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Baccarat SA v. MSL International, Inc. [2005] GENDND 260 (7 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Baccarat SA v. MSL International, Inc.

Case No. D2005-0048

1. The Parties

The Complainant is Baccarat SA, Baccarat, France, represented by MEYER & Partenaires, France.

The Respondent is MSL International, Inc., Upper Marlboro, Maryland, United States of America.

2. The Domain Name and Registrar

The disputed domain name <crystal-baccarat.com> is registered with Omnis Network.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2005. On January 14, 2005, the Center transmitted by email to Omnis Network a request for registrar verification in connection with the domain name at issue. On January 24, 2005, Omnis Network 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 31, 2005. 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”).

3.2 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 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2005.

3.3 The Center appointed Mary Vitoria, QC as the sole panelist in this matter on March 1, 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.

3.4 The language of the proceedings is English.

4. Factual Background

4.1 The Complainant is a limited company registered under the laws of France under No. 760 800 060. It was formerly known as “Compagnie Des Cristalleries De Baccarat” and it is and has been a manufacturer of crystal ware since 1764. The name “Baccarat” is that of the French city where the Complainant has had its factories since 1764. It has been a supplier of crystal ware to the great majority of foreign courts and heads of state for over 200 years. Its products have won many awards worldwide. Over 60,000 people per annum have visited its two crystal museums in Baccarat and in Paris and since 1948 many have visited the special historical exhibits at Complainant’s New York headquarters.

4.2 The Complainant operates a website at “www.baccarat.fr” displaying historical information about itself, its collections and its showrooms worldwide. It has registered several top-level domain names, including <baccarat-crystal.com> and <cristaldebaccarat.com>. The domain name <crystalbaccarat.com> was transferred to it pursuant to Baccarat SA v. Serious/Net, WIPO Case D2003-0428. All these domain names link to the Complainant’s website.

4.3 The Complainant holds more than 700 trademarks across the world, including US trade marks registration No. 1130893 in Class 21 for BACCARAT registered as of August 18, 1978, and No. 1265222 BACCARAT CRYSTAL plus device for crystal decanters and flasks registered as of September 24, 1980.

4.4 The Complainant has used its trademarks throughout the world and there have been a number of decisions in different jurisdictions such as Venezuela, Greece, Brazil, Argentina and France upholding the Complainant’s rights in its trademark BACCARAT.

4.5 The Respondent is a company based in Upper Marlboro, Maryland, United States. It is the registrant, administrative and technical contact for the disputed domain name <crystal-baccarat.com>. Since its registration, the disputed domain name does not appear to have been used but links to a parking webpage, provided by the registrar Omnis. The Respondent is also the registrant of the domain name <powerroulette.com> and operates a website dedicated to casino players. This website links to another website which is dedicated to the card game of baccarat at “www.ultrabaccarat.com”. The Respondent is also the registrant of the domain name <ultrabaccarat.com>. It appears that the Respondent’s field of activity is gambling and casino gaming.

5. Parties’ Contentions

A. Complainant

Confusing Similarity

5.1 The disputed domain name is confusingly similar to the Complainant’s trademarks BACCARAT and BACCARAT CRISTAL.

5.2 The trademark BACCARAT is entirely reproduced in the disputed domain name and the domain name <crystal-baccarat.com> combines the Complainant’s famous trademark with the prefix “Crystal”, being the mere English translation of the French word “Cristal” which is easily recognizable and understandable as such by the public.

5.3 The combination of the word “Crystal” does not eliminate the risk of confusion with the Complainant’s well-known trademark BACCARAT but, on the contrary, suggests that the domain name <crystal-baccarat.com> refers to Baccarat SA. The following case law supports the proposition that the mere addition of a generic or descriptive term to an otherwise distinctive or well-known trademark does not serve to distinguish the domain name from the Complainant’s trademark:

Nintendo of America, Inc v. Gray West International, WIPO Case No. D2000-1219 (<pokemon-games.com>);

GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424 (<armaniboutique.com>);

Estee Lauder Cosmetics Ltd; Make-Up Arts Cosmetics Inc. v. Telmex Management Services, WIPO Case No. D2001-1428 (<macosmetics.com>);

Educational Testing Service v. Seung Suk Ha, WIPO Case No. D2001-1063 (<toefltests.com>, <toefltests.net>, <toefltests.org>);

Six Continent Hotels, Inc v Hotel Partners of Richmond, WIPO Case No. D2003-0222 (<holidayinnhotelreservations.com>).

5.4 The disputed domain name is very close to the US trademark BACCARAT CRISTAL held and used by the Complainant since its registration. Both are constituted of a combination of the trademark BACCARAT with the word “Cristal” (in the trade mark) and “Crystal” (in the domain name) and the only difference between the Complainant’s BACCARAT CRISTAL trademark and the disputed domain name is the order in which the words appear. Baccarat SA v. Serious/Net, WIPO Case No. D2003-0428 (<crystalbaccarat.com>) supports the proposition that such a juxtaposition is confusingly similar. The disputed domain name in issue in that case, i.e. <crystabaccarat.com> was transferred to the Complainant pursuant to that decision.

5.5 The risk of confusion is demonstrated by a search on the web for “CRYSTAL BACCARAT” using the Google search engine. The search results (Annex O to the Complaint) show commercial and editorial links, the great majority of which concern the Complainant’s products, described or offered for sale on the Internet. It is clear that the combination of the words “Baccarat” and “Crystal” mainly relates to the Complainant’s business and wares.

Rights and Legitimate Interests

5.6 The Respondent is not connected in any way to the Complainant’s business and it is not one of its agents nor does it carry out any activity for, or have any business with the Complainant. The Respondent is not currently and has never been known under the word “Baccarat” or under the combination of this trademark with the word “Crystal”. No licence or authorization has been granted to the Respondent to make any use of or to apply for registration of the domain name <crystal-baccarat.com>. In similar circumstances, a Panel decided that a Respondent had neither rights nor legitimate interests in issuing domain names: Guerlain SA v. Peikang, WIPO Case No D2000-0055.

5.7 A trade mark search was carried out in the USPTO database (TESS) for the word “Baccarat”. The results of the search form Annex P to the Complaint. This showed 24 live trademarks including the great majority of the Complainant’s trademarks including its BACCARAT CRISTAL trademark but, most importantly, none of the 24 trademarks were registered in the name of the Respondent. The Complainant’s investigations over the Internet did not reveal any other type of right owned by the Respondent related to CRYSTAL BACCARAT.

5.8 The Respondent registered the domain name <crystal-baccarat.com> to take advantage of the Complainant’s well-known trademark to confuse and divert Internet users to other websites. The Respondent has not engaged in any action that shows it has rights or legitimate interests in the disputed domain name.

5.9 The Respondent is not making any fair nor non-commercial use of the disputed domain name. Since its registration, the disputed domain name has pointed to a parking web page, provided by the registrar Omnis Network. The Respondent does not appear to use the disputed domain name in any distinctive or legitimate way. There is no demonstrable use or preparation for use of the domain name in connection with a bona fide offering or goods or services.

5.10 In Baccarat SA v. Serious/Net, WIPO Case D2003-0428 (<crystalbaccarat.com>), the Panel held, in similar circumstances, that “the alleged statistics about the number of web sites featuring the word “Baccarat” do not help the Respondent. It is the combination of the words Crystal/Cristal and Baccarat which is crucial. (…) The second criterion is therefore proved.”

Bad faith

5.11 It is difficult to imagine that the Respondent was ignorant of the well-known trademark BACCARAT at the time it applied for registration of the confusingly similar domain name <crystal-baccarat.com>. The trademark BACCARAT has a strong reputation and has been widely known throughout the world for a long time. In similar cases Panels have already decided that the notoriety of a Complainant’s trade mark “creates a prima facie presumption that the Respondent registered the domain name for the purpose of selling it to Complainant or one of its competitors, or that it was intended to be used in some way to attract for commercial gain users to the website by creating a likelihood of confusion with Complainant’s mark”: Arthur Guinness Son & Co (Dublin) Ltd. v. Steel Vertigogo, WIPO Case No. D2001-0020, (<guinessbeer.com>). The Respondent could not have been ignorant of Baccarat SA and its international reputation in the field of crystal wares at the time it registered the disputed domain name. It would also have been possible for the Respondent to have carried out a trade mark search prior to registering the disputed domain name: Baccarat SA v. Serious/Net, WIPO Case No D2003-0428 (<crystalbaccarat.com>).

5.12 The word “Baccarat” is also the name of a card game and is also used and understood on the Internet to some extent through this secondary meaning. Exclusive rights over the word “Baccarat” are not claimed in relation to all products or services and particularly in relation to online games. As proof of this, no complaint has been filed against the registration and use of the domain name <ultrabaccarat.com> also registered by the Respondent. The English version of the game is spelled “Baccara”. The word “Crystal”does not mean anything in the field of games and gambling: Baccarat SA v. Serious/Net, WIPO Case No D2003-0428 (<crystalbaccarat.com>).

5.13 Some other web sites in the field of gambling use the term “Crystal” in their domain names but they do not combine this word with the trade mark “Baccarat” but with generic terms in the field of gaming that could not give rise to any risk of confusion with the Complainant’s trademark. The registration of a domain name that combines the Complainant’s well-known trademark BACCARAT with the word “Crystal” which is a descriptive word directly related to the main business of the Complainant demonstrates bad faith registration. By registering the disputed domain name, the Respondent did not refer to the card game but undoubtedly to the Complainant’s trademarks.

5.14 The Respondent registered the domain name <crystal-baccarat.com> precisely because it knew the well-known character of the trademark BACCARAT and for the sole purpose of generating commercial gain by intentionally taking advantage of Internet traffic dedicated to the Complainant.

5.15 The Respondent is not making any fair nor non-commercial use of the disputed domain name. Since its registration, the disputed domain name has pointed to a parking web page, provided by the registrar Omnis Network. The Respondent does not appear to use the disputed domain name in any distinctive or legitimate way. There is no demonstrable use or preparation for use of the domain name in connection with a bona fide offering or goods or services. This non-use of the disputed domain name by the Respondent may be considered to be passive holding, see, for example: Telstra Corporation v. Nuclear Marshmallows, WIPO Case D2000-0003 and Air Austral v. WWW Enterprise Inc., WIPO Case D2004-0765..

5.16 It is very difficult to imagine any use of the disputed domain name that would not violate the Complainant’s rights, see, for example: Comerica Inc v. Horoshiy, Inc., WIPO Case D2004-0615 and Cellular One Group v Paul Brien, WIPO Case D2000-0028.

5.17 It is irrelevant that the Respondent has never sold any crystal wares through any of its websites since there is a risk of confusion between the Complainant’s trade mark and the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1 According to Paragraph 15(a) of the Rules, the Panel must decide a 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.

6.2 In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:

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

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

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

6.3 Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies on the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel may draw such inferences therefrom, as it considers appropriate.

6.4 Since the Respondent failed to respond to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds that:

A. Identical or Confusingly Similar

6.5 The domain name <crystal-baccarat.com> is confusingly similar to the trademark BACCARAT CRISTAL in which the Complainant has rights.

6.6 The combination of the two words “Crystal” and “Baccarat” causes the confusing similarity. To some people the word “Baccarat” alone will mean the Complainant and its crystal ware but to others it will mean a card game associated with organized gambling. For this reason, the use of the word “Baccarat” alone in relation to a web site related to gambling is not likely to cause confusion. The juxtaposition of the word “Crystal” with the word “Baccarat” however, clearly anchors the latter word to an association with crystal ware. The difference in spelling “Cristal” and “Crystal” does not operate as a distinguishing factor – the pronunciation is the same and phonetic variants are in common use in trade, for example, “kwik” for “quick” and transatlantic spellings may also differ, for example “tire”(US) and “tyre”(UK). The word “Cristal”/“Crystal” does not have any well-known association with card games or with gambling generally.

6.7 The Panel accepts the Complainant’s submissions as to confusing similarity. It finds that there is a high risk of confusion between the Respondent’s domain name and the Complainant’s trademark BACCARAT CRISTAL and that this risk of confusion includes the risk that the disputed domain name will be associated with the Complainant.

B. Rights or Legitimate Interests

6.8 The Complainant has not licensed or otherwise permitted the Respondent to use its trademark BACCARAT CRISTAL or to apply for any domain name including this trademark or any other name confusingly similar thereto. The Respondent has no business connection with the Complainant or its crystal ware. The Complainant points out that it has prior rights in the trademark BACCARAT CRISTAL which precede for many years the Respondent’s registration of the domain name. There is no evidence that the Respondent uses the domain name for its own legitimate commercial or non-commercial activities, if any, nor is there any evidence of any preparations for such use. The disputed domain name resolves to a website which is not yet in use. The business of the Respondent appears to be related to gambling and casino gaming and there is no connection, apparent or implied, with crystal ware. Searches for the two words “Crystal”and “Baccarat” on the Internet showed sites relating to the Complainant’s products. The Panel accepts the evidence that the Respondent has no rights or legitimate interests in the domain name <crystal-baccarat.com>.

C. Registered and Used in Bad Faith

6.9 The Complainant submits that bad faith is shown by the following:

(a) It is inconceivable that the Respondent registered the disputed domain name in ignorance of the Complainant’s well known trademark BACCARAT and its association with crystal ware.

(b) There is no known association between the word “Crystal” and games or gambling

(c) The Respondent registered the disputed domain name, being aware of the well-known character of the trade mark BACCARAT, for the sole purpose of generating commercial gain by intentionally taking advantage of internet traffic dedicated to the Complainant.

6.10 Having considered the evidence submitted with the Complaint, the Panel accepts that the trade mark BACCARAT is well known worldwide in relation to crystal ware. It also accepts that there is no natural association between the word “Crystal” and games and gambling. The Panel finds that the only possible reason for the Respondent to associate the word “Crystal” with the word BACCARAT was that it hoped to gain from that association. The Panel concludes that the Respondent registered the disputed domain name in bad faith.

6.11 Paragraph 4(a)(iii) of the Policy requires that the Respondent must both register and use the domain name in question in bad faith. See, e.g., World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001; Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case D2000-0003. The Complaint does not allege any facts which would constitute use of any kind. Indeed it is the Complainant’s case that there has been no demonstrable use or preparation for use of the disputed domain name in connection with a bona fide offering of goods or services. The question thus arises as to whether the Respondent, having registered the disputed domain name in bad faith, has also used it in bad faith.

6.12 Paragraph 4(b) of the Policy provides some guidance on this question. It provides:

“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a), 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 a domain name in 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 web site 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 web site or location or of a product or service on your web site or location.”

6.13 Sub-paragraphs (ii), (iii) and (iv) are not applicable. As far as sub-paragraph (i) is concerned, there is no direct evidence as to the Respondent’s purpose in registering the disputed domain name. However, it would be difficult, perhaps impossible, for Respondent to use the disputed domain name as the name of any business, product or service for which it would be commercially useful without violating Complainant’s rights. Internet users could, for example, easily be confused into thinking that the Respondent’s website, once operative, was in some way sponsored or endorsed by the Complainant. In this respect the Panel comes to a similar view to that of the Panel in Baccarat SA v. Serious/Net, WIPO Case No D2003-0428 (<crystalbaccarat.com>). Accordingly, in the absence of any claim by the Respondent that it intends otherwise, it is a permissible inference to conclude, and the Panel does conclude, that subparagraph (i) is applicable to the present case.

6.14 In addition, the subparagraphs of Paragraph 4(b) are not intended to be the exclusive criteria of bad faith use: see Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. Bad faith use can exist in situations, such as the instant one, where there is a passive holding of the disputed domain name: see Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case D2000-0003. Each case depends on its own facts. In the present case (i) the disputed domain name contains in its entirety, and denotes by reason of its combination with the word “Crystal”, the Complainant’s trademark BACCARAT, (ii) such trade mark has been in use for a substantial time prior to the registration of the disputed domain name and is a well known mark, and (iii) the Respondent has alleged no good faith basis for use by it of the disputed domain name. In the circumstances and in the absence of a transferral, the Complainant is deprived of the use of the disputed domain name and must always be concerned about the possibility of a confusing future site. This harm to the Complainant is not balanced by a showing of any legitimate use or potential use by Respondent.

In light of these circumstances, the Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of Paragraph 4(a)(iii) that the domain name is being used in bad faith by Respondent.

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 <crystal-baccarat.com> be transferred to the Complainant.

Mary Vitoria, QC
Sole Panelist

Dated: March 7, 2005