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and Mediation Center
Produits Berger v. Lay Tee Ong
Case No. DAU2004-0008
1. The Parties
The Complainant is Produits Berger, of Paris, France, represented by Novagraaf France.
The Respondent is Lay Tee Ong, of Bedford, Western Australia, Australia.
2. The Domain Name and Registrar
The disputed domain name <lampeberger.com.au> is registered with Primus
Telecommunications t/a PlanetDomain & PrimusDomain.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2004. On December 29, 2004, the Center transmitted by email to Primus Telecommunications t/a PlanetDomain & PrimusDomain a request for registrar verification in connection with the domain name at issue. On January 13, 2005, Primus Telecommunications t/a PlanetDomain & PrimusDomain transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint complied with the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 January 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2005. The Respondent sent an email to the Center on January 31, 2005, indicating a willingness to deregister the disputed domain name or to transfer it to the Complainant but did not submit any formal response. Accordingly, the Center notified the Respondent’s default on February 3, 2005.
The Center appointed Alan L. Limbury, Andrew Frederick Christie and Michael D. Pendleton as panelists in this matter on February 22, 2005. 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.
The language of the proceeding is English, being the language of the registration agreement.
On March 11, 2005, the Panel by Procedural Order No. 1 made the following request and direction:
“Pursuant to the Rules for .au Dispute Resolution Policy, paragraph 12 and having regard to the .auDA Domain Name Eligibility and Allocation Rules for the Open 2LDs (2002-07); the .auDATransfers (Change of Registrant) Policy (2004-03) and the .au Dispute Resolution Policy (2002-02), the Panel asks the Complainant to provide, within 5 working days of being notified of this request (March 18, 2005):
1. Details of any Australian trademark registration of LAMPE BERGER or similar mark.
2. Details of any application to register LAMPE BERGER or similar mark as an Australian registered trademark.
3. Details of any trading in Australia under the mark LAMPE BERGER or similar mark.
4. Details of knowledge in Australia of the mark LAMPE BERGER or similar mark.
5. Details establishing the entitlement of the Complainant under the .auDA Domain Name Eligibility and Allocation Rules for the Open 2LDs (2002-07) and the .auDATransfers (Change of Registrant) Policy (2004-03) to be the registrant of the domain name <lampeberger.com.au>.
The Respondent is requested to make any comments on the Complainant’s response to this request within 3 working days (March 23, 2005) of having received it. It should be noted that this does not entitle the Respondent to make a Response to the Complaint.
Pursuant to the Rules, paragraph 10(c), in light of the exceptional circumstances constituted by the Panel’s requests, the Panel extends the time within which it must forward its decision to the Provider under the Rules, paragraph 15(b) until the fifth working day after the expiration of the time limited for the Respondent to comment on the Complainant’s response to this request (March 30, 2005).”
On March 17, 2005, the Complainant responded to the Procedural Order. No comments
were received from Respondent.
4. Factual Background
The Complainant and its predecessors have operated in France since 1898, when the first patent for the Lampe Berger was registered by Maurice Berger. The Complainant has stores in France, Taiwan, Province of China, Canada and the United States. It owns a large portfolio of registered trademarks in many countries, including marks comprising the words LAMPE BERGER and LAMPES BERGER, often with a device. The words are the dominant feature of those marks. The earliest mark of which there is evidence before the Panel is Japanese registered trademark 2502177 LAMPES BERGER & device, filed on September 17, 1990.
The Complainant has also registered numerous domain names incorporating as their dominant feature the words lampeberger and lampesberger, including <lampebergeraustralia.com>, <lampeberger.com> and <lampesberger.com>.
The Complainant’s registered rights in the trademark LAMPE BERGER predate the Respondent’s registration of the disputed domain name.
In responding to the Panel’s Procedural Order, the Complainant demonstrated that on December 10, 1999, it filed with the Australian Trade Mark authority, IP Australia, Application No. 816887 to register as a trade mark in classes 3, 5 and 21 the words LAMPE BERGER with perfume bottle image.
The Panel has ascertained by searching the IP Australia database that this application was successful and that the mark has been registered since November 12, 2001, with effect from the filing date and is due for renewal on December 10, 2009.
The Respondent registered
the disputed domain name on July 17, 2003. It has not been used.
5. Parties’ Contentions
The disputed domain name is identical and confusingly similar to trademarks and domain names in which the Complainant has rights. The Complainant has not authorized the Respondent to use its trademark as part of a domain name and the Respondent has no rights or legitimate interests in the domain name. The domain name should be considered as having been registered and used in bad faith.
As already mentioned, the Respondent did not make
any formal reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 15(a),
a Panel must decide a complaint on the basis of the statements and documents
submitted and in accordance with the Policy, these Rules and any rules and principles
of law that it deems applicable. Several cases have decided that the Panel is
also entitled to seek and take into account publicly available information:
Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO
Case No. DWS2001-0003; Terabeam Corp. v. Colin Goldman, WIPO
Case No. D2001-0697; Kur- und Verkehrsverein St. Moritz v. StMoritz.com,
WIPO Case No. D2000-0617, and Tough
Traveler Ltd. v. Kelty Pack Inc. Mike Scherer, and Inkling Pen Co., WIPO
Case No. D2000-0783.
The Complainant has the onus of proving three elements:
(i) the domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or subsequently used in bad faith.
A. Identical or Confusingly Similar
Many cases under the UDRP
have established that “essentially” or “virtually” identical
is sufficient for the purposes of the Policy: The Stanley Works and Stanley
Logistics Inc. v. Camp Creek Co., Inc., WIPO
Case No. D2000-0113, Nokia Corporation v. Nokiagirls.com a.k.a IBCC,
WIPO Case No. D2000-0102; America
Online, Inc. v. Anson Chan, WIPO Case
No. D2001-0004; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City
and Cupcake Patrol, WIPO Case No. D2001-0489.
The same applies under the Policy.
The disputed domain name wholly incorporates the dominant feature of the Complainant’s registered Australian trademark LAMPE BERGER. The addition of the suffix “.com.au” does not serve to distinguish the domain name from the mark. The domain name is essentially identical to the mark. The Complainant has established this element.
B. Rights or Legitimate Interests
The Complainant having established, without contradiction, that it did not
authorize the Respondent to incorporate the Complainant’s trade mark in
the disputed domain name, the onus shifts to the Respondent to establish that
it has rights or legitimate interests in the domain name: Do The Hustle,
LLC v. Tropic Web, WIPO Case No. D2000-0624,
and the cases there cited. The Respondent has made no such showing. The Panel
concludes that the Complainant has established this element.
C. Registered or Used in Bad Faith
Unlike the UDRP, it is unnecessary for the Complainant to establish both bad faith registration and bad faith use.
Nevertheless, as established
in previous UDRP Panel decisions, of which the most frequently cited is Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003, although inaction does not itself constitute evidence
of registration and use in bad faith, it may do so where there is no obvious
justification for the selection of the domain name, where the Respondent has
not sought to put before the Panel any credible justification for selection
of the domain name and where it is difficult to conceive of any use of the domain
name which would not be likely to cause confusion: Google, Inc. v. Mohammad
Jabbari, WIPO Case No. DIR2005-0001.
Those circumstances are present here.
The Complainant has accordingly
established this element.
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 <lampeberger.com.au> be transferred to the Complainant.