DECISION

 

Orlane S.A. v. Orlane.us d/b/a e-orlane.com

Claim Number: FA0604000672164

 

 

PARTIES

Complainant is Orlane S.A. (“Complainant”), represented by Meredith D. Pikser, of Reed Smith LLP, 599 Lexington Avenue, 29th Floor, New York, NY 10022-7650.  Respondent is Orlane.us d/b/a e-orlane.com (“Respondent”), represented by Nick Chui, 1345 S. Diamond Bar Blvd., Suite Z, Diamond Bar, CA 91765.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <orlane.us>, registered with Melbourne It Ltd.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

R. Glen Ayers, Jr. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 5, 2006; the Forum received a hard copy of the Complaint on April 6, 2006.

 

On April 6, 2006, Melbourne It Ltd confirmed by e-mail to the Forum that the domain name <orlane.us> is registered with Melbourne It Ltd and that the Respondent is the current registrant of the name.  Melbourne It Ltd has verified that Respondent is bound by the Melbourne It Ltd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On April 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 2, 2006 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”).

 

A timely Response was received and determined to be complete on May 1, 2006.

 

On May 5, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed R. Glen Ayers, Jr., as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A.     Complainant

 

Complainant, Orlane S.A., asserts that it is the owner of U. S. copyrights, U. S. trademarks, and has provided copies of the registration of those marks reflecting registration dating back to at least the mid 1980’s.  It has also registered the domain name of <orlane.com>.  The domain name was registered in February 2004 according to the Whois information provided.  In addition to the ORLANE mark, Orlane has registered a number of other marks in the United States and elsewhere, all dealing with Orlane’s cosmetics and beauty care products. 

 

Orlane asserts that its mark is well known and the mark has come to reflect or be identified with very high quality goods and services. 

 

Orlane asserts that the Respondent has registered a domain name <orlane.us>.  It asserts that Respondent sells and offers for sale Complaint’s products through that domain and website without Complainant’s authorization. 

 

Orlane asserts identity of mark and domain name and Respondent’s domain name.  If its registrations were not enough, Complainant asserts common law rights dating back at least until the 1950’s. 

 

Complainant asserts that use of the domain name is misleading and that the domain name is used to sale or offer for sale Complainant’s products without authorization. 

 

Complainant finally asserts that Respondent is making no legitimate non-commercial or fair use of the domain name and that it is intentionally diverting customers and potential customers. 

 

B. Respondent

 

In its response, the Respondent refers to the domain name as <e-orlane.com> which it registered approximately two and a half years ago.  However, WHOIS shows the domain name as <orlane.us>.  It asserts that it has used that domain name to promote only Orlane’s trademarked goods.  In fact, Respondent asserts that “Orlane has not suffered any damages from respondent’s activities.”  The response is obviously quite brief and to the point. 

 

FINDINGS

Obviously the domain name and the marks are similar or confusingly similar.  Orlane S.A. has clearly demonstrated the ownership of the mark and its registration prior to Respondent’s registration of its domain name.

 

Although it is very difficult to determine exactly why Orlane contends that Respondent has no rights in the name, Complainant does assert that Respondent has no rights in the domain name, whether fair use or otherwise.  In response, Respondent does nothing to assert that it has rights in the Orlane name, which would allow it to register a domain.  Respondent is simply silent. 

 

As to bad faith, Complainant’s allegations as to bad faith are basically that Respondent is selling and offering for sale Complainant’s products without Complainant’s authorization. 

 

Complainant goes on to say:  “Accordingly, bad faith can be presumed in that Respondent was aware or should have been aware of Complainant’s” mark.  The response is again very terse and very weak.  Respondent merely asserts that it has been only promoting sales of Orlane products. 

 

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 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 or is being used in bad faith.

 

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

 

There is no difficulty in finding that that mark and the domain name are identical.  The trademarks with the U. S. Patent and Trademark Office are sufficient to sustain Complainant’s rights in the mark.  Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003).  Further, Respondent does not even dispute this issue. 

 

 

 

Rights or Legitimate Interests

 

It seems that Complainant has done enough to establish a prima facie case on rights in the name, and Respondent has not rebutted those allegations.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000). 

 

Respondent does not assert that its actions represent some sort of fair use and Complainant has never asserted that Respondent has any rights in the domain name.  For examples of those situations, in which Respondent’s use was found to be proper, see Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) and Pennsacola Christian Coll. V. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001).  

 

Registration and Use in Bad Faith

 

Complainant’s sketchy allegations about bad faith seem to boil down to Respondent’s use, without permission, of a domain name identical to the mark, in order to sell Complainant’s goods without Complainant’s authorization at an Internet “store.” 

 

Given those facts, and noting that the lack of permission is not disputed by Respondent, it must be said that the registration and use of a known mark for a domain name is presumed to be in bad faith.  See, e.g., G.D. Searle & Co. v. Celebrax Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002).  That case is directly on point and concerns the unauthorized use by Respondent of a name identical to a known mark, which was used to promote Complainant’s products. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

                                                                                               

                                                                       

                                                                                    R. GLEN AYERS, JR., Panelist

 

                                                                                    Dated:  May 22, 2006