names page indicates at the bottom right of the pages that they are “Powered by Speedlings”, which provides services of parking page combined in our case with a pay-per-click solution;
- the Respondent registered the disputed domain names in bad faith, knowing the fame of the BACARRAT trademark and the Complainant's business in crystal ware;
- the Respondent is in the business of registering domain names and it seems that, it currently registered more than 42,000 domain names, some of them reproducing famous trademarks;
- the Respondent is using the disputed domain names in bad faith because it is seeking to attract for commercial gain, users to its pay-per-click websites, by taking advantages of the worldwide reputation of the Complainant's trademark;
- the Respondent is responsible for the content of its web pages, regardless of how such content is generated. B. Respondent
In its email communication sent to the Center and the Complainant's lawyers dated July 9, 2010, the Respondent asserts among others, that
- it provides a service which allows end users to register domain names and then create websites that are hosted by it;
- it is not able to prevent domains being created that may infringe trademarks rights;
- it had no intention of infringing upon the Complainant's trademark;
- it imposes to its ends users terms and conditions expressly forbidding the selection of domain names that infringe any third party's trademark rights;
- it will cooperate with the Center and the Complainant to satisfactorily resolve this matter;
- it does not have any record of two of the disputed domain names and . 6. Discussion and Findings
In its email communication dated July 9, 2010, the Respondent expressed its willingness to cooperate with the Center and the Complainant to satisfactorily resolve this matter. Nevertheless further to the settlement offers made by the Complainant, the Respondent failed to reply. This is why the Panel will proceed to make the examination of all the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Noting the fact that the Respondent has not filed a formal Response, the Panel shall consider the issues referred to it, based on the statements and documents submitted to the Panel, including the communication from the Respondent referred to above.
It is for a complainant to show that all three elements of the Policy have been proved before any order can be made to transfer a domain name.
Therefore, in order to obtain the relief requested, a complainant must prove, within the meaning of paragraph 4(a) of the Policy, that:
(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. A. Identical or Confusingly Similar
A1. The Complainant holds rights in the BACARRAT trademark
The Panel is persuaded by the evidence submitted by the Complainant in connection to its ownership of the worldwide registered BACCARAT trademark, to which reference has been made.
A2. The disputed domain names are confusingly similar with the Complainant's BACARRAT trademark
All the disputed domain names: , , , , , , , , , , , and , have as substantial part the BACARRAT trademark, to which different words are added.
For twelve disputed domain names out of the thirteen object of these proceedings, i.e., , , , , , , , , , , and , the Respondent used the Complainant's trademark BACARRAT and added generic and/or descriptive words such as “crystal” that describes what is widely known about the Complainant's products and expertise. Adding to this combination of the Complainant's trademark BACARRAT and the word “crystal”, other generic and/or descriptive words such as “chandelier”, “central”, “online”, “info”, “vase”, “buy”, “store”, “only”, “find” and/or adding hyphens. The addition of such generic and/or descriptive words cannot in this case transform the disputed domain names in distinctive combinations in comparison to the Complainant's trademark.
The thirteenth domain name in dispute, , includes in addition to the Complainant's trademark BACARRAT the word “your”, which does not, in the opinion of the Panel make this domain name sufficiently distinct from the Complainant's trademark.
It has also long been held by UDRP panels that gTLD suffixes do not generally preclude a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds therefore that the Complainant has proved the first of the three elements that it must establish. B. Rights or Legitimate Interests
The Panel agrees with the Complainant that the Respondent seems not to hold any rights or legitimate interests in connection to the disputed domain name. In this sense, the Respondent is not commonly known by the disputed domain names and it was not authorized in any way to use the Complainant's trademark BACARRAT to register the disputed domain names.
The Panel also notes that the disputed domain names are currently not active and therefore, cannot verify the Complainant's statements in connection to the content of the websites under which the disputed domain names used to resolve.
From the statements and evidence submitted by the Complainant, the websites to which the disputed domain names resolved did seem to contain information about the BACARRAT products but also about the products of the Complainant's competitors and also several sponsored links. Considering the fact that the Complainant's statements in the Complaint and the evidence submitted in connection to the websites' content has not been denied by the Respondent in its email communication dated July 9, 2010 or otherwise, the Panel considers these statements and evidence as accurate and finds that the activity once displayed on the websites associated to the disputed domain names cannot be considered bona fide preparation or use of the these domain names.
The Panel finds therefore that the Complainant has proved also the second of the three elements that it must establish. C. Registered and Used in Bad Faith
With a view to the afore-mentioned point B above, the Panel considers that the disputed domain names have been registered and used in bad faith, with the purpose to benefit from the famous Complainant's trademark BACARRAT by attracting Internet users to these websites which host pay per click pages.
In its consideration, the Panel points out also to a certain pattern of conduct apparently developed by the Respondent to register domain names potentially infringing trademark rights of third parties. It its email communication dated July 9, 2010 the Respondent alleges that while offering registration services for different domain names, it imposes to its ends users terms and conditions expressly forbidding the selection of domain names that infringe any third party's trademark rights. The Panel was not able to access the Respondent's site and verify its statements in connection with the Respondent's alleged lack of responsibility for the content of the websites associated to the disputed domain names.
In any event, the email communication sent by the Respondent on July 9, 2010 is an indication that not even the Respondent excludes the possibility that the disputed domain names registered through its services breach the trademarks rights of third parties for purposes of the Policy even though it pretends that it stands no responsibility for the content of the websites associated to these domain names.
For such reason, as stated by other UDRP panels, this Panel shall consider the websites associated to the disputed domain name under the Respondent' s control and shall hold the Respondent ultimately responsible for the content of the websites within its control. (see Sanofi-Aventis v. Transure Enterprise Ltd,WIPO Case No. D2008-1636)
The Panel finds therefore that the Complainant has proved also the third element of the Policy. 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.
Beatrice Onica Jarka
Sole Panelist
Dated: August 3, 2010
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