ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Coty Cosmetics Inc., located in the city of New York (NY), U.S.A.
The Respondent is Jaguar Ltd, located in the city of New York, (NY), U.S.A.
The Domain Name in dispute is " vanillafields.com"
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on September 9, 2000. The hardcopy of the Complaint Form was received on September 11, 2000. Payment was received on September 9, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for the Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry lead the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions Inc, the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on September 8, 2000. The requested information was received on September 11, 2000.
The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on September 12, 2000. This date is the commencement date of the administrative proceeding.
On September 12, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On September 22, 2000, the Respondent submitted, via the eResolution internet site, his Response. The signed version of the Response was received on September 27, 2000.
Between September 27, 2000 and October 6, 2000 the Clerk's Office contacted two different Panelists and requested that they act in this case. None of them were able to act at this time.
On October 10, 2000, the Clerk's Office contacted Mr. Mauricio Pinzon, and requested that he act as a Panelist in this case.
On October 11, 2000, Mr. Pinzon, accepted to act as Panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On October 12, 2000, the Clerk's Office forwarded a user name to Mr. Pinzon, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On October 12, 2000, the parties were notified that Mr. Mauricio Pinzon had been appointed and that a decision was to be, save exceptional circumstances, handed down on October 25, 2000.
3. Factual Background
3.1. The Complainant is the owner of the following U.S. registered trademarks (hereinafter "The Trademarks")
- VANILLA FIELDS Reg. No. 1891577, covering "SKIN SOAPS, BODY LOTION, TALCUM POWDER, BODY POWDER AND BATH POWDER, in class 3 (U.s. CLS. 51 and 52)", filed on February 24, 1993 and registered on April 25, 1995, First use and in commerce in 1994.
- VANILLA FIELDS, Reg. No. 1838962, covering "WOMEN´S COLOGNE AND PERFUMES AND PERFUME OIL, in class 3 (U.s. CLS. 51 and 52)", filed on February 24, 1993 and registered on June 7, 1994, First use and in commerce in 1993
- VANILLA FIELDS, Reg. No. 2099934, covering "COLOGNE, in class 3 (U.s. CLS. 1, 4, 6, 50, 51 and 52)", filed on June 21, 1995 and registered on June 7, 1994, First use and in commerce in 1993
3.2. The domain name "vanillafields.com" (hereinafter "The Domain Name") was registered on March 5, 1996.
4. Parties' Contentions
Coty Cosmetics Inc., (hereinafter "The Complainant") requests the Transfer of The Domain Name to the Complainant.
The Complainant contends that The Domain Name is identical or at least confusingly similar to its Trademarks.
The Complainant contends that Jaguar Ltd (hereinafter "The Respondent") has no legitimate interest in The Domain Name, because it has no prior rights to the Trademarks or any other trademark registration related to them.
The Complainant also contends that The Domain Name was registered and is used in bad faith, because the Respondent had the purpose of selling the domain for an amount that clearly exceeds the out of pocket expenses directly related to the domain. The Complainant asserts that the use of the web page with pornographic and adult-orientated videos detriments its reputation, image and good will.
The Respondent does not dispute that the Trademarks owned by Complainant are similar to The domain Name, but contends that the combination of common words of them are neither identical nor confusingly similar to the Respondent's website.
The Respondent contends that it has legitimate interest in The Domain Name, because at the moment of the domain name registration its principals had never heard of the Trademarks. It asserts that the domain name was intended to be used in a real state business in Southern Florida.
The Respondent asserts that it has not registered The Domain Name in bath faith because it has not registered The Domain Name in order to sell it to Complainant, also because parties are not competitors and it has no interest in attracting, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant's Trademarks.
5. Discussion and Findings
Section 4(a) of the ICANN's UDRP provides that in order to obtain the transfer a domain name, the Complainant must prove the following elements:
- the domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
5.1. Identity or confusingly similarity
The panel finds that it is clear that the domain name vanillafields.com is identical in use to the registered Trademarks owned by Complainant.
5.2. Rights or legitimate interests of the Respondent
The words "VANILLA FIELDS" does not form any part of the Respondent's name and it has not proven any trademark or service mark or any kind of prior right acquired of the mentioned word; the Respondent contended that it had a project of a business in Southern Florida using The Domain Name, but is has not proven any actual development of the project.
According to the Response filed by Respondent, the real state project was abandoned and in the year 2000, it started to use The Domain Name in conjunction with the Respondent's adult websites and it contacted Complainant to determine its interest in using The Domain Name. Consequently, for the Panel is clear that at the moment of starting the use of The Domain Name, Respondent had knowledge of the Trademarks owned by Complainant and its prior rights to them.
The Complainant has clearly proven rights on the trademark VANILLA FIELDS, and as a consequence of the registration of The Domain Name by Respondent, it was forced to create its website under the domain name vanillafieldsbycoty.com
According to this Panel, the second requirement is satisfied; the Respondent has no rights or legitimate interest in The Domain Name.
5.3. Registration and use in bad faith
Section 4(a) (iii) of the ICANN's UDRP provides that the Complainant has to prove that the domain name has been registered and is being used in bad faith.
The Complainant asserts that the Respondent has registered The Domain Name in bath faith because of the interest in selling it for an amount that is clear more than the out of pocket expenses related to The Domain Name.
For the Panel is clear that at the moment of the registration of The Domain Names, the Complainant owned registered a trademark for more than year and owned trademarks used in commerce since 1993.
The use and the registration of the Trademarks clearly grant the Complainant an exclusive interest not only in the trademarks itself, but also in its integrity and commercial use. Any use or intent to use for commercial purposes of the Trademarks by third parties is considered a use in bath faith. The registration of The Domain Name with no interest on and no legal authorization to use the Trademarks impeding its owner to promote the products in the internet in the logical address vanillafields.com is considered by the Panel as a Registration in bad faith.
The Respondent did not use The Domain Name between the registration date and the year 2000. The lack of use has been considered in many administrative decisions as use in bad faith, because it makes it impossible for a party interested in the domain, to use it for commercial purposes, in connection for example, to registered trademarks.
The Panel finds, as it is contended by the Complainant and accepted by the Respondent, that The Domain Name was not used for about 3 ½ years, preventing the Complainant to reflect the Trademarks in a corresponding domain name, and forcing it to register and use a domain name different than its Trademarks. Before starting to use it, Respondent tried to sell it to the Complainant for an amount considered exceeding the out of pocket expenses of the Respondent directly related to The Domain Name. The current use of The Domain Names includes adult material and pornographic videos, use that is considered by the Panel as a detriment of the image and good will acquired by the Trademarks and its owner. Such circumstances are evidence of use in bad faith.
According to this Panel, the Domain Name has been registered and is being used in bad faith.
The Complainant has proved the three elements required in the ICANN's UDRP.
For the reasons set forth above, the Complainant's request to transfer the domain name vanillafields.com to the Complainant is granted.
Dated October 24, 2000 at Bogotá D.C., Colombia.
(s) Mauricio Pinzon P.