Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.
Case No. D2007-1836
1. The Parties
The two Complainants are Laboratoire Biosthétique Kosmetik GmbH & Co., Gülichstraße, Pforzheim, Germany; and MCE S.A.S., Paris, France, both represented by Ladenburger Neifeind Schmücker & Homann, Germany.
The Respondent is BusinessService Ltd., St. Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <la-biosthetique.com> is registered with DomReg Ltd. d/b/a LIBRIS.com, St. Petersburg, Russian Federation.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2007. On December 13, 18 and 19, 2007, the Center transmitted by email to DomReg Ltd. d/b/a LIBRIS.com requests for registrar verification in connection with the domain name at issue and followed up with numerous reminders. On December 20, 2007, DomReg Ltd. d/b/a LIBRIS.com transmitted by email to the Center its verification response indicating inter alia that the first Complainant is listed as the registrant and providing the contact details. The Center e-mailed the first Complainant on December 24, 2007 advising it of the registrant and contact details provided by the Registrar and requesting confirmation from the Complainant as to whether it had obtained actual control of the disputed domain name. 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), on January 31, 2008 the Center formally notified the Respondent, in both English and Russian, of the Complaint, and the proceedings commenced. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2008.
The Center appointed Paul E. Mason as the sole panelist in this matter on April 4, 2008. 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.
On the question of language of the proceedings, the applicable rule is that the language of the proceeding is normally the same as the language of the registration agreement, in this case, the Russian language. However, application of the rule is subject to the discretion of the arbitral panel. On January 28, 2008, the Center notified the Complainants of this rule, noting that the proceeding would be conducted in Russian unless the Complainants submitted a letter to the Center with good reasons why English should be used instead. On January 30, 2008, the Center also sent a notification to Respondent, in both Russian and English, of this situation. In its reply letter to the Center of January 28, 2008, Complainants alleged that this very same Respondent displayed an excellent command of English in another recent WIPO proceeding, BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749. This Panel has read that case. As Respondent has not submitted any kind of response to this complaint requesting that the proceedings be held in Russian, this Panel has determined that the proceedings may go forward in English since Respondent has shown good and recent command of the English language.
On the question of respondent identity, the Panel is satisfied that the WhoIs-listed registrant of record for the disputed domain at the time the Complaint was filed was the named Respondent, “BusinessService Ltd”. It appears that at some point after the filing of the Complaint, the WhoIs registrant data was changed to indicate the name and contact details of one of the Complainants, specifically “Laboratoire Biosthetique Kosmetik GmbH & Co. KG”. The Panel understands that the Complainants subsequently confirmed to the Center that it had not obtained actual control of the disputed domain name, and there is no evidence before the Panel to suggest that the seeming transfer of the Disputed Domain into the name of “Laboratoire Biosthetique Kosmetik GmbH & Co. KG” resulted in actual control of the Disputed Domain passing out of the hands of the previous registrant or any underlying beneficial owner. Applying the approach of a previous panel in similar circumstances (although involving a different registrar), this Panel is accordingly satisfied that the Center’s determination not to request an amendment to the Complaint was the appropriate in the circumstances, as “to require the Complainant to amend its Complaint in a manner that meant that it was apparently directed to itself would be pointless.” See Shon Harris v. www.shonharris.com c/o Whois Identity Shield,
WIPO Case No. D2007-0997 (para 3.7). This Panel further finds that, to the extent that it may be necessary in relation to any implementation by the Registrar of this decision, any order made by the present Panel against the named Respondent “BusinessService Ltd” would apply equally in relation to the listed registrant of record, however that entity may be identified by the registrar in its Whois database or otherwise.
4. Factual Background
According to the WHOIS database contained in the Center’s case file for this case, the domain name was registered by Respondent on October 4, 2004.
Complainants have already registered several relevant trademarks beforehand:
Madrid Trademark no. 5082333, LA BIOSTHETIQUE, date of international registration 19/12/1986; Madrid Trademark no. 192829, LA BIOSTHETIQUE date of international registration 17/05/1956; and German Patent & Trademark Office no. DD64812, LA BIOSTHETIQUE, date of registration 27/09/1990.
Complainants also registered other relevant trademarks, but because these were registered on or about the same time as the domain name, they need not be mentioned here.
5. Parties’ Contentions
A. Complainant
On the first element, similarity, Complainants contend that the domain name is almost identical to its trademark LA BIOSTHETIQUE. The only difference is insertion in the domain name of a hyphen between “la” and “biosthetique”.
On the second element, rights or legitimate interests by Respondent in the domain name, Complainants contend that there is no connection or affiliation by Respondent with Complainants.
On the third element, bad faith, Complainants claim that Respondent has both registered and used the domain name in bad faith. On the registration question, the domain name was registered on October 10, 2004, according to the WHOIS database information in the Center’s case file for this case. Complainants assert that the domain name was registered a long time after several of their own trademarks were registered.
On the question of bad faith use of the domain name, Complainants argue that Respondent created a website from the domain name to re-direct traffic and received “per-click” advertising fees for this activity.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel finds that the domain name <la-biosthetique.com> is virtually identical to Complainants’ previously registered trademarks LA BIOSTHETIQUE. A myriad of domain name cases have held that a mere difference in hyphenation or punctuation does not meaningfully distinguish the contested domain name from the complainants’ trademarks. On the contrary, this kind of close similarity, known as “typosquatting”, is often used by respondents to “bait and switch” visitors on the internet.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainants have at least established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. This Panel has not been shown any basis on which to find that Respondent has any rights or legitimate interests in the domain name. Accordingly, it finds that no such rights or interests exist here.
C. Registered and Used in Bad Faith
The Panel finds that the domain name was registered in bad faith, with the requiste knowledge of the existence of Complainants’ pre-existing trademarks.
The Panel also finds that the domain name was used in bad faith. An attempted virtual visit by the Panel to the website “www.la-biosthetique.com” did not resolve to anything but a blank white site, quite possibly supporting Complainants’ assertion that Respondent dropped its website upon receipt of the Complaint in this case.
Complainants assert that Respondent used this website to promote other products and services on a “per click” fee basis. They point to Annex 11 to the Complaint to prove this point. Annex 11 shows a printout of this website on October 26, 2007.
There we see three “Sponsored Links” to other sites promoting weight loss programs.
From this evidence, the Panel concludes that Respondent was using the domain name in bad faith.
In the circumstances, the Panel does not hesitate to conclude that the Complainants have established the third element of the Policy.
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 <la-biosthetique.com> be transferred to the Complainants.
Paul E. Mason Sole Panelist
Dated: April 18, 2008
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