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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Guerlain S.A. v. HI Investments
Case No. D2000-0494
1. The Parties
Complainant is Guerlain S.A., Avenue Des Champs-Elysees 68, 75008 Paris, France, represented by Barbara A. Solomon, Fross Zelnick Lehrman & Zissu, P.C., 866 United Nations Plaza, New York, NY 10017, U.S.A., hereinafter "Complainant".
Respondent is HI Investments, 4520 76 Avenue, Edmonton, Alberta t6b 0a5, Canada, represented by Amin Suleman, hereinafter "Respondent".
1. Domain Name and Registrar
The domain name at issue is "buyguerlain.com", hereinafter referred to as the "Domain Name". The registrar is BulkRegister.com.
2. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s complaint on May 24, 2000 (hard copy and email). 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 June 7, 2000.
On May 29, 2000, the Center transmitted via e-mail to BulkRegister.com a request for registrar verification in connection with this case. On June 2, 2000, BulkRegister.com transmitted via e-mail to the Center, BulkRegister.com’s Verification Response, confirming that the Respondent is the registrant and that the administrative, technical, and billing contact is Amin Suleman.
Having verified that the complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on June 7, 2000, to Respondent, Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, facsimile and e-mail, in accordance with the following contact details:
4520 76 avenue
Edmonton, Alberta T6B 0A5
Fax: +1 780 438 4407
The Center advised that the Response was due by June 26, 2000. On June 27, 2000, Respondent asked how much time was allowed for a response to be filed. The Center replied that the response deadline already had expired and a Notification of Respondent Default was issued on June 28, 2000. Notwithstanding the former, Respondent requested a time extension for his response until July 7, 2000. He filed a brief response on July 10, 2000.
On July 3, 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 on July 3, 2000, 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. The Projected Decision Date was July 24, 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 Response, the evidence presented, the Policy, the Rules and the Supplemental Rules.
3. Factual Background
The Domain Name was registered on April 3, 2000.
The complaint is based upon trademarks owned by Complainant, being, among others:
Guerlain (U.S.A) Reg. Num.: 0192772 Reg. Date: December 9, 1924;
Guerlain (U.S.A) Reg. Num.: 0193391 Reg. Date: December 30, 1924;
Guerlain (U.S.A) Reg. Num.: 1733835 Reg. Date: November 17, 1992;
Guerlain (U.S.A) Reg. Num.: 1942534 Reg. Date: December 19, 1995;
Guerlain (Canada) Reg. Num.: TMA200400 Reg. Date: July 12, 1974;
Guerlain (Canada) Reg. Num.: TMA410168 Reg. Date: March 26, 1993;
Guerlain (Canada) Reg. Num.: TMA431041 Reg. Date: July 29, 1994;
Copies of the registration certificates appear in the annex to the complaint.
According to Complainant, Complainant has been using the trademark "Guerlain" since the 1800 for perfumes, makeup and other skincare products. This argument is sustained by the USPTO database which states that the trademark "Guerlain" is in use in commerce since 1848. Complainant also invokes that his trademark is one of the most famous trademarks for perfumes, as evidences by various excerpts from various journals.
According to Respondent, Respondent registered the Domain Name in order to have a web site for the company Respondent intends to set up, with name "Guerlain Security Technologies", the purpose of which would be to conduct a business-to-business / business-to-consumer business where Respondent would deal with products from the security industry, including cctv, alarm, access control, sound and automation.
There is no relationship between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has he otherwise obtained an authorization to use Complainant’s marks or company name.
No website is connected to the Domain Name.
4. Parties Contentions
Complainant contends that Respondent has registered the Domain Name which is identical or confusingly similar to Complainant's trademark, that Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
Consequently, Complainant requires the transfer of the Domain Name registration.
Respondent denies Complainant’s allegations.
5. 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."
Applied to this case, 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 to the trademark in which the Complainant has right; and,
2) that the Respondent has no legitimate interests in respect of the Domain Name; and,
3) that the Domain Name has been registered and used in bad faith.
The Domain Name is "buyguerlain.com".
"Guerlain" is the trademark of Complainant.
It is obvious in this case that the Domain Name is composed out of the verb "to buy" and the term "Guerlain", the latter of which is incontestably the principal part of the Domain Name.
In view of the above, the Administrative Panel finds that the Domain Name is identical to Complainant’s trademark "Guerlain". Therefore, the Panel finds that the requirement of the Policy paragraph 4(a)(i) is satisfied.
b) Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating its trademark. In addition to that, it appears that Respondent has not registered nor used the name "Guerlain" nor "Buyguerlain" or "Buy Guerlain" as a trademark, nor has he ever been known by this name.
Respondent registered the Domain Name on April 3, 2000, and invokes the fact that he intends to set up an Internet store. However, Respondent who had ample time to respond has not brought the slightest evidence to support his allegations. Therefore, the Panel finds that Respondent has not brought evidence of any demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
The Administrative Panel therefore finds that Complainant has met its burden under Section 4(a)(ii) of the Policy and that Respondent has no right or legitimate interest in the Domain Name.
c) Registration and Use in Bad Faith
Several facts have to be taken into consideration:
1) When registering the Domain Name, Respondent knowingly and purposefully chose a name which is identical to Complainant’s trademark. Indeed, the Panel finds that Complainant has brought sufficient evidence that his trademark is famous and widely used, as evidenced by the multiple trademark registrations and the world-wide fame of the Guerlain house.
2) The similarities between "Guerlain" and the Domain Name cannot result from a mere coincidence. While Respondent could have chosen a million of other names for his company and his online store, he precisely chose a domain name incorporating Complainant’s name so as to be identical or at least extremely confusingly similar to Complainant’s trademark. By knowingly choosing a domain name consisting of Complainant’s trademark preceded by the verb "to buy", Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties.
3) Respondent registered the Domain Name on April 3, 2000. In his response, Respondent has not brought any elements showing that there is a project which may see the light one day.
In consideration of the facts above stated, the Administrative Panel finds that circumstances are present indicating that Respondent has registered the Domain Name for the purpose of attempting to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s website or location.
In conclusion and in view of the above, the Administrative Panel finds that Complainant has met its burden under Section 4(a)(iii) of the Policy and that Respondent has registered and used the Domain Name in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Name "buyguerlain.com" registered by Respondent is identical to the trademark of Complainant, that Respondent has no right or legitimate interest in respect of the Domain Name, and that the Domain Name has been registered and is being used by Respondent in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Administrative Panel requires that the registration of the Domain Name "buyguerlain.com" be transferred to Complainant.
Date: July 25, 2000