national arbitration forum

 

DECISION

 

BACCARAT SA v. Arik Shahumyan / Isystems

Claim Number: FA1211001470686

 

PARTIES

Complainant is BACCARAT SA (“Complainant”), represented by Anne Kuntz of Meyer & Partenaires, France.  Respondent is Arik Shahumyan / Isystems (“Respondent”), Armenia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <baccara.us>, registered with Name.com LLC.

 

PANEL

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2012; the National Arbitration Forum received the hard copy of the Complaint on November 15, 2012.

 

On November 12, 2012, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <baccara.us> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name.  Name.com LLC has verified that Respondent is bound by the Name.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On November 15, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 5, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy and Rules, and the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant owns one of the oldest trademarks in the world: BACCARAT.  Complainant holds trademark registrations for the BACCARAT mark with the French National Institute of Industrial Property (“NIIP”) (Reg. No. 2738 registered Dec. 29, 1860), the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,130,893 registered Feb. 12, 1980), and the Armenian Intellectual Property Agency (“AIPA”) (Reg. No. 20081047 registered Oct. 7, 2008).  See Complainant’s Annex H. 

2.    Respondent’s <baccara.us> domain name is confusingly similar to the BACCARAT mark because it merely omits the letter “t” from the mark and adds the country-code top-level domain (“ccTLD”) “.us.” 

3.    Respondent has no rights or legitimate interests in the disputed domain name.

                                                  i.    Respondent does not own a trademark registration or application for the term “Baccara” either in the United States or in Respondent’s country of Armenia.  

                                                 ii.    Complainant did not grant Respondent authorization or any license to register a domain name featuring a variation of the BACCARAT mark. 

                                                iii.    Respondent’s website advertises and sells jewelry and decorating items and dishes as imitations of Complainant genuine BACCARAT products.  See Complainant’s Annex E.  These products are directly competing with Complainant’s own offerings.

4.    Respondent registered or uses the disputed domain name in bad faith.

                                                  i.    Respondent registered the disputed domain name with knowledge of Complainant’s rights in the BACCARAT mark through Complainant’s vast and long-standing trademark registrations in Armenia, France, and worldwide.

                                         ii.    Respondent is using the <baccara.us> domain name to intentionally attempt to attract Internet users to the resolving website for commercial gain by creating confusion with Complainant’s mark.  Respondent uses a very similar typography and merely excludes one letter of Complainant’s mark within the domain name to confuse users as to Complainant’s affiliation with the mark and sell similar and competing goods.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is BACCARAT SA who list its contact information as Rue des Cristalleries in France. Complainant, in its present incarnation, and as successor to its prior business identification(s), has been engaged in the manufacture and distribution of crystal wares since 1764. The Complainant owns hundreds of registrations for the BACCARAT family of marks dating back to its first registration in 1860. Complainant owns 23 registrations for its marks in the USA. The Complainant’s mark is also registered in Armenia. Complainant has additionally operated web portals at <baccarat.fr> and <baccarat.com> since at least as early as 1995. The Complainant’s websites are just 2 of nearly 30 websites maintained by the Complainant online for purposes of conducting the internet commerce aspect of its business.

 

Respondent is identified as Isystems and Arik Shahumyan. Respondents contact information is identified as Ulnetsi, Yerevan, Armenia. Respondents have provided no information regarding the nature of their business. The disputed domain name was registered in Denver, CO, USA on May 4, 2011.

 

DISCUSSION

Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered or is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

Complainant  asserts that it owns one of the oldest trademarks in the world: BACCARAT. Complainant states that it holds trademark registrations for the BACCARAT mark with the NIIP (Reg. No. 2738 registered Dec. 29, 1860), the USPTO (Reg. No. 1,130,893 registered Feb. 12, 1980), and the AIPA (Reg. No. 20081047 registered Oct. 7, 2008). The Panel finds that Complainant has successfully established its rights in the BACCARAT mark under Policy ¶ 4(a)(i).  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).

 

Further, Complainant argues that Respondent’s <baccara.us> domain name is confusingly similar to the BACCARAT mark because it merely omits the letter “t” from the mark and adds the ccTLD “.us.”  The Panel finds that the removal of a letter and addition of the ccTLD do not render the domain name distinct from Complainant’s mark, thus making the domain name confusingly similar to the mark under Policy ¶ 4(a)(i).  See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i). 

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.

 

Complainant argues that Respondent does not own a trademark registration or application for the term “Baccara” either in the United States or in Respondent’s country of Armenia.   The Panel finds that Respondent does not possess rights in the disputed domain name under Policy ¶ 4(c)(i).  See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Further, Complainant argues that it did not grant Respondent authorization or any license to register a domain name featuring a variation of the BACCARAT mark.  The Panel notes that the WHOIS information for the <baccara.us> domain name identifies “Arik Shahumyan / Isystems” as the registrant, which the Panel  finds to be dissimilar from the <baccara.us> domain name.  Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).

 

Complainant argues that Respondent’s website advertises and sells jewelry and decorating items and dishes as imitations of Complainant’s genuine BACCARAT products.  Complainant asserts that these products are directly competing with Complainant’s own offerings.  The Panel finds that Respondent’s offering of directly competing goods through the disputed domain name does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).

 

Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights of legitimate interest in the disputed domain. 

 

The Complainant has proven this element.

 

Registration or Use in Bad Faith

Complainant asserts that Respondent is using the <baccara.us> domain name to intentionally attempt to attract Internet users to the resolving website for commercial gain by creating confusion with Complainant’s mark.  Complainant notes that Respondent uses a very similar typography and merely excludes one letter of Complainant’s mark within the domain name to confuse users as to Complainant’s affiliation with the mark and sell similar and competing goods.  As noted above, Complainant asserts that Respondent is attempting to sell goods that are similar to and competing with the goods Complainant offers.  The Panel  finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in [UDRP] ¶ 4(b)(iv).”).

 

The Complainant has proven this element.

 

DECISION

Because the Complainant has established all three elements required under the usTLD Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

 

Accordingly, it is Ordered that the <baccara.us> domain name be TRANSFERRED from Respondent to Complainant

 

 

Darryl C. Wilson, Panelist

Dated: December 27, 2012

 

 

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