The Complainant is Frederic Krief of St. Tropez, France, represented by Cabinet Poulmaire-Jacob, France.
The Respondent is N/A / Luis Zamora of Old Stone Bolingbrook, Illinois, United States of America (the "USA").
The disputed domain name <berenice.com> (the "Disputed Domain Name") is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2011. On October 6, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On October 6, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent named in the Complaint is not the registrant of the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 19, 2011. 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” or “UDRP”), 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 October 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2011. The Response was filed with the Center on November 6, 2011.
The Center appointed Gabriela Kennedy, Nathalie Dreyfus and Andrew J. Park as panelists in this matter on December 19, 2011. 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 Complainant is an individual residing in France, who has carried on the business of selling clothing under the name "Berenice" since 2004 and whose business presently extends to sales of accessories and decoration items. The Complainant owns seven registrations for the BERENICE trade mark in France and internationally, the earliest of which include device mark registrations registered in France on September 2, 2005 and internationally (for various countries, including the USA) on October 12, 2006. The Complainant also holds two domain name registrations incorporating “Berenice”, namely <berenice.net> registered on August 31, 2001 and <berenice.tv> registered on May 15, 2006.
The Respondent is an individual residing in the USA, who operates a multimedia business through the company Internexos, Inc. (the "Company"), incorporated in the USA on September 24, 2007, which Company the Respondent solely owns. According to the WhoIs records, the Disputed Domain Name was registered on February 25, 2008, but a WhoIs history search indicates that the Disputed Domain Name was in fact originally registered on December 9, 1998 (by an unknown registrant). The Disputed Domain Name was acquired by the Respondent through purchase from “SnapNames.com, Inc.” on April 9, 2011. As at the date of this decision, the Disputed Domain Name does not resolve to an active website (the "Website"). According to the submissions made by the Complainant in the Complaint, following a request to “SEDO” for the removal of the Disputed Domain Name from their platform made by the Complainant's representatives on August 24, 2011, “SEDO” informed the Complainant's representatives on August 26, 2011 that the Disputed Domain Name had been blocked for all services.
The Complainant's contentions can be summarised as follows:
(a) The Disputed Domain Name is identical or confusingly similar to the Complainant’ BERENICE mark, in which the Complainant has rights:
(i) the Complainant is the owner of seven trade marks for BERENICE and holds two domain name registrations incorporating the term “Berenice”, of which two trade marks and both domain names were registered prior to the registration of the Disputed Domain Name;
(ii) since 2004, the Complainant has been marketing mainly clothing products under the trade mark BERENICE;
(iii) the Complainant owns 45 stores in France and two in Belgium that trade under the name "Berenice". The Complainant's products are also available in 17 main stores in France;
(iv) the Complainant operates two websites at “www.berenice.net” and “www.berenice.tv” (the "Complainant's Websites"), on/through which his products can be purchased; and
(v) the Disputed Domain Name entirely reproduces the Complainant's BERENICE trade marks.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) the Respondent does not need to use the Disputed Domain Name for his activities as his (sur)name is Zamora, which is completely different from "Berenice";
(ii) the Complainant has never licensed nor otherwise permitted the Respondent to use his BERENICE trade marks to register any domain name;
(iii) there is no relationship between the Complainant and the Respondent; and
(iv) the Respondent has no activity on the Website and does not have any commercial or professional activity in connection with the name "Berenice".
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) before registering the Disputed Domain Name, the Respondent must have been aware of the existence of: the clothes and accessories sold by the Complainant under the BERENICE trade mark; the seven BERENICE trade marks registered by the Complainant since 2005; the Complainant's domain names <berenice.net> and <berenice.tv>; and the Complainant's Websites;
(ii) the Disputed Domain Name was intentionally registered without any rights or legitimate interest by the Respondent, with the only purpose of disrupting the business of a competitor;
(iii) the Disputed Domain Name was offered for sale via “SEDO platform” at the very high price of US$10,000. It is reasonable to assume that the Respondent registered the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor of the Complainant for valuable consideration; and
(iv) the Website has no current activity whatsoever and nothing shows any such intention, which shows that the Respondent does not need the Disputed Domain Name for his business.
The Respondent's contentions can be summarised as follows:
(a) The Disputed Domain name is not identical to the Complainant's BERENICE mark and the Complainant does not have exclusive rights to the name "Berenice":
(i) the Disputed Domain Name was registered for the first time on or before October 1, 1999. None of the Complainant's trade marks are dated before this date (the Panel notes that the Disputed Domain Name was not registered by the Respondent until April 9, 2011);
(ii) the name "Berenice" is a generic name first mentioned in Greek history in 350 BC. Since it has no particular meaning in connection with fashion, it can be used for marketing services, as intended by the Respondent; and
(iii) the Disputed Domain Name does not entirely reproduce the BERENICE trade marks, since the trade marks are for the name "Berenice", not “berenice.com”.
(b) The Respondent does have rights or legitimate interests in the Disputed Domain Name:
(i) the Website is a marketing tool not related at all to the clothing industry;
(ii) since purchasing the Disputed Domain Name in an auction from “www.snapnames.com” on April 4, 2011, the Respondent has been using it and making continuous efforts to develop the Website with reference to his marketing Company;
(iii) the Respondent owns the Company, a legal Internet company incorporated in the USA with operations only in the USA. The Respondent purchased the Disputed Domain Name for the purpose of marketing in the USA to increase presence on the Internet of the Respondent's growing Company;
(iv) "Berenice" is a Greek name that can attract high traffic to the Website; and
(v) since purchasing the Disputed Domain Name on April 4, 2011, the Respondent has used it multiple times online and offline and has been working on domain development. The Respondent was in the process of developing the Disputed Domain Name (including the home page and 'about us' page of the website) and the final launch of the website was scheduled soon, but has been held off due to these proceedings.
(c) The Disputed Domain Name has not been registered and is not being used in bad faith:
(i) the Respondent has never heard of the French clothing company "Berenice" and was not aware of the Complainant's operations at the time of purchasing the Disputed Domain Name. While the Complainant has stores in France and Belgium only, the Respondent's operations and business are in the USA;
(ii) the Respondent has never had the intention of using the Disputed Domain Name for clothing or a confusingly similar business operation to the Complainant. The Respondent's Company is e-business based on Internet traffic and related to marketing services. The Disputed Domain Name was purchased with no intention to compete directly or indirectly with the Complainant's Websites and the Respondent had no knowledge of the use of the domain names <berenice.net> and <berenice.tv>;
(iii) the Respondent has never contacted the Complainant to sell the Disputed Domain Name. The Disputed Domain Name was parked at “www.sedo.com” while it was being developed as the Respondent had invested thousands to purchase it; and
(iv) the Respondent made the legitimate and honest effort to remove the Disputed Domain Name from “www.sedo.com” upon request from the Complainant and fully complied immediately, at his own expense.
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(a) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in respect of the BERENICE trade mark on the basis of his various registrations for such mark in France and internationally dating from 2005 and his unregistered rights acquired by use of the "Berenice" name in France since 2004.
Contrary to the Respondent's submissions on this issue, it is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.com”, should be disregarded (Rohde & Schwartz GmbH & Co. KG v Pertshire Marketing Ltd, WIPO Case No. D2006-0762).
The Disputed Domain Name incorporates the BERENICE trade mark in its entirety and in terms of both visual and aural characteristics, is an identical reproduction of the Complainant's trade mark.
The Panel accordingly finds that the Disputed Domain Name is identical to the BERENICE mark in which the Complainant has rights, and that element 4(a)(i) of the Policy is satisfied.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) ("WIPO Overview") states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the onus shifts to the respondent who must discharge the burden of proving that it has rights or legitimate interests in the disputed domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant contends that the Respondent is not in any way related to the Complainant and is not on any other basis licensed or authorised to use his BERENICE mark. Further, the Complainant submits that the Respondent is not known by the “Berenice” name and has no need to use this name. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and the Respondent has the burden of proving that it does possess such rights or legitimate interests.
The Respondent contends that "Berenice" is a generic name and the Panel notes that a cursory search on the search engine Google reveals that "Berenice" is a recognised female name in the English language and is also a name that carries various historical and literary references, as is submitted by the Respondent. Given that various panels have acknowledged that complainants cannot assert exclusive rights under the UDRP in fairly short, non-fanciful names in respect of unrelated fields of business (see Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654, in respect of the name "Tammy"; Gail Guarulhos Indústria e Comércio Ltda. v. Kevin Watson, WIPO Case No. D2006-0655, in respect of the name "Gail"; Sallie Mae, Inc. v. Michele Dinoia, WIPO Case No. D2004-0648, in respect of the name "Sallie"; and Deanna S.p.A. v. Worldwide Media Inc., WIPO Case No. D2003-0964, in respect of the name "Deanna"), the Panel is inclined to find that the Respondent had rights to and/or legitimate interests in the registration of the Disputed Domain Name for use in relation to offering multimedia marketing services. The Panel is persuaded to arrive at such finding by the additional fact that the Respondent appears to have made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of services, namely multimedia marketing services, as evidenced by screenshots of the home page (which refers to the "Bernice Marketing Group") and 'about us' page of the developing Website. Although the Website is currently inoperable and archived Internet searches for the Website produce no results, such that the Panel is unable to confirm the previous contents of the Website, the Panel notes that a website operated by the Respondent's Company at “www.internexos.com” uses a home page that is identical to that of the Website, and in the absence of any indications of dishonest conduct on the part of the Respondent, the Panel is prepared to accept the veracity of the Website printouts provided by the Respondent. Further, the Panel finds that the Respondent's assertions as to the justifications for the use of the name "Berenice" in respect of his proposed services (as contained in the Response and in the 'about us' page of the Website), namely that it is a name capable of generating high Internet traffic given its cultural and literary connotations, and is a name suitable for promoting marketing services by lending a feminine and interpersonal touch, are on balance credible.
The Panel accordingly finds that the Complainant has not satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. However, as the Panel can anticipate that use of the name "Berenice" in the Disputed Domain Name may not be per se descriptive, it will proceed to discuss its findings under the third element of the Policy.
Paragraph 4(a)(iii) of the Policy requires the Complainant to establish that the Respondent registered and used the Disputed Domain Name in bad faith.
For the Complainant to succeed in this claim, the Complainant must satisfy the Panel that the Respondent knew or was likely to have known of the Complainant's BERENICE trade mark at time of registering the Disputed Domain Name (that is, upon the Respondent's acquisition of the Disputed Domain Name on April 9, 2011). Although the Complainant has provided some evidence of the repute of its BERENICE mark, the Panel notes that the evidence suggests that such repute is limited to the French fashion industry. In light of this, and also considering the absence of any evidence that the Respondent has targeted the Complainant in any way through the registration and/or use of either the Disputed Domain Name or the Website, the Panel is unable to find that Respondent, an individual residing in the USA and operating in the field of multimedia marketing, was more likely than not aware, or had knowledge, of the Complainant at the time of registering the Disputed Domain Name. The Panel also considers that the offer for sale of the Disputed Domain Name via “SEDO platform” by the Respondent is, of itself and without other supporting factors, insufficient evidence to support the Complainant's contention of bad faith registration on the basis of registration primarily for the purpose of selling the Disputed Domain Name to the Complainant or a competitor of the Complainant for valuable consideration.
The Panel accordingly finds that the Complainant has failed to discharge the burden of proving that the Respondent registered the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has not been satisfied.
As the Panel finds that the Complainant has failed to discharge its burden of proving under paragraph 4(a)(iii) of the Policy in respect of bad faith registration, it considers it unnecessary to proceed to consider the satisfaction or otherwise of the requisite elements regarding bad faith use.
For all the foregoing reasons, the Complaint is denied.
Gabriela Kennedy
Presiding Panelist
Nathalie Dreyfus
Panelist
Andrew J. Park
Panelist
Dated: January 2, 2012