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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Produits Berger v. Daniel Alexandrescu / Silviu Prigoana

Case No. DRO2007-0006

 

1. The Parties

The Complainant is Produits Berger, of Paris, France, represented by NOVAGRAAF, France.

The Respondent is Daniel Alexandrescu / Silviu Prigoana, of Bucharest, Romania.

 

2. The Domain Name and Registrar

The disputed domain name <lampeberger.ro> is registered with RNC.ro.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2007. On July 5, 2007, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On July 6, 2007, RNC.ro transmitted by email to the Center its verification response indicating that Silviu Prigoana is listed as the registrant and providing the contact details. On July 16, 2007, Daniel Alexandrescu, indicating himself as the administrative contact for the disputed domain name, wrote an email to the Center informing that the owner of the disputed domain name is Silviu Prigoana and that the complaint should be amended accordingly. Further to the said emails of the Registrar and of Daniel Alexandrescu, the Complainant has filed an amendment to the complaint dated July 18, 2007, by which “it requests the modification of the Complaint and in particular of the appointment of the Respondent to the benefit of Mr. Silviu Prigoana”.

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”), 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 July 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2007. No formal Response, in the sense of paragraph 5(b) from the Rules, was filed in the case.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on August 28, 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.

Following the Center’s notification dated July 11, 2007, the Complainant informed the Center on July 16, 2007 that it wished to request English as the language of the proceedings, taking in consideration the following arguments, that:

- there is no particular clause in the Registration Agreement as preferred by the Registrar of the registration date to choose between English or Romanian as the controlling language of the Registration Agreement;

- the rules for name registration provided by the Registrar provide at article 10 that “ the language for communication with the registrants and registrars is Romanian and English”;

- Daniel Alexandrescu has corresponded with the Center in English and he does not contest that the language of the proceedings is English.

On July 17, 2007, Daniel Alexandrescu, acting apparently as the representative of the Respondent, objected to this request, informing the Center that “Mr. Silviu Prigoana requested the official language of the proceedings to be Romanian, based on the fact that Mr. Silviu Prigoana own[s] the “ro” domain only”.

By communication to the parties, dated July 26, 2007, the Center accepted the Complaint to be filed in English, with a Response to be filed in either English or Romanian, subject to the Panel’s discretion to determine the language of proceedings.

Having considered the correspondence in this case which was issued in English language by both the Complainant and the Respondent’s administrative contact, the content of the RNC registrar rule 10 for the domain name registration and based also on other prior WIPO decisions (see Inter IKEA Systems B.V. v. SC Agis International Sport S.R.L. WIPO Case No. DRO2006-0001, DaimlerChrysler Corporation v. Web4COMM SRL ROMANIA, WIPO Case No. DRO2006-0003) the Panel considers that the contentions of the Complainant as to English being the language of the proceedings are relevant and concludes that English shall be the language of these proceedings.

 

4. Factual Background

The Complainant is the owner of several trademarks LAMPE BERGER and in particular of the followings:

- International Trademark Registration LAMPE BERGER and logo filed and registered under No. 724326 on November 30, 1999 in classes 1, 3, 5, 11 and 21 designating Romania, Austria, Benelux, Switzerland, China, Czech Republic, Germany, Egypt, Spain, Italy, Morocco, Monaco, Poland, Portugal, the Russian Federation, Denmark, Finland, United Kingdom, Japan, Norway, Sweden, Turkey.

- International Trademark Registration LAMPE BERGER filed and registered under No. 865965 on July, 26, 2005 in classes 1, 3, 5, 11 and 21 designating China, European Community, Japan, Republic of South Korea, Singapore and the United States of America.

- Canadian Trademark Application LAMPE BERGER filed under No. 1266161 on July 26, 2005 for among others “chemical products, perfumery products and apparatus used for disinfecting and purifying the atmosphere”.

- French Trademark Registration LAMPE BERGER filed and registered under No. 05 3 337 612 on January 28, 2005 in classes 1, 3, 5, 11 and 21.

- Hong Kong SAR of China Trademark Registration LAMPE BERGER filed and registered under No. 300464742 on July, 26, 2005 in classes 1, 3, 5, 11 and 21.

- Indian Trademark Application LAMPE BERGER filed under No. 1374278 on July, 27, 2005 in classes 1, 3, 5, 11 and 21.

- Indonesian Trademark Applications LAMPE BERGER filed under No. D00 -2005-0133-56, D00 -2005-0133-55, D00 -2005-0133-54, D00 -2005-0133-53, D00-2005-0133-52 on July, 28, 2005 respectively in classes 1, 3, 5, 11 and 21.

- Malaysian Trademark Applications LAMPE BERGER filed under No. 05012519, 05012518, 05012516, 05012517, 05012515 on July 28, 2005 respectively in classes 1, 3, 5, 11 and 21.

- Filipino Trademark Application LAMPE BERGER filed under No. 4-2005-07065 on July 27, 2005 in classes 1, 3, 5, 11 and 21.

- Taiwan Province of China Trademark Registration LAMPE BERGER filed under No. 1220024 on July 26, 2005 and registered under No. 1220024 on July 16, 2006 in classes 1, 3, 5, 11 and 21.

- Australian Trademark Registration LAMPE BERGER and logo filed under No. 816887 on December 10, 1999 and registered on November 12, 2001 in classes 3, 5 and 21.

- Republic of South Korean Trademark Registration LAMPE BERGER and logo filed under 47752/99 on December 14, 1999 and registered under No. 482,712 on December 5, 2000 in classes 3, 5 and 21.

- American Trademark Registration LAMPE BERGER PARIS and logo filed under No. 76-595,833 on June 7, 2004 and registered under No. 3171884 on November 14, 2006 in classes 3, 5 and 21.

- American Trademark Registration LAMPE BERGER filed under No. 79-016,752 on July 26, 2005 and registered under No. 3194500 on January 2, 2007.

- French Trademark Registration LAMPE BERGER and logo filed and registered under No. 99 797 575 on June 15, 1999 in classes 1, 3, 5, 11 and 21.

- Greek Trademark Registration LAMPE BERGER and logo filed under No. 142612 on December 14, 1999 and registered on October 17, 2001 in classes 3, 5 and 21.

- Japanese Trademark Registration LAMPE BERGER and logo filed under No. 115222/99 on December 15, 1999 and registered under No. 4469294 on April 20, 2001 in classes 3, 5 and 21.

- Community Trademark Registration LAMPE BERGER and logo filed under No. 002957843 on December 4, 2002 and registered under on May 23, 2005 in class 4.

- Mexican Trademark Registration LAMPE BERGER and logo filed under No. 571988 on October 23, 2002 and registered under No. 813509 on November 24, 2003 in class 3.

- Singaporean Trademark Registrations LAMPE BERGER and logo filed and registered under No. T99/14653H, T/99/14652Z, T99/14654F on June 15, 1999 respectively in classes 3, 5 and 21.

- Taiwan Province of China Trademark Registrations LAMPE BERGER and logo filed and registered under No. 918714 on September 16, 2004 and on July 16, 2001 under No. 949507 respectively in class 3 and 5.

- Thai Trademark Registration LAMPE BERGER and logo filed under No. 268818 on July 19, 1994 and registered under No. KOR53432 in class 5.

- Thai Trademark Registration LAMPE BERGER and logo filed under No. 406421 on June 15, 1999 and registered under No. KOR135957 in class 21.

The Complainant is also the owner of the following domain names:

- <lampe-berger.com.sg>

- <lampeberger.com.sg>

- <lampeberger.biz>

- <lampeberger.tm.fr>

- <lampeberger-jp.com>

- <lampeberger.com>

- <lampeberger.com.cn>

- <lampe-berger.com>

- <lampeberger.ca>

- <lampeberger.org>

- <lampeberger.net>

- <lampeberger.com.au>

- <lampeberger.info>

- <lampe-berger-asia.com>

The Respondent, as indicated in the correspondence with the Center initiated by Daniel Alexandrescu, is Silviu Prigoana apparently represented (at least initially) in this case by the administrative contact for the disputed domain name, Daniel Alexandrescu.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the disputed domain name <lampeberger.ro> is identical or at the very least confusingly similar to the Complainant’s trademarks and domain names and that, the addition of the term “.ro” does not have a distinguishing effect and it is therefore not sufficient to prevent the domain name being confused with the trademarks or domain names of the Complainant;

- the Respondent has no legitimate rights and interests in the disputed domain name as the Respondent has no affiliation with the Complainant and has not been granted any license nor authorization to use the LAMPE BERGER trademark as a Domain Name. Furthermore, the Respondent is not authorized to advertise through the Complainant’s website and has not been commonly known by the name “Lampe Berger”;

- LAMPE BERGER trademark is notorious and having such a notoriety, the Respondent cannot make a legitimate non-commercial or fair use of the domain name at issue without intent for commercial gain or to tarnish the Complainant’s trademark;

- the Respondent intentionally attempted to attract for commercial gain and Internet users to the litigious website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location by selling and promoting, through the website linked to the litigious Domain Name, identical products to those covered by the prior registrations and sold by the Complainant;

- Daniel Alexandrescu has never responded to the cease and desist letter sent on December 21, 2005, by NOVAGRAAF FRANCE on behalf of the Complainant or to the reminder of this letter sent on January 26, 2006;

- the financial proposal made by Daniel Alexandrescu by the email dated July 16, 2007, confirms that the disputed domain name has been registered and is used in bad faith by the Respondent also in order to sell it for valuable consideration in excess of the domain name registrant’s out of pocket costs directly related to the domain name.

B. Respondent

As stated above, in the Procedural History of this case, no formal Response, in the sense of paragraph 5(b) from the Rules, was filed. Despite the fact that the Complaint was amended to indicate Silviu Prigoana as the Respondent in the case, Mr. Prigoana has not sent any communication in these proceedings. Nevertheless, several communications dated July 16, 17 and 19, 2007 were sent in connection to the case by Daniel Alexandrescu, the Whois-listed and self-nominated administrative contact in the case.

Having in consideration the fact that the name of Daniel Alexandrescu is mentioned in the registration whois data base for the disputed domain name and that the communications sent by Daniel Alexandrescu, in particular the one dated July 16, 2007, express a position in connection to the Complainant’s allegations together with the fact that Silviu Prigoana has never reacted himself in these proceedings, the Panel shall accept that Daniel Alexandrescu’s communications in the case are Respondent’s communications and shall analyze them in the context of the case.

By the communication dated July 16, 2007, Daniel Alexandrescu expresses the position of the Respondent in connection to the Complainant’s allegations, by making a sale offer of the disputed domain name for a price of Eur10,000.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

a.1. The Complainant has rights in the LAMPE BERGER mark

There is no doubt that the Complainant has rights in LAMPE BERGER trademark as it has proven by the multiple national and international registrations of this trademark held in, among other countries, Romania.

a.2. The disputed domain name is identical with a trademark in which the Complainant has rights

The disputed domain name includes in its entirety the Complainant’s mark LAMPE BERGER, which makes the disputed domain name, in the opinion of the Panel, identical to the Complainant’s mark. The addition of the Romanian top domain level “.ro” does not have a distinguishing effect and it is therefore not sufficient to prevent the domain name being confused with the trademark of the Complainant. On the contrary, the Internet users could actually think that the disputed domain name is the Romanian domain name of the Complainant’s company.

B. Rights or Legitimate Interests

The Respondent has no affiliation with the Complainant and the Complainant states that it has not been granted any license or authorization to use the LAMPE BERGER trademark as a domain name.

Furthermore, the Complainant states that the Respondent is not authorized to advertise through the Complainant’s website, and there is nothing before the Panel establishing that the Respondent has been commonly known by the name “Lampe Berger”.

In addition, there is no compelling evidence that the Respondent, before any prior notification of the dispute, has used or made preparation to use the disputed domain name for a bona fide offering of goods.

Apparently as a reaction to the allegations made by the Complainant in this case, the Respondent through its administrative contact – Daniel Alexandrescu – has chosen to make a sale offer of the disputed domain name for a price of Eur10,000.

In such situation, considering the circumstances of the case described above, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

LAMPE BERGER trademark is notorious and having such notoriety, the Respondent had actual knowledge of this trademark when it registered the disputed domain name. Knowing the notoriety of such trademark, and having no connection whatsoever with the owner of the said trademark it is obvious that the Respondent registered the disputed domain name with the intent to attract for commercial gain Internet users to the litigious website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location Such intent is to be considered by the Panel as bad faith registration of the disputed domain name.

Other circumstances of the case including: the lack of response to the cease and desist letter sent on December 21, 2005, by NOVAGRAAF, France on behalf of the Complainant or to the reminder of this letter sent on January 26, 2006 together with the financial proposal made by Daniel Alexandrescu by the email dated July 16, 2007, for a price out of pocket costs directly related to the domain name, or the fact that the disputed domain name does not appear to contain an active website (but rather resolves to an apparently unrelated website at “www.colectiamea.ro“) are further elements indicating bad faith registration and use of the disputed domain name by the Respondent.

 

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.ro> be transferred to the Complainant.

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Beatrice Onica Jarka
Sole Panelist

Dated: September 11, 2007