The Complainant is Laboratoires Lierac of Paris, France, represented by WITETIC, France.
The Respondents are Jacob W. of Sibu, Sarawak, Malaysia and WhoisGuard of Los Angeles, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2012. On January 13, 2012, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On January 20, 2012 eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 20, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to this notice and to a notification of January 20, 2012 by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 24, 2012.
The Center verified that the Complaint together with the amended 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 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2012. The Respondent submitted an email communication in response to the Notification of Complaint, received by the Center on February 13, 2012, in which the Respondent stated he agrees to the price previously offered by the Complainant, USD 2000. The Center sent an email communication to the parties on February 13, 2012 inviting the Complainant to request suspension of the proceedings to explore settlement within 3 days that is by February 16, 2012, failing which the proceedings would continue. As no request for suspension was received from the Complainant and no formal Response was received from the Respondent by February 16, 2012, on February 20, 2012 the Center advised the parties that it would proceed with the appointment of an Administrative Panel and that the Respondent’s email communication of February 13, 2012 would be treated as his formal Response and would be forwarded to the Panel.
The Center appointed Joan Clark as the sole panelist in this matter on February 24, 2012. 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 the owner of the international registration for the trade mark LIERAC registered March 4, 1975 for perfumery and beauty products and also pharmaceutical and parapharmaceutical preparations. The Complainant is also the owner of numerous other trade marks consisting of or including the word lierac.
The Respondent is the owner of the disputed domain name registered on June 3, 2003, which is scheduled to expire on June 3, 2015. Identity of the Respondent
The Respondent originally named in the Complaint was WhoisGuard which was indicated to be the holder of the disputed domain name in the publicly available WhoIs database consulted by the Complainant. Upon receiving the usual request from the Center for verification of the registrant, the Registrar advised that the registrant, or holder of the domain name, was Jacob W. of Sibu, Sarawak, Malaysia. According to paragraph 1 of the Rules, “Respondent means the holder of a domain-name registration against which a complaint is initiated”. Therefore, WhoisGuard was properly named as the Respondent in the original complaint.
Although WhoisGuard was properly named as the Respondent, it would appear to be used to conceal and protect the identity of the real beneficial owner Jacob W. For purposes of the application of the Policy, the Panel should consider who is the beneficial owner of the disputed domain name.
The Panel considers that both the beneficial owner Jacob W. and the original respondent WhoisGuard should be named as Respondents. In the remainder of this decision, they will be described in the singular, as the Respondent. See The iFranchise Group v. Jay Bean/MDNH, Inc./Moniker Private Services (23658),WIPO Case No. D2007-1438, and Spenco Medical Corporation v. / PrivateWhoIs Service,WIPO Case No. D2011-0595 5. Parties’ Contentions A. Complainant
The Complainant states that it is the owner of several trademark registrations for LIERAC alone or combined with another element, throughout the world, and that the mark LIERAC has a strong reputation for almost forty years throughout the world. Many of these registrations are for perfumery and beauty products, particularly soaps, makeup and cosmetics, hair products, dentifrices, pharmaceutical and para-pharmaceutical preparations. The Complainant contends that the disputed domain name reproduces identically the term “lierac” that corresponds to the Complainant’s trademark and that the term “lierac” is the sole and unique element constituting the disputed domain name without any addition. The Complainant states it is not necessary to demonstrate any similarity in view of the identical reproduction of its domain name.
The Complainant further states that the Respondent has no rights or legitimate interests in respect of the disputed domain name, that the Respondent has used the disputed domain name in an unauthorized manner to sell the Complainant’s products, and that it was and is not an authorized reseller. The Complainant states there is no doubt that the Respondent was fully aware of the existence of the Complainant’s prior rights. In addition after the Complainant made contact with the Respondent, the latter changed its web pages suppressing all information concerning the Lierac products. The Complainant has produced as exhibits samples of the Respondent’s web pages under the disputed domain name prior to suppression of all information concerning the Lierac products.
The Complainant further asserts that the disputed domain name was registered and is being used in bad faith. The Complainant notes that in the Respondent’s July 1, 2011 email communication to the Complainant, the Respondent indicated that “apart from being a websites’ developer, I am also a domain investor” and that “I may release the if Laboratoires Lierac SA (the Complainant) can offer a reasonable price to buy the domain.”
The Complainant states that after it sent several reminders to the Respondent expressing its concerns concerning infringement of its trademark, but stating it was still open to an amicable settlement, the Respondent in an email dated October 13, 2011 stated that the price offered of USD 1,000 was far too low of the value of the disputed domain name, and said that the Respondent might let it go for USD 500,000. The Complainant concludes that the Respondent was aware of the rights of the Complainant and was offering to resell its domain name at an unrealistic price well over the Respondent’s out-of-pocket costs.
The Complainant requests that the Panel order that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent conducted sporadic correspondence with the Complainant, protesting the latter’s Complaint against the use of the disputed domain name. The Respondent in this correspondence stated that the Respondent had been using the disputed domain name for nine years without objection from the Complainant. While initially the Respondent indicated a desire not to sell or transfer the disputed domain name, the Respondent did try to negotiate a price for which the disputed domain name could be transferred, at one time suggesting USD 500,000, but later indicating a willingness to accept USD 2,000. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant’s registered trade mark LIERAC, in which the Complainant has established that it has rights. The Panel notes that the suffix ”.net” is not to be taken into consideration when considering the identity or confusing similarity of a domain name with a trademark.
The first condition required for the Complaint to succeed has therefore been met. B. Rights or Legitimate Interests
The Complainant has stated that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and has added that the Respondent is not a reseller of the Complainant’s goods. The Respondent has not disputed these assertions, but has argued that the disputed domain name was used for some nine years before objections were made by the Complainant.
The Panel concludes that it has been established that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the second condition for the Complaint to succeed has been fulfilled. C. Registered and Used in Bad Faith
It is clear that the Respondent was well aware of the Complainant and of the “Lierac products”. The Complainant has produced copies of pages from the Respondent’s website, appearing before the pages were removed, which stated “Founded in 1975, Lierac Laboratory specializes in ”active phyto-cosmetics” – the formulation of cosmetic products with plant derived molecules […]. Lierac products are true cosmeceutical formulas…” These web pages referred to many products identified as Lierac products. The Panel finds that the statements on these pages under a website entitled “www.“, were designed to attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Panel assumes that this was for commercial gain, noting that in one of the email communications the Respondent stated that the disputed domain name “is ranked among top five in all search engines”, adding that he knew the value of the disputed domain name and was a domain investor.
The Panel is satisfied that the Respondent’s registration and use of the disputed domain name were for a pecuniary gain and were in bad faith, in accordance with paragraphs 4(b)(i) and (iv) of the Policy, and the third condition for the Complaint to succeed has been satisfied. 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.
Joan Clark
Sole Panelist
Dated: March 5, 2012
Full & Egal Universal Law Academy