Produits Berger v. Kikakuya, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Produits Berger v. Kikakuya Inc.

Case No. D2002-0610

1. The Parties

Complainant is Produits Berger, represented by Novagraaf France, 122 Rue Edouard Vaillant, 92593 Levallois Perret, France, hereinafter the "Complainant".

Respondent is Kikakuya Inc., Ryoko Nagashima, 3951 S. Plaza Dr, Suite 250, Santa Ana, CA 92704, United States of America, hereinafter the "Respondent".

2. Domain Name and Registrar

The domain name in dispute is <lampe-berger.com>.

The registrar for the disputed domain name is Register.com, 575 Eight Avenue, 11th floor, New York, NY 10018, United States of America.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a Complaint via e-mail, received by the WIPO Arbitration and Mediation Center (the "Center") on July 1, 2002, and in hard copy on July 12, 2002. On July 2, 2002, the Center sent an Acknowledgement of Receipt of the Complaint to the Complainant.

(b) On July 2, 2002, the Center also transmitted a Request for Registrar Verification

to the registrar, with the Registrar’s Response received by the Center the same

day, confirming that the domain name at issue was registered through Register.com,

575 Eight Avenue, 11th floor, New York, NY 10018, United States of

America.

(c) On July 15, 2002, the Center had satisfied itself that the Complainant

had complied with all formal requirements pursuant to the Uniform Domain Name

Dispute Resolution Policy, adopted by the Internet Corporation for Assigned

Names and Numbers (ICANN) on August 26, 1999 ("the Policy"),

the Rules for the Policy approved by ICANN on October 24, 1999 ("the

Rules"), and the WIPO Supplemental Rules for the Uniform Domain Name Dispute

Resolution Policy ("the Supplemental Rules"), and transmitted a Notification

of the Complaint and Commencement of the Administrative Proceeding to the Respondent.

(d) In an e-mail sent to the Center on July 23, 2002, Respondent

agreed to transfer to Complainant the domain name at issue, after which submitted

a request for suspension of the proceedings on July 31, 2002. The

Center issued a Notification of Suspension the same day.

(e) On October 9, 2002, Complainant submitted a request for reinstitution of

the proceedings, and the Center sent a notification of reinstitution of the

proceedings to the parties the same day.

(f) No Response has been submitted by the Respondent within the deadline for

the submission of Response. Accordingly, the Center issued a Notification of

Respondent Default on October 30, 2002.

(g) In view of the Complainant’s designation of a three-member Administrative

Panel, the Center invited Mr. Peter Nitter to serve as presiding Panelist, and

Mr. Alain Bensoussan and Ms. Angela Fox as Panelists. Having received the

Panelists’ Statements of Acceptance and Declarations of Impartiality and Independence,

the Center formally appointed Mr. Peter Nitter, Mr. Alain Bensoussan

and Ms. Angela Fox as members of the Administrative Panel. On November 13, 2002,

the Center transmitted the case file to the Administrative Panel and notified

the parties of the appointed Panel.

(h) The Panelists find that the Administrative Panel was properly constituted

and appointed in accordance with the Rules and the Supplemental Rules. The Administrative

Panel shall issue its Decision based on the Complaint, the Policy, the Rules

and the Supplemental Rules. The proceedings have been conducted in English.

4. Factual Background

After considering the Complainant’s assertions, supported by the documents

enclosed as annexes to the Complaint, and undisputed by Respondent because of

its default, the Panel finds the following:

Complainant is the owner of the mark LAMPE BERGER which is registered extensively

as a trademark throughout the world. The mark is also registered in combination

with other words in a number of countries.

In addition, the Complainant owns a global portfolio of domain names comprising

the words ‘lampe berger’ or variations thereof.

The Respondent has registered the domain name <lampe-berger.com>.

5. Parties’ Contentions

5.1 Complainant

The Complainant asserts that:

The domain name at issue is identical or confusingly similar to Complainant’s

trademarks.

The spelling of Complainant’s trade marks and the dominant part of the domain

name at issue are identical and therefore likely to confuse consumers who may

reasonably assume that the domain name is in some way associated with Complainant.

According to previous decisions under the UDRP, the addition of ".com"

is incidental and does not serve to significantly distinguish otherwise identical

domain names and trade marks.

The domain name at issue wholly incorporates a registered trademark owned by

Complainant, and this is sufficient to establish identity or confusing similarity

for the purposes of the Policy.

The Respondent has no legitimate interest in respect of the domain name at

issue.

Complainant is the sole owner of the trademarks LAMPE BERGER, LAMPES BERGER

and LA LAMPE BERGER in France, Asia and the United States, as well as many other

countries around the world.

The domain name at issue does not correspond to Respondent’s corporate name,

and to the knowledge of Complainant, neither to any trademarks owned by Respondent.

Nor is Respondent commonly known by the domain name at issue, or the words therein.

Complainant has in no way licensed or otherwise permitted Respondent to use

its trademark or a corresponding domain name.

The domain name was and is registered and used in bad faith.

Complainant has in two instances sent cease and desist letters to the proprietor

of the domain name at issue to inform about its rights, upon which the domain

name has been transferred to a new proprietor. Complainant has not received

an answer from any of the three proprietors of the disputed domain name.

Complainant has used its trademarks continuously and extensively in international

commerce in connection with perfume diffusers and related products in America

and throughout the world over more than one century. Complainant has also invested

substantial sums of money in developing and marketing its goods. Complainant’s

trademarks have thus become famous and widely reputed.

Respondent’s registering of the disputed domain name took place long after

Complainant’s adoption, use and registration of the well-known mark LAMPE BERGER

in the United States. Respondent thus clearly had knowledge, or reasonably should

have had knowledge, of Complainant’s trademark. By obtaining the domain name

at issue, Respondent has also prevented the Complainant from registering and

using it in connection with its trade mark products.

According to previous decisions under the UDRP, bad faith may be presumed in

the registration and use of a domain name consisting wholly or partly of the

famous trademark of a third party.

The Complainant requests the Administrative Panel issue a decision that the

contested domain name must be transferred to the Complainant.

5.2 Respondent

The Respondent has not submitted a Response, and is thus in default. Nor has

Respondent made any submissions whatsoever after the Notification of Respondent

Default.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three tests which a Complainant must satisfy

in order to succeed. The Complainant must satisfy that:

(i) the domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of such

domain name; and

(iii) the domain name has been registered in bad faith and is being used in

bad faith.

6.1 Identical or confusingly similar to a trademark or a service mark

The Panel has considered the allegation by the Complainant as to the identity

of the domain name at issue with the Complainant’s trademarks. As a result of

Respondent’s default, these allegations have not been contested.

The domain name at issue consists of a trademark in which Complainant has rights,

only with the addition of a hyphen between the two words ‘lampe’ and ‘berger’,

and such characteristics that are technically essential to a domain name.

In previous proceedings under the UDRP, Panels have found that for purposes

of assessing the confusing similarity between domain names and trade marks,

top-level domain extensions, spaces, hyphens and punctuation are to be ignored.

The Complainant refers the Panel to WIPO Case

No D2000-0413. Similar views have been expressed in WIPO

Cases No D2000-0075, D2000-0119 and

D2000-0206.

Thus, the Panel finds that Respondent’s domain name <lamp-berger.com>

is confusingly similar to Complainant’s trademark LAMPE BERGER.

6.2 Rights or legitimate interest in the domain name

The Panel has considered the allegation by the Complainant as to the lack of

rights or legitimate interests of the Respondent in respect of the domain name

at issue. As a result of default, these allegations have not been contested

by the Respondent.

Pursuant to Paragraph 10(a) of the Rules, the Panel considers itself competent

to independently visit the Internet in order to obtain additional information

in a default proceeding (see Cases No. (D2000-0076

and D2000-0141). On November 21, 2002,

the Panel visited the "www.lampe-berger.com" web site of the Respondent

in order to investigate whether there could be found any evidence as to Respondents

rights or the legitimacy of the interest of the Respondent in the contested

domain name. No such evidence of any rights or legitimate interests in the domain

name on the part of the Respondent were evident when the website was visited.

Complainant asserts that Respondent has nothing to do with Complainant, or

Complainant’s products. It is generally difficult for Complainant to prove that

a business relationship is not in existence, while Paragraph 4(c) of

the Policy at the same time gives Respondent ample opportunity to demonstrate

any actual rights or legitimate interests in the domain name.

Where Respondent has failed to give any Response, it is therefore, as shown

in previous decisions under the UDRP (see e.g. Case

No. D2000-0270), sufficient for Complainant to make a prima facie showing

that Respondent has no rights or legitimate interests in the domain name at

issue.

There are no indications whatsoever that Complainant has granted Respondent

any rights to use its trademarks, nor the right to register or use the domain

name at issue. This very proceeding is based on the assertion by Complainant

that Respondent lacks such rights. In the circumstances, this Administrative

Panel is thus satisfied that Complainant has established a prima facie

case that the Respondent has no rights or legitimate interest in the contested

domain name.

Hence, the Panel finds that the Respondent has no rights or legitimate interest

in the contested domain name.

6.3 Registration and use in bad faith

Complainant’s allegations with regard to the Respondent’s registration and

use of the domain name in bad faith has been considered by the Panel. These

allegations have not been contested by the Respondent because of his default.

The web page corresponding to the domain name at issue is redirected to a URL.

Here, various lamps and fragrances much like the original products of the Complainant

are offered for sale,". The home page also features an article called ‘History

of Lampe Berger’ elaborating on the more than hundred year old tradition of

LAMPE BERGER, thus leaving an overall impression that the web page is a

retailer of genuine LAMPE BERGER products. Hence, Complainant’s trade mark

LAMPE BERGER is evidently known by Respondent.

The remaining question is therefore whether the Respondent knew about Complainant’s

trademarks at the time of the registration of the domain name at issue. Complainant

has documented that it is the holder of several registrations for the trade

marks LAMPE BERGER and LAMPES BERGER and LA LAMPE BERGER in the United States,

France and several Asian countries, as well as a portfolio of domain name registrations

comprising variations of said trade marks.

Said trade mark and domain name registrations are however not sufficient evidence

of Complainant’s contentions regarding the reputation of its trademarks. Complainant

has not provided any detailed information on the length and scale of use of

said trademarks to support its assertions that Respondent must have known about

the trademarks when registering the domain name at issue.

The trademarks corresponding to the domain name at issue are however fanciful

marks with an inherent distinctiveness. The Panel finds that said marks seem

sufficiently unusual that it would be highly surprising if the Respondent had

not been aware of them when registering the domain name at issue. Said

domain name is highly unlikely to have been registered if it were not for Complainant’s

trade marks.

Respondent’s registration of the domain name at issue, and continuous use of

the same, thus appears to be an attempt to exploit the fame and goodwill of

Complainant’s trademarks by attracting the public to his web site for commercial

gain.

The Respondent is offering lamps and perfumes for sale through the web page

corresponding with the domain name at issue. The domain name thus creates a

strong likelihood of confusion with Complainant’s mark as to the source, sponsorship,

affiliation, or endorsement of the web site.

The Panel therefore finds that the Respondent has registered and used the domain

name at issue in bad faith.

7. Decision

The Panel has found that the domain name <lampe-berger.com> is confusingly

similar to the trademark of the Complainant, and that the Respondent has no

rights to or legitimate interests in said domain name. The Panel has further

found that the domain name has been registered in bad faith, and that it has

been and is being used in bad faith.

Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the

Panel decides to request that the domain name <lampe-berger.com> be transferred

to the Complainant Produits Berger.

Peter G. Nitter

Presiding Panelist

Alain Bensoussan

Panelist

Angela Fox

Panelist

Dated: November 26, 2002

More cases by this complainant

• PRODUITS BERGER v. Whois Service — D2007-1372 · lampberger.org · Transfer · 07 Nov 2007
• Produits Berger — D2007-1348 · Terminated
• Produits Berger v. Daniel Alexandrescu / Silviu Prigoana — DRO2007-0006 · lampeberger.ro · Transfer · 11 Sept 2007
• Produits Berger — D2005-0484 · Terminated
• Produits Berger v. Matthew Shewchuk — D2004-1083 · lampebergerdiscount.com · Transfer · 09 May 2005
• Produits Berger — D2004-1064 · Terminated

Other cases for this domain

• 伯格制品公司 (Produits Berger) v. Hao Dongning, Zhuhai Talent Edu-Tech Co., Ltd — D2007-1292 · lampeberger.mobi, lampeberger.com, lampe-berger.com · Transfer · 15 Nov 2007