The Complainant is Haw Par Corporation Limited, Singapore, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Simon Legouge, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2019, the Registrar transmitted by email to the Center its verification response 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 October 11, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center has also indicated to the Complainant that the language of the Registration Agreement was French, and invited the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, a Complaint translated into French, or a request for English to be the language of proceeding. The Complainant filed a request for English to be the language of proceeding and an amended Complaint on October 16, 2019. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2019. The Center appointed Andrea Mondini as the sole panelist in this matter on November 12, 2019. 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, a multinational group listed on the Singapore Exchange, markets topical analgesic products under the brand TIGER BALM which in France is known as BAUME DU TIGRE. The Complainant is the owner of several trademark registrations for the word mark BAUME DU TIGRE, including the French Trademark registration No. 1690773 registered on December 14, 1988, and the Swiss Trademark Registration No. P-379667 filed on November 8, 1989 and registered on November 28, 1998. The disputed domain name was registered on January 13, 2015 and resolves to a website, which purportedly offers the Complainant’s products for sale. 5. Parties’ Contentions A. Complainant The Complainant contends in essence: - that over several decades the Complainant has spent substantial time, effort, and money advertising and promoting the TIGER BALM and BAUME DU TIGRE brands throughout the world, and has thus developed substantial goodwill in the TIGER BALM and BAUME DU TIGRE brands. Through such widespread, extensive efforts, TIGER BALM and BAUME DU TIGRE are uniquely associated with the Complainant and its products and services; - that the disputed domain name - that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because (i) the Complainant has neither authorized nor licensed the Respondent to use its trademarks in any way, (ii) the Respondent is not commonly known by the disputed domain name; (iii) the pertinent WhoIs information does not identify the registrant; and (iv) the disputed domain name redirects Internet users to a website which creates the impression that it is a site authorized by the Complainant because it displays the Complainant’s trademark and logo on several places on the website, features the orange and white color scheme widely associated with the Complainant and copies product images from the Complainant’s website, but also offers competing products such as the “Baume du singe” (meaning “monkey balm” in English); - that the disputed domain name was registered in bad faith, considering that the BAUME DU TIGRE trademark is well-known in France where the Respondent is located, so that it is not possible to conceive that the Respondent would have been unaware of the Complainant’s mark; - that the disputed domain name is being used in bad faith, because the Respondent creates a likelihood of confusion with the Complainant and its trademark by using the Complainant’s trademark and logo on the website posted under the disputed domain name, featuring the orange and white color scheme widely associated with the Complainant and copying product images from the Complainant’s website, with the Respondent then attempting to profit from such confusion by including affiliate links to products on third-party websites. Moreover, the Respondent failed to respond to the Complainant’s cease and desist letters. B. Respondent The Respondent has not submitted a response. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements: (i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. 6.1. Language of the Proceeding In the present case, French is the language of the registration agreement. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise. Paragraph 10 of the Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case. The Complainant filed the Complaint in English and, on September 13, 2019, it submitted a request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding. Considering (i) that the Respondent did not submit a response or any request regarding the language of the proceeding, and (ii) the arguments put forward by the Complainant, the Panel determines that the language of the proceeding is English. 6.2 Substantive Issues A. Identical or Confusingly Similar The Complainant has shown that it holds several registrations for the trademark BAUME DU TIGRE. The Panel finds that the disputed domain name is identical to the Complainant’s trademark BAUME DU TIGRE. Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant contends, credibly, that it has not authorized the Respondent to use the disputed domain name, and that there is no relationship whatsoever between the Parties. Moreover, the Respondent is not commonly known by the disputed domain name. The Respondent offers the Complainant’s products on the website posted under the disputed domain name. Previous UDRP panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name if the following cumulative criteria outlined in the “Oki Data test” are met (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”), section 2.8.1, referring to Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903): (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. In the present case, however, the Respondent’s use of the disputed domain name fails to meet the second and third criterion of the Oki Data test. The second criterion stipulates that the website must only sell the trademarked goods; however the Complainant has demonstrated that the Respondent is also offering at least one competing product, the “Baume du singe”. The third criterion requires that the website must accurately disclose the respondent’s relationship with the complainant. It may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. In the present case, the Respondent did not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, and therefore conveyed the false impression that the Respondent was authorized to use the Complainant’s trademark and sell the Complainant’s products. In fact, the disputed domain name redirects Internet users to a website which creates the impression that it is a site authorized by the Complainant because it displays the Complainant’s trademark and logo on several places on the website, features the orange and white color scheme widely associated with the Complainant and copies product images from the Complainant’s website. The website posted under the disputed domain name has no visible disclaimer stating that the website is neither endorsed nor sponsored by the Complainant to explain the non-existing relationship with the trademark holder. Instead, an inconspicuous statement at the bottom of the page states that the Respondent’s website participates in Amazon’s EU Partner Program, but does not disclose the Respondent’s relationship, or lack thereof, with the Complainant. In addition, previous UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation (WIPO Overview 3.0, section 2.5.1). Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant has shown that its trademark TIGER BALM is well known internationally and has credibly shown that the trademark BAUME DU TIGRE is well known in France, so that the Respondent was obviously aware of the Complainant’s mark when he registered the disputed domain name, particularly considering that he used the disputed domain name to also sell the Complainant’s products. Moreover, the Respondent creates a likelihood of confusion with the Complainant and its trademark by using the Complainant’s trademark and logo on the disputed domain name’s website, featuring the orange and white colour scheme widely associated with the Complainant and copying product images from the Complainant’s website, thereby attempting to profit from such confusion by including affiliate links to products on third-party websites. Moreover, the Respondent failed to respond to the Complainant’s cease and desist letters. Under these circumstances, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Andrea Mondini
Sole Panelist
Date: November 20, 2019
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