Laboratoires De Biologie Vegetale Yves Rocher v. Jung Choi
Claim Number: FA0202000104201
Complainant is Laboratoires De Biologie Vegetale Yves Rocher, Issy-les-Moulineaux, France (“Complainant”) represented by Paul D. Steinman, of Eckert, Seamans, Cherin & Mellott, LLC. Respondent is Jung Choi, Cliffside Park, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yveskorea.com>, registered with Go Daddy Software Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Judge Irving H. Perluss (Retired) is the Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on January 31, 2002; the Forum received a hard copy of the Complaint on February 5, 2002.
On February 5, 2002, Go Daddy Software Inc. confirmed by e-mail to the Forum that the domain name <yveskorea.com> is registered with Go Daddy Software Inc. and that the Respondent is the current registrant of the name. Go Daddy Software Inc. has verified that Respondent is bound by the Go Daddy Software Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 26, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on February 26, 2002.
On March 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irvin H. Perluss (Retired) as Panelist.
Complainant filed an untimely Reply to Respondent’s Response, which nevertheless will be considered by the Panelist.
Complainant requests that the domain name be transferred from Respondent to the Complainant.
1. Complainant uses its YVES ROCHER mark to market and sell its cosmetic and beauty products worldwide. Complainant has used the YVES ROCHER mark since at least March 1971, and has five registrations through the United States Patent and Trademark Office; Registration Number 936,242, registered June 20, 1972; Registration Number 1,366,177, registered October 22, 1985; Registration Number 1,742,626, registered December 29, 1992; Registration Number 1,884,501, registered March 21, 1995; and Registration Number 1,912,935, registered August 22, 1995. Complainant presently uses the YVES ROCHER mark with the marketing and sale of cosmetics and beauty products in eighty-eight countries worldwide, including Korea, where Respondent does business. Complainant also uses its mark in connection with a website, <yvesrocherusa.com>, which offers its cosmetic goods and services via the Internet. Respondent registered the disputed domain name, <yveskorea.com>, on August 3, 2001.
2. YVES ROCHER is widely recognized as a major provider of high quality cosmetic and beauty products. YVES ROCHER is the worldwide leader in mail-order beauty sales, annually delivering 130 million packages to 20 million customers all over the world. Because of YVES ROCHER’s exclusive and extensive use and promotion of its trademarks, in which it holds both common law and federal registration rights, YVES ROCHER has acquired considerable goodwill and value in this intellectual property. YVES ROCHER has become well-known to the consuming public as a manufacturer, marketer, and seller of high quality cosmetic and beauty products, including but not limited to those marketed and sold on its website, and its “YVES ROCHER” trademarks are emblematic of the quality of its services.
3. On October 5, 2001, an agent of Complainant placed an order with <yveskorea.com> for certain YVES ROCHER cosmetic products. The products, received via mail (United States Postal Service), were YVES ROCHER products sold by Complainant in the United States, Korea, and elsewhere, and bear “YVES ROCHER” trademarks.
4. The disputed domain name <yveskorea.com> is confusingly similar to Complainant’s valid, registered United States service mark “YVES ROCHER.” The probability of confusion engendered by the similarity of the names, and the assumption of the consuming public that <yveskorea.com> is the Korean website of YVES ROCHER is heightened by the fact that the <yveskorea.com> website offers YVES ROCHER products for sale. Complainant’s “YVES ROCHER” trademarks identify cosmetic and beauty products. To combine “Yves” and “Korea” in a single Korean language domain name, which, although unauthorized to do so, advertises, sells, and distributes “YVES ROCHER” products, certainly results in a likelihood of confusion for an Internet user, particularly a Korean consumer, who is seeking information about YVES ROCHER and its products.
5. Respondent does not have rights or a legitimate interest in the disputed domain name because of the sale of YVES ROCHER products on its website, despite actual and constructive notice of YVES ROCHER’s rights. Respondent has purposely misappropriated YVES ROCHER’s trademarks and trade name to benefit improperly from intellectual property in which YVES ROCHER enjoys exclusive rights. Respondent’s conduct, accordingly, has not evidenced a legitimate use of the <yveskorea.com> domain name. It has intentionally misdirected Internet users to its site and is utilizing the reputation and goodwill of Complainant’s “YVES ROCHER” trademark.
6. The disputed domain name was registered and is being used in bad faith because Respondent, without any intellectual property rights in a trademark, adopted and registered the disputed domain name, primarily for the purpose of profiting from the reputation and goodwill of Complainant’s long-established trade name. Respondent purposely and in bad faith has attempted and continues to attempt to divert Internet users seeking information on the goods and services of YVES ROCHER to Respondent’s website.
1. The disputed domain name contains only a part of the Complainant’s mark, “YVES ROCHER.” “Yves” itself is a commonly used name in France, and many sites use that name in conjunction with their own names. Respondent uses “korea” as a suffix as her site is only for people in Korea. Respondent has a disclaimer on its site that stated the site was owned by a person who intended to act as a purchasing agent for cosmetics and ultimately to provide a wide variety of products to Koreans. The disclaimer clearly states Respondent’s site does not have any relationship with “YVES ROCHER,” and Koreans cannot misunderstand Respondent’s intention.
2. Respondent’s ultimate goal is to offer Koreans the best prices on products, especially the ones with large price differentials between the United States and Korea, and to give Koreans opportunities to buy the products that are sold in the United States but are hard to find in Korea. When Respondent has requests from Koreans, it purchases the requested products and then sends them to buyers.
3. Respondent did not register, nor is she using the disputed domain name in bad faith. Respondent’s disclaimer (in Korean) on her website clarifies that she is not affiliated with Complainant and, therefore, Respondent has no intention of creating confusion.
C. Additional Submission – Complainant’s Additional Response
1. No evidence of Respondent’s alleged disclaimer was submitted, nor could it be found on Respondent’s website by a fluent Korean reader who accessed the site during the month of February, 2001.
2. Respondent has used the disputed domain name, admittedly, without authorization, to advertise, sell, and distribute YVES ROCHER products.
FINDINGS AND CONCLUSIONS
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Professor McCarthy teaches us that the keystone of common law and statutory trademark infringement is the “likelihood of confusion,” and so it is here. Can the use of an identical French name prefix coupled with a geographical name infringe a well-known mark which has a French surname? In other words, can the likelihood of confusion be found because of the use of the similar prefix?
The Panel here does find that there is likelihood of confusion, i.e., the disputed domain name and Complainant’s mark are confusingly similar.
Professor McCarthy sets out the 1938 Restatement of Torts §731, which listed nine foundational factors to be considered which have been utilized in both competitive and non-competitive cases. These factors have been utilized by each of the various Federal Circuit Courts to formulate their own list of factors.
The 1938 Restatement factors are:
1. The likelihood that the actor’s goods, services or business will be mistaken for those of the other;
2. The likelihood that the other may expand his business so as to compete with the actor;
3. The extent to which the goods or services of the actor and those of the other have common purchasers or users;
4. The extent to which the goods or services of the actor and those of the other are marketed through the same channels;
5. The relation between the functions of the goods or services of the actor and those of the other;
6. The degree of distinctiveness of the trademark or tradename;
7. The degree of attention usually given to trade symbols in the purchase of goods or services of the actor and those of the other;
8. The length of time during which the actor has used the designation;
9. The intent of the actor in adopting and using the designation.
Clearly, factors 1, 2, 3, 4, 5, 7, and 9 are here applicable.
Thus, the Panel has concluded that even though the disputed domain name is similar only in part (i.e., a similar prefix), there is a likelihood of confusion by a reasonably prudent buyer.
Rights or Legitimate Interests
Because Complainant’s marks were registered with the United States Patent and Trademark Office long before Respondent acquired the domain name in issue, Respondent would have rights and a legitimate interest in the disputed domain name only if its use of the domain name was not in bad faith.
It is of interest to note that the Anticybersquatting Consumer Protection Act (“ACPA”) [15 U.S.C. §1125(d)] protects owners of a famous and distinctive mark (as here) from a person who registers or uses a domain name that is confusingly similar to the mark or dilutive of the mark, if such person has a bad faith intent.
As will be seen hereafter, the Panel necessarily has determined that such bad faith is present here.
Registration and Use in Bad Faith
Section 4b of the Policy sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith. Subparagraph (iv) of Section 4b provides:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The words “source, sponsorship, affiliation, or endorsement” are particularly apt here. Inevitably, consumers would conclude that the domain name in issue was endorsed and sponsored by Complainant, particularly since Complainant’s products were advertised and sold utilizing the disputed website.
But, Respondent argues, what about my disclaimer? It is true as Complainant charges, that no evidence, other than Respondent’s assertion, was presented to the Panel.
It is determined, however, that even if there were a specific disclaimer, this would not obviate the finding of bad faith registration and use. Again, this is because of the confusion caused by the unauthorized advertising and sale of Complainant’s products through Respondent’s website.
The Panel does not conclude that Respondent may not sell Complainant’s products acquired from various sources. It is, however not an “authorized” retailer of the products, and it is improper to utilize a domain name implying to the contrary.
Based on the above findings and conclusions, and pursuant to Rule 4(i), it is decided that the domain name <yveskorea> registered by Respondent Jung Choi, be and the same is ordered transferred to Complainant Laboratoires de Biologie Vegetale Yves Rocher.
JUDGE IRVING H. PERLUSS
Dated: March 22, 2002
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 3 McCarthy, Trademarks and Unfair Competition (4th ed. 2001) §23:1.
 3 McCarthy, supra, §23:55.
 3 McCarthy, supra, §23:57.
 3 McCarthy, supra, §23.19. It is to be noted that the current Restatement (Third) of Unfair Competition (1995) §§20-23, lists eight substantially similar factors.
 See, e.g., AMF Incorporated v. Sleekcraft Boats (9th Cir. 1979) 599 F.2d 341, 348-349.
 See, 3 McCarthy, supra, §23.93.
 ACPA lists certain indicia of “bad faith,” without limitation, 15 U.S.C. §1125(d)(B)(i) as follows: “(I) the trademark or other intellectual property rights of the person, if any, in the domain name; (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; (III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; (IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name; (V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; (VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in a bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct; (VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct; (VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services to the parties; and (IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of this section.”
It, thus, is appropriate here to consider Paragraphs (I), (V) and (IX), among other factors, in the determination of bad faith.
 See, America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as the Complainant); see also, Luck’s Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks); see also, Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website).
See, Thomas & Betts Int’l v. Power Cabling Corp., Inc., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to Complainant’s website on Respondent’s website).
 See, Great American Knitting Mills Resource Corp. v. The Sock Company, FA 95741 (Nat. Arb. Forum, Dec. 7, 2000) to the same effect.