WIPO Arbitration and Mediation Center

A. The Complainant is

A French corporation with a share capital of FF. 546’525’300.- registered with the Register of Commerce and Companies in Paris

30, av. Montaigne
75008 Paris France

The Complainant’s Representative is

Vincent Fauchoux, Esq.

Deprez Dian Guignot Lawfirm
21, rue Clément Marot
75008 Paris France
Fax : (33 1) 53 23 80 01
E-mail : [email protected]

B. The Respondent is

A corporation organized under the laws of the State of New York, having its main place of business

36 Dye Street
Garnerville, NY 10923 U.S.A.

The Respondent’s Representative is

Bill Rosenfeld, liage qued.net, at the same address

Fax : (1 914) 786 17 08.

The dispute concerns the two domain names :

babydior.com
babydior.net

The Registrar with which the domain name are registered is identified below :

505 Huntmar Park Drive

Herndon, Virginia 20170 U.S.A.

A complaint was filed with the WIPO Arbitration Center on February 25, 2000 by e-mail. On February 28, 2000, a request for Registrar Verification was sent to and the answer to that request was received from Network Solutions. On February 29, 2000, the notification of complaint took place and the administrative proceeding commenced.

On the same date, the compliance with formal requirements was checked. On

March 3, 2000, an addendum to Complaint was filed with the Arbitration and Mediation Center, and on March 6, 2000 the Response was sent by e-mail.

The sole Panelist accepted his appointment on March 17, 2000. The decision is rendered within the time-limit fixed March 31, 2000.

This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreement, pursuant to which the domain name that is the subject of this Complaint was registered, incorporates the Policy. The domain name was registered on September 5, 1999; the language in the registration agreement is the English language. A true and correct copy of the registration agreement incorporating the Policy was provided as Annex B to the Complaint of February 25, 2000.

The following facts are not contested :

A. The Complainant has registered the following trademarks (see Annex C of the Complaint) :

- "Baby Dior", a French trademark registration N° 1414964 of July 27, 1967, covering goods and services of international classes 25 and 28.

- "BabyDior", a US trademark registration N° 893200, of June 23,1970 covering goods and services of international classes 24, 15 and 28.

- "Christian Dior", a French trademark N° 92400277, of January 3, 1992 covering goods and services of international classes 9, 14, 18, 25;

- "ChristianDior", a French trademark N° 94/547 824, of December 6, 1994 covering goods and services of international classes 1, 2, 4, 5, 7, 10, 17, 38, 39;

- "Christian Dior", a French trademark N° 9742 of April 21, 1953, and renewed on 27 February 1968 N° 749 712, on February 23, 1978 N° 1.048.191, on 22 February 1988 N° 1.451.018 and on December 30, 1997 N° 1.451.018, covering goods and services of international classes 14, 16, 18, 23, 24, 25, 26 and 34.

- "DIOR", a French trademark N° 1.316.850, of December 27, 1984 covering goods and services of international classes 6 through 15 and 17 through 33, and renewed on December 27, 1994.

B. The Complainant further invokes the well-known signs "Dior" and "Christian Dior". It is beyond dispute that "Dior" and "Christian Dior" are well-known marks within the meaning of Article 6 bis of the Paris Convention.

A. "In accordance with Rules, para. 3) (b) (ix), the factual and legal grounds on which the complaint is made are the following :

(1) The manner in which the domain name is identical or confusingly similar to a trademark or service mark in which the Complaint has rights

The domain name "babydior.com" is totally identical to the trademarks "Baby Dior" owned by the Complainant. Furthermore the domain name "babydior.com" incorporates the "Dior" trademark which is well-known all around the world.

(2) Why the Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the Complaint

The Respondent does not have any rights or legitimate interests in respect of the domain name "babydior.com", registered on September 5, 1999.

The Respondent is not the licensee of the Complainant and is, in no way, authorized to use Complainant’s trademarks "Baby Dior", "Dior" or "Christian Dior". Furthermore, the Respondent is not authorized to market products bearing said trademarks, or to represent the Complainant, or to act on behalf of the latter.

The Complainant is the sole owner of the above trademarks in France, in the United States as well as in many countries in the world.

Liage International, which has no link of any nature with the Complainant, does not have a legitimate interest to use the name "babydior".

(3) Why the domain name should be considered as having been registered and used in bad faith

It is clear that the domain name "babydior.com" has been registered and is used in bad faith.

Liage International and Bill Rosenfeld tried to sell this domain name to the Complainant several times and in particular pursuant :

- to a letter dated December 12, 1999 sent to Vincent Fauchoux, Esq. DEPREZ DIAN GUIGNOT : "I would consider selling "babydior.com" to your client (it less cost that their legal fees would incur" (i.e. 150’000 USD);

- to a letter dated January 11, 2000 sent to CHRISTIAN DIOR COUTURE : "We realize how expensive these litigation can be, and are still willing to make good on our original offer";

- to a letter dated January 12, 2000 sent to CHRISTIAN DIOR COUTURE : "We proposed the following alternative for your consideration. We offered to sell to Christian Dior the domain name "babydior.com" at a reasonable price, this would insure your ownership of that domain at a modest cost, much less than those incurred through continued litigation".

These letters are provided as Annex D.

It appears from these letters that the Respondent tried to sell the domain name "babydior.com" for a price of approx. 150’000 USD.

Furthermore, it is obvious that :

- the trademark "Baby Dior", "Dior" and "Christian Dior" are well-known all around the world;

- the sign "Christian Dior" is also part of the corporate name of the Complainant;

- the trademark "Baby Dior" clearly designates in the public mind the textile products marketed by the Complainant principally for babies and children, in France, US and many other countries".

It is obvious that the Respondent perfectly knows the Complainant’s trademark rights and that the challenged domain name registration has been performed in order to fraudulently encroach on said trademark rights.

"Furthermore, the Respondent is obviously aware of the fact that the Complainant considers its registration as an act of infringement (see notifications sent to the Respondent, as Annex E).

The Complainant therefore considers that the domain name has been registered and used in bad faith."

B. Respondent’s Case

"Liage International, Inc. has registered and legally obtained in September 1999 the domain name "babydior.com" in Class "39". The proper pronunciation of our domain is "babydyor" for baby dinosaur. A purple dinosaur is a favorite children’s character and features strictly educational software. The name "babydior" does not appear on any of our products nor on any of our advertisements. It is solely a domain name.

There is no infringement based on the fact that these services and products are totally unrelated of those of Christian Dior, and are sold in a different venue. In the United States, the first to register a domain name (Registrant) with NSI, Network Solutions, has the right to the domain name. In spite of the accusations made by Counsel for Christian Dior, the domain name was registered in good faith and bears distinctly different logos. We in no way purchased the domain name for "fraudulent" purposes as stated by counsel for Christian Dior. The facts presented here are quite simple. We created a dinosaur character to be used as a logo identifying a similar and popular character to the purple dinosaur. The character is used strictly for educational purposes. "babydior.com" is properly and legally registered to Liage International Inc. and is non-infringing. "babydior.com is simply a domain named internet site with no trademarks on any of its items currently or in the future".

Facts mentioned above (5) are not controverted. The controversy bears on the requirement that the domain name be registered and used in bad faith. As will be seen later, the Panel finds for Complainant in this regard.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute : "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy directs that the complainant must prove each of the following :

1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,

2) that the respondent has no legitimate interests in respect of the domain name; and,

3) the domain name has been registered and used in bad faith.

1. Identity of trademarks

The French and U.S. trademarks "Baby Dior" are identical to the domain names in their distinctive part. The fact that a space is made between the elements Baby and Dior is irrelevant, both for the consumers and merchants, and for the Internet users and the research engines.

2. Confusing similarity

The domain names are confusingly similar to the world famous marks "Dior" and "Christian Dior". Although Respondent contends that "babydior.com" would not be infringing, the fact that a dinosaur character is to be used as a logo rather confirms the public in the mistaken assumption that babydior.com is dealing with children’s apparel etc. from the well-known Dior group. Further, even if the first name "Christian" is mentioned in some trademarks, it is apparent that most non-French speaking consumers would rather keep in memory the family name Dior (as opposed for instance to the Ralph Lauren trademark, for which both first name and family name are equally important).

In this regard, it should be noted that Art. 16 para. 3 TRIPs, binding on both the U.S. and France (and more than 130 other companies around the world), provides that Art. 6 bis Paris Convention on the protection of well-known marks is extended to afford protection to trademarks that are affixed on goods or used in relation with services "which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use".

As has been noted by a commentator "such [extended] protection must be provided if the use of the trademark in relation to the non-similar goods or services indicates a connection to the owner of the registered trademarks, and the interests of the trademark owner are likely to be damaged … Countries cannot require that a mark be well-known only because of its use. The agreement requires that members also take account of knowledge of the trademark in their country, including knowledge obtained as a result of promotion (advertising) of the trademark, possibly even in advance of actual use in commerce".1

Now, the danger of dilution for world-known trademarks is especially acute, and most countries including the U.S. have taken legislative measures against such a danger. To allow "babydior.net" and "babydior.com" domain names to remain with Respondent would contribute worldwide to erode the marks of complainant in a manner contrary to the international obligations of the U.S. (because of the TRIPs) and to the most recent restatement of world intellectual property law standards as embodied in Art. 16 para. 6 TRIPs.

1. Bad Faith

Although it is difficult to define in general terms a multi-facetted notion such as bad faith, it should comprise of two elements :

•the knowledge of given facts, in the present case the prior use by Complainant of a trade name and a trademark, or the duty to know those facts in a given set of circumstances; this knowledge may safely be assumed to exist here.

There is ample documentation to the effect that the Respondent knew in fact and ought in any case to have known the well-known trademarks of the Complainant.

•the awareness to act against a rule of law.

Such awareness can be seen from the three letters referred to immediately hefeafter.

2. Bad Faith Registration

The facts of the case show that the domain names "babydior.com" and "babydior.net" were registered in order for them to be conveyed to the Dior Group at the earliest opportunity. The domain name "Babydior.com" was registered on September 5, 1999 and the domain name "babydior.net" was registered on September 6, 1999. At the time, as of now, babydior did not and does not correspond to any trademark registered or used by Respondent. Further, three months after registration of the said domain names, the Respondent wrote in a letter dated December 12, 1999 to the Complainant’s attorney :

"I would consider selling "babydior.com" to your client (it less cost that their legal fees would incur" (i.e. 150’000 $ US).

In a letter dated January 11, 2000 to Christian Dior Couture, Respondent

added: "We realize how expensive these litigation can be, and are still willing

to make good on our original offer".

A further letter of January 12, 2000 to Christian Dior contains the same

innuendos. As Respondent so admitted, he knew that it might be easy, absent expeditious administrative proceedings such as those organized under the Policy and administered by the WIPO Arbitration and Mediation Center, to pressure money out of right holders solely due to the inordinate costs of legal proceedings, especially in the U.S., and to their slow pace almost everywhere in the world. Such pressure is the hallmark of bad faith.

3. Bad Faith Use

As was stated in the very first decision to be rendered under the Policy, World Wrestling Federation Entertainment Inc., the name must not only be registered in bad faith, but it must also be used in bad faith. The issue to be determined is whether the Respondent used the domain name in bad faith. Accordingly, can it be said that the Respondent "used" the domain name ?

It is clear from the legislative history that ICANN intended that the Complainant must establish not only bad faith registration, but also bad faith use. " These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrars-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO." Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, submitted for Board meeting of October 24, 1999, para. 4.5,a.

Paragraph 4, b, i of the Policy, provides that "the following circumstances … shall be evidence of the registration and use of a domain name in bad faith … circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark … for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name". (Emphasis added).

Because Respondent offered to sell the domain name to Complainant "for valuable consideration in excess of" any out-of-pocket costs directly related to the domain name, Respondent has "used" the domain name in bad faith as defined in the Policy.

The Panel notes that decisions of U.S. courts in cases which determine what constitutes "use" where the right to a domain name is contested by a mark owner support the panel’s conclusion. For example, in the case of Panavision International, L.P. v. Dennis Toeppen, et al. 141 F. 3d 1316 (9^th Cir. 1998), the Court of Appeals held that the Defendant’s intention to sell the domain name to the Plaintiff constituted "use" of the Plaintiff’s mark :

To the same effect is the decision in Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. III. 1996). In that case the Federal District Court determined that "Toeppen’s intention to arbitrage the "intermatic.com" domain name constitutes a commercial use … Toeppen’s desire to resell the domain name is sufficient to meet the "commercial use" requirement of the Lanham Act. Id. 1239.

The viewpoint expressed by the U.S. decisions corroborates the decisions of European courts in various cases, e.g. the Framatome case 2, the Relais et Châteaux case 3, the Atlantel case 4, etc.

As a matter of law, the Panelist finds therefore that the reasoning in the World Wrestling Case deserves to be up-held in the present case also.

For all the foregoing reasons, the Panel decides that the domain names registered by Respondent are identical or confusingly similar to the trademarks in which the Complainant has rights, and that the Respondent has no right or legitimate interest in respect of the two domain names at issue, and that the Respondent’s domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4, i of the Policy, the Panel requires that the registration of the domain names "babydior.com" and "babydior.net" be transferred to the Complainant.

François Dessemontet
Sole Panelist

Dated: March 24, 2000

Footnotes:

1. Jim Keon, Intellectual Property Rules for Trademarks and Geographical Indications : Important Part of the New World Trade Order, in C.M. Correa / A.A. Yusuf, Intellectual Property and International Trade : The TRIPs Agreement, London, The Hague, Boston, 1998, at 171; concurring, see A. Kur, Trademark Provisions of the TRIPs Agreement, rep. in Abbott, Cottier & Gurry, The International Intellectual Property System, vol. 2, 1999, at 1253.

2. Framatome v. Association Internaute, Trib. gde inst. Paris, April 25, 1997.

3. Trib. gde inst. Paris, February 22, 2000.

4. Trib. Grande instance Bordeaux, ord. ref. July 22, 1996, N° 1361/95 – 1543/96.