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WIPO Arbitration and Mediation Center
Produits Berger v. Wellmark Supplies
Case No. D2003-0392
1. The Parties
The Complainant is Produits Berger, of Paris, France, represented by Mr. Gilles Escudier, Novagraaf, France.
The Respondent is Wellmark Supplies, of Singapore.
2. The Domain Name and Registrar
The disputed domain name is <elampeberger.com>. It is registered with Tucows, Inc., Ontario, Canada (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2003. The Center received a hard copy of the Complaint on June 4, 2003.
On May 23, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On May 26, 2003, Tucows transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant of the domain name and providing the contact details for the administrative and technical contacts. The Registrar also confirmed that the domain name is registered with Tucows.
Between May 27 and June 18, 2003, the Parties and the Center
exchanged e-mails concerning a possible suspension of the proceedings, which
was eventually requested by the Complainant on June 16, 2003. On June 18, 2003,
the Complainant asked the Center to resume the proceedings.
In response to a notification by the Center that the Complaint was administratively
deficient, the Complainant filed an amendment to the Complaint on June 20, 2003.
The Center verified that the Complaint, together with the amendment to the Complaint,
satisfied the formal requirements of the Uniform Domain Name Dispute Resolution
Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution
Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform
Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally
notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2003.
In accordance with the Rules, Paragraph 5(a), the due date for filing the Response
was July 13, 2003. On July 10, 2003, the Center received
an e-mail from the Respondent answering the Complaint.
The Center appointed Fabrizio La Spada, Alain Bensoussan and Susanna H.S. Leong
as panelists in this matter on August 14, 2003. The Panel finds that
it was properly constituted. Each member of the Panel has submitted the Statement
of Acceptance and Declaration of Impartiality and Independence, as required
by the Center to ensure compliance with the Rules, Paragraph 7.
4. Factual Background
The Complainant is the owner of several trademarks consisting of or containing
the words LAMPE BERGER, registered throughout the world, including Singapore.
Most of the trademarks are registered for perfumery products, perfume burners,
products aimed to be used in apparatus or lamps for disinfection, cleaning and
purification of air, room deodorants, and similar products. The Complainant
has produced evidence from the Patent Offices of several countries, including
Singapore and other Asian countries, establishing its trademark rights in several
LAMPE BERGER trademarks. According to these documents, the Complainant is, amongst
others, the owner of the trademark LAMPE BERGER and device registered in Singapore
on August 5, 1996, in Class 21.
The Complainant is also the registrant of several domain names containing the
words "Lampe Berger", including amongst others <lampeberger.fr>,
<lampesberger.com>, <lampes-berger.com> and <lampeberger.biz>.
Several of the domain names held by the Complainant and containing the words
"Lampe Berger" have been transferred to it as a result of previous
The Respondent registered the domain name on May 28, 2002. The domain
name is active, but does not resolve to a website.
On October 23, 2002, the Complainant sent a cease and desist letter
to the Respondent, requesting the latter, amongst other things, to cease its
use of the domain name and to transfer it to the Complainant. The Complainant
did not receive an answer to this letter.
5. Parties’ Contentions
The parties have set out in their submissions all the factual and legal elements
in support of their position. Below is a summary of these arguments.
The Complainant submits that the domain name is confusingly similar to its
trademarks. It alleges that the LAMPE BERGER trademarks are highly distinctive
as they are completely fanciful, and points out that the domain name incorporates
these trademarks in full. According to the Complainant, the letter "e"
certainly represents the concept of "electronic" and is not distinctive.
Further, the addition of an "ordinary descriptive" word does not detract
from the trademark itself.
The Complainant also contends that the Respondent has no rights on, nor legitimate
interests to the domain name, as the latter does not correspond to its corporate
name and the Respondent does not own a corresponding trademark. Moreover, the
Respondent is not commonly known by the domain name. In addition, the Complainant
states that it has not licensed or otherwise permitted the Respondent to use
its trademark or to register the domain name.
The Complainant alleges that the domain name has been registered and is being
used in bad faith. According to the Complainant, the fact that the Respondent
did not reply to its cease and desist letter of October 23, 2002,
is evidence that the Respondent does not deny the facts asserted by Produits
Berger, and that it does not deny the conclusions which the Complainant asserts
can be drawn by these facts. In addition, the Complainant submits that the Respondent's
bad faith is evidenced by the fact that it registered the domain name after
Complainant's adoption and first use of the trademark LAMPE BERGER. The Complainant
stresses that its trademark is a famous and widely reputed mark, in which it
has invested substantial sums of money. According to the Complainant, the Respondent
knew or should have known of the trademark at the time it registered the domain
name. The Complainant also considers that the fact that the domain name is still
registered in the name of the Respondent is evidence of bad faith. Finally,
the Complainant points out that there can be evidence of registration and use
in bad faith even if the domain name is not in use, since it would be difficult,
or even impossible, for the Respondent to use the domain name as the name of
any business, product or service for which it would be commercially useful without
violating Complainant's rights.
The Complainant mentions that it has already succeeded in obtaining the transfer
of several domain names incorporating the trademark LAMPE BERGER, including
The Complainant seeks the transfer of the domain name.
The Respondent has filed a Response, in which it disputes the Complainant's
It alleges that it is an authorized independent distributor of Lampe Berger
products, and that it carries cards and brochures that bear the Lampe Berger
logo/trademarks, approved by the Lampe Berger Agent in Asia.
The Respondent explains that it registered the domain name <elampeberger.biz>
[sic] to uplift the image of its fellow distributors and create a "more
corporate image" for Lampe Berger products. According to the Respondent,
it uses the domain name to provide a "corporate email address" to
all distributors, since the Complainant does not do so. The Respondent states
that the domain name is strictly used for such email addresses and that no website
is maintained. It further alleges that so far the service is provided to only
20 distributors and that it is not profiting from it. However, the Respondent
points out that it estimates the distributors of Lampe Berger products to be
more than 80'000 in Asia.
The Respondent indicates that it will be glad to transfer the domain name to
the Complainant when it stops distributing Lampe Berger products. It also states
that it is willing to negotiate with Produits Berger on immediately returning
the domain name, "but one of the conditions is that they must provide all
distributors with a company email address".
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this
proceeding and obtain the transfer of the domain name, the Complainant must
prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service
mark in which the Complainant has rights (see below, section A); and
2. The Respondent has no rights or legitimate interests in respect of the domain
name (see below, section B); and
3. The domain name has been registered and is being used in bad faith (see
below, section C).
Paragraph 4(a) in fine of the Policy states that the burden of proving
that all these elements are present lies with the Complainant.
The Panel notes that, pursuant to Paragraph 15(a) of the Rules, it shall 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. Moreover, in accordance with Paragraph 14(b) of the Rules,
if a party, in the absence of exceptional circumstances, does not comply with
any provision of, or requirement under, the Rules or any request from the Panel,
the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a
trademark or service mark; and (2) is the domain name identical or confusingly
similar to such trademark or service mark.
As regards the first question, the Complainant has provided satisfactory evidence
that it is the owner of several trademarks, including LAMPE BERGER trademarks
registered in France, the USA, and several Asian countries, including Singapore.
In particular, the Complainant is the owner of the trademark "LAMPE BERGER
+ device" registered on August 5, 1996, in Singapore in class 21 under
Nr. T96/08143E. It is also the owner of the word mark LAMPE BERGER ASIA,
registered in France in Class 38 under Nr. 00 3 007 236 (filing date
February 14, 2000).
As to the second question, the Panel finds that the domain name is confusingly
similar to the Complainant’s trademarks.
The domain name is almost identical to the Complainant's LAMPE BERGER trademarks.
The only differences between the designations are the deletion of the space
between "Lampe" and "Berger", the addition of the letter
"e" at the beginning of the domain name, and the addition of the generic
top level domain ".com". It makes no doubt in the Panel's opinion
that these elements are not sufficient to distinguish the domain from the Complainant's
First, prior panels consistently have held that domain names that contain obvious
misspellings or close variants of a trademark owner’s mark are identical or
confusingly similar to that mark (see, e.g., Estee Lauder Cosmetics Ltd;
Make-Up Art Cosmetics Inc. v. Telmex Management Services, WIPO
Case No. D2001-1428; AltaVista Company v. Geoffrey Fairbairn, WIPO
Case No. D2000-0849; Aurora Foods, Inc. v. David Paul Jaros, WIPO
Case No. D2000-0274). In this case, the Panel finds that the deletion of
the space between the words "Lampe" and "Berger" and the
addition of the letter "e" cannot avoid a finding of confusing similarity.
This is especially the case since (1) it is customary to delete spaces between
words in domain names, and (2) the use of the prefix "e" has become
a common descriptive term used to identify electronic commerce activity (Inter-IKEA
Systems B.V v. Technology Education Center, WIPO Case
No. D2000-0522; see also Telstra Corporation Limited v. Peter Yellowlees,
WIPO Case No. D2002-0638).
Second, it has been consistently held that the addition of the generic top
level domain ".com" is irrelevant to a Policy Paragraph 4(a)(i) analysis
(see, e.g., Paramount Pictures Corporation v. Buy This Domain aka Domains
Best Domains, WIPO Case No. D2003-0058).
Third, although the trademarks owned by the Complainant are trademarks including
a device, it appears from the evidence on record that the words "Lampe
Berger" are clearly predominant in several of those trademarks (including
the Singapore trademark cited above).
The Panel therefore finds that the domain name is identical to a trademark
in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests
in the domain name.
It is notoriously difficult for a complainant to prove such a negative fact.
Consequently, Panels have required complainants to establish at least a prima
facie case under this heading and, if that is made out, the evidential onus
shifts to the respondent to rebut the presumption of absence of rights or legitimate
interests (see, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering,
Inc., WIPO Case No. D2003-0070).
In this case, the Complainant relies on the fact that it has not licensed or
otherwise permitted the Respondent to use its trademarks, nor to register the
According to Paragraph 4(c) of the Policy, a Respondent may establish its rights
or legitimate interests in the domain name, among other circumstances, by showing
any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of,
or demonstrable preparations to use, the domain name or a name corresponding
to the domain name in connection with a bona fide offering of goods or
(ii) you [Respondent] (as an individual, business, or other organization) have
been commonly known by the domain name, even if you have acquired no trademark
or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of
the domain name, without intent for commercial gain to misleadingly divert consumers
or to tarnish the trademark or service mark at issue."
On the basis of the statements and documents submitted, the Panel is satisfied
that the Respondent has no rights or legitimate interests in the domain name,
for the following reasons.
First, the Respondent has alleged that it is an authorized independent distributor
of Lampe Berger products. It has also stated that it is using the Lampe Berger
logo/trademark with the authorization of the Lampe Berger Agent in Asia. However,
the Respondent has not provided any evidence in support of these allegations,
even though submitting such evidence should have been easy.
In any event, the Panel notes that, according to previous decisions, the mere
fact to be an authorized reseller or distributor of trademarked products is
not as such sufficient to give a Respondent rights on or legitimate interests
to a domain name consisting of the Complainant's trademark (see, e.g., Allen-Edmonds
Shoe Corporation v. Takin’ Care of Business, WIPO
Case No. D2002-0799). On the contrary, in determining whether a reseller
or service agent of trademarked goods can use the trademark at issue in its
domain names, previous panels have held that a respondent must at the minimum:
(i) actually be offering the goods or services at issue; (ii) use the site to
sell only the trademarked goods; (iii) accurately disclose the registrant’s
relationship with the trademark owner; and (iv) not try to corner the market
in all domain names (Consorzio del Prosciutto di Parma v. Matthias Gasser,
Hanslmeier Fleischwarenfabrik, WIPO Case
No. D2003-0474; Oki Data Americas, Inc. v. ASD, Inc., WIPO
Case No. D2001-0903).
Thus, even if the Respondent were an authorized dealer, its use of the Complainant’s
trademark would not be legitimate, absent any evidence that the conditions mentioned
above are met or that there exists an agreement between the parties.
Second, there is no evidence on record that the Respondent was at any time
commonly known by the domain name.
Third, there is no evidence that the Respondent is making a legitimate noncommercial
or fair use of the domain names.
According to the Respondent's allegations, the only purported use for the domain
name is to provide distributors with a "corporate" email address.
However, the Panel considers, in the absence of any evidence that the Respondent
is authorized to use the Complainant's trademark, that such use cannot be characterized
as a fair use. In addition, the Respondent alleges that it is not profiting
from its email service, since it has "so far" been provided to "only
20 distributors". However, the Respondent also states that there are more
than 15'000 distributors in Singapore alone and that it estimates the distributors
in Asia to be more than 80'000. On this basis, the Panel considers that the
Respondent did not make a likely showing that it uses the domain name without
intent for commercial gain.
In accordance with the elements set out above, the Panel finds that the Respondent
has no rights nor legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Under Paragraph 4(a)(iii) of the Policy, Complainant must prove that the domain
name was registered and is being used in bad faith by the Respondent. Paragraph
4(b) of the Policy sets out four circumstances which shall be evidence of the
registration and use of a domain name in bad faith. These four criteria are
nonexclusive (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO
Case No. D2003-0295).
For the reasons set out below, the Panel is satisfied that the Respondent has
registered and used the domain name in bad faith.
First, the record shows that the Respondent not only was aware of the Complainant’s
trademarks when it registered the domain names, but even purposely chose to
register a domain name which incorporates the Complainant's trademark. Indeed,
as set out above, the Respondent stated that it registered the domain name to
use it to offer email addresses to distributors of Lampe Berger products. When
the Respondent has no rights on or legitimate interests to the domain name (as
is the case in this matter – see above), registration of such a domain name
with actual knowledge of an existing trademark is evidence of bad faith (see,
e.g., UMG Recordings, Inc. v. Brenda Michelson, WIPO
Case No. D2003-0369; BolognaFiere S.p.A. v. Bonopera Daniele, WIPO
Case No. D2003-0295; PepsiCo, Inc. v. Paul J. Swider, WIPO
Case No. D2002-0561; Amazon.com, Inc v. Sung Hee Cho, WIPO
Case No. D2001-1276).
Second, the Respondent has alleged that it is using the domain name to provide
email addresses to Lampe Berger distributors, since the Complainant does not
itself provide this service. In the Panel's opinion, it is not for the Respondent
to decide how the Complainant's trademark should be used or licensed. The use
of the Complainant's trademark in email addresses creates the impression that
the "distributors"- as alleged by the Respondent – are related to
the Complainant or authorized by the latter to use such email addresses. The
Respondent creates this impression even though it knew that the Complainant
chose not to provide a "corporate email address". The Panel considers
that the Respondent is attempting to create an association with the Complainant
that, on the face of the record, does not exist. This is evidence of bad faith
(Chanel, Inc. v. Buybeauty.com, WIPO
Case No. D2000-1126).
This finding of bad faith is further supported by the fact that the Respondent
stated in its Response that it was willing to negotiate with the Complainant
on returning the domain name only if the latter provided all distributors with
a company email address. This shows that the Respondent's purpose in registering
the domain name was to try and force the Complainant to allow the use of its
trademark by the Respondent and third parties.
On the basis of the elements set out above, the Panel finds that the domain
name was registered and used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the domain name, <elampeberger.com>,
be transferred to the Complainant.
Fabrizio La Spada
Susanna H.S. Leong
Date: August 28, 2003