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Produits Berger v. Matthew ShewchukCase No. D2004-1083 [2005] GENDND 403 (9 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Produits Berger v. Matthew Shewchuk

Case No. D2004-1083

1. The Parties

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

The Respondent is Matthew Shewchuk, Hinchinbrooke, Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <lampebergerdiscount.com> is registered with pair Networks, Inc. d/b/a pairNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2004.

On December 22, 2004, the Center transmitted by email to pair Networks, Inc. d/b/a pairNIC a request for registrar verification in connection with the domain name at issue. The Center repeated said request on January 11, 2005, January 17, 2005, January 18, 2005, and January 20, 2005, as no response had been received.

On February 1, 2005, pair Networks, Inc. d/b/a pairNIC transmitted by email to the Center its verification response confirming that pairNIC had received a copy of the Complaint, that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact together with confirmation that the UDRP applied to the registration, that the domain name registration would remain locked during these proceedings and that the language of the registration agreement is English.

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 February 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2005.

The Center appointed James Bridgeman, Alain Bensoussan and Haig Oghigian as panelists in this matter on April 21, 2005. 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.

On May 4, 2005, on the request of the Panel, the Center granted the Panel an extension of time to May 10, 2005, within which to deliver the decision.

4. Factual Background

The Complainant is the owner of the LAMPE BERGER trademark and has registered this trademark both as a simple word mark and in combination with other words and devices in a number of countries throughout the world specifically:

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, 1999 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 LAMPE 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 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 Korea and duly registered under n°359 480 in local class 12.

Trademark registration LAMPES BERGER + device n° 21 201/94 filed on May 30, 1994, in Korea and duly registered under n° 321 850 in local class 25.

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°A5260/94 in class 21.

Trademark registration n°5259/94 LAMPES BERGER + device filed in Singapore on June 24, 1994, and duly registered under n°A5259/94 in class 5.

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

Trademark registration LAMPE BERGER + device n°82055778 filed in Taiwan 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.

Trademark registration LAMPE BERGER + device n° 724326 filed in China on November 30, 1999, and duly registered under n° 724 326 in classes 1, 3, 5, 11, 21.

Trademark registration LAMPE BERGER +device n° 47752/99 filed in Korea on December 14, 1999, and duly registered under n° 482 712 in classes 3, 5, 21.

Trademark application LAMPE BERGER + device n° 17487/1999 filed in Hong Kong on November 30, 1999, in class 1.

Trademark application LAMPE BERGER + device n° 17488/1999 filed in Hong Kong on November 30, 1999, in class 3.

Trademark application LAMPE BERGER + device n° 17489/1999 filed in Hong Kong on November 30, 1999, in class 5.

Trademark application LAMPE BERGER + device n° 17491/1999 filed in Hong Kong on November 30, 1999, in class 21.

Trademark application LAMPE BERGER + device n° 17490/1999 filed in Hong Kong on November 30, 1999, in class 11.

Trademark application LAMPE BERGER + device n° D99/22357 filed in Indonesia on December 13, 1999, in class 5.

Trademark application LAMPE BERGER + device n° D99/22358 filed in Indonesia on December 13, 1999, in class 21.

Trademark application LAMPE BERGER + device n° D99/22356 filed in Indonesia on December 13, 1999, in class 3.

Trademark application LAMPE BERGER + device n° 115222/99 filed in Japan on December 15, 1999, in classes 3, 5, 21.

Trademark application LAMPE BERGER + device n° 99/12801 filed in Malaysia on December 15, 1999, in class 5.

Trademark application LAMPE BERGER + device n° 99/12802 filed in Malaysia on December 15, 1999, in class 21.

Trademark application LAMPE BERGER + device n° 99/12796 filed in Malaysia on December 15, 1999, in class 3.

Trademark application LAMPE BERGER + device n° 4/99/09680 filed in the Philippines on December 15, 1999, in classes 3, 5, 21.

Trademark application LAMPE BERGER + device n° T99/14654F filed in Singapour on December 15, 1999, in class 21.

Trademark application LAMPE BERGER + device n° T99/14653H filed in Singapore on December 15, 1999, in class 5.

Trademark application LAMPE BERGER + device n° T99/1462Z filed in Singapore on December 15, 1999, in class 3.

Trademark application LAMPE BERGER + device n° 88062601 filed in Taiwan on December 14, 1999, in class 5.

Trademark application LAMPE BERGER + device n° 88062602 filed in Taiwan on December 14, 1999, in class 21.

Trademark application LAMPE BERGER + device n° 88062600 filed in Taiwan on December 14, 1999, in class 3.

Trademark application LAMPE BERGER + device n° 406421 filed in Thailand on December 15, 1999, in class 21.

Trademark application LAMPE BERGER + device n° 406419 filed in Thailand on December 15, 1999 in class 3.

Trademark application LAMPE BERGER + device n° 406420 filed in Thailand on December 15, 1999, in class 5.

Korean 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 classes 1, 3, 5, 11 and 21.

Trademark registration LAMPES BERGER n° 1 898 481 filed on June 13, 1995, in classes 3,5 and 21 in the United States.

Trademark application LAMPE BERGER n° 75/871112 filed on December 15, 1999, in classes 3, 5 and 21 in the United States.

The Complainant is also the owner of the following domain names :

<lampebergerasia.net.cn>; <lampebergerasia.com.cn>; <lampebergerasia.cn>; <lampe-berger.com.sg>; <lampeberger.com.sg>; <lampeberger.biz>; <lampebergeraustralia.com>; <lampeberger.fr>; <lampeberger.tm.fr>; <parfumsberger.fr>; parfums-berger.fr>; <lampebergermalaysia.com>; <berger.biz>; <lampesbergerasia.com>; <lampeberger-jp.com>; <lampeberger-china.com>; <lampe-berger-asia.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>; <lampebergerasia.com>; <lampeberger-china.com>.

In previous administrative proceedings under the UDRP the following domain names have also been transferred to the Complainant: <lampe-berger.com>; <lampebergerhk.com>; <ampabergerchina.com>; <lampeberger.info>; <elampeberger.com>; <lampeberger-kr.com>; <lampeberger.bz>; <lampebergerchina.net>.

There is no information available relating to the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the domain name be transferred from Respondent to Complainant.

The Complainant submits that the registration in issue in these proceedings consist of the Complainant’s LAMPE BERGER trademark with the adjunction of the words “discount “ and the gTLD “.com”.

The Complainant submits that its LAMPE BERGER trademarks are highly distinctive and completely fanciful. The dominant and distinctive elements of the domain name in dispute are the words “Lampe” and “Berger”. The contested domain name is confusingly similar to said trademarks of the Complainant as it reproduces these dominant distinctive elements. Moreover, the element “discount” is placed after the dominant element “lampeberger” and consequently has a lesser impact on the overall impression left by the domain name.

A wide variety of panelists have considered that the addition of generic words to trademarks is not sufficient to escape the finding of similarity and does not change the overall impression of a trademark as being connected to a complainant (see Telstra Corporation Ltd v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Pepsico Inc v. Pepsi SRL and EMS Computer Industry, WIPO Case No. D2003-0696; Pepsico Inc v. Diabetes Home Care and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha v. Kil Inja, WIPO Case No. D2000-1409; America Online Inc v. Chris Hoffman, WIPO Case No. D2001-1184).

Specifically concerning the addition of the word “discount”, in a recent case the panelist considered that the addition of such word does not provide a distinctive character to a domain name <discount-malboro-cigarettes.com>. On the contrary, such a domain name clearly implies the existence of a relation between it and the Complainant’s trademarks (see Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946). The same conclusion was reached by the panelist in Glaxo Group Limited, SmithKlineBeecham Corporation v. Michale Kelly, WIPO Case No. D2004-0262, concerning the domain name <discount-imitrex-pharmacy.com>).

Therefore, after analyzing these different UDRP cases, there is no doubt that the reproduction of the trademark LAMPE BERGER, as the sole distinctive element of the domain name concerned, generates confusion. Indeed, persons accessing the domain name would be bound to think that the domain name has a connection with the Complainant.

Furthermore, the addition of the gTLD “.com” which is required for registration of the domain names, has no distinguishing capacity in the context of domain name and does not alter the distinctiveness of the trademark represented in the domain name (Telecom Personal v. namezero.com, WIPO Case No. D2001-0015; Nokia Corporation v. Private, WIPO Case No. D2000-1271).

Consequently, because of this identity, there is a high risk of confusion, as a consumer may think that the domain name directly refers to the Complainant’s products.

The Complainant submits that the Respondent has no rights or legitimate interests in this domain name as it does not correspond to its corporate name and that 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 trademark, nor has it licensed to apply for the registration of the domain name at issue.

The Complainant has prior rights in the trademark LAMPE BERGER, which precedes Respondent’s registration of the domain name in dispute.

Moreover, the Complainant is present in over 100 countries including USA and is well known throughout the world.

The disputed domain name does not appear to have been used by the Respondent at all since it leads to the Registrar’s website with the following message: “www.lampebergerdiscount.com coming soon!” As an annex to the Complaint, the Complainant has submitted a copy of the web page showing that the disputed domain name does not resolve to any active website.

There is no license, consent or other right by which the Respondent is entitled to register or use the domain name incorporating the Complainant’s trademark LAMPE BERGER.

The Respondent is not commonly known by the domain name.

The Complainant submits that there is no doubt that the Respondent is aware that the domain name in dispute corresponds to the trademark “lampe berger” and the Respondent registered the domain name with the intention to divert consumers and to prevent the Complainant from reflecting the mark in a corresponding domain name.

The Respondent has made no bona fide use of the domain name in dispute because of his lack of authorization to use the trademark LAMPE BERGER. Furthermore, using a domain name in order to divert consumers for commercial gain cannot be characterized as a fair use. In this regard the Complainant refers the Panel to the decision in Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066.

The Complainant submits that the domain name in dispute was registered and is being used in bad faith.

The Complainant submits that the mere holding of a domain name that is identical or confusingly similar to a trademark belonging to a third party in itself can disrupt the business of the trademark owner.

On June 26, 2003, the Complainant’s representatives wrote to the Respondent outlining their position, demanding the disputed domain name be transferred to the Complainant within fifteen days, and insisting that the Respondent immediately discontinue use of the dispute domain name. A copy of the letter of demand is attached to the Complaint. Further to this letter, the Respondent indicated to the Complainant that his lawyers were preparing a response. Despite a new cease and desist letter sent on October 14, 2003, and the Complainant’s reminder on December 15, 2003, the Respondent never replied to this registered letter. The Complainant draws from this failure the following two inferences : that the Respondent does not deny the facts which the Complainant asserts, and that the Respondent does not deny the conclusions which the Complainant asserts can be drawn from these facts.

The Complainant submits that the Respondent must have been aware of the Complainant’s goodwill and reputation when the domain name in issue was registered on April 9, 2003. The Respondent could not be unaware of the Complainant’s existence and renown when he registered the domain name <lampebergerdiscount.com>. The Complainant’s products are marketed in Canada through its affiliate Lampeberger Canada and the Complainant maintains a dedicated website accessible at the www.lampeberger.ca address connected to its French website “lampeberger.fr”.

In line with other prior UDRP decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia, 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) the Complainant believes that, in the absence of any right or legitimate interest, and lacking any contrary evidence by the Respondent, the Respondent’s registration of a domain name confusingly similar to the Complainant’s well-known trademark suggests opportunistic bad faith.

Furthermore, the Complainant submits that the Respondent’s bad faith is evidenced by the fact that he registered <lampebergerdiscount.com> on April 9, 2003, long after Complainant first adopted and used the mark LAMPE BERGER and long after the marks LAMPE BERGER were registered in Canada notably. [The Panel comments here that there is no evidence of any Canadian registration in the Complaint]

In the present case, the Complainant’s trademark has a strong reputation and is widely known whilst the Respondent has provided no evidence whatsoever of any actual use or good faith use of the domain name in dispute.

Even if the website is not activated, the Respondent may have requested the cancellation of the domain name from pairNIC, the relevant fact of its bad faith is that the domain name is to this day still registered in the name of the Respondent.

In effect, the evidence of registration and use in bad faith is further demonstrated, in accordance with the Policy (paragraph 4(a)), even if the domain name is not in use. It has been noted that the domain name contains only Complainant’s registered trademark. It would be difficult, perhaps impossible, for the Respondent to use the domain name as the name of any business, product or service for which it would be commercially useful without violating Complainant’s rights.

The Respondent has used the domain name <lampebergerdiscount.com> in bad faith and prevented the Complainant from registering <lampebergerdiscount.com> for the legitimate use in connection with its trademark products.

B. Respondent

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

6. Discussion and Findings

Having considered the submissions and evidence this Panel is of the view that the Complainant has satisfied the three elements of the test in paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

With regard to the first element of the test in paragraph 4(a)(i) of the Policy, this Panel is satisfied that the Complainant has established that it has rights in the LAMPE BERGER registered trademark.

The Panel notes that the Complainant refers to a Canadian registration in its submissions but has not furnished any evidence of this. Nonetheless the fact that the Complainant has such a significant portfolio of registrations around the world and has an established trade in the Canadian market is accepted by this Panel.

This Panel is also satisfied that the domain name in issue is confusingly similar to that mark. The domain name consists of the Complainant’s distinctive trademark together with the word “discount”. In the view of this Panel, the addition of the word “discount” does not attribute a distinctive character to the domain name.

B. Rights or Legitimate Interests

Moving on to the second element of the test in paragraph 4(a)(ii) of the Policy, while the Respondent did not file a Response, there has been an exchange of e-mails between the Center and the Respondent subsequent to the initiation of the dispute and at a time when the Respondent had been served with the Complaint. In this exchange of e-mails the Respondent makes no claim whatsoever to rights or legitimate interests in the domain name.

In the view of this Panel the Complainant has established on the balance of probabilities that the domain name in issue can only refer to the Complainant’s LAMPE BERGER trademark and that the Respondent has no rights or legitimate interests in the domain name in issue.

The Complainant has therefore satisfied the second element of the test also.

C. Registered and Used in Bad Faith

With regard to the issue of bad faith in the context of the third element of the test in paragraph 4(a)(iii) of the Policy, this Panel accepts the Complainant’s submissions that the Respondent must have known of the reputation of the Complainant when he registered the domain name. While the LAMPE BERGER trademark is not registered in Canada, where the Respondent is located, the trademark is nonetheless widely protected by trademark registrations in many jurisdictions around the world.

Given the extensive reputation of the Complainant’s trademark, it is highly improbable that anyone would choose to use the words “LAMPE” and “BERGER” in combination and in that order for any purpose except to refer to the Complainant.

In the view of this Panel, when registering said domain name, the Respondent clearly intended the domain name to refer to the Complainant and its business.

Furthermore the addition of the word “discount” indicates that the Respondent intended that the domain name should be used as the address of an Internet site with a commercial character.

The domain name in dispute does not resolve to any active website. On March 18, 2005, in the abovementioned exchange of correspondence between the Respondent and the Center, the Respondent offered to transfer the domain name to the Complainant for CAD$ 10,000. He has stated that he has had outlays relating to the registration of the domain name and preparatory work on a web site. The Respondent has chosen not to file a Response and so has not provided any evidence of any such preparatory work.

In the circumstances this Panel can only conclude that the request for CAD$ 10,000 indicates that he registered the domain name “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name” and therefore this is sufficient evidence to satisfy the requirement in paragraph 4(b)(i) of the Policy.

As the Respondent has not established any website at the address, in the particular circumstances outlined, on the balance of probabilities he is engaged in passive domain name holding for these purposes.

In the circumstances outlined, this Panel is unanimously of the view that the Complainant has established that the Respondent has registered and is using the domain name in bad faith.

As the Complainant has satisfied the three elements of the test in paragraph 4 of the Policy it is entitled to succeed in its application herein.

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, <lampebergerdiscount.com> be transferred to the Complainant.

James Bridgeman Presiding Panelist
Alain Bensoussan Panelist	Haig Oghigian Panelist

Dated: May 9, 2005