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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Société Anonyme Pierre Balmain v. Mr. Juan Carlos Zamora Guadalupe
Case No. D2001-1403
1. The Parties
The Complainant is Pierre Balmain, Société Anonyme, with registered office at 1 Rue François, 75008 Paris, France, represented by Mr. Baudouin Dunand, attorney-at-law at Magnin, Dunand and Partners, with offices at 2, Rue Charles-Bonnet, 1206 Geneva, Switzerland.
The Respondent is Mr. Juan Carlos Zamora Guadalupe, with residence at C/Cordoba N° 23, 2° A, Las Palmas de Gran Canaria, LP 35016, Spain. The Respondent’s Registrant/ Billing Contact is C.Z., Aptdo. de correos 266, Las Palmas de G.C., LP 35080, Spain. The WHOIS database (Exhibit 1) reveals that Zamora Guadalupe, Juan Carlos is the administrative contact, and Internic Registrar as the Technical contact.
2. The Domain Name and Registrar
The disputed domain name is <pierrebalmain.com>.
The Registrar is The NameIT Corporation d/b/a/ aitdomains.com, with registered office at Fayetteville, N.C., USA.
3. Procedural History
The procedural stages of the administrative proceeding are the following:
a. The Complainant initiated the proceedings by filing a complaint sent by mail on November 27, 2001, and in electronic format on December 10, 2001. This Complaint has been filed against Mr. Juan Carlos Zamora Guadalupe (hereinafter: "the Respondent"). The Acknowledgement of Receipt of the WIPO Arbitration and Mediation Center ("WIPO") dates from November 29, 2001.
b. On November 30, 2001, WIPO addressed a Request for Registrar Verification to The NameIT Corporation, in order to confirm, amongst others, that the specified domain name is registered with this Registrar and that the Respondent is the current registrant of the domain name. On December 4, 2001, WIPO addressed a second Request for Registrar Verification to The NameIT Corporation.
c. On December 4, 2001, Advanced Internet Technologies, Inc., the parent company of the NameIT Corporation, confirmed that the domain name had been registered through its services, and that the Respondent is the current registrant of the disputed domain name.
According to NameIT Corporation, the Uniform Domain Name Dispute Resolution Policy (hereafter: the "Policy") is applicable to the disputed domain name, but NameIT Corporation contested having received a copy of the Complaint, contrary to what the WIPO Supplemental Rules for UDRP, Paragraph 4(b) requires.
d. Further to this, on December 5, 2001, WIPO sent a Complaint Deficiency Notification to the representative of Complainant, requesting an amended Complaint:
- in electronic format;
- enclosing the Exhibits to the Complaint in four copies;
- to be sent to the correct registrar’s e-mail address; and
- including a submission by the Complainant to the jurisdiction of the courts in at least one specified Mutual Jurisdiction;
- and payment of the required fees.
e. The representative of Complainant sent an Amended Complaint (on December 10, 2001, in electronic format and by registered letter), stating that:
- the additional payment of US $ 500 has been made;
- the amended Complaint has been submitted in electronic format;
- the additional copies of the Exhibits have been transmitted;
- the name of the Registrar has been amended in the Complaint to The NameITCorporation d/b/a aitdomains.com of Fayetteville, N.C., USA, to which the amended complaint has been sent;
- the location of the principal office of the Registrar is Fayetteville, N.C., USA, in order to comply with the Mutual Jurisdiction requirement.
f. On December 17, 2001, the Notification of Complaint and Commencement of Administrative Proceeding was addressed to the Respondent by WIPO.
g. On January 9, 2002, WIPO transmitted notification to Respondent of its default in responding to the Complaint addressed on December 17, 2001. No reply was received by WIPO.
h. On February 7, 2002, the Panel transmitted the Statement of Acceptance and Declaration of Impartiality and Independence to WIPO by e-mail.
On February 11, 2002, the notification of Appointment of Administrative Panel was sent to both Complainant and Respondent. WIPO notified the Panel that, absent exceptional circumstances, the date scheduled for the issuance of the Panel’s decision is February 25, 2002.
i. However, the Panel assessed, upon investigation of the file, that Complainant has not submitted official registration certificates of the trade marks on which it bases the Complaint. Consequently, the Panel issued procedural order No. 1 on February 25, 2002, requesting copies of official trade mark registration certificates.
j. In response to the Panel’s procedural order No. 1, Complainant forwarded, by registered letter to WIPO of March 5, 2002, twenty-two exhibits holding national, international and European trade mark registration certificates regarding the trade mark "PIERRE BALMAIN". WIPO forwarded Complainant’s letter and enclosures to the Panel on March 8, 2002, by facsimile.
k. The Panel has not received any requests from Complainant or Respondent regarding further submissions and the Panel has not found it necessary to request any other information from the parties (taking note of Respondent’s default in responding to the Complaint).
l. The proceedings have been conducted in English.
4. Factual Background
The Complainant has submitted official copies holding an overview of its trademark portfolio regarding the trademark "PIERRE BALMAIN" and several other marks containing the trademark "BALMAIN" and/or a logo. Some of the aforementioned trademarks are registered for different classes of goods and services in a variety of countries, such as Spain, France, Germany, the Benelux, etc. and some of these trademarks appear to be expired.
Complainant states that these trademarks are valid. The validity of Complainant’s trademark registration for "PIERRE BALMAIN" has not been contested by Respondent, and the Panel undisputedly accepts that Complainant is the holder of - at least several - valid trademark registrations for "PIERRE BALMAIN", either or not in combination with a logo.
The disputed domain name was registered on March 21, 2000 (Exhibit 1). According to the Registrar, Mr. Juan Carlos Zamora Guadalupe is the registered owner of the disputed domain name and the Administrative Contact. Furthermore, Internic Registrar is mentioned as the Technical Contact.
After having discovered that "PIERRE BALMAIN" was registered as domain name in the ".com" gTLDs, the Complainant sent a proof of default to the Respondent by mail on April 25, 2000 (Exhibit 3) and, via its representative, by registered mail on November 27, 2000 (Exhibit 4).
On June 2, 2000, the Respondent replies to the aforementioned letter and registered letter by e-mail, and states the following:
"Hi, I am the owner of the domain name "pierrebalmain.com. I have received an offer for the domain name but I prefer to sell it to you. The offer is US$ 2500. If you make a better offer I will sell it to you and the domain name will be yours in a few days.
I look forward to hearing from you.
Presently, the disputed domain name leads to a web-site displaying pornographic material upon access, of which the Complainant provides proof in Exhibit 6.
Registrar confirms, in its e-mail of December 4, 2001, that the Policy approved by ICANN on October 24, 1999 applies to the disputed domain name. This Policy requires that domain name registrants submit to a mandatory administrative proceeding by an approved dispute resolution service provider, such as WIPO. Respondent has not contested that it is properly before the Administrative Panel.
5. Parties’ Contentions
Complainant states that it is the holder of a famous trade mark registered worldwide for different classes of goods and services. More specifically, Complainant states that it holds the rights to the trade mark "BALMAIN" that is registered all over the world for goods and services in international classes 6, 9, 11, 14, 16, 18, 20, 24, 25, 27 and 34.
The Complainant further holds that the disputed domain name chosen by Respondent is identical to the trade mark of Complainant.
Complainant further argues that Respondent has no legitimate interest to use the disputed domain name.
Complainant supports the view that, by registering the disputed domain name, such registration was performed in bad faith. More specifically, the Complainant argues that this bad faith behavior can be deduced from the fact that:
- Respondent tried to sell the domain name to Complainant for consideration in excess of documented out-of-pocket costs, i.e. for US$ 2,500.00;
- Respondent uses the disputed domain name to attract Internet users to its pornographic web-site linked therewith.
Complainant requests that the domain names <pierrebalmain.com> be cancelled.
The Respondent only replied to Complainant’s contentions on June 2, 2000, in which he offered to sell the domain name for US$ 2,500 to a third party, but is prepared to sell it to Complainant provided Complainant offers an amount exceeding US$ 2,500.
6. Discussion and Findings
Paragraph 4(a) of the Policy distinguishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief.
These elements are that:
"(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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."
It is essential that the dispute resolution proceedings respect the due process requirements. That means that the Respondent must have received adequate notice of proceedings initiated against it, and a reasonable opportunity to respond. In the present case, the Panel considers that WIPO took all the necessary steps to notify the Respondent of the filing of the Complaint and initiation of these proceedings.
The Respondent has defaulted in providing a response to the allegations of Complainant (in fact, its sole response is the e-mail of June 2, 2000, sent prior to the lodging of the proceedings, requesting a price for the transfer of the disputed domain name) and that allows the Panel to draw some conclusions on the basis of Complainant’s undisputed allegations.
(i) The Panel is of the opinion that the Complainant is the owner of the trademark "Pierre Balmain", either or not in combination with a logo.
The domain name registered by Respondent is identical to Complainant’s registered trademark, with the exception of the added generic top-level domain name ".com".
Complainant has therefore met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to the trademark(s) owned by Complainant.
(ii) There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the disputed domain name. Indeed the Respondent only registered the domain name and apparently offered to sell it. The Respondent has not engaged in any action that could show that it has a legitimate interest. The mere offering of the domain name for sale to the representative of Complainant (by e-mail) certainly does not constitute a right or legitimate interest in this names.
Furthermore, Respondent’s use of the e-mail to host a web-site depicting pornographic material, can not be viewed as a legitimate interest in respect of the disputed domain name. On the contrary, it is an intentional attempt to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source of its web site.
In light of Respondent’s default and silence, the Panel finds that the Respondent has no rights of legitimate interests in the disputed domain name.
(iii) Considering the third element, the registration and use in bad faith, the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Paragraph 4(b)). For example, circumstances indicating that the domain name has been registered or acquired by a respondent "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 (…) for valuable consideration in excess of (respondent’s) documented out-of-pocket costs directly related to the domain name" (Paragraph 4(b)(i)), is considered bad faith behavior.
Furthermore, circumstances such as "using the domain name, an intentional attempt to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location", are to be considered use in bad faith in accordance with Paragraph 4(b)(iv).
In the present case, the offering for sale of the domain name (to the Complainant for a price exceeding 2,500 US$, obviously in excess of out-of-pocket costs), establishes bad faith registration and use pursuant to the Policy (Paragraph 4(b)(i)).
Moreover, the Respondent’s use of the e-mail to host a web-site depicting pornographic material is an intentional attempt to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source of its web site (Paragraph 4(b)(iv)).
Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith.
The Complainant has thus established the three elements necessary to conclude that Respondent has engaged in abusive domain name registration.
Based on its findings that the Respondent has engaged in an abusive registration of the domain name <pierrebalmain.com> within the meaning of Paragraph 4(a) of the Policy, the Panel directs the Registrar to cancel the domain name.
Dated: March 27, 2002