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.
The Respondent is GR, CA 90210, US.
The Domain Name in dispute is "sisleycosmetics.com"

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:

* Confirm the identity of the Registrar for the contested Domain Name;
* Verify the Registrar's Whois Database and confirm all the essential contact information for Respondent;
* Verify if the contested Domain Name resolved to an active Web page;
* Verify if the Complaint was administratively compliant.

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 Clerk 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 forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on October 11, 2001. This date is the official commencement date of the administrative proceeding.
Only the emails to the 'jom9999@hotmail.com' were returned "undeliverable". No faxes were successful.

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 7, 2001, the Clerk's Office contacted Jacques A. Léger, and requested that he acts 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.
Also, the Complainant operates a website describing and promoting its products and activities under the name: www.sisley.tm.fr.

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 jom999@hotmail.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

a) Complainant

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.

b) Respondent

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:

(i) That the Domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has right; and,

(ii) That the Respondent has no legitimate interests in respect of the Domain name; and,

(iii) That the Domain name has been registered and is being used in bad faith.

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:

(i) The Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services, before any notice to the Respondent of the Dispute;

(ii) The Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if the Respondent has no trademark or service marks rights; or

(iii) The Respondent is making a legitimate non-commercial of fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of service mark at issue.

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:

(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) The respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

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:

a) The Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use throughout the world;

b) The Respondent has taken active steps to conceal its true identity, by operating under the name «GR» that is not a registered business name;

c) The Respondent has provided false contact details in breach of its registration agreement;

d) The Respondent failed to respond to email from Complainant;

e) The Respondent registered the Domain Name on May 25, 2000. Almost 18 months later, the website connected to it indicates «we recently registered our domain name at Register.com».

f) The Respondent failed to respond to the Complaint at issue or to deny of its allegations.

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.

6. Conclusion 

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.
Accordingly, the Panel requires, pursuant to Section 4 (i) of the Policy, that the Domain Name "sisleycosmetics.com" be transferred to the Complainant.

7. Signature