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Generic Top Level Domain Name (gTLD) Decisions |
Laboratoires De Biologie Vegetale Yves
Rocher v. Jung Choi
Claim Number: FA0202000104201
PARTIES
Complainant is Laboratoires De Biologie Vegetale Yves Rocher,
Issy-les-Moulineaux, France (“Complainant”) represented by Paul D. Steinman, of Eckert,
Seamans, Cherin & Mellott, LLC.
Respondent is Jung Choi,
Cliffside Park, NJ (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <yveskorea.com>, registered with Go Daddy Software Inc.
PANEL
The undersigned certifies that he has
acted independently and impartially and to the best of his knowledge, has no
known conflict
in serving as Panelist in this proceeding.
Judge Irving H. Perluss (Retired) is the
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (“the Forum”) electronically on January 31, 2002;
the Forum received
a hard copy of the Complaint on February 5, 2002.
On February 5, 2002, Go Daddy Software
Inc. confirmed by e-mail to the Forum that the domain name <yveskorea.com> is registered with Go Daddy Software Inc. and
that the Respondent is the current registrant of the name. Go Daddy Software Inc. has verified that
Respondent is bound by the Go Daddy Software Inc. registration agreement and
has thereby
agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the
“Policy”).
On February 6, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of February 26, 2002 by which Respondent could file a
Response to the Complaint, was transmitted to Respondent
via e-mail, post and
fax, to all entities and persons listed on Respondent’s registration as
technical, administrative and billing
contacts, and to postmaster@yveskorea.com
by e-mail.
A timely Response was received and
determined to be complete on February 26, 2002.
On March 8, 2002,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irvin H. Perluss (Retired) as Panelist.
Complainant filed
an untimely Reply to Respondent’s Response, which nevertheless will be
considered by the Panelist.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant uses its YVES ROCHER
mark to market and sell its cosmetic and beauty products worldwide. Complainant has used the YVES ROCHER mark
since at least March 1971, and has five registrations through the United States
Patent and
Trademark Office; Registration Number 936,242, registered June 20,
1972; Registration Number 1,366,177, registered October 22, 1985;
Registration
Number 1,742,626, registered December 29, 1992; Registration Number 1,884,501,
registered March 21, 1995; and Registration
Number 1,912,935, registered August
22, 1995. Complainant presently uses
the YVES ROCHER mark with the marketing and sale of cosmetics and beauty
products in eighty-eight countries
worldwide, including Korea, where Respondent
does business. Complainant also uses
its mark in connection with a website, <yvesrocherusa.com>, which offers
its cosmetic goods and services
via the Internet. Respondent registered the disputed domain name, <yveskorea.com>,
on August 3, 2001.
2. YVES
ROCHER is widely recognized as a major provider of high quality cosmetic and
beauty products. YVES ROCHER is the
worldwide leader in mail-order beauty sales, annually delivering 130 million
packages to 20 million customers all
over the world. Because of YVES ROCHER’s exclusive and extensive use and
promotion of its trademarks, in which it holds both common law and federal
registration rights, YVES ROCHER has acquired considerable goodwill and value
in this intellectual property. YVES
ROCHER has become well-known to the consuming public as a manufacturer,
marketer, and seller of high quality cosmetic and beauty
products, including
but not limited to those marketed and sold on its website, and its “YVES ROCHER”
trademarks are emblematic of
the quality of its services.
3. On October 5, 2001, an agent of
Complainant placed an order with <yveskorea.com> for certain YVES
ROCHER cosmetic products. The products,
received via mail (United States Postal Service), were YVES ROCHER products
sold by Complainant in the United States,
Korea, and elsewhere, and bear “YVES
ROCHER” trademarks.
4. The disputed domain name <yveskorea.com>
is confusingly similar to Complainant’s valid, registered United States service
mark “YVES ROCHER.” The probability of
confusion engendered by the similarity of the names, and the assumption of the
consuming public that <yveskorea.com> is the Korean website of
YVES ROCHER is heightened by the fact that the <yveskorea.com>
website offers YVES ROCHER products for sale.
Complainant’s “YVES ROCHER” trademarks identify cosmetic and beauty
products. To combine “Yves” and “Korea”
in a single Korean language domain name, which, although unauthorized to do so,
advertises, sells, and
distributes “YVES ROCHER” products, certainly results in
a likelihood of confusion for an Internet user, particularly a Korean consumer,
who is seeking information about YVES ROCHER and its products.
5. Respondent
does not have rights or a legitimate interest in the disputed domain name
because of the sale of YVES ROCHER products on
its website, despite actual and
constructive notice of YVES ROCHER’s rights.
Respondent has purposely misappropriated YVES ROCHER’s trademarks and trade
name to benefit improperly from intellectual property
in which YVES ROCHER
enjoys exclusive rights. Respondent’s
conduct, accordingly, has not evidenced a legitimate use of the <yveskorea.com>
domain name. It has intentionally
misdirected Internet users to its site and is utilizing the reputation and
goodwill of Complainant’s “YVES ROCHER”
trademark.
6. The disputed domain name was
registered and is being used in bad faith because Respondent, without any
intellectual property rights
in a trademark, adopted and registered the
disputed domain name, primarily for the purpose of profiting from the
reputation and goodwill
of Complainant’s long-established trade name. Respondent purposely and in bad faith has
attempted and continues to attempt to divert Internet users seeking information
on the goods
and services of YVES ROCHER to Respondent’s website.
B. Respondent
1. The disputed domain name contains
only a part of the Complainant’s mark, “YVES ROCHER.” “Yves” itself is a commonly used name in France, and many sites
use that name in conjunction with their own names. Respondent uses “korea” as a suffix as her site is only for
people in Korea. Respondent has a
disclaimer on its site that stated the site was owned by a person who intended
to act as a purchasing agent for cosmetics
and ultimately to provide a wide
variety of products to Koreans. The
disclaimer clearly states Respondent’s site does not have any relationship with
“YVES ROCHER,” and Koreans cannot misunderstand
Respondent’s intention.
2. Respondent’s ultimate goal is to
offer Koreans the best prices on products, especially the ones with large price
differentials between
the United States and Korea, and to give Koreans
opportunities to buy the products that are sold in the United States but are
hard
to find in Korea. When Respondent
has requests from Koreans, it purchases the requested products and then sends
them to buyers.
3. Respondent
did not register, nor is she using the disputed domain name in bad faith. Respondent’s disclaimer (in Korean) on her
website clarifies that she is not affiliated with Complainant and, therefore,
Respondent
has no intention of creating confusion.
C. Additional Submission – Complainant’s
Additional Response
1. No evidence of Respondent’s alleged
disclaimer was submitted, nor could it be found on Respondent’s website by a
fluent Korean reader
who accessed the site during the month of February, 2001.
2. Respondent has used the disputed
domain name, admittedly, without authorization, to advertise, sell, and
distribute YVES ROCHER products.
FINDINGS AND CONCLUSIONS
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”)
instructs this Panel to “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 requires
that the Complainant must prove each of the following three elements to obtain
an order that
a domain name should be cancelled or transferred:
(1) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant
has rights;
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3) the domain name has been registered
and is being used in bad faith.
Identical and/or Confusingly Similar
Professor
McCarthy teaches us that the keystone of common law and statutory trademark
infringement is the “likelihood of confusion,”
and so it is here.[1] Can the use of an identical French name
prefix coupled with a geographical name infringe a well-known mark which has a
French surname? In other words, can the
likelihood of confusion be found because of the use of the similar prefix?
There
are numerous authorities which have found that there is confusion under this
circumstance,[2] and there
are authorities that have found there is no confusion.[3]
The
Panel here does find that there is likelihood of confusion, i.e., the disputed domain name and
Complainant’s mark are confusingly similar.
Professor
McCarthy sets out the 1938 Restatement of Torts §731, which listed nine
foundational factors to be considered which have
been utilized in both
competitive and non-competitive cases.[4] These factors have been utilized by each of
the various Federal Circuit Courts to formulate their own list of factors.[5]
The
1938 Restatement factors are:
1. The likelihood that the actor’s goods,
services or business will be mistaken for those of the other;
2. The likelihood that the other may expand
his business so as to compete with the actor;
3. The extent to which the goods or services
of the actor and those of the other have common purchasers or users;
4. The extent to which the goods or services
of the actor and those of the other are marketed through the same channels;
5. The relation between the
functions of the goods or services of the actor and those of the other;
6. The degree of distinctiveness
of the trademark or tradename;
7. The degree of attention
usually given to trade symbols in the purchase of goods or services of the
actor and those of the other;
8. The length of time during
which the actor has used the designation;
9. The intent of the actor in
adopting and using the designation.
Clearly,
factors 1, 2, 3, 4, 5, 7, and 9 are here applicable.
Thus,
the Panel has concluded that even though the disputed domain name is similar
only in part (i.e., a similar
prefix), there is a likelihood of confusion by a reasonably prudent buyer.[6]
Rights or Legitimate Interests
Because
Complainant’s marks were registered with the United States Patent and Trademark
Office long before Respondent acquired the
domain name in issue, Respondent would have rights and a
legitimate interest in the disputed domain name only if its use of the domain
name was not in bad
faith.
It
is of interest to note that the Anticybersquatting Consumer Protection Act
(“ACPA”) [15 U.S.C. §1125(d)] protects owners of a famous
and distinctive mark
(as here) from a person who registers or uses a domain name that is confusingly
similar to the mark or dilutive
of the mark, if such person has a bad faith
intent.
As
will be seen hereafter, the Panel necessarily has determined that such bad
faith is present here.[7]
Registration and Use in Bad Faith
Section
4b of the Policy sets forth certain circumstances, without limitation, that
shall be evidence of registration and use of a
domain name in bad faith. Subparagraph (iv) of Section 4b provides:
“by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
website or other
on-line location, by creating a likelihood of confusion with
the Complainant’s mark as to the source, sponsorship, affiliation, or
endorsement of your website or location or of a product or service on your
website or location.”
The
words “source, sponsorship, affiliation, or endorsement” are particularly apt
here. Inevitably, consumers would
conclude that the domain name in issue was endorsed and sponsored by
Complainant, particularly since Complainant’s
products were advertised and sold
utilizing the disputed website.[8]
But,
Respondent argues, what about my disclaimer?
It is true as Complainant charges, that no evidence, other than
Respondent’s assertion, was presented to the Panel.
It
is determined, however, that even if there were a specific disclaimer, this
would not obviate the finding of bad faith registration
and use. Again, this is because of the confusion
caused by the unauthorized advertising and sale of Complainant’s products
through Respondent’s
website.[9]
The
Panel does not conclude that Respondent may not sell Complainant’s products
acquired from various sources. It is,
however not an “authorized” retailer of the products, and it is improper to
utilize a domain name implying to the contrary.[10]
DECISION
Based on the above findings
and conclusions, and pursuant to Rule 4(i), it is decided that the domain name
<yveskorea> registered by Respondent Jung Choi, be and the same is
ordered transferred to Complainant Laboratoires de Biologie Vegetale
Yves Rocher.
JUDGE IRVING H. PERLUSS
(Retired), Panelist
Dated: March 22, 2002
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