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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Baccarat S.A. v. Travis Hawkins, ETL

Case No. D2006-1657

 

1. The Parties

The Complainant is Baccarat S.A., Baccarat, France, represented by MEYER & Partenaires, France.

The Respondent is Travis Hawkins, ETL, Modesto, California, United States of America.

 

2. The Domain Name and Registrar

The Disputed Domain Name <bacaraa.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 29, 2006. On December 29, 2006, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On January 25, 2007, InnerWise, Inc. d/b/a ItsYourDomain.com 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 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2007. The Response was filed with the Center on the due date.

On February 21, 2007, both parties requested a one-month suspension of the proceedings. The next day, the Center confirmed that the proceedings would be suspended until March 24, 2007. At the end of this period another request was made to further extend the suspension by an additional one month. On March 26, 2007, the Center confirmed that the suspension would be extended until April 25, 2007. On April 24, 2007, the Complainant requested that the proceedings be re-instituted.

The Center appointed Alistair Payne as the sole panelist in this matter on May 16, 2007. 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, Baccarat S.A. (formerly known as the “Compagnie des Cristalleries de Baccarat”) is a world famous manufacturer of crystal wares, including crystal chandeliers, since the eighteenth century.

The Complainant is the registered owner of the domain names <baccarat.com>, <baccarat.info>, <baccarat-crystal.com>, <baccarat-us.com>, <bacarratus.com>, <baccarat.fr>, <baccarat.eu>, <baccarat.jp> and <baccarat.co.jp>.

The Complainant is also the transferee of the domain names <crystalbaccarat.com>, <crystal-baccarat.com> and <baccaratjewellery.com> following WIPO Case Nos. D2003-0428, D2005-0048 and D2006-0038 respectively.

The Complainant is the registered owner of more than 700 trade marks world-wide, including the trade marks BACCARAT FRANCE + design, BACCARA” (verbal) and “B” (stylized letter) in the United States of America, under, among others, international class 11.

The Respondent is the registrant of the Disputed Domain Name since March 8, 2006.

A related trade mark, BACARAA, was applied for in international class 11 on June 13, 2006, by FAN-FI INTERNATIONAL, a name under which the Respondent conducts business.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Disputed Domain Name is confusingly similar to its domain names and trade marks and that the Respondent has registered and is using the Disputed Domain Name in bad faith to sell crystal chandeliers in competition with the Complainant.

The Complainant has stores world-wide and owns two crystal museums, each located in Paris and Baccarat, which attract 60,000 visitors yearly. A further exhibit of the Complainant’s products has been on show since 1948 in its New York headquarters.

In the United States of America, crystal goods, including chandeliers, have been sold by the Complainant since the beginning of the twentieth century. The subsidiary, Baccarat Inc, was incorporated in 1948 to act as the Complainant’s exclusive distributor there. The Complainant also sells its products online in the United States of America through the Neiman Marcus website, “www.neimanmarcus.com”.

On November 23, 2006, the Complainant sent a formal notice to the Respondent to cease and desist from using the Disputed Domain Name and to assign same to the Complainant. In a subsequent reply dated December 15, 2096, representatives for the Respondent stated that it would stop using the BACARAA” trade mark in connection with the sale of its goods by January 1, 2007, and cancel the mark entirely. The Respondent also informed the Complainant that it would continue in its use of the Disputed Domain Name “as a pointer to redirect viewers to a website to be developed” but that it would clearly state in a notation on the website that there was no link between the Respondent and the Complainant.

The Complainant believes that the Disputed Domain Name is identical to its trade mark BACCARAT except for the inclusion of the generic top level domain name “.com”, the omission of the second letter “C” and the replacement of the final letter “T” by a second “A”. The Complainant cites the decision of Microsoft Corporation v. Microsoft.com AKA Tarek Ahmed, WIPO Case No. D2000-0548 regarding the disputed domain name <microsof.com> which was transferred to the complainant in that case.

The Complainant asserts that the Disputed Domain Name was registered by the Respondent with the sole aim of diverting Internet users away from purchasing the Complainant’s crystal chandeliers and towards its own identical and competing product by creating a likelihood of confusion between the two names. The Complainant further asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name as it is not commonly known by this name and had no previous registered rights in the name (the Respondent’s trade mark application being made subsequent to the registration of the Disputed Domain Name). The Complainant believes that the Respondent could not have ignored its international trade mark rights and reputation for the manufacture and sale of crystal goods and therefore its aim was to disrupt the business of the Complainant for its own commercial gain.

The Complainant notes that the Respondent used a stylized “B” on its first website that was very similar to the Complainant’s “B” trade mark. It is submitted that the above constitutes bad faith on behalf of the Respondent.

The Complainant contends that the Disputed Domain Name is still being used in bad faith as it now redirects an Internet user to the website “www.dlegne.com” where the Respondent is still selling the same competing crystal chandeliers. The Complainant believes that this is not a fair or non-commercial use of the Disputed Domain Name.

B. Respondent

The Respondent contends that there is no likelihood of confusion between the Disputed Domain Name and the Complainant’s marks as they are not spelled in the same way and are pronounced differently. The Respondent further notes that when the trade mark BACARAA was registered in the United States Patents and Trademark Office, there was no finding that there was a likelihood of confusion with the mark and any other previously registered trade mark. The Respondent believes that this is evidence that the marks are not confusingly similar.

The Respondent asserts that the Disputed Domain Name was not registered in bad faith as it was used for a legitimate purpose. The BACARRA trade mark was first used in October 2006 to sell the crystal chandeliers and at this date the Respondent states that it modeled the name on the nearby hotel in Santa Barbara, “The Bacara Resort and Spa”. The Respondent further states that the last “a” was added to Bacara to give the name an “exotic” edge.

The Respondent further believes that its use of the Disputed Domain Name was in good faith and for a legitimate purpose as it cooperated fully with the Complainant’s requests in November, 2006 and even offered to display a notice on the “www.dlegne.com” website to the effect that it was in no way affiliated with the Complainant.

The Respondent maintains that it ceased using the trade mark after correspondences with the Respondent in November, 2006 only because it wished to avoid costly litigation and not because it believed that there was any merit to the Complainant’s case. The Respondent asserts that the only reason the Disputed Domain Name was retained past this date was to enable past customers who had previously purchased chandeliers to make contact in the event of any problems. The Respondent contends that it will only maintain the Disputed Domain Name as long as it may be needed by these past customers and then the Disputed Domain Name will be discarded. In any event the Respondent assures that it will not renew the registration of the Disputed Domain Name when it expires in March, 2008.

 

6. Discussion and Findings

If the Complainant is to succeed, he must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:

i. the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

iii. the Disputed Domain Names have been registered and are being used in bad faith.

The Panel will proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

The Panel accepts the extensive evidence of the Complainant demonstrating the extent of its rights in the BACCARAT mark and name and including evidence of the numerous domain names and trade marks registered world-wide. The Complainant operates stores in many countries across the globe and has been associated with crystal goods since the eighteenth century. The first of its trade marks in the BACCARAT name was registered in France as far back as December 29, 1860.

It is a well established rule that the inclusion of the generic top level domain name “.com” is not taken into account when evaluating similarity. The Panel notes the cases of GE Capital Finance Australasia Pty v. Dental Finance Services Pty Limited, WIPO Case No. DAU2004-0007 and A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., v. Party Night Inc., WIPO Case No. D2003-0172, in this regard.

The Panel notes that the only difference that exists between the Disputed Domain Name and the Complainant’s mark BACCARAT is the deletion of the second “c” and the final letter “t” and the inclusion of the final “A”. The Panel considers that “bacaraa” is both visually and aurally similar to BACCARAT and could easily be confused. Aural similarity is dependent upon the emphasis placed on vowels and syllables, but in the Panel’s view there remains a significant risk of overall confusion.

The Panel notes the case of Sodexho Alliance v. LaPorte Holdings,Inc WIPO Case No. D2005-0287 in which one of the domain names at issue <sodexohopass.com>, was held to be confusingly similar to the complainant’s mark “SODEXHO” as only the letter “H” had been deleted and the letters “HO” had been added. The panel noted in that case that it was a typical case of typosquatting as the domain name at issue was so alike the complainant’s mark that it was likely that consumers would be confused.

Based on the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark and that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The burden of proof lies with the Complainant to establish a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent must rebut this assertion.

The Panel considers that the Respondent has offered no evidence to suggest that it has a right or legitimate interest in the Disputed Domain Name. The goods offered by the Respondent under the Disputed Domain Name are of the same or a similar nature to the Complainant’s goods. The Panel finds it extremely difficult to believe that the Respondent could be unaware of such a major competitor in the crystal and crystal chandelier manufacturing business when it decided upon the Disputed Domain Name. It is noted that the Complainant has carried on this business for at least 200 years and is widely known as a crystal manufacturer. Accordingly, the Panel does not accept the Respondent’s assertions that the Complainant’s trade mark “did not come to the minds” of the Respondent’s when choosing a name for its chandelier manufacturing business. The Respondent’s application for registered trade mark rights although possibly indicative of a legitimate interest, is not persuasive in these circumstances.

The Respondent is currently using the Disputed Domain Name to direct Internet users to the website “www.dlegne.com” where competing crystal chandeliers are being sold. This cannot be said to be a non-commercial or fair use of the Disputed Domain Name. The Panel notes the Respondent’s claim that the sole reason the Disputed Domain Name is still in operation is to enable previous customers to contact them in the event of a problem. However, the Panel very much doubts the credibility of this explanation. The Respondent could easily utilise other methods of maintaining contact, such as by sending a circular letter or e-mail to customers.

For these reasons and in view of the finding under paragraph 4(b)(iv) as set out below, the Panel finds that the Complainant has succeeded in making out its case that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Panel finds that the Complainant fulfills paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy it shall be deemed to be evidence of registration and use in bad faith if the use of a domain name is intended to attract, for commercial gain, Internet users to a site, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of a website.

As the two parties in this case sell a competing product, the most likely reason for the registration and use of such a similar name is to attract business away from the Complainant and redirect it to the Respondent’s own products. As previously stated the Panel finds it near impossible to accept that the Respondent was not aware of the similarity between the Disputed Domain Name and the Complainant’s mark when it registered the Disputed Domain Name in March, 2006. At this time the Complainant was a world-wide manufacturer of crystal goods, including chandeliers, established for many years and trading under a very well known, if not a famous trade mark. The Respondent operating in the same industry must have been aware of the Complainant’s crystal product range.

In addition to this, the Respondent continues to use the Disputed Domain Name to direct Internet users to its new website “www.dlegne.com” through which it sells crystal chandeliers. The Panel believes that this is an attempt create a likelihood of confusion with the Complainant’s mark in order to attract consumers to its website.

Accordingly, the Panel finds that paragraph 4(b)(iv) of the Policy is satisfied and that the Respondent has registered and used the Disputed Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.

Dated: May 30, 2007