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Société BIC v. Domain Deluxe [2005] GENDND 1132 (2 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société BIC v. Domain Deluxe

Case No. D2005-0369

1. The Parties

The Complainant is Société BIC, Clichy Cedex, France, represented by Marie-Aimée Bich-Dufour, France.

The Respondent is Domain Deluxe, Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <bicsports.com> is registered with The Registry at Info Avenue d/b/a IA Registry.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2005. On April 11, 2005, the Center transmitted by email to The Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain name at issue. On April 11, 2005, The Registry at Info Avenue d/b/a IA Registry 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 April 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2005.

The Center appointed Alfred Meijboom as the Sole Panelist in this matter on May 19, 2005. 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, paragraph 7.

4. Factual Background

The Complainant asserted and provided evidence in support of the following facts.

The Complainant and its parent and related companies are holders of and have used trademarks which incorporate BIC since the 1950’s in connection with several consumer goods such as stationary, lighters and razors. Due to intensive advertisement and promotion, and the fact that billions of products bearing the trademarks have been sold worldwide, the BIC trademarks have become famous trademarks. Bic Sport is a subsidiary of Complainant which registered the French trademark BIC SPORT in 1990, and has been using this trademark in connection with water sports products since 1979.

The Complainant and its subsidiaries are holder of many trademarks which are registered in many countries for different goods and services (the “BIC Marks”), including:

- The Hong Kong word mark BIC of July 16, 1958 (No. 1006/1958);

- The Hong Kong device mark BIC of February 14, 1969 (No. 246/1969);

- The Hong Kong device mark BIC of July 24 1971 (No. A 1191/1971);

- The US word mark BIC of May 22, 1952 (No.573249);

- The Community word mark BIC of December 23, 1996 (No. 414904); and

- The French word mark BIC SPORT of February 8, 1990 (No. Fr 1602223).

The domain name <bicsports.com> (the “Domain Name”) was first registered on January 21, 2002.

The website under the Domain Name appeared to be a website that offers a variety of products.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the Domain Name is confusingly similar to the trademarks BIC and BIC SPORT in which Complainant and its subsidiary Bic Sport S.A. have rights. Further, the Complainant contends that the Domain Name includes the famous trademark BIC in addition to the common non-distinctive word “sports”, which is used to indicate the purpose of goods offered (sports articles and sport activities) on the website under the Domain Name.

According to the Complainant, the addition of the word “sports” to BIC in the Domain Name does not establish a likelihood of confusion, as the element “bic” in the Domain Name is sufficiently distinctive to be considered as the dominating, essential and the most relevant part of the Domain Name. For this reason, the Domain Name is confusingly similar to the BIC trademarks of Complainant. Moreover, the Domain Name is also nearly identical to Complainant’s trademark BIC SPORT, the difference being only the use of the plural form in the Domain Name. This results in a high risk of confusion, as Internet users may think that such domain name directly refers to the Complainants products.

Rights and Legitimate Interests

The Complainant further contends that the Respondent should be considered to have no legitimate interests in respect to the Domain Name in accordance with paragraph 3(b)(ix)(2) of the Rules. Complainant has a worldwide reputation with the BIC trademark in stationary since 1950, and the water sport field since 1979, whereas Respondent has never been commonly known by the Domain Name.

Respondent is further not an authorized distributor of Complainant, nor commonly known under the Domain Name. In this respect, Complainant contends that the use of the Domain Name by Respondent is made with the intent to take commercial advantage of Complainant’s trademarks and divert consumers, as, for example, the website under the Domain Name contains a link to “BIC pens”, which actually links to websites that offer third party products rather than products offered by Complainant. The website under the Domain Name also offers water sport equipment which competes with the BICSPORTS water sport equipment.

Registration and Use in Bad Faith

As BIC is a famous trademark worldwide at the moment of registration of the Domain Name, Respondent must have been aware of the existence of the BIC trademarks when it registered the Domain Name in 2002. Further more, the website under the Domain Name contains links to third parties’ websites which offer products which directly compete with the BIC and BIGSPORTS mark products. This practice of diversion as well as the pop up advertisements are all motivated by commercial gain which further constitutes evidence of bad faith registration use. Moreover, Respondent’s website under the Domain Name copies the identical architecture of Complainant’s homepage, together with employment opportunities under the header “sportjob”, just as Complainant’s subsidiary company Bic Sport S.A. offers.

Complainant refers to Panel to a pattern of conduct of registering Domain Names which infringe third parties trademarks by referring to Z-tel Technologies, Inc. v. Domain Deluxe, WIPO Case No. D2001-1427, and Group Lactalis and BSA v. Domain Deluxe, WIPO Case No. D2003-0314.

B. Respondent

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

6. Discussion and Findings

Because the Respondent did not submit any reply, the Panel shall proceed to a decision on the Complaint pursuant to paragraph 14(a) of the Rules.

According to paragraph 4(a) of the Policy, the requested remedy can be granted if the Complainant asserts and proves each of the following:

A. that the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

B. the Respondent has no rights or legitimate interests in respect of the Domain Name; and

C. the Domain Name has been registered and was being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has a number of trademark registrations for BIC worldwide, registered for goods and services related to, inter alia, paper, printed materials, stationary, pens, razors and razor blades, heating equipment, and tobacco. A number of these BIC trademarks are registered in Hong Kong, SAR of China. The panel finds that the Complainant has rights in the BIC trademarks.

Further, the Complainants claims that its subsidiary Bic Sport S.A. is owner of the French trademark FR1602223 BIC SPORT. Although the Complainant did not submit explicit evidence of its assertion that Bic Sport S.A. is a subsidiary of Complainant, the Panel considers it likely that such is the case. Because paragraph 4 of the Policy requires the Complaint to be based on “a trademark or service mark in which the Complainant has rights”, and Complainant is not the registered owner of or beneficiary to the trademark BIC SPORT, the Panel disagrees with the Complainant that the Complaint may also be based on the trademark BIC SPORT.

In the Panel’s opinion, the element BIC in the Domain Name is the characteristic and dominant element.

As a conclusion, the Domain Name is regarded to be confusingly similar to the BIC trademarks.

B. Rights or Legitimate Interests

The Panel is satisfied that the Complainant has shown that Respondent did not operate a business and/or was commonly known under the name Bicsports, Bic and/or any other name similar to the Domain Name.

There is no evidence of circumstances as described in paragraph 4(c) of the Policy, or any other circumstances which could indicate that the Respondent has any right or legitimate interest in the Domain Name.

Respondent has not rebutted Complainant’s prima facie showing of lack of rights or legitimate interests, consequently, the Panel finds that the Respondent has no rights of legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The BIC trademarks have been used worldwide since the 1950’s and have also been used and registered by Complainant in Hong Kong, SAR of China and they are considered famous. The Panel agrees with the finding of other panelists, including the panel in Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226, where it was stated that “[i]n the absence of contrary evidence, the Panel finds that Respondents knew of or should have known of the Complainant’s trademark and services at the time Respondents registered the Domain Names given the widespread use and fame of the Complainant’s CHRISTIAN DIOR mark” (See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137).

Further, the Panel is satisfied with the evidence submitted by Complainant that the Domain Name has been used to take advantage of the reputation of the BIC trademarks, as demonstrated by the fact that Respondent’s website under the Domain Name contains many advertisements, including advertisement in pop-up screens, as well as the fact that Respondent’s website under the Domain Name offers goods which compete with the goods for which Complainant registered and uses the BIC trademarks.

Further, the Panel found a clear pattern of conduct of Respondent preventing trademark owners to include their mark in a corresponding Domain Name, as the Panel found five cases decided under the Policy, including the two cases identified by the Complainant above, which also involved Respondent’s registration of domain names which included trademarks of complainants. In none of these five procedures, Respondent filed a reply, and in all those cases it was found that Respondent registered and used the domain names concerned in bad faith. This constitutes a pattern of conduct as described in paragraph 4(b)(ii) of the Policy. The fact that, in addition to these five cases, Respondent successfully defended itself against a complaint in Advanced Relational Technology, Inc. v. Domain Deluxe, WIPO Case No. D2003-0567, does not make this finding different.

Therefore the Panel finds that the Domain Name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <bicsports.com> be transferred to the Complainant.

Alfred Meijboom
Sole Panelist

Dated: June 2, 2005