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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pernod Ricard v. Pernod Records
Case No. D2001-1471
1. The Parties
Complainant in this proceeding is Pernod Ricard SA, 142 boulevard Haussmann, 75379 Paris Cedex 08, France.
Respondent is Pernod Records, c/o Midexproduction.com, PO Box 1136, Barking, Essex IG11 9DX, United Kingdom.
2. Domain Name and Registrar
This dispute concerns the domain name:
The Registrar with which the domain name is registered is Network Solutions Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint December 20, 2001 (electronic version), and January 7, 2002 (hardcopy). On December 28, 2001, the Center sent a request for registrar verification in connection with this case to Network Solutions Inc. The registrar verification response was received on January 4, 2002. The Center verified that the Complaint satisfies the formal requirements on January 9, 2002, and the notification of Complaint was transmitted on the same day. A request for extension to submit a Response was received on January 23, 2002, and granted by the Center on January 24, 2002. The Response was received on February 12, 2002 (electronic version), and February 26, 2002 (hardcopy). A supplementary submission of the Complainant was received on February 19, 2002, and a Response to this submission was then forwarded by Respondent. The file has been transmitted to the Panel on April 17, 2002.
4. Factual Background and The Parties’ Contentions
A. The Trademark
The Complaint is based on the trademark "Pernod". Complainant is the owner of the following registered trademarks:
-"Pernod" wordmark, a UK trademark registration n° 565450 of January 1, 1936, renewed in 1950, 1964, 1978 and 1992, covering "liquors",
-"Pernod", a UK trademark registration n° 1 2444 769 of June 25, 1985, renewed in 1992, covering "wines, spirits and liquors",
-"Pernod" wordmark, a UK trademark registration n° 1 259 082 of January 28, 1986, renewed in 1993, covering "coffee, tea, pastry, non medicated confectionery, ices",
-"Pernod", a French trademark registration n° 1391235 of January 27, 1987, renewed in 1996, covering goods and services of international classes 1 through 34.
B. The Complaint
In its Complaint Complainant alleges that the domain name at issue is totally identical with its English trademarks "Pernod" and confusingly similar with its company name Pernod Ricard.
Complainant alleges that Respondent has no right or legitimate interests in the domain name as:
-Complainant’s use of the trademark "Pernod" predates the registration of the domain name <pernod.com>.
-Respondent is in no way affiliated with Complainant and is not authorized to use the trademark "Pernod."
-A business name owned by Respondent is not sufficient to show legitimate interest in the domain name and there has never been a UK company named Pernod Records Ltd.; further, no company trades from Respondent address, and there is no telephone listing for Pernod Records; and finally there is no reference to such company on the Internet.
-Respondent does not use the domain name.
Complainant alleges that the domain name has been registered and is being used in bad faith as:
-Complainant’s trademark is well known all around the world for its aniseed liquor and the United Kingdom is the second market after France concerning Complainant’s sales; therefore, Respondent could not ignore Complainant’s corporate name and trademark.
-Respondent has not made use of the domain name or preparation to use it.
-Respondent chose the trade name "Pernod Record" which is similar to Complainant trade name "Pernod Ricard" and has registered the domain name to intentionally attract for commercial gain internet users, by creating a likelihood of confusion with Complainant’s trademark.
-Respondent mislead the private investigator sent by Complainant as to its real identity and refused to answer questions about its activity.
C. The Response
In its response Respondent alleges that it is an in-house record company and forms part of the Midexproductions.com group. Pernod Record was founded by Nicholas Arnold and Marianne Pernod in 1996; later, the company became a part of the midexproductions.com group. Pernod record is to release a track in May 2002, and another one in November 2002.
Respondent alleges that Complainant’s registered trademarks provide it with no enforceable rights as none of the trademarks are registered in the area of activity of Respondent, which is the music industry. Therefore there is no likelihood of confusion for Internet users. Further the name Pernod is a common French name and has a generic element to it.
Respondent alleges that Complainant’s claims are barred by the doctrine of laches. Respondent sent on July 18, 2000, a direct response indicating its good faith registration of the domain name and the commencement of administrative proceedings from WIPO dates from January 9, 2002. Complainant let an extraordinary long time elapse and its claims should therefore be held to be barred by the doctrine of laches.
Respondent alleges that it has rights to the domain name as it has created a website at the domain name at issue to provide the goods and services offered by a record company and especially to promote its music. While the domain name <pernod.com> was inactive prior to the current proceedings, substantial demonstrable preparations for its use were being made and the site is now being used. Further the private investigator sent by Complainant mentioned that he acted on behalf of a UK producer of aniseed liquor which was interested in buying the domain name; however, Respondent refused the offer.
Respondent alleges that it registered the domain name in good faith. Respondent did not offer to sell the domain name and has not engaged in a pattern of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Respondent has no intention of entering the drinks market and therefore is not intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion. Further, Respondent’s knowledge of Complainant’s trademark is no proof of bad faith. The URDP requires more than mere knowledge of a trademark at the time of registration to evidence bad faith.
5. Discussion and Findings
Pursuant to the ICANN Policy, Complainant must convince the Panel on the following three criteria:
i) the domain name is identical or confusingly similar to a trademark in which it holds rights;
ii) Respondent has no right or legitimate interests in the domain name;
iii) the domain name was registered and used in bad faith.
i) Identical or Confusing Domain Name
There is no doubt that the domain name <pernod.com> is identical to the trademark "Pernod" owned by Pernod-Ricard.
ii) Legitimate Interests of Respondent
The interests of Respondent are vaguely alleged in his submission. First, the name of the "company" was allegedly chosen because Nicholas Arnold and Marianne Pernod entertained a close personal relationship in 1995-1996, the time when the domain name was registered. Since then, Marianne Pernod nonetheless disappeared, at least from 1997 onwards. Further, nothing has been produced by that company; there is talk of producing one record in May 2002, and another one in November 2002. This activity seems to have been undertaken only after the filing of the present Complaint. Be it as it may, the Panel finds that at the time of the filing of this Complaint, the domain name <pernod.com> was not used in connection with an active website, although the domain name had been registered since 1996.
Moreover, the Panel notes that the name of the unregistered company is Pernod Records -- in itself confusingly similar in sound to the Pernod-Ricard trade name; and in any event, this full name is not adequately reflected in the <pernod.com> domain name at issue.
There is also some question about the possibility of an unregistered entity to claim rights onto a trade name under U.K. law. In all events, the domain name should not be misleading to the public and the Internet users. The Pernod name alludes in fact to a certain Marianne Pernod, but this person is no longer connected with the business under her name. Although such "disconnectedness" between a physical person and a legal entity might be bearable if the company were clearly a public company limited by shares or a legal entity, it does not seem to be acceptable to name a private business with the name of a former girlfriend bearing a famous name, only to enjoy the reputation which is linked to that name. Therefore, the Panel finds that Respondent has no legitimate interests in the domain name <pernod.com>.
iii) Bad Faith Registration and Use
The issue of bad faith is exemplified in Paragraph 4(b) of the ICANN Policy:
"the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in 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".
a) In the present case, test (i) is not fulfilled, because Respondent does not appear to have the purpose of selling, renting or otherwise transferring the domain name registration either to Complainant or to a competitor of Complainant. Indeed, as a private investigation by Complainant has shown, Respondent does not entertain the idea of selling his registration to a third party. There is some doubt in the mind of the Panel that a Complaint may be based on ill-gotten evidence, e.g. when an undercover investigator is alleged to have used deceitful methods in order to lure Respondent into selling the domain name; but Respondent was not aggrieved in any way by those unfair proposals, since he rejected them.
b) In the present case, test (ii) is not fulfilled, since Respondent is not alleged to have engaged in a pattern of preventing the owners of trademarks from reflecting their marks in corresponding domain names. Actually, there appears to exist several pernod domain names, even if most of them are more precisely identified. There would be no doubt about Respondent’s good faith if domain name was for example <marianne-pernod.com> or <pernod-records.com>, but such is not the case.
c) As to test (iii), Respondent does not appear to have registered the domain name primarily for the purpose of disrupting the business of a competitor, since there is no competition between Complainant and Respondent’s phonograms business.
d) As to test (iv), there is undoubtedly a danger of dilution of the world famous Pernod trademark if the domain name at issue remains outside its influence. Further, several facts are contrary to good faith in this case. There is really no evidence about Marianne Pernod’s existence and links with the business. The domain name has been inactive for so long that Respondent a does not have a valid argument for a bona fide investment deserving of protection. The status of the trade name of an unregistered business entity under English law is not clear.
All those elements point towards bad faith of Respondent.
In the light of the foregoing, the Panel decides that the domain name registered by Respondent is identical to the corresponding trademarks of Complainant, that Respondent has no rights to or legitimate interests in respect of this domain name and that the domain name in issue has been registered and is being used in bad faith by Respondent.
Accordingly the Panel requires that the registration of the domain name <pernod.com> be transferred to Complainant.
Prof. François Dessemontet
Paul E. Mason
Dated: May 1, 2002