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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baccarat S.A. v. Priority Software Inc.
Case No. DBIZ2002-00081
1. The Parties
Complainant in this proceeding is Baccarat S.A., Rue des Cristalleries, F-54120, Baccarat, France.
Respondent is Priority Software Inc., 12609 Magna Carta Road, 20171-2717 Oak Hill VA, United States of America.
2. Domain Name and Registrar
This dispute concerns the domain name <baccarat.biz>.
The Registrar with which the domain name is registered is BB Online UK Ltd.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the STOP complaint on April 26, 2002. The Complaint was submitted in accordance with the Start-up Trademark Opposition Policy for .biz (the "STOP"), the Rules for Start-up Trademark Opposition Policy for .biz (the "STOP Rules"), adopted by NeuLevel Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001, and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .biz (the "WIPO Supplemental STOP Rules"). The Notification of STOP complaint and Commencement of Administrative Proceeding was sent on May 14, 2002. The response was received on May 28, 2002. The notification of the appointment of the Panel was sent on June 12, 2002. The file was transmitted to the Panel on the same day.
4. Factual Background and Parties’ Contentions
A. The Trademark
Complainant owns many "Baccarat" trademarks (allegedly more than 700 trademarks) across the world. The Complaint is based on those trademarks and in particular the following trademarks:
- "BACCARAT France and device", French trademark registered on December 29, 1860 and last renewed under registration n° 1523101 on April 4, 1999
- "BACCARAT France and device", US trademark registration n° 111089, registered on December 31, 1912, and which is currently being renewed
- "Baccarat", French figurative trademark registration n°1557493, registered on October 24, 1979, and renewed on October 24, 1999,
- "Baccarat", US figurative trademark registration n°1199343, registered on June 29, 1982,
- "Baccarat", French nominative trademark registration n° 1557 493, registered on October 24, 1979, and renewed on October 24, 1999,
- "Baccarat, US nominative trademark registration n° 1130893, registered on August 18, 1978.
B. The Complaint
In its complaint Complainant alleges that the disputed domain name is identical with its trademark.
Further, Complainant alleges that Respondent has no right or legitimate interest in the domain name as he has no trademark right to the name Baccarat, is not affiliated with Complainant nor has he any license or any other authorization from Complainant and he is not known under the name Baccarat in the field of its business.
Complainant alleges that Respondent has registered the domain name in bad faith, as Respondent must have been aware of Complainant’s trademark. Complainant also alleges that the notoriety of its trademark is such that Respondent registration of the disputed domain name is a prima facie presumption that Respondent registered the domain name for the purpose of selling it to Complainant or to a competitor or that it was registered to attract for commercial gain internet users by creating a likelihood of confusion with Complainant.
C. The Response
In his response Respondent alleges that Complainant has no trademark right on the card game called Baccarat. Therefore, Respondent alleges it has right to register the disputed domain name to create a website promoting the card game.
Respondent alleges that he has registered the domain name in good faith as Complainant has no evidence that it registered the domain name for the purpose of selling it and as there is no risk of confusion between Complainant’s business and Respondent’s projected use of the domain name.
5. Discussion and Findings
a) Identical or Confusing Domain Name
There is no doubt that the domain name <baccarat.biz> is identical with the Complainant trademarks, as the top level domain name .biz is not a distinguishing feature. Respondent does not contest this fact.
b) Respondents Rights or Legitimate Interests in the Domain Name
Respondent alleges that Complainant has no trademark rights related to the card game called baccarat. Usually, a trademark is registered only for certain classes of goods or services and is granted protection only for those classes. However, this principle does not apply to worldwide well-known trademarks. Such trademarks are granted a general scope of protection. The protection for well-known trademarks is extended to all diluting use of the trademark. Now, the mark "Baccarat" is well-known throughout the world. Therefore, there is an apparent conflict between the extended protection which is granted to that trademark and the generic name of the Baccarat card game. In France the conflict does not exist as the card game is spelled without the "T" : "Baccara". In the United States of America and other English speaking parts of the globe the card game is spelled with a "T", being thus identical with Complainant’s trademark.
The protection of well-known trademarks should be as broad as possible. However, some courts rightly consider that when a well-known trademark composed of a generic name has established itself only for certain goods or services, it is granted protection only for those types of goods or services. Thus, it is clear that a well-known trademark composed of a generic name is not protected against legitimate use of that generic name. "Baccarat", as a trademark for crystal wares, even through it deserves a protection extended to all wares and merchandises for which its use could be said to be deluting cannot be protected against the use of the name "baccarat" referring to the common card game. As a consequence, Respondent’s online gaming business can be considered a legitimate use of the name "bacarrat".
c) Domain Name Registered and Used in Bad Faith
Complainant alleges that Respondent has registered the domain name in bad faith, as Respondent must have been aware of Complainant’s trademark. Complainant also alleges that the notoriety of its trademark is such that Respondent registration of the disputed domain name is a prima facie presumption that Respondent registered the domain name for the purpose of selling it to Complainant or a competitor and that the disputed domain name was registered to attract for commercial gain internet users by creating a likelihood of confusion with Complainant. Nevertheless, bad faith cannot be presumed in the absence of specific facts or allegations. Further, Complainant bears the burden of proof of Respondent’s bad faith. However, Complainant did not provide any evidence that the domain name was registered for the purpose of selling it. No offer by Respondent to Complainant or to a third party has been alleged. Neither did Complainant indicate any special circumstances which might be a sign of bad faith, such as a pattern of registering domain names in violation of the trademark rights of others.
Respondent is a business company apparently engaged in promoting gaming online. It has allegedly registered other domain names related to gambling such as <blackjack.biz>, <poker.biz> and <lottery.us>. If Respondent does establish an online gaming site related to the card game "baccarat" at the disputed domain name address, then Respondent would be engaged in a bona fide offering of goods and services. Respondent would not be attempting to create a risk of confusion between itself and Complainant, as the average Internet user would have no difficulty distinguishing the notorious Complainant’s name and business from an online gaming site hosted at the address of a common card game, because the card game’s name is identical to the Complainant’s trademark.
In the light of the foregoing, the Panel decides that the disputed domain name is identical to Complainant’s trademark. However, the Respondent has alleged legitimate interests in the domain name and it has not been established that it registered the domain name in bad faith.
Accordingly, the Panel rejects the Complainant’s request.
Dated: July 9, 2002