WIPO Domain Name Decision: D2006-0038

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Baccarat SA v. Web Domain Names

Case No. D2006-0038

1. The Parties

The Complainant is Baccarat SA, Baccarat, France, represented by Meyer & Partenaires, France.

The Respondent is Web Domain Names, Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <baccaratjewelry.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2006. On January 12, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On January 17, 2006, Moniker Online Services, LLC 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 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 January 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2006.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on February 14, 2006. 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 registered the trademark BACCARAT FRANCE & DEVICE in class 21 for the first time in 1860, in France for articles made of glass. The Complainant used the registered trademark as of that year in connection with the aforementioned goods. It has further registered the aforementioned trademark in many countries. In addition the Complainant has used the word “Baccarat” as part of its trade name when it was registered as COMPAGNIE DES CRISTALLERIES DE BACCARAT in 1881. Prior to that, the Complainant used the word “Baccarat” as part of its trade name with the first use dating back to 1817, as it used the trade name “Verrerie de Voneche a Baccarat”. Then the name “Cristalleries de voneche-Baccarat” in 1824.

The Complainant has various registrations of the trademark BACCARAT alone as well and they cover various classes (8,11,14,16,21,34).

The Complainant has started manufacturing jewelry in 1993, under the trademark BACCARAT.

The Complainant has registered domain names including the trademark BACCARAT. The Panel verified the registration of the domain name <baccarat.com>, which shows that it has been created in 1995. The Complainant submitted proof of registration of various domain names which have been registered in recent years.

The disputed domain name was registered on January 8, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant contends and relies on the facts stated in the section “factual background” above.

The Complainant contends that:

- The disputed domain name is confusingly similar to its trademark as the trademark BACCARAT is entirely reproduced and the descriptive word “jewelry” is added to the trademark. The only distinctive element of the disputed domain name is the trademark BACCARAT which belongs to the Complainant and is a well known trademark. The descriptive word “jewelry” is related to the business of the Complainant who started in 1993, to manufacture jewelry. Accordingly, such domain name suggests a link to the Complainant.

- The Respondent has no rights or legitimate interests in the disputed domain name as it is in no way related to the Complainant or the latter’s business. No license or authorization was granted to the Respondent by the Complainant to register the domain name.

- The Respondent is taking advantage of the well-known trademark belonging to the Complainant through its use as part of the disputed domain name. By doing so, it is diverting users of the internet to other web-sites.

- Nothing indicates the Respondent’s legitimate right or interest in the domain name nor is it using it in a fair or a non-commercial manner. Furthermore there does not seem to exist anything which indicates a use or preparation to use for a bona fide offering of goods or services.

- The Respondent has not registered the domain name but the registration was transferred to it. It is bound by the same obligations that apply to its predecessor in title (i.e. the “Transferor”). The Respondent acquired this domain name in bad faith as it is not thinkable that it was not aware of the existence of the trademark BACCARAT, which is a well-known trademark.

- Combining the word “jewelry,” which is a field of activity of the Complainant, with the trademark that belongs to the Complainant proves the bad faith of the Respondent. By doing so, the Respondent is trying to generate profit by the internet traffic related to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The trademark BACCARAT belongs to the Complainant who registered it for the first time in 1860. The trademark was used by the Complainant prior to that date as part of its trade name. The various trademark and domain name registrations by the Complainant establish its ownership of the trademark BACCARAT. It is established that the Complainant is the owner of the trademark BACCARAT. This fact is further enhanced through the use of the trademark by the Complainant for almost two centuries. Based on these facts, the Complainant is the legitimate owner of the trademark BACCARAT and has, through its long use acquired a reputation and goodwill with the products it manufactures under this trademark.

The difference between the domain name <baccaratjewelry.com> and the Complainant’s trademark BACCARAT is in the addition of the words “jewelry” and the suffix “.com”. Adding the suffix “.com” does not create any distinctiveness which helps eliminate the possibility of confusion (see Nokia Corporation v. Firdaus Adinegoro/Beli Hosting WIPO Case No. D2004-0814). The word “jewelry,” which is in no way distinctive but is a generic name of products does not constitute a distinctive element either. In fact, the word “jewelry” is related to an activity conducted by the Complainant, which is the manufacture of jewelry. Linking this word with the trademark BACCARAT will create the impression that this domain name belongs to the Complainant and is a web-site that promotes the jewelry products of the Complainant. Accordingly, many internet users who know of the activity of the Complainant will be visiting this web-site thinking it will include information about such products. Such use is confusing to the consumer.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant.

B. Rights or Legitimate Interests

The trademark BACCARAT is owned by the Complainant as established. The Respondent is not associated with the Complainant or its business in any manner nor acts on its behalf. The Complainant contends that it has not given any authorization to the Respondent to use the trademark BACCARAT as part of the disputed domain name.

To demonstrate its rights or legitimate interests to the disputed domain name, the Respondent may establish any of the following elements:

i) that the Respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services;

ii) that the Respondent has been commonly known by the domain name;

iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of the Complainant.

When examining each of the above elements, Panel found that there is no offering of any goods or services by the Respondent in this case. The disputed domain name directs the user to a parking web-site. The Respondent has not submitted any proof demonstrating an intent or preparation to use the domain name in connection with a bona fide offering of goods and services.

The Panel does not find any association between the Respondent’s name and the disputed domain name which may indicate that the Respondent has been commonly known by the name “baccaratjewelry”.

The Panel also found that the Respondent can not argue that the disputed domain name was being used for “legitimate non-commercial or fair use” purposes. In fact, the Respondent is using the disputed domain name to direct the public to a web-site which contains links to other web-sites. The Panel believes that the Respondent receives commercial revenue from the display of these links.

Based on all of the above factors and the absence of rebuttal by the Respondent, the Panel finds no rights or legitimate interests of the Respondent in the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent did not register the disputed domain name but the domain name was transferred to it by the transferor. However, a transfer to a new registrant is considered as a new registration and the Respondent is bound by the same obligations as the transferor. The facts submitted in this case show that the acquisition and use of the disputed domain name by the Respondent is in bad faith.

This is demonstrated by the following facts:

1) Paragraph 4(b) of the Policy, which details the evidence of bad faith registration and use, states that: “(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.” The trademark of the Complainant was registered long before the registration of the disputed domain name and its acquisition by the Respondent. The trademark had also acquired a certain renown prior to the Respondent’s acquisition of the disputed domain name. The Respondent intended to benefit from the reputation of the trademark and divert internet users to its web-site. In InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075, the panel concluded that the respondent has “registered the domain name in a deliberate attempt to attract users to its planned web site for commercial gain due to confusion with Complainant’s mark”.

The disputed domain name links to a web-site that includes links to other commercial web-sites. The Panel finds that providing such links, the Respondent most likely obtains a financial return through visitors that were originally looking for the Complainant and its products. In reaching this conclusion, the Panel noted previous WIPO UDRP Decisions such as the decision Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, which concluded that the Complainant “has entered into commercial agreements whereby he benefits financially from visitors to his site who “click” on the different banner adds”.

2) The Complainant argues that the links also lead to the web-sites belonging to the Complainant. Such linking would suggest that the Respondent knew of the existence of the trademark of the Complainant. This is supported by the fact that the trademark BACCARAT is renown and has been used for a long time. Another indication of the Respondent’s knowledge of the trademark BACCARAT is the linking of the word jewelry to the trademark BACCARAT in the domain name. It is clear that the Respondent not only knew of the existence of the trademark but also of the fact that it is used in connection with jewelry.

3) The Respondent has been involved in various domain name disputes and has registered domain names that include trademarks belonging to third parties. The Panel considers these registrations indicate bad faith and show that the Respondent has a practice of using other parties’ trademarks in domain names. (See Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053).

For all of the above considerations, the Panel finds that the third element of the Policy has been established.

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<baccaratjewelry.com> be transferred to the Complainant.

Nasser A. Khasawneh
Sole Panelist

Dated: February 28, 2006