Domain name - Domain name dispute resolution policy - Trade mark - Identical - Confusingly similar - Bad faith registration - Passive holding - Pattern of Behavior - Bad faith use - Evidence.

Complainant was registrant of United States and New Zealand trade marks. Respondent registered the domain name, guerlain.net. Complainant alleged that its registered marks and the registered domain name were identical and that Respondent registered the domain name at issue in bad faith.

Held, Name Transferred to Complainant.

Complainant must establish both bad faith registration and bad faith use 

It is clear that the domain name GUERLAIN.NET is identical or confusingly similar to the trademarks registered and used by Complainant, GUERLAIN. It is also clear that Respondent has no rights or legitimate interest in respect of the domain name. This is bad faith registration.

Respondent has demonstrated a pattern of behaviour with respect to domain name registration that precludes others from making bona fide use of desirable domain names that may correspond to their trademarks.  Also, it was found that Respondent's passive holding in relation to the domain name registration amounts to bad faith use of said domain name.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Cases referred to

Stella D'Oro Biscuit Co., Inc. v. The Patron Group, Inc. WIPO Case No. D2000-0012
Telestra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-003
World Wrestling Federation Entertainment, Inc. v. Michael Bosman WIPO Case No. D99-0001

Panel Decision referred to
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Carabelli, Panelist: -

1. The Parties
The Complainant is Guerlain S.A., 68 Avenue Des Champs Elysées, 75008, Paris, France.

The Respondent is Peikang, 118 Prince Albert Road, Dunedin, New Zealand

2. The Domain Name and Registrar
The domain name at issue is guerlain.net (Domain Name), which Domain Name is registered with Network Solutions Inc., Herdnon, Virginia, U.S.A. (NSI or the Registrar).

3. Procedural History
A Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), to the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and to the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), was submitted electronically to the WIPO Arbitration and Mediation Center (the Center) on February 10, 2000. The signed original with attachments was received by the Center on February 14, 2000.

On the same date an acknowledgment of receipt was sent by the Center to the Complainant.

On February 14, 2000 the Center transmitted to NSI a request for Registrar Verification in connection with this case. On the same date NSI confirmed that: (i) NSI is the Registrar of the Domain Name guerlain.net; (ii) the Respondent Peikang is the current registrant of the Domain Name and (iii) the administrative and billing contacts are "oznic.com".

On February 16, 2000 the Center completed the Formal Requirements Compliance Checklist and then transmitted to the Respondent and to "oznic.com" a Notification of Complaint and Commencement of Administrative Proceedings (Commencement Notification) electronically, by courier and fax.

On the same date Commencement Notification was copied to Complainant and to ICANN and the Registrar.

On February 25, 2000 the Center received a communication from "oznic.com" stating that they merely are a broker for registering domain names and although the domain names have their contacts details no association exists between oznic.com and the domain name holder.

On March 3, 2000 Mr. Johnny Chen of Peikang transmitted to the Center the Respondent's response by courier.

On March 6, 2000 the Center acknowledged receipt of the response by sending relevant communication (Acknowledgment of Receipt (Response)) to the Respondent by courier. On the same date Acknowledgment of Receipt (Response) was copied to Complainant by e-mail.

The Respondent having agreed to have the dispute decided by a single-member Administrative Panel, on March 8, 2000 the Center notified the parties that Ms. Anna Carabelli had been appointed as the panelist in this proceeding, indicating that, absent exceptional circumstances, the Administrative Panel is required to send its decision to the Center by March 21, 2000.

On March 17, 2000 the Respondent sent an email to the Center containing additional response allegations. The Respondent also acknowledged receipt of the Center communication on March 6, and requested that for purpose of communicating with the Domain Name holder all communications be made to Johnny Chen by fax and email.

The Administrative Panel has independently determined and agreed with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.

A first response was submitted by the Respondent in time while the Respondent's email dated March 17, 2000 was sent after the deadline for response. 

4. Factual Background 
The Complainant has provided evidence of the US registration for six Guerlain trademarks owned by Complainant or by its wholly owned subsidiary Guerlain Inc. (Attachment F to the Complaint) i.e.:

Guerlain (Stylized) Reg. No. 192,772 December 9, 1924 Renewal date Dec. 9, 1984 
Guerlain (Stylized) Reg. No. 193,391 December 30, 1924 Renewal date Dec. 30, 1984 
Guerlain Reg. No. 1,733,835 November 17, 1992 
Petit Guerlain (Small) Reg. No. 2,100,589 September 30, 1997 
Guerlain Reg. No. 1,942,534 December 19, 1995 
Guerlain Twin Set Reg. pending - November 9, 1999 

The Complainant has also provided evidence of registration of six Guerlain trademarks in New Zealand owned by the Complainant (Attachment G to the Complaint), i.e.:

Guerlain Reg. No. 35632 Renewed to Feb. 16, 2007 
Guerlain Reg. No. 215261 Renewed to Dec. 20, 2012 
Guerlain Reg. No. 225994 March 30, 1993 
Guerlain Reg. No. 215259 Renewed to Dec. 20, 2012 
Guerlain Reg. No. 215262 Renewed to Dec. 20, 2012 
Guerlain Reg. No. 215260 Renewed to Dec. 20, 2012 

In addition, the Complainant has provided evidence of long use of Guerlain trade name and marks for cosmetic products worldwide (Attachments C, D, E and H to the Complaint).

The Complainant has further provided evidence of the fact that Respondent owns 24 domain names of which 14 consist of third parties' trademarks including lufthansa.net; federalexpress.net; cathay pacific.net;singaporeairlines.net and rado.net. (Attachment M to the Complaint)

The Complainant also alleges that sales of Guerlain products in New Zealand began in 1985, long before the Respondent obtained the guerlain.net domain name (in 1998) and there is no current web site available at the Domain Name. 

The Respondent does not dispute any of the foregoing facts.

5. Parties' Contentions
Complainant
The Complainant contends that:

the Respondent's Domain Name copies exactly the Complainant's Guerlain registered marks and long used trade name (paragraph 11.j. of the Complaint);

the Respondent has no right or legitimate interests in the Domain Name (paragraph 11.k. of the Complaint);

in particular, there exists no relationship between the Parties that would give rise to any license, permission or other right by which the Respondent could own any domain name incorporating the Complainant's Guerlain mark (paragraph 11.k. of the Complaint); 

the Domain Name has been registered and is being used in bad faith (paragraphs 10(3) and 11.k. of the Complaint);

by taking the Complainant's very mark as its domain name, the Respondent is attempting to create an association with the Complainant since consumers, on seeing it, will believe it is related to the Complainant (paragraph 11.j. of the Complaint);

the Respondent's real business is to register trademarks as domain names thereby preventing bona-fide trademark owners from doing business on the Internet under their trademark names (paragraph 11.l. of the Complaint), as evidenced by the list of domain names held by the Respondent (Attachment M to the Complaint);

the Respondent has registered the Domain Name in the attempt to capitalize in some way on Complainant's goodwill (paragraph 11.n. of the Complaint).

Respondent
Respondent's position as to Complainant's allegations and claims is stated in Johnny Chen's letter dated February 28, 2000 which was received by the Center on March 3 and in the email dated March 17, 2000 which was sent after the deadline for response.

The Administrative Panel must therefore decide whether to consider such email and what weight to accord it. It is in the Panel's discretion to take any such decision, as stated in the Center's Commencement Notification: "The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so…".

The Administrative Panel decides to consider the Respondent's March 17 email since, in the Administrative Panel's opinion, it somehow clarifies the statements made in the previous letter, though not in favor of the Respondent's position, and contributes to the resolution of the dispute.

In its letter dated February 28, Respondent argues that:

it has "bought GUERLAIN.NET from an Internet site known as Network Solutions, which is a domain name registration company";

it has the right to keep the Domain Name since it had no problem in purchasing it;

it did not reply to the letters sent by Ms. Solomon on behalf of Complainant before the commencement of this proceeding because it judged the tone of such letters to be unjustified, aggressive and biased.

In its email of March 17, Respondent states further that:
"the reason that I (the Respondent) did not reply any of her (the Complainant's attorney) letters is because the attitude she had presented gives me a doubtful feeling that she wants negotiation";

Respondent is not in bad faith as evidenced by the fact that it "had already negotiated" one of its domain names.
After considering the Respondent's above mentioned letter and email, the Administrative Panel decides that it will not accord any weight to the facts and arguments therein alleged. 

It should be noted in this connection that both the letter and the email lack any of the certification required by paragraph 5(b)(viii) of the Rules. Such fact would have been relevant if the Administrative Panel had deemed that the allegations reported in said letter and email contained any element in favour of the Respondent. The problem of the lack of certification, however, is overcome by the consideration that said allegations, far from supplying evidence in favour of the Respondent, rather have the value of admissions as they refer circumstances that the Administrative Panel deems against the Respondent, as set out in paragraph 5 below.

6. Discussion and finding 
Art. 15.a. of the Rules instructs the Administrative Panel 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.

Under paragraph 4.a of the Policy, the Complainant must prove each of the following:

The domain name in issue is identical or confusingly similar to the Complainant's trademark or service mark; and

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

the domain name has been registered and is being used in bad faith.

Paragraph 4.b of the Policy identifies in particular but without limitation four circumstances which for the purposes of paragraph 4.a shall be evidence of the registration and use of a domain name in bad faith, as follows:

circumstances indicating that respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

respondent has 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 respondent has engaged in a pattern of such conduct;

respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor;

by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's web site or on the on line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of the respondent's web site or location or of a product or service on the respondent's web site or location. 

Paragraph 4.c sets out in particular but without limitation three circumstances which if proved by respondent, shall be evidence of the respondent's rights to or legitimate interests in the domain name for the purpose of paragraph 4.a(ii), namely:

before any notice of the dispute to the respondent, the respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or 

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

the respondent is making a legitimate non-commercial 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.

Identity or confusing similarity
The Domain Name is guerlain.net. The Panel finds that the second level domain (i.e.: guerlain) is identical to the numerous trademark registrations of the word "Guerlain" held by Complainant. In addition, the whole of the Domain Name is confusingly similar to those trademark registrations.

Rights or legitimate interests 
The Respondent has not provided any evidence of nor alleged any of the circumstances set out in paragraph 4.c of the Policy or any other circumstances demonstrating a right or a legitimate interest in the Domain Name. 

On the other hand, the Administrative Panel also considers that (i) Complainant is a "well known perfumer" as noted by the United States Court of Appeals for the Ninth Circuit in the case Saxony Inc. v. Guerlain (Attachment I to the Complaint) and (ii) the Guerlain mark has a strong reputation and is widely known, as evidenced by its substantial use in most countries (Attachments C, D, E and H to the Complaint) including New Zealand where Guerlain products are being sold since 1985.

Therefore, in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.

The Administrative Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.

Bad Faith
Under the Policy, Complainant is required to prove also the third element provided for in paragraph 4.a(iii), namely that the domain name "has been registered and is being used in bad faith". 

The Domain Name is identical to the trademarks registered and used by Complainant, which fact the Respondent must have known. Also, as described in the preceding paragraph 6.b) Respondent has no rights or legitimate interests in the Domain Name.

The Administrative Panel finds that the Domain Name has been registered in bad faith. 

It is hardly the case to comment upon the allegation that Respondent was in good faith because it "purchased" the Domain Name from NSI since, as well known, NSI is the Registrar.

However, as discussed in the decisions rendered in the WIPO Center cases No. D99-0001; D2000-0003; D2000-0012, the domain name must not only be registered in bad faith but must also be used in bad faith. That is to say, "bad faith registration alone is an insufficient ground for obtaining a remedy under the Policy" (Case No D-2000-0003). 

In other words, "the requirement of paragraph 4a(ii) that the domain name has been registered and is being used in bad faith will be satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such as that Respondent is continuing to act in bad faith" (Case No. D2000-0003). 

However, this does not necessarily imply that the respondent is undertaking a positive action in bad faith in relation to the domain name. The concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept, as supported by the actual provision of paragraph 4(b) of the Policy. As a matter of fact, only one of the circumstances identified in paragraph 4(b) as "evidence of the registration and use of a domain name in bad faith" by necessity involves a positive action post registration undertaken in relation to the domain name (paragraph 4(b)(iv)) while the other three circumstances contemplate either a positive action or inaction in relation to the domain name (paragraphs 4(b)(i), (ii), (iii)). Of course, these three circumstances require additional facts (an intention to sell, rent or transfer the registration - paragraph 4(b)(i); a pattern of conduct preventing a trade mark owner's use of the registration - paragraph 4(b)(ii); the primary purpose of disrupting the business of a competitor - paragraph 4(b)(iii)). 

Based on the above reasoning decision No. D2000-0003 concludes that passive holding in relation to a domain name registration can, in certain circumstances, constitute a domain name use in bad faith.  Such circumstances, however, cannot be identified in abstract; "in considering whether a passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Panel must give close attention to all the circumstances of the Respondent's behavior".

In this particular Complaint, there is no allegation or evidence that the Respondent established a Web site corresponding to the Domain Name. The Complainant reports that "there is no current web site available at guerlain.net (paragraph 6, page 3 of the complaint) and further states that "Respondent is attempting to create an association with Complainant. Consumers on seeing the Domain Name will believe it is related to Complainant" (paragraph 11j, page 7 of the Complaint) but does not allege any offering of products or services by the Respondent. 

In the light of the principles and lines of interpretation set out in paragraph 2 above, the Administrative Panel will have to decide whether in the circumstances of this particular Complaint, the passive holding of the Domain Name by the Respondent constitutes a domain name being used in bad faith under paragraph 4(b) of the Policy.

For this purpose the following particular circumstances of this case have been taken into consideration: 

the Complainant's trademarks are widely well known and have a strong reputation;

the Respondent has provided no evidence of nor alleged any actual or contemplated good faith use of the Domain Name;

in addition to the Domain Name, Respondent owns 24 domain names of which 14 are easily recognizable as domain names consisting of third parties trademarks including lufthansa.net; federalexpress.net; cathaypacific.net; singaporeairlines.net and rado.net. (attachment M to the Complaint);

it can justifiably be inferred from the above that Respondent's real business is to register third parties trademarks as domain names thereby preventing the bona fide trademark owners from doing business on the Internet under their trademark names;

in its e-mail dated March 17, 2000 Respondent states "I had already negotiated one of my domain names" adding that he had never replied to the Complainant's attorney Ms. Barbara A. Solomon, because "the attitude she had presented, gives me a doubtful feeling that she wants negotiation";

although Respondent has never sought payment from the Complainant for transfer of the Domain Name, it may be reasonably inferred that Respondent registers domain names in order to sell them for profit or that in any case it has considered this possibility;

taking into account all of the above, the Respondent could not possibly make any plausible actual or contemplated active use of the Domain Name other than illegitimate, under fair competition and trademark law principles.

In the light of the foregoing, the Administrative Panel finds that the Respondent's passive holding of the Domain Name amounts to an instance of bad faith use of domain name under paragraph 4(a)(iii) of the policy.

7. Decision 
The Administrative Panel decides that: (a) the domain name guerlain.net registered by Peikang and in issue is identical or confusingly similar to the corresponding Guerlain marks of Guerlain S.A. (b) Peikang has no rights or legitimate interests in respect of the domain name guerlain.net; and (c) the domain name guerlain.net has been registered and is being used in bad faith by Peikang.

Accordingly the Administrative Panel requires that the domain name guerlain.net be transferred to the Complainant.