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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gaulme SA & Jean-Paul Gaultier SA v. Platinum One Inc.
Case No. D2001-1284
1. The Parties
The Complainants in this administrative proceeding are Gaulme SA and Jean-Paul Gaultier SA, located at 30, rue du Faubourg Saint Antoine, Paris, France, represented by Jean-Marie Moiroux, Attorney, with offices in Paris, France, hereinafter the "Complainant".
Respondent is Platinum One Inc., located at Domain Information, Los Angeles, California, represented by Orlando J. Castaño, Jr., Attorney, with offices in Santa Ana, California, United States of America, hereinafter the "Respondent".
2. Domain Names and Registrar
The domain names at issue are <jean-paulgaultier.com>, <jean-paulgaultier.net> and <jean-paulgaultier.org> registered on March 1, 2000, hereinafter referred to as the "Domain Names". The registrar is Register.com.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s Complaint on October 23, 2001, (electronic version) and October 31, 2001, (hard copies). The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainant made the required payment to the Center.
On October 29, 2001, the Center transmitted via email to Network Solutions a request for registrar verification in connection with this case. On October 31, 2001, Network Solutions transmitted via email to the Center its verification response, indicating that the registrar is Register.com.
A Complaint Deficiency Notification related to the inaccuracy of the registrar identity was sent by the Center to the Complainant on November 8, 2001. On November 12, 2001, the Complainant sent to the Center an amended Complaint referring to the correct registrar.
The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on November 13, 2001, to the Respondent and to Network Solutions the Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, fax and e-mail. The formal date of the commencement of this administrative proceeding is November 13, 2001.
The Center advised that the Response was due by December 3, 2001. On November 30, 2001, the Center received a Response by email from the Respondent. Consequently, on December 3, 2001, the Center issued an Acknowledgment of Receipt of Response.
On December 5, 2001, in view of the Complainant’s and Respondent's designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist.
Having received Mr. Geert Glas’ Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the Complaint, the evidence presented, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
GAULME SA is the owner of numerous trademark registrations in various countries for the trademarks "GAULTIER", "JEAN-PAUL GAULTIER" and "JPG". Copies of those trademark registrations are attached to the Complaint. These are:
- the French word mark n° 1 371 978, filed on September 25, 1986, for the word "GAULTIER" and for the goods and services of the classes 9, 15, 16, 38, 41, 42;
- the international word mark n° 510 858, registered on March 24, 1987, for the word "GAULTIER" and for goods and services of the classes 9, 15, 16, 38, 41, 42;
- the French word mark n° 1 641 732, filed on July 20, 1989, for the words "JEAN-PAUL GAULTIER" and for the goods and services of the classes 3, 5, 8, 9, 11, 14, 16, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 38, 41, 42;
- the international word mark n° 605 921, registered on August 31, 1993, for the words "JEAN-PAUL GAULTIER" and for goods and services of the classes 9, 28, 38;
- the French figurative trademark n° 1 703 307, filed on November 4, 1991, for the logo "JEAN-PAUL GAULTIER" and for the goods and services of the classes 3, 5, 8, 9, 11, 14, 15, 16, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 38, 41, 42;
- the international figurative trademark n° 510 859, registered on March 24, 1987, for the logo "JEAN-PAUL GAULTIER" and for goods and services of the classes 8, 11, 14, 15, 18, 20, 21, 22, 23, 24, 26, 27, 28, 34, 38, 41;
- the French figurative trademark n° 1 668 583 for the logo "JPG" and for the goods and services of the classes 3, 9, 14, 18, 25;
- the international figurative trademark n° 629 834, registered on January 2, 1995, for the logo "JPG" and for goods and services of the classes 3, 9, 14, 18, 25.
It appears from a license agreement that these trademarks are used by JEAN PAUL GAULTIER SA, as exclusive licensee of GAULME SA.
It also appears that Complainant has registered various domain names incorporating the names "gaultier" and "jean paul gaultier". These are:
JEAN-PAUL GAULTIER SA distributes, directly or indirectly, the products created by Mr. Jean-Paul GAULTIER in the fashion industry (i.e. clothes, leather products, perfumes…). It can be said that the name JEAN-PAUL GAULTIER has become well-known internationally.
Complainant’s counsel sent a warning letter on May 9, 2001, to Respondent requesting the transfer of the Domain Names.
Respondent's counsel answered on June 6, 2001, that Respondent did not intend to make use of the Domain Names and was willing to transfer the Domain Names for a consideration of USD 15,000.00.
There is no relation between Respondent and Complainant, and Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained an authorization to use Complainant’s trademarks.
The Domain Names do not resolve to any web page.
5. Parties Contentions
Complainant contends that Respondent registered the Domain Names without the consent of Mr. Jean-Paul GAULTIER and/or GAULME SA and/or JEAN-PAUL GAULTIER SA. In addition, Respondent clearly registered the Domain Names in order to prevent Complainant from reflecting his trademark in corresponding domain names and to take advantage of this situation by selling or otherwise transferring the Domain Names registration to Complainant or to a competitor for valuable consideration in excess of the domain name registrant’s out-of- pocket costs directly related to the Domain Names.
Consequently, Complainant requires the transfer of the Domain Names registration.
Complainant indicated GAULME SA as the desired transferee.
Respondent contends that the registrations were not made to prevent Complainant from reflecting the marks and that he has not engaged in the offering or selling of the Domain Names to any third parties. Respondent indicates he has incurred costs in excess of USD 15,000.00 and that he has legitimate lawful purposes to use the Domain Names when registering them.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative Panel is to use in determining the dispute: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical or confusingly similar to the trademark in which the Complainant has right; and,
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and is being used in bad faith.
The Domain Names are <jean-paulgaultier.com> <jean-paulgautier.net> and <jean-paulgaultier.org>.
"JEAN-PAUL GAULTIER" is a registered trademark of Complainant in a number of countries.
In view of the above, the Administrative Panel finds that the Domain Names are identical to the trademarks of Complainant.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks.
In his Response, Respondent indicates that at the time of registering he had a legitimate lawful purpose to use of the Domain Names. However, by not offering the slightest clarification or evidence of this legitimate lawful purpose, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4c of the Policy, any rights or legitimate interests in the Domain Names.
The Administrative Panel, therefore, finds that Respondent has no legitimate right or interest in the Domain Names.
c. Registration and Use in Bad Faith
Several facts have to be taken into consideration when assessing the absence/presence of bad faith in this matter:
"JEAN-PAUL GAULTIER" is the registered trademark of Complainant in a large number of countries.
In the view of the well-known nature of the JEAN-PAUL GAULTIER name, Respondent could not have been unaware of Complainant, of Complainant’s trademark rights and of the fact that by registering the Domain Names he was infringing upon the rights of Complainant. At least, it was his responsibility to verify this prior to registering the Domain Names, pursuant to paragraph 2 of the Policy.
Consequently, when registering the Domain Names, Respondent knowingly chose a name which is confusingly similar to the trademark of Complainant, thereby intentionally creating a situation which is at odds with the legal rights and obligations of the parties and which prevents Complainant from reflecting its "jean-paulgaultier" name in corresponding domain names.
By e-mail of June 6, 2001, Respondent has offered to transfer the Domain Names to Complainant for a consideration of USD 15,000.00. In its Response, Respondent's counsel states that his client had incurred costs related to the Domain Names of USD 15,000.00. No evidence is, however, provided with regard to these costs which the Respondent is claimed to have borne. It would have been very easy to provide such evidence. Has costs totaling USD 15,000.00 indeed been made? It seems to the Panel that this statement was only made in an attempt to re-qualify the offer made on June 6, 2001, as not in excess of Respondent's out-of-pocket costs related to the Domain Names. In the absence of such evidence, this offer must, however, be qualified as clearly in excess of any such out-of-pocket costs.
In conclusion and in view of the above, it is the Panel’s opinion that Respondent registered and used the Domain Names in bad faith.
In light of the foregoing, the Administrative Panel decides that the Domain Names <jean-paulgaultier.com>, <jean-paulgaultier.net> and <jean-paulgaultier.org> registered by Respondent are identical to the trademarks of Complainant, that Respondent has no right or legitimate interest in respect of the Domain Names, and that Respondent registered and used the Domain Names in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Administrative Panel requires that the registration of the Domain Names <jean-paulgaultier.com>, <jean-paulgaultier.net> and <jean-paulgaultier.org> be transferred to GAULME SA.
Dated: December 21, 2001