WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Le Grand Livre Du Mois S.A. v. Beaufort Holding Ltd.
Case No. D2000-1835
1. The Parties
The Complainant is LE GRAND LIVRE DU MOIS S.A., 15, rue des Sablons, F-75116 Paris, France.
The Respondent is BEAUFORT HOLDING Ltd., 2111 Wing On House, 71 Des Voeux Road, Central Hon, Hong Kong, China.
2. The Domain Name and Registrar
The domain name in dispute is "legrandlivredumois.com".
The Registrar with which the domain name is registered is 7 WAYS (CORE 93).
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on December 28, 2000, by e-mail and on January 3, 2000, in hardcopy.
On January 26, 2001, the Center sent the corresponding Request for Registrar Verification in connection with this case to 7 WAYS. On January 29, 2001, the Registrar's verification response confirmed that the Registrant was BEAUFORT HOLDING Ltd. and that the domain name "legrandlivredumois.com" was in "production" status.
On February 5, 2001, after having verified whether the Complaint was satisfying the formal requirements, the Center notified by courier (which was returned back to sender), facsimile and e-mail the Commencement of Administrative Proceeding to the Parties, in accordance with Paragraph 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").
On February 28, 2001, the Center issued by courier (which was returned back to sender) and e-mail the Notification of Default to the Respondent for having failed to submit a response within the deadline granted.
On March 13, 2001, the Center proceeded with the appointment of the Administrative Panel pursuant to Paragraph 6 of the Rules and advised the Parties of the appointment of the undersigned as sole panelist in accordance with Paragraph 6(f) of said Rules, after the latter had signed and forwarded to the Center, on March 8, 2001, a statement of acceptance and declared his impartiality and independence in this matter.
Transmission of the file to the Sole Panelist was made on March 13, 2001, by e-mail and registered post, hard copy of which was received by the undersigned a few days later.
The Sole Panelist forwarded his decision to the Center within the time limit fixed.
4. Factual Background
The Complainant, a French limited liability company, is engaged in France and other European countries in a business of mail-order sale and e-commerce of books and, on an accessory basis, of records, videograms and other cultural items.
It owns in France since 1977 the semi-graphic trademark "Le Grand Livre du Mois" registered with the Institut National de la Propriйtй Industrielle under number 1 622 626 (Complaint Annex D) to designate services in class 41 (book publishing) and, since 1980, products in class 16 (printed matter, newspapers and periodicals, items for bindings, photographs…).
In addition, the Complainant has also registered the domain names "grandlivredumois.com" and "grandlivredumois.fr".
5. Parties’ Contentions
The Complainant submits the following.
(i) The "legrandlivredumois.com" domain name is identical, or at least similar to such an extent, that it may cause confusion with the Complainant's trademark "Le Grand Livre du Mois".
(ii) The Respondent has no title or legitimate interest relating to the domain name "legrandlivredumois.com" as the Complainant has not granted the Respondent any license or authorization of any kind whatsoever to use its trademark or register a domain name identical or similar to that trademark.
(iii) The Respondent has registered and is using the domain name in bad faith which is evidenced mainly by the Respondent seeking to interfere with the Complainant's commercial operations by creating a confusion between the latter and other companies in France engaged in an identical or similar business.
The Complainant concludes therefore that it is entitled to the transfer of the domain name at stake in its favor.
The Respondent has not submitted any response to the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("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 are 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.
A. Identity or Confusing Similarity
There is no doubt that there is identity or, at least, confusing similarity between the Complainant's trademark "LE GRAND LIVRE DU MOIS" and the domain name "legrandlivredumois.com", the space between the words being of no relevance in this regard.
The Complainant has also established its rights in the trademark "LE GRAND LIVRE DU MOIS".
B. Rights or Legitimate Interests of the Respondent
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. WIPO Case Nos. D2000-0009, p. 6 or D2000-0867, p. 6).
It is the Sole Panelist’s finding that the Complainant has established that the trademark "LE GRAND LIVRE DU MOIS" has been known in France for quite a while in its field of operation. Furthermore, as rightly pointed out by the Complainant and absent evidence to the contrary, the latter has not granted any license or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the said mark.
Under those circumstances, the Sole Panelist 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 within the meaning of paragraph 4(c) of the Policy.
C. Registration and Use 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 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.
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.
Furthermore, the Sole Panelist is satisfied from the evidence submitted by the Complainant that the latter has successfully demonstrated that the Respondent's behavior falls within the scope of Paragraph 4(b)(iv) of the Policy mentioned above.
Initially, The Respondent's Web page "legrandlivredumois.com" led directly to a home page entitled "mp3titre.com"; that page contained various hypertext links (books, records, videos, CD-Rom, hardware, travel, entertainment) to which the Internet user was invited to connect, but regardless of the link selected, the address led systematically to the site of the French company FNAC, "fnac.com", which allows on-line ordering of books and other cultural items (Complaint Annex E).
Later on, the domain name no longer led to the "fnac.com" site but to the site of BOL, "bol.fr", known in France as the oldest and largest virtual bookstore (Complaint Annex F).
At the date when this complaint was filed, the domain name no longer led to a home page entitled "mp3titre.com" but to a page named "legrandlivredumois.com", which in turn now led to the site "amazon.fr", the French version of the "amazon.com" virtual bookstore (Complaint Annex G).
Such description of facts, that have not been disputed by the Respondent, no doubt amount to bad faith within the meaning of the Policy.
In light of the foregoing, the Sole Panelist decides that the domain name registered by the Respondent is identical or confusingly similar to the corresponding trademarks of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.
Accordingly, pursuant to Paragraph 4(i) of the Rules, the Sole Panelist requires that the registration of the domain name "legrandlivredumois.com" shall be transferred to the Complainant.