ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
The Complainant is c.f.e.b. Sisley, 16, av. Georges V, 75008 PARIS.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on September 26, 2001. The hardcopy of the Complaint Form and annexes were received on September 28, 2001. Payment was received on October 15, 2001.
Upon receiving all the required information, eResolution's clerk proceeded to:
This inquiry lead the Clerk of eResolution to the following conclusions: the Registrar is Register.com, 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.
The Respondent did not submit a Response neither via eResolution's website nor a signed version.
On November 6, 2001, the Clerk's Office contacted Pierre-Emmanuel Moyse, and requested that he acts as panelist in this case.
On November 7, 2001, Pierre-Emmanuel Moyse declined to act as panelist in this case.
On November 8, 2001, Jacques A. Léger accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On November 8, 2001, the parties were notified that Jacques A. Léger had been appointed and that a decision was to be, save exceptional circumstances, handed down on November 22, 2001.
On November 9, 2001, Jacques A. Léger notified the Clerk's Office that he could no longer act as the panelist because of a conflict of interest.
On November 11, 2001, the Clerk's Office contacted Paule Gauthier, and requested that she acts as panelist in this case.
On November 14, 2001, Paule Gauthier accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On November 15, 2001, the Clerk's Office forwarded a user name and a password to Paule Gauthier, allowing her to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On November 15, 2001, the parties were notified that Paule Gauthier had been appointed and that a decision was to be, save exceptional circumstances, handed down on November 29, 2001.
3. Factual backgrounds
The Complainant, a French company registered with the Paris Registry of Commerce under the number 722 003 464, is the proprietor of the international trademark No. 385 946 "SISLEY" since October 2, 1972, which is registered in more than 123 countries. The Complainant manufactures and distributes cosmetics under the "SISLEY" trademark throughout the world. Based on the list of registrations of "SISLEY" trademark, its appears that three registrations have been made in the United States of America under the respectively number: 1 392 865 since May 13, 1986, 1/219/617 since December 14, 1982 and 1187304 since January 26, 1982.
Accordingly to the Complaint of the Complainant, the trademark "SISLEY" is a notorious trademark. Considering the sale of use in Canada known to the Panel, the Panel has no reason to doubt this.
Based on the extract form Register.com who is database, the Respondent has registered the Domain Name "sisleycosmetics.com" with Register.com on May 25, 2000 under the name "GR". The only address has been indicated by Respondent is "CA 90210". The Respondent only submitted an email address from which is impossible to deduce his identity, and a false phone and fax number 9-171-1234567.
On July 31, 2001, the Complainant' attorney sent an email to email@example.com informing the Respondent that "SISLEY" was a registered trademark in which Complainant had rights and demanding that the Domain Name be transferred to c.e.f.b. Sisley immediately. The Respondent never replied to such email.
4. Parties Contentions
The Complainant contends that Respondent has registered the Domain Name which is confusingly similar to Complainant’s trademarks «SISLEY», that Respondent has no rights or legitimate interest in the Domain name «sysleycosmetics.com» and that the Domain Name has been registered in bad faith.
Consequently, the Complainant requires the transfer of the Domain Name registration.
The Respondent has not responded to the Complainant’s allegations.
5. Discussion and Findings
Section 15 a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: «A Panel shall 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.»
Applied to this case, Section 4 a) of the Policy directs that the Complainant must prove each of the following:
Similarity of Trademark and Domain Name
On the facts submitted by the Complainant, the Panel concludes that the Domain Name «sisleycosmetics.com» is confusingly similar to the trademark «SISLEY» which is owned by the Complainant. The term «cosmetics» added to the trademark in the Domain Name is merely descriptive of the products that are manufactured and distributed by Complainant under such trademark. Therefore, it does not exclude the likelihood of confusion. This solution is also confirmed in Raymond Weil SA v. Watchesplanet (M) Sdn Bhd, OMPI, June 30, 2001, D2001-0601 and Sporoptic Pouilloux Sa v. Euroglisse Sarl, OMPI, July 10, 2000, D200-0473.
Rights of legitimate interests of the Respondent in the Domain Name
Section 4 c) of the Policy sets out the following, non-exhaustive, circumstances which will be evidence demonstrating legitimate interests in the Domain Name:
In the view of the Panel, the Complainant has demonstrated that the Respondent has satisfied none of the above circumstances. Furthermore, in failing to submit a Response, the Respondent has failed to show any other circumstances which might evidence any legitimate interests in respect of the Domain Name.
The Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating its name. In addition, it appears that Respondent has not registered nor used the name «sisleycosmetics» as a trademark, nor has he ever been known by this name.
Also, it appears that the Respondent has not operated any business under the Domain Name «sysleycosmetics.com» for over 18 months. On November 24, 2001, the Domain Name resolves to a page indicating «We recently registered our domain name at Register.Com». We have been referred by the Complainant to the cases of Internet Billing Company Ltd v. Fundu Technologies, «ibills.com», NAF, October 2, 2000 FA0008000095547 and Mondich, Amer. Vintage Wine Biscuits, Inc. v. Brown, WIPO, February 16, 2000 D2000-0004, in which the Panelists concluded that it can be inferred from the passive holding of a domain name for a long period of time, that a Respondent does not have a bona fide intent to use the domain name».
Registration and Use in Bad Faith
Section 4 b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
This list of bad faith is not exclusive. Other circumstances can demonstrate bad faith.
In light of the facts established in section 3, the Panel further finds that the Respondent has taken deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made.
Given the Complainant’s numerous trademark registration for, and its wide reputation in, the word «SISLEY», as evidenced by the facts established in section 3, it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain name «sisleycosmetics.com».
The Domain Name does not resolve to a website or other on-line presence. There is no evidence that a website or other on-line presence is in the process of being established which will use the Domain Name. There is no evidence of advertising, promotion or display to the public of the Domain Name. In short, there is no positive action being undertaken by the Respondent in relation to the Domain Name.
The case Telstra Corporation Limited c/ Nuclear Marshmallows, WIPO, February 18, 2000, D2000-0003 established that «inaction» can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by at least nine subsequent Panels: ex: Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO D2000-0021, Guerlain, S.A. v. Peikang, WIPO D2000-0044 and Compaq Computer Corp. v. Boris Beric WIPO D2000‑0042.
Telstra established that whether «inaction» could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
In this case, the Panel finds that:
In light of these circumstances, the Panel concludes that the Respondent’s passive holding of the domain name in this case satisfies the requirement of section 4 a) iii) of the Policy that the Domain Name «is being used in bad faith» by Respondent.
For all of the foregoing reasons, the Panel decides that the Domain name registered by the Respondent is confusingly similar with the Complainant's trademark, that the Respondent has no rights or legitimate interest in respect of the Domain Name and that the Domain Name has been registered and used in bad faith.