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and Mediation Center
ADMINISTRATIVE PANEL DECISION
L’Orйal v. Avraham Mattan, Vichycare Customer Service
Case No. D2007-0122
1. The Parties
The Complainant is L’Orйal, Clichy Cedex, France, represented by Paul, Hastings, Janofsky & Walker, LLP, United States of America.
The Respondents are Avraham Mattan, Jerusalem, Israel, and Vichycare Customer
Service, Hayward, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <vichycare.com> is registered with Melbourne
IT trading as Internet Names Worldwide.
3. Procedural History
The Complaint naming as Respondent “Vichycare Customer Service” was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2007. On February 1, 2007, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. After some communications occurred on February 2-14, 2007 between the Registrar and the Center, on February 15, 2007, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response indicating the registrant of record as “Avraham Mattan” and providing contact details. In response to a notification by the Center that the registrar had provided revised registrant information indicating the registrant of record as “Avraham Mattan” and providing contact details, the Complainant filed an amendment to the Complaint on February 17, 2007 via email, and hardcopy on February 19, 2007, and on the same day the Center acknowledged receipt of the amended Complaint. Pursuant to an additional communication to the Complainant issued by the Center on February 22, 2007, the Complainant filed an additional amendment to the Complaint on February 24, 2007 via email, and hardcopy on February 26, 2007, and on February 26, 2007, the Center acknowledged receipt of the amendment to the Complaint. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2007.
The Center appointed Luca Barbero as the sole panelist
in this matter on April 3, 2007. 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,
4. Factual Background
The Complainant is the owner of several trademark registrations in different countries of the world consisting of or comprising the sign VICHY, including Israel national registrations No. 101.348 and No. 101.349 filed on October 19, 1995, and registered on April 5, 1995.
The Respondent registered the domain name <vichycare.com>
on October 30, 2004.
5. Parties’ Contentions
Complainant states that it is the owner of the famous and distinctive brand name and registered trademark VICHY for its well-known and long successful line of personal care products. The VICHY trademark was adopted and used continuously by Complainant and Complainant’s predecessor since at least as early as 1931. Since 1931, Complainant has continuously marketed and sold its VICHY products
Complainant indicates that it has invested millions of euros each year to advertise its VICHY products worldwide. The result of such extensive marketing and advertising of the VICHY brand, quite naturally, has been great commercial success and enormous consumer recognition. In 2005, worldwide net sales of VICHY products were € 677,1 M. In the U.S. alone, sales were $ 2.5 million.
Complainant asserts that it, through its continuous, extensive and prolonged use of the trademark VICHY, has developed substantial goodwill, value and recognition in VICHY as its source identifier for high quality personal care products. VICHY is a famous trademark for such products in the United States, Europe, Asia, Latin America and the Middle East.
Complainant also is the record owner of numerous trademark registrations worldwide for VICHY marks and of the domain name <vichy.com> which is used for its website devoted to the personal care products produced and sold by Complainant under its VICHY trademark. Complainant’s VICHY products have been featured in several U.S. and international publications.
Complainant indicates that has never licensed or otherwise permitted Respondents to use the VICHY mark. Complainant has never authorized Respondents to apply for, register or use the domain name <vichycare.com> and the Respondents are not authorized resellers or retailers of “Vichy” products.
On October 19, 2006, Complainant sent Respondent, VichyCare Customer Service via e-mail and first class mail delivered by the United States Postal Service a protest letter demanding, among other things, that it immediately cease and desist from further use of the domain name and immediately transfer ownership of the domain name to Complainant. Respondent, VichyCare Customer Service did not respond to Complainant’s letter.
Complainant points out that the domain name <vichycare.com> was registered by or transferred to Respondents on or about October 30, 2004. Complainant contends that the disputed domain name and the distinctive and well-known VICHY trademarks are confusingly similar since the contested domain name contains the VICHY trademark in its entirety, the descriptive word “care” and the generic top-level domain “.com”.
With reference to the rights or legitimate interests in the disputed domain name, the Complainant states that the Respondent has no relationship with the Complainant and has never been authorised by the Complainant to use the VICHY trademarks or any variation thereof.
Complainant indicates that to its knowledge, the Respondent has never been known by or operated a bona fide business under the name VICHY or under the <vichycare.com> domain name.
Complainant states that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. To the contrary, Respondents’ sole purpose for using <vichycare.com> is to enhance their personal commercial gain by intentionally misleading, confusing, deceiving and diverting consumers to their website by holding themselves out as somehow affiliated with or connected to Complainant, or as Complainant itself. Such obvious and intentional deceit can never constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use under paragraphs 4(c)(i) and (iii) of the Policy.
Complainant also states that the Respondents falsely
claim on the “www.vichycare.com” website that they are the owners
of registered trademarks in “VichyCare”, “VichyCare.com”
and “vichycare.com” by stating that: “VichyCare and VichyCare.com
and www.vichycare.com are registered trademarks, trademarks or service marks
of VichyCare and VichyCare.com and www.vichycare.com. All custom, graphics,
icons, logos and service names are registered trademarks, trademarks or service
marks of VichyCare.com and www.vichycare.com . . . The use of any VichyCare.com
and www.vichycare.com trademark or service mark without VichyCare or VichyCare.com
and www.vichycare.com express written consent is strictly prohibited.”
The Complainant informs the Panel that a search of the websites “www.trademark.com” and “www.uspto.gov” failed to uncover any such trademarks owned by Respondents.
The Complainant concludes with reference to the issue of the rights or legitimate interest that the Respondent is using Complainant’s trademark and logo VICHY LABORATORIES HEALTH IS VITAL. START WITH YOUR SKIN on their website, further creating the mistaken impression that the website belongs to or is affiliated with or sponsored by Complainant.
With reference to the circumstances evidencing bad faith, the Complainant alleges that Paragraph 4(b)(iv) of the Policy applies since the Respondent has continued to market and sell purported VICHY brand products on their website, “www.vichycare.com”, despite having been notified by Complainant that their actions constitute trademark infringement. Such use has been made and is made solely to profit and exploit Complainant’s VICHY trademark for private financial gain.
Complainant contends that Respondents’ activities are designed to disrupt and harm Complainant’s business by diverting potential “Vichy” customers to Respondents’ Website, thereby inducing them to purchase products from Respondents instead of Complainant in violation of Policy Para 4(b)(iii).
Complainant also states that the whois listing for <vichycare.com> contains no contact information for Respondents. However, such use constitutes bad faith where one attempts to remain anonymous while hiding behind another’s trademark, here VICHY, and selling goods in direct competition with the trademark owner. Respondents’ actions also violate the Registrar’s Private Registration Policy.
As a last remark on the issue of bad faith, the Complainant highlights the fact that Respondents have provided false contact information on the “www.vichycare.com” website is further evidence of Respondents’ bad faith analogous to providing false contact information to the registrar when registering a domain name.
The Respondents did not reply to the Complainant’s contentions and is in default.
Therefore, the Panel shall decide this proceeding
on the basis of the Complainant’s submissions, drawing such inferences
from the Respondents’ default that are considered appropriate according
to paragraph 14(b) of the Rules.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has provided the Panel with evidence of ownership of many trademark registrations consisting of or comprising the sign VICHY worldwide.
The Panel finds that the disputed domain name is confusingly similar to the trademarks owned by the Complainant since the addition of the word “care” does not exclude the likelihood of confusion between the domain name and the Complainant’s trademarks considering that “care” is merely descriptive of the products that Complainant provides in connection with its VICHY trademarks.
It is well established in prior decisions that usually
the addition of descriptive terms to a trademark is not a distinguishing feature,
i.a, Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO
Case No. D2006-1435 (“electronics” added to FRY mark), Wal-Mart
Stores, Inc. v. Henry Chan, WIPO Case
No. D2004-0056 (“chase”, “girlsof”, “jobsat”,
“sams”, “application”, “blackfriday”, “blitz”,
“books”, “career(s)”, “check”, “flw”,
“foundation”, “games”, “mart”, “photostudio”,
“pictures”, “portrait”, “portraitstudio(s)”,
“registry”, “retaillink” and “wire” added
to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO
Case No. D2004-0033 (“chart”, “music”, “arena”,
“sweep”, “nfl” and “coliseum” added to PEPSI
mark); International Organization for Standardization ISO v. Quality Practitioners
Institute and Web site Pros, Inc. and Quality, WIPO
Case No. D2005-1028 (“net” and “training” added
to ISO mark), Banca Intesa S.p.A. v. Roshan Wickramaratna, WIPO
Case No. D2006-0215 (“online” added to BANCAINTESA mark).
In comparing the Complainant’s
marks to the Domain Name with reference to <vichycare.com> it should be
taken into account the well established principle that the suffixes, including
the generic top level domains, may be excluded from consideration as being merely
a functional component of the domain name. See Rollerblade, Inc. v. McCrady,
WIPO Case No. D2000-0429
“the specific top level of the domain name such as ‘.net’
or ‘.com’ does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar”; Chevy Chase Bank,
F.S.B. v. Peter Ojo, WIPO Case
No. D2000-1770 “the accused domain name
<chevychasebank.org> is legally identical to Complainant’s trade
name CHEVY CHASE BANK”).
The Panel finds that the Complainant has therefore proven that the disputed domain name is therefore confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
By not submitting a Response, the Respondents have failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.
There is no relation, disclosed to the Panel, between the Respondents and the Complainant and Respondents are not a licensee of the Complainant, nor has the Respondents otherwise obtained an authorization to use Complainant’s trademarks and name under any circumstance and to sell Complainant’s products.
Furthermore, there is no indication before the Panel that the Respondents have made preparations to use the domain name in connection with a bona fide offering of goods or services and/or that it intends to make a legitimate, non-commercial or fair use of the domain name.
The Panel notes that the Respondents are using the Complainant’s trademarks on the website “www.vichycare.com” and that products bearing the Complainant’s trademark are offered for sale.
Moreover while the Respondents appear from a statement the Complainant says is posted at the Domain Name to claim rights in alleged trademarks comprising and/or consisting of the term VICHY and thus suggesting to be the trademark owner, according to (and within the limits of) the search performed by the Complainant and in absence of a Response providing the Panel with different information about any rights or legitimate interest such registrations, such registrations are not existing.
The Panel therefore finds such a use aimed at giving the impression that the
website is official and affiliated with or connected to the Complainant, which
in the circumstances does not constitute a bona fide offering of goods
or services or a legitimate, non-commercial use of the Domain Name under the
Policy as indicated i.a in Oki Data Americas, Inc. v. ASD, Inc., WIPO
Case No. D2001-0903; Houghton Mifflin Co. v. Weatherman, Inc., WIPO
Case No. D2001-0211 (no bona fide offering where website’s
use of Complainant’s logo, and lack of any disclaimer, suggested that
website was the official Curious George website); R.T. Quaife Engineering
v. Luton, WIPO Case No. D2000-1201
(no bona fide offering because domain name <quaifeusa.com> improperly
suggested that the reflected site was the official U.S. website for Quaife,
an English company; moreover, respondent’s deceptive communications with
inquiring consumers supported a finding of no legitimate interest); Easy
Heat, Inc. v. Shelter Prods., WIPO Case
No. D2001-0344 (no bona fide use when respondent suggested that it
was the manufacturer of complainant’s products).
The Panel therefore finds that Respondents have no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain names in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration the Panel notes that in light of use of the trademark since over seventy years, the amount of advertising and sales of Complainant’s products world wide and the specific reference to the Complainant’s products on the Respondents’ website, this demonstrates that the Respondents were in all likelihood well aware of the Complainant’s trademarks.
The Panel, in accordance with previous decisions issued under the Policy, is
of the opinion that actual knowledge of Complainant’s trademark at the
time of the registration of the disputed domain names is to be considered an
inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas
and Christiandior.net, WIPO Case No. D2000-0226).
The Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondents have attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services. Indeed the Domain Name was at the time of the filing of the Complaint - and still is at the time of the drafting the present decision - pointing to a website where Complainant’s products are offered for sale.
The Panel considers the incomplete / false information
originally provided by the Respondents on the whois as an additional circumstance
evidencing the bad faith of the Respondents concurring with the views expressed
i.a. in Steelcase Development Corporation v. Admin, Domain, WIPO
Case No. D2005-1352 stating that the use of false contact information by
the Respondent is a further indication of bad faith (Wachovia
Corporation v. Peter Carrington, WIPO
Case No. D2002-0775).
Furthermore, since the Complainant’s trademark
is well-known, the Panel shares the view of a number of panel findings of “opportunistic
bad faith” in the registration of renowned or even somewhat less famous
trademarks. As stated i.a in DHL Operations B.V
v. Net Marketing Group, WIPO
Case No. D2005-0868. It is obvious that the
value and goodwill, of the Complainant’s mark DHL which has an extensive
world wide recognition, would have been known to the Respondent at the time
of registration of the disputed domain name. The registration and use of the
mark by an entity unconnected to the Complainant gives rise to the presumption
of opportunistic bad faith.
In view of the above, the Panel finds that the Respondents have registered
and used the domain names in bad faith, in accordance with paragraph 4(a)(iii)
of the Policy.
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 <vichycare.com> be transferred to the Complainant.
Dated: April 18, 2007