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Produits Berger v. Li Xiaoji [2004] GENDND 1320 (26 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Produits Berger v. Li Xiaoji

Case No. D2004-0660

1. The Parties

The Complainant is Produits Berger, Paris, France, represented by Novagraaf, France.

The Respondent is Li Xiaoji, Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <lampebergerchina.net> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 19, 2004. On August 19, 2004, the Center transmitted by email to Network Solutions, LLC, a request for registrar verification in connection with the domain name at issue. On August 24, 2004, Network Solutions, LLC, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 August 25, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was September 14, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2004.

The Center appointed Christophe Imhoos, Alain Bensoussan and Yong Li as panelists in this matter on October 12, 2004. The Panel finds that it was properly constituted. Each member of 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. The Panel rendered its decision within the time-limit granted.

4. Factual Background

The Complainant is the owner of the following trademarks (Annex 4 to the Complaint):

∙ international trademark registration LAMPE BERGER n°724326, filed on November 30, 1999, in class 1, 3, 5, 11 and 21, protected in China in class 3,5 and 11;

∙ Japanese trademarks registration LA LAMPE BERGER n°1984623 filed on September 21, 1997, and duly registered in class 4.

∙ Trademark registration LAMPE BERGER + device n°T96/08143E filed in Singapore on August 5, 1996, and duly registered in class 21.

∙ Trademark registration LAMPE BERGER +device N°T96/08144 C filed in Singapore on August 5, 1996, and duly registered in class 5.

∙ French trademark registration LAMPES BERGER + device n°93468534 filed on May 14, 1993, in class 1,3,5 and 11.

∙ French trademark registration LAMPE BERGER ASIA n°00 3007236 filed on February 14, 2000, in class 38.

∙ French trademark registration LAMPES BERGER parfum de maison + device n°97682443 filed on June 13, 1997, in classes 1, 3, 5,11 and 21.

∙ Trademark registration LAMPES BERGER + device n°21200/94 filed on May 30, 1994, in the Republic of Korea and duly registered under N°357 902 in local class 10.

∙ Trademark registration LAMPES BERGER + device n°36716/95 filed on September 27, 1995, in the Republic of Korea and duly registered under n°359 480 in local class 12.

∙ Indonesian trademark registration LAMPES BERGER + device n°11814/94 filed on July 1, 1994, and duly registered under n°341 902 in class 5.

∙ Indonesian trademark registration LAMPES BERGER + device n°11813/94 filed on July 1, 1994, and duly registered under n°341241 in class 21.

∙ Japanese trademark registration LAMPES BERGER + device n°105353/90 filed on September 17, 1990, and duly registered under n°2502177 in class 1.

∙ Japanese trademark registration LAMPES BERGER + device n°112360/93 filed on November 8, 1993, and duly registered under n°3300796 in class 21.

∙ Japanese trademark registration LAMPES BERGER + device n°112359/93 filed on November 8, 1993, and duly registered under n°3228673 in class 5.

∙ Malaysian trademark registration LAMPES BERGER + device n°94/05246 filed on June 28, 1994, and duly registered in class 5.

∙ Malaysian trademark registration LAMPES BERGER + device n°94/05247 filed on June 28, 1994, and duly registered in class 21.

∙ Trademark registration n°94647 LAMPES BERGER + device filed in the Phillipines on August 18, 1994, and duly registered under n°66834 in class 5.

∙ Trademark registration N°5260/94 LAMPES BERGER + device filed in Singapore on June 24, 1994, and duly registered under n°75260/94 in class 21.

∙ Trademark registration n°5259/94 LAMPES BERGER + device filed in Singapore on June 24, 1994, and duly registered under n°75259/94 in class 5.

∙ Trademark registration LAMPES BERGER + device n°82055777 filed in Taiwan, Province of China, on November 11, 1993, and duly registered under n°655098 in local class 5.

∙ Trademark registration LAMPE BERGER + device n°82055778 filed in Taiwan, Province of China, on November 11, 1993, and duly registered under n°639623 in local class 16.

∙ Trademark registration LAMPE BERGER + device n°268818 filed in Thailand on July 19, 1994, and duly registered under n°KOR 53432 in class 5.

∙ Trademark registration LAMPE BERGER + device n°268819 filed in Thailand on July 19, 1994, and duly registered under n°KOR 39810 in class 21.

∙ Republic of Korea trademark registration n°47752/99 LAMPE BERGER + device filed on December 14, 1999, and duly registered under n°482712 in classes 3, 5 and 11.

∙ French trademark registration, LAMPE BERGER n°95566 941 filed on June 15, 1999, in class 1, 3, 5, 11 and 21.

The Complainant is also the owner of the following domain names (Annex 5 to the Complaint):

∙ <ampebergerasia.net.cn>∙ <lampebergerasia.com.cn>

∙ <lampebergerasia.cn>

∙ <lampeberger.bz>

∙ <lampe-berger.com.sg>

∙ <lampeberger.com.sg>

∙ <lampeberger.biz>

∙ <lampebergeraustralia.com>

∙ <lampeberger.fr>

∙ <lampeberger.tm.fr>

∙ <parfumsberger.fr>

∙ <parfums-berger.fr>

∙ <lampebergermalaysia.com>

∙ <lampebergerhk.com>

∙ <berger.biz>

∙ <lampebergerasia.com>

∙ <lampeberger-kr.com>

∙ <lampeberger-jp.com>

∙ <lampeberger-china.com>

∙ <lampe-berger-asia.com>

∙ <elampeberger.com>

∙ <lampesberger-asia.com>

∙ <lampes-berger-asia.com>

∙ <parfums-berger.com>

∙ <parfumberger.com>

∙ <parfumsberger.com>

∙ <parfum-berger.com>

∙ <lampebergerindonesia.com>

∙ <lampebergerindo.com>

∙ <lampebergerchina.com>

∙ <lampeberger.com>

∙ <lampebergerparis.com>

∙ <lampe-berger.com.cn

∙ <lampebergerasia.tm.fr>

∙ <lampeberger.com.cn>

∙ <lampeberger-asia.com>

∙ <lampesbergerasia.com>

∙ <lampe-berger.com>

∙ <lampes-berger.com>

∙ <lampesberger.com>

∙ <produitsberger.com>

∙ <produits-berger.com>

∙ <lampebergerjb.biz>

∙ <lampeberger.jp>

5. Parties’ Contentions

A. Complainant

The Complainant’s arguments are the following.

(i) The disputed domain name is confusingly similar to the trademarks of the Complainant as it reproduces the dominant distinctive elements of these marks “LAMPE BERGER”.

LAMPE BERGER trademarks are highly distinctive as they are completely fanciful.

The domain name is confusingly similar if not quasi-identical to the Complainant’s marks, the only difference consisting in the addition of the geographic identifier “china”. Such a difference is not apt to influence the overall impression left by the domain name, as the essential and distinctive element of the trademarks is LAMPE BERGER and, therefore, does not prevent a finding of confusingly similarity (See e.g. Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Wal-mart Stores, Inc. v. Yongsoo Hwang, NO-WALMART and NO-WALMART.COM, WIPO Case No D2000-0838; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927; Yahoo! Inc. v. Microbiz, Inc., WIPO Case No. D2000-1050; Viacom International Inc. v. Sung Wook Choi and M Production, WIPO Case No. D2000-1114; Amway Corporation, Inc. v. Business Internet Connection and Rex Mehta, WIPO Case No. D2000-1118; Jefferson Smurfit Group Plc v. Stephen Davidson Inc., WIPO Case No. D2000-1117).

Consumers who use perfume diffusers and who know the Complainant’s trademarks LAMPE BERGER are likely to recognize the mark LAMPE BERGER and infer that China is merely a geographical descriptor indicating the provenance or destination of the goods.

Moreover, the inclusion of the suffix «CHINA» is placed after the dominant element “LAMPE BERGER” and consequently has a lesser impact on the overall impression left by the domain name.

(ii) The Respondent has no rights on the domain name, nor legitimate interest to this domain name as it does not correspond to its corporate name. Moreover, the Respondent does not own a corresponding trademark, at least to the knowledge of the Complainant.

Furthermore, the Complainant has not licensed or otherwise authorized the Respondent to use its trademarks nor has he licensed to apply for the registration of the domain name at issue.

The Complainant is the sole owner of the above trademarks in France, in Asia as well as in many countries in the world.

(iii) The domain name in dispute should be considered as having been registered and being intended to be used in bad faith.

As a matter of fact, the Complainant requested that the Respondent transfer the registration of the <lampebergerchina.net> domain name as soon as it learned of its existence: on June 26, 2003, the Complainant sent a registered letter to the Respondent outlining its position and insisting that the Respondent immediately discontinue use of the dispute domain name, to which the Respondent never replied (Annex 8 to the Complaint); a reminder as well as a second cease and desist letter was sent by a local representative of the Complainant to the Respondent on June 26, and October 29, 2003 (Annexes 9 and 10 to the Complaint).

The Respondent could not be unaware of the Complainant’s existence and renown when he registered the domain name <lampebergerchina.net> as such a renown is based upon of the continuous and extensive use in international commerce of LAMPE BERGER trademarks in connection with perfume diffusers and related products in China and throughout Asia for more than a century (Annex 11 to the Complaint).

Absent any right or legitimate interest, and lacking any evidence to the contrary submitted by the Respondent, the Respondent’s registration of a domain name confusingly similar to the Complainant’s well-known trademark suggests opportunistic bad faith (see Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395).

To use a domain name confusingly similar to the Complainant’s trademark is not a bona fide offering of goods within the meaning of Paragraph 4(c)(i) of the Policy (see Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO Case No. D2000-1774) as the Respondent seems to offer for sale the Complainant’s products (Annex 13 to the Complaint).

Moreover, the Respondent causes the domain name in issue to resolve to a website at which the Complainant’s copyrighted pictures, text and also trademark are featured, and which falsely represents that this copyrighted material is being used with the Complainant’s permission, whereas Complainant has in fact objected to its use and demanded that Respondent remove the material from its website (Annex 8 to 10 and 13 to the Complaint).

As the Complainant’s evidence shows (Annex 13 to the Complaint), the Respondent has been using its confusingly similar domain name to attract Internet users to a website that offers goods or services related to those which Complainant provides. The Respondent further adds to that confusion by including Complainant’s copyrighted materials on the website without authorization, and by further falsely stating that the materials are used “by permission”, both of which have the effect of falsely suggesting that Respondent’s goods or services are endorsed by Complainant.

As a result, the Respondent is using Complainant’s trademarks in its domain name in order to attract web traffic to its site, for commercial gain, by creating a likelihood of confusion as to Complainant’s sponsorship, affiliation, or endorsement of Respondent’s offerings, in violation of Paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

The Complainant must prove in the administrative proceeding that each of the aforesaid three elements is present so as to warrant relief, according to Paragraph 4(a) of the Policy.

The Administrative Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to Paragraph 15(a) of said Rules.

In accordance with Paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established its rights in the trademarks “LAMPE BERGER” with numerous registrations worldwide, including in China, for such a name (see Annex 4 to the Complaint).

The Panel follows the Complainant’s submission - as confirmed by several precedents referred to above - that the domain name <lampebergerchina.net> is confusingly similar to the Complainant’s trademarks. In effect, the addition of a geographic descriptor to a domain name does not change the confusing nature of the similarity (see also Produits Berger v. Standard Project Limited, WIPO Case No. D2002-0518).

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the domain name in dispute. Those circumstances are described as follows:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the domain name in dispute. This entitles the Administrative Panel to draw any such inferences from such default as it considers appropriate pursuant to Paragraph 14(b) of the Rules (see e.g. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, p. 6 or Isabelle Adjani .v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867, p. 6).

As already said, the Complainant has established that its trademarks for “LAMPE BERGER” have been known throughout the world, especially in Asia, for a significant period of time (see Annex 4 to the Complaint).

As underlined in its Complaint and absent evidence to the contrary, the Complainant has not granted any license or otherwise permitted the Respondent to use such trademarks or to apply for any domain name incorporating the said trademarks; in addition, the Respondent is not known under the corresponding domain name <lampebergerchina.net>.

Under these circumstances, the Administrative Panel is unable to find any evidence that would tend to establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following behaviors is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) 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.

As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the domain name in issue.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The Complainant, after having described the Respondent’s behavior, submits that the latter falls within the category set out in Paragraph 4(b)(iv) of the Policy.

Indeed, the Respondent, which, prima facie, does offer for sale the Complainant’s products (see Annex 13 to the Complaint), should have been well aware of the Complainant’s renown and trademark registrations, at the time it registered the disputed domain name.

Moreover, the evidence submitted by the Complainant (Annexes 8 to 10 and 13 to the Complaint) shows that the Respondent, by using the domain name <lampebergerchina.net> does business with the Complainant’s products without permission or authorization of the Complainant, creating thereby, without any doubt, a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the related website or of the products on the said website.

The Administrative Panel considers therefore such a behavior as clearly being bad faith registration and use of the domain name <lampebergerchina.net>, within the meaning of Paragraph 4(b)(iv) of the Policy.

As a result, the Administrative Panel shall order the transfer of <lampebergerchina.net> to the Complainant.

7. Decision

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 <lampebergerchina.net> be transferred to the Complainant.

Christophe Imhoos
Presiding Panelist

Alain Bensoussan
Panelist

Yong Li
Panelist

Dated: October 26, 2004