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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Produits Berger v. Romana Go

Case No. DPH2005-0001

 

1. The Parties

The Complainant is Produits Berger, Paris, France, represented by Novagraaf, France.

The Respondent is Romana Go, Caloocan City, Philippines.

 

2. The Domain Name and Registrar

The disputed domain name <lampeberger.com.ph> is registered with DotPH.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2005. On April 7, 2005, the Center transmitted by email to DotPH a request for registrar verification in connection with the domain name(s) at issue. On April 8, 2005, DotPH 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 satisfied the formal requirements of the dotPH Domain Name Dispute Resolution Policy (the “Policy”), the Implementation Rules for dotPH 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 May 24, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2005. The Response was filed with the Center on June 10, 2005.

The Center appointed Knud Wallberg as the Sole Panelist in this matter on June 24, 2005. The Panel finds that it was properly constituted. 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 has operated in France since 1898. The Lampe Berger mark has been promoted internationally for many years and has been the subject of overseas exports and by a worldwide mail order business. The Complainant has also introduced satellite stores such as in Taiwan, Canada, and United States.

The Complainant has actively operated the Internet website “www.lampeberger.fr”. The site includes information on the Complainant’s and the products available, together with information about the Complainant’s history.

The Complainant has used, registered or applied to register the mark LAMPE BERGER and LAMPES BERGER as word mark and figurative mark in many countries around the world, including in the Philippines, and for a wide variety of goods.

The Complainant is also the owner of a large number of domain names incorporating their trademark some of them which has been transferred to them as a result of other UDRP proceedings.

No specific information has been provided about the Respondent except from what is referred to in the following.

 

5. Parties’ Contentions

A. Complainant

The following is taken from the Complaint:

I. The domain name is identical to trademarks and domain names in which the Complainant has rights
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

The domain name <lampeberger.com.ph> is confusingly similar to the Complainant’s trademarks. The only difference between the Respondent’s domain name and the Complainant’s LAMPE BERGER trademark is the addition of the word “.com.ph”.

The domain name incorporates a non-distinctive word and is confusingly similar to the Complainant’s trademarks.

The Complainant has extensive registered rights in the trademark LAMPE BERGER for a wide range of goods, which predate the Respondent’s registration of the Domain Name.

The domain name in dispute consists of this trademark with the addition “.com.ph”. The domain name is thus not identical to the Complainant’s trademark. The question is then whether the domain name is confusingly similar to the trademark.

The term “lampeberger” must be said to be the dominant and distinctive component of the domain name. This term is identical to the Complainant’s trademark, which must be said to be very famous. The dominant “lampeberger” comes first in the domain name, and thus leaves the impression that the domain name is in some way linked to the owners of the LAMPE BERGER trademark.

It is well settled that a domain name suffix, such as the words “com” and “ph” in the present case, are merely descriptive and do not add any distinctiveness to the word “lampeberger”, which is the quintessential and distinctive part of the Domain Name. See Harrods Limited v. Vineet Singh, WIPO Case No. D2001-1162, where the Panel held that “… any use of the name Harrods in conjunction with a description… would suggest a false sense of origin…for any associated goods or services”.

Considering that the term “lampeberger” is clearly the dominant in the domain name, and especially in light of the first added term being identical to the international Top Level Domain under which the Complainant’s website providing their goods is registered, (“www.lampeberger.com”), the addition of the term “.com” only leaves and even strengthens the impression that the domain name is in someway affiliated to the Complainant.

The term “.ph” of the domain name identifies the national Top Level Domain under which the domain name is registered. The addition of this Top Level Domain leaves the impression that the domain name is the ‘national site’ of the Complainant. Thus, the addition of the terms “.com.ph” does not have the necessary distinguishing effect, and these additions to the trademark are not sufficient to prevent the domain name from being confusingly similar to the trademark.

Consequently, because of this identity, there is a high risk of confusion, as a consumer may think that the domain names directly refer to the Complainant’s products.

II. The Respondent has no rights or legitimate interests in respect of the domain name
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

According to paragraph 4(a)(ii) of the Policy, the Registrant has to prove that he has rights or legitimate interests in the Domain Name.

However, if the registrant uses the domain name “or tarnish the trademark”, he could not claim any right or legitimate interest.

The domain name in dispute is identical, or at the very least, confusingly similar to the Complainant’s LAMPE BERGER trademark. The only difference between the Complainant’s own domain name, <lampeberger.com> or trademarks, and the domain name in dispute, is the “.ph” extension.

The Respondent has no affiliation to the Complainant, and has not been granted any license or authorization to use the LAMPE BERGER trademark in a domain name. The Respondent is not authorized to advertise through the Complainant’s website.

The Respondent has not been commonly known by the name “lampe berger” (paragraph 4(c)(ii) of the Policy). The Respondent has no rights on the domain name, nor legitimate interest to this domain name as it does not correspond to its corporate name and that the Respondent does not own a corresponding trademark, at least to the knowledge of the Complainant.

The Respondent has not replied to the Complainant’s contentions and therefore it must be deduced from this that the Respondent does not have any grounds or legal basis for claiming any rights to or legitimate interests in the Domain Name for the purposes of paragraph 4(c) of the Policy. In any case, the Complainant has not licensed or otherwise authorized the Respondent to use its trademark as part of its Domain Name. In Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437, it was held that “In the light of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and that the mark IKEA is not one that the Respondent would legitimately choose….. unless seeking to create an impression of an association with the Complainant, this Panel finds that the Respondent has no rights or legitimate interests in the domain name”.

Also, in view of the notoriety of the name LAMPE BERGER both nationally and internationally (see Produits berger v. Sam Wong, WIPO Case No. D2002-0436, where the Panel found that “Given the international reputation of Complainant’s trademark in its business sector and the fact that the Complainant has registered the mark in many nations …”; and Produits Berger v. Standard Project Limited, WIPO Case No. D2002-0518, which considered the “the Complainant’s trademark has a strong reputation and is widely known”, the Respondent cannot make a legitimate non-commercial or fair use of the domain name without intent for commercial gain or the intent to tarnish the Complainant’s trademark (paragraph 4(c)(iii) of the Policy).

Therefore, it is quite unlikely that a ‘coincidence’ has been given in the present case. On the contrary, it seems that the Respondent was clearly aware of the existence of the Complainant’s trademarks and did not register the disputed domain name for other purposes than to include the Complainant’s trademarks in said domain name.

The Respondent, who has no legitimate interest in respect of the domain names in dispute, registered the domain names with the intention to divert consumers and to prevent the Complainant from reflecting the mark in a corresponding domain name.

Indeed, the Respondent has made no bona fide use of the domain names in dispute because of his lack of authorization to use the trademark LAMPE BERGER. Furthermore, using a domain name in order to divert consumers for commercial gain cannot be characterized as a fair use. Trip.com v. Daniel Deamone, WIPO Case No. D2001-1066.

The Complainant is the sole owner of the above trademarks in France, in Philippines as well as in many countries in the world. Therefore, Romana Go, which has no link of any nature with the Complainant, does not have a legitimate interest to use the name “LAMPE BERGER”:

III. Registration and use in bad faith
(Policy, para. 4(a)(iii), Rules, para. 3(b)(ix)(3))

Under Section 2 of the ICANN Policy, it is established that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party.

As the dotPH UDRP limits those rights to the country where the nameholder resides or conducts business, Complainant concentrates the debate to the Philippines.

Complainant owns various trademarks and domain names, notably in Philippines. Moreover, since Complainant’s trademarks are well known worldwide, it is very unlikely that Respondent, at the time he registered the Domain Name, was not aware that he was infringing Complainant’s trademarks see Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397.

The mere holding of a domain name that is identical or confusingly similar to a trademark belonging to a third party in itself can be considered disrupting the business of the trademark owner. The domain name in dispute is comprised of the Complainant’s trademark LAMPE BERGER.

Moreover, the Complainant has used its trademarks continuously and extensively in international commerce in connection with perfume diffusers and related products in Asia. It has also invested substantial sums of money in developing and marketing its goods. They believe that they have developed a strong degree of trademark recognition for these marks as they have been using them for more than a century.

The Complainant’s LAMPE BERGER trademarks have become famous and widely reputed. The first argument in support of the Complainant’s assertion of the Respondent’s bad faith in the registration of the domain name <lampeberger.com.ph> is based on the renown of the LAMPE BERGER trademarks and the Complainant’s activity. Hence, the Respondent could not be unaware of the Complainant’s existence and renown when he registered the domain name <lampeberger.com.ph>.

On September 17, 2004, NOVAGRAAF FRANCE on behalf of the Complainant wrote to the Respondent demanding the disputed domain name be transferred to the Complainant within three weeks, outlining their position and insisting that Romana Go immediately discontinue use of the dispute domain name. A copy of the letter of demand is attached as annex to the Complaint.

Further to this letter, Respondent said that she was open to discussions of transfer of the Domain Name to our client, if our client manage to pay 10,260 United States dollars in counterpart of the expenses incurred on website development and hosting fees, payment system installation, marketing consultancy and promotional expenses.

The assertion of the Respondent in this letter, that to make the request in a polite, non-accusatory manner”. The Complainant made clear that it was not prepared to pay any more than out-of-pocket expenses.

The Respondent responded to that email by making a counter-offer amounting to 3,375 United States dollars.

The natural and obvious conclusion is that the Respondent was only prepared to enter into “discussions” on the basis that more than out of pocket expenses would be paid shall be evidence of the registration and use of a domain name in bad faith:

In effect, according to paragraph 4(b) of the policy “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location”.

Finally, when accessing the website connected to the disputed domain name, it shows that the Respondent is well aware of the name, trademark, website owned by the Complainant. This also means that he must have been fully aware of the significant goodwill built up in the trademark by the Complainant.

It is clear that the Respondent’s conduct leaves no doubt that he both registered and used the domain name in bad faith. The Respondent has exploited the goodwill of a world famous trademark and the equally famous website of the Complainant, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute, and by that attracts Internet users to his own website or to other online locations.

The practice of attracting Internet users by creating a likelihood of confusion has been considered evidence of bad faith in several previous panel decisions under the ICANN UDRP, see for example America Online, Inc. and AOL International WIPO Case No. D2000-0654, FOCUS DO IT ALL GROUP and others v. ATHANASIOS SERMBIZIS, WIPO Case No. D2000-0923 and Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.

The Respondent’s conduct is clearly motivated by the Respondent’s intent for commercial gain. The domain name is used to attract potential customers to the Respondent’s website and other sites, offering various products and services.

The evidence is that the Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trade dress of the Complainant’s website, and (3) it has otherwise sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which seeks to use confusion over source of its site to attract for commercial gain customers of the Complainant. Its actions fulfil the bad faith requirements of paragraph 4.b.(iv) of the Policy. As a result the activity is deemed to fulfil the bad faith use and registration requirements of paragraph 4(a)(iii).

B. Respondent

The following is taken from the Response:

I. The domain name is identical to trademarks and domain names in which the Complainant has rights

The Complainant is concerned that “there is a high risk of confusion, as a consumer may think that the domain names directly refer to the Complainant’s products”.

The Respondent maintains that since the promotes sale of authentic and original Lampe Berger products duly authorized for distribution in the Philippines there is no risk of confusion. The Respondent, in fact, is a registered distributor of the said products and in good faith invested time and money in making a site that would be of the complimentary and beneficial interest for Lampe Berger’s business in the Philippines.

The Respondent does not make any claim to the said mark.

II. The Respondent has no rights or legitimate interests in respect of the domain name

The legitimate interest of the Respondent on the domain name <lampeberger.com.ph> lies on her official distributorship of the LAMPE BERGER products in the Philippines.

The Respondent does claim that it is affiliated with the Complainant by virtue of this official distributorship.

The intent of the Respondent in registering the domain name <lampeberger.com.ph> is to promote the LAMPE BERGER business in the Philippines. The argument that it has “an intent to tarnish the Complainant’s trademark” does not hold merit because the Respondent’s business directly benefits from the good name of its principal who happens to be the Complainant. A tarnished LAMPE BERGER trademark is inimical to the interest of the Respondent.

Moreover, the Respondent denies that it “registered the domain names with the intention to divert consumers and to prevent the Complainant from reflecting the mark in a corresponding domain name”. On the contrary, the Respondent seeks to attract Filipino consumers to buy LAMPE BERGER products by making it available via the Internet with an online payment system. The Respondent, in fact, wishes to make LAMPE BERGER products accessible to Filipino consumers by offering online ordering, online payment and free delivery. The said services, unfortunately, are not directly extended by LAMPE BERGER in the Philippines.

Therefore, the Respondent belies and is extremely hurt at the accusation that she has no bona fide use of the domain name in dispute. She also objects to the insinuation that she unfairly used the domain name to divert consumers.

III. Registration and used in bad faith

The Respondent’s holding of the domain name <lampeberger.com.ph> does not disrupt the business of the trademark owner. In fact, it ENHANCES the business of the trademark owner by making LAMPE BERGER products easily accessible to the Filipino consumer.

The use of the subject domain name was done not in “opportunistic bad faith” but on “synergistic complementation” which is the essence of a business partnership. This partnership was sealed when the Respondent was issued her official distributor number at the authorized center on LAMPE BERGER in the Philippines.

The Respondent indeed indicated willingness to transfer the domain name after the reimbursement of the 10,260 United States dollars she spent on website design, development and hosting fees, payment system installation, marketing consultancy and promotional expenses. Note that her letter it is clearly stated that the said amount includes her calculation of the goodwill so far created by the reasonably successful website. An experienced businesswoman, the Respondent believed, and still believes, that this is a viable investment because the LAMPE BERGER brand deserves a webshop with a professional, classy, remarkable and opulent “look and feel”. The Respondent was willing to invest money in a product and a business she had faith in. Considering the stature of the consultants employed, the technologies incorporated in the website, and the time it took to get the website off the ground, this amount is very much justified.

The Respondent never agreed to the Complainant’s offer that only out-of-pocket expenses shall be reimbursed. In fact, the Complainant never made such an offer.

The conclusion that the counter-offer amounting to 3,375 United States dollars was in “bad faith” is neither natural nor obvious. It does not even have any logical basis. In the December 13, 2004 e-mail of the Respondent (Annex 18), it was very clearly stated that “this amount represents only a small portion of [the Respondent’s] expenditures related to the website…” The Respondent also expressed the wish “to protect [her] business relationship with the LAMPE BERGER representative office in the Philippines”.

On the contrary, it is the Complainant’s offer of $400 which has no sound basis and which, in fact, displays bad faith. The ridiculously meagre amount undermines the time and effort put by the Respondent into the website that promotes the LAMPE BERGER business in the Philippines.

The Respondent prays that the domain name be maintained as her property.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) that the Respondent has no legitimate interests in respects of the domain name; and

(3) the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The contested domain name contains the Complainants trademark Lampe Berger in full, with the addition of the non-distinctive designation of the “.com.ph” toplevel domain. For the purpose of these proceedings the domain name must be considered identical to Complainants trademark, which is registered also in the Philippines.

The prerequisites in the Policy, paragraph 4(a)(i) are therefore fulfilled.

B. Rights or Legitimate Interests

According to the Complaint the Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Respondent, however, claims that she is a “registered distributor of the said products”. This claim is not explained or otherwise substantiated in the response and is contrary to the specific claims of the opposite made by Complainant. Under these circumstances the burden of proof of rights or legitimate interest must lie with the Respondent.

The Respondents claim may find some support in the fact that on the website, for which the contested domain name is used, Respondent offers goods bearing the trademark of the Complainant including oils and other accessories. However, in view of this Panel it is a common principle of trademark law that an agent or reseller that is engaged in legitimate sale and distribution of trademarked goods does not have any rights to register the said trademark as trademark, business name or domain name without explicit consent of the trademark owner, cf. the principles of art 6 septies of the Paris Convention. Even if Respondent was engaged in legitimate although not specifically authorized sales of Complainants products, and thus may have a legitimate interest in and rights to use the trademark for promoting theses goods, this does not establish such rights or legitimate interest for the purpose of these proceedings that may legitimize registration of the contested domain name.

The Panel has reviewed quite a number of WIPO UDRP decisions on this issue, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.3, such as Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095, Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160, Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, and Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481. The Panel would like to note that even if it were to endorse the view expressed in e.g. the Oki Data decision, the Oki Data test would not be applicable in the present matter since the Respondent is, as discussed above, most likely not an authorized dealer of the Complainant.

Respondent’s registration and use of the contested domain names does thus not fall under any normative fair use doctrine, and consequently the prerequisites in the Policy, paragraph 4(a)(ii), cf. 4(c) are also considered fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith. Paragraph 4(b) regulates, by way of example, the kind of evidence that is required.

Complainant’s trademark LAMPE BERGER/LAMPES BERGER must be considered to be well known also in the Philippines - a fact that is not disputed by the Respondent. It is also clear that Respondent was fully aware of Complainant and Complainants rights to the mark when he registered the domain name and that the domain name is actively used.

The corresponding website gives the visitor the impression that it is an “official website” or at least a website that is endorsed by the Complainant. There is no disclaimer or other information to the contrary i.e. information that could explain the Respondents claimed relationship with Complainant as being an official distributor of Complainants products. The Panel therefore finds that the Respondent by registering and using the domain name intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain.

Bearing these facts and the facts mentioned above under A) and B) in mind, the Panel finds that the domain name has been registered and is being used in bad faith, cf. paragraph 4(a)iii and 4(b).

Consequently, all the prerequisites for cancellation or transfer of the domain name according to paragraph 4(a) of the Policy are fulfilled.

The Complainant has requested transfer of the domain name.

 

7. Decision

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.ph> be transferred to the Complainant.


Knud Wallberg
Sole Panelist

Dated: July 5, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/dph2005-0001.html

 

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