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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gaulme SA & Jean-Paul Gaultier SA v. Jeanpaulgaultier Funclub DBA New York Link
Case No. D2000-0822
1. The Parties
The Complainants in this administrative proceeding are Gaulme SA and
Jean-Paul Gaultier SA, located at 30, rue du Faubourg Saint Antoine, 75012 Paris, France, represented by Jean-Marie Moiroux, Attorney, with offices at 3, rue de Logelbach, 75017 Paris, France, hereinafter the "Complainant".
Respondent is Jeanpaulgaultier Funclub DBA New York Link, located at 162 Fifth Avenue, Suite 1014, New York, NY 10010, United States, hereinafter the "Respondent".
2. Domain Name and Registrar
The domain name at issue is "jeanpaulgaultier.com", registered on December 13, 1996, hereinafter referred to as the "Domain Name". The registrar is Network Solutions.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s complaint on July 19, 2000 (electronic version) and July 25, 2000 (hard copy). The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is July 30, 2000.
On July 22, 2000, the Center transmitted via email to Network Solutions a request for registrar verification in connection with this case. On July 26, 2000, Network Solutions transmitted via email to the Center its verification response, confirming that the registrant is Jeanpaulgaultier Funclub DBA New York Link, that the administrative and billing contact is Tony Boemi and that the technical and zone contact is Paolo Bertoia.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on July 30, 2000, to the Respondent and to Network Solutions, Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, fax and e-mail, in accordance with the following contact details:
Jeanpaulgaultier Funclub DBA New York Link
162 Fifth Avenue
New York, NY 10010
G Paolo Bertoia
New York, NY 10004
Fax: +1 (212) 220-3778
+1 (212) 208-2424
+1 (212) 202-5012
The Center advised that the response be due by August 18, 2000. However, no response was submitted and consequently, the Center issued a Notification of Respondent Default on August 22, 2000.
In view of the Complainant’s designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist.
Having received Mr. Geert Glas’ Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist, on September 18, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the complaint, the evidence presented, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
GAULME SA is the owner of numerous trademark registrations in various countries for the trademarks "GAULTIER", "JEAN-PAUL GAULTIER" and "JPG". Copies of those trademark registrations are attached to the complaint. These are:
the French word mark n° 1 371 978, filed on September 25, 1986, for the word "GAULTIER" and for the goods and services of the classes 9, 16, 15, 38, 41, 42;
the international word mark n° 510 858, registered on March 24, 1987, for the word "GAULTIER" and for goods and services of the classes 9, 15, 16, 38, 41, 42;
the French word mark n° 1 641 732, filed on July 20, 1989, for the words
"JEAN-PAUL GAULTIER" and for the goods and services of the classes 3, 5, 8, 9, 11, 14, 16, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 38, 41, 42;
the international word mark n° 605 921, registered on August 31, 1993 for the words "JEAN-PAUL GAULTIER" and for goods and services of the classes 9, 28, 38;
the French figurative trademark n° 1 703 307, filed on November 4, 1991, for the logo "JEAN-PAUL GAULTIER" and for the goods and services of the classes 3, 5, 8, 9, 11, 14, 15, 16, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 38, 41, 42;
the international figurative trademark n° 510 859, registered on March 24, 1987, for the logo "JEAN-P AUL GAULTIER" and for goods and services of the classes 8, 11, 14, 15, 18, 20, 21, 22, 23, 24, 26, 27, 28, 34, 38, 41;
the French figurative trademark n° 1 668 583 for the logo "JPG" and for the goods and services of the classes 3, 9, 14, 18, 25;
the international figurative trademark n° 629 834, registered on January 2, 1995, for the logo "JPG" and for goods and services of the classes 3, 9, 14, 18, 25.
It appears from a license agreement that these trademarks are used by
JEAN-PAUL GAULTIER SA, as exclusive licensee of GAULME SA.
It also appears that Complainant has registered various domain names incorporating the names "gaultier" and "jean paul gaultier". These are:
JEAN-PAUL GAULTIER SA distributes, directly or indirectly, the luxury products created by Mr. Jean-Paul GAULTIER (i.e. clothes, leather products, perfumes…).
Complainant’s industrial property counsel sent a warning letter on May 6, 1999 to Respondent, without success.
There is no relation between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained an authorization to use Complainant’s trademarks.
At first, the Domain Name resolved to the web page of the New York Link, Inc., which appears to be a company providing Internet connection, domain name registration and web hosting services. The address of the New York Link, Inc. as it appears at the bottom of the web page is identical to Respondent’s address. However, more recently it has appeared that the Domain Name now resolves to the www.jpgaultier.fr website of Complainants. It is unknown to the Panel whether this change occurred as a result of a unilateral action by Respondent or following an agreement between the parties. In any event, at the date on which the Panel provided WIPO with this decision, the Domain Name was still owned by Respondent.
5. Parties Contentions
Complainant contends that Respondent registered the Domain Name without the consent of Mr. Jean-Paul GAULTIER and/or GAULME SA and/or JEAN-PAUL GAULTIER SA. In addition, Respondent clearly registered the Domain Name in order to prevent Complainant from reflecting his trademark in a corresponding domain name and to take advantage of this situation by selling or otherwise transferring the Domain Name registration to Complainant or to a competitor for valuable consideration in excess of the domain name registrant’s out-of-pocket costs directly related to the Domain Name.
Consequently, Complainant requires the transfer of the Domain Name registration.
By e-mail of October 16, 2000, Complainant indicated GAULME SA as the desired transferee.
No response has been submitted.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has right; and,
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and is being used in bad faith.
The Domain Name is "jeanpaulgaultier.com".
"JEAN-PAUL GAULTIER" is a registered trademark of Complainant.
In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark of Complainant.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks, nor has he ever been known by this name.
By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
The Administrative Panel therefore finds that Respondent has no legitimate right or interest in the Domain Name.
c. Registration and Use in Bad Faith
Several facts have to be taken into consideration when assessing the absence/presence of bad faith in this matter:
"JEAN-PAUL GAULTIER" is a registered trademark of Complainant.
The Domain Name resolves to a web page which until recently was totally unrelated to Complainant or an affiliate of Complainant.
Taking into consideration the fame of Complainant and Complainant’s trademarks, it may be reasonably assumed that Respondent knew of Complainant and its trademarks when he registered the Domain Name. This can clearly be deduced from Respondent’s name (Jeanpaulgaultier Funclub).
Respondent’s address is the exact same address as the one featured on the web page to which the Domain Name resolved until recently.
Respondent did not submit any response.
When registering the Domain Name, Respondent knowingly chose a name which is identical to the trademark of Complainant, thereby intentionally creating a situation which is at odds with the legal rights and obligations of the parties.
It is conceivable that a fan of Mr. Gaultier would like to set up an unofficial website devoted to Mr. Gaultier and his creations and express this in the choice of Domain Name (i.e. fansofx.com). While Respondent’s name seems to indicate such intention, it appears that Respondent has restricted itself to linking the Domain Name to the home page of its New York Link, Inc. and later on to the official website of Complainant. While this current situation should satisfy Complainant, there is nothing to prevent Respondent from changing its use of the Domain Name as long as it is registered in its name.
In addition to that, as Respondent’s address is the exact same address as the one featured on the web page of New York Link, Inc. to which the Domain Name used to resolve, it is the Panel’s opinion that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
By not submitting a response, Respondent has failed to invoke any circumstances which could demonstrate that it did neither register, nor use the Domain Name in bad faith.
In conclusion and in view of the above, it is the Panel’s opinion that Respondent registered and used the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name "jeanpaulgaultier.com" registered by Respondent is confusingly similar to the trademark of Complainant, that Respondent has no right or legitimate interest in respect of the Domain Name, and that Respondent registered and used the Domain Name in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Administrative Panel requires that the registration of the Domain Name " jeanpaulgaultier.com" be transferred to GAULME SA.
Dated: October 31, 2000