WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Loris Azzaro BV, SARL v. Asterix and Mr De Vasconcellos
Case No. D2000-0608
1. The Parties
Complainant is Loris Azzaro BV, SARL, Laan Van Westenenk 64, 7336AZ Apeldoorn, The Netherlands, represented by Bernard Schaming and Katja Scheffner, attorneys for SCP Hausmann & Associés, 45 rue de Courcelles, 75008 Paris, France, hereinafter the "Complainant".
Respondents are Asterix and Mr De Vasconcellos, both at Av Sernambetiba, 3600 BI 5 1602, Rio de Janeiro, RJ 22630-010, Brazil, hereinafter the "Respondents".
2. Domain Name and Registrar
The domain name at issue is "azzaro.com", hereinafter referred to as the "Domain Name". The registrar is Network Solutions, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant’s complaint on June 15, 2000 (electronic version) and June 20, 2000 (hard copy). The Center issued the Acknowledgement of Receipt of Complaint on June 20, 2000, and verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Having noticed that the complaint did not mention the right registrar, the Center issued a Complaint Deficiency Notification on June 26, 2000, to Complainant. Thus, Complainant modified its complaint and submitted the amended complaint to the Center on July 5, 2000 (electronic version) and on July 7, 2000 (hardcopy). Complainant made the required payment to the Center. The formal date of the commencement of this administrative proceeding is July 19, 2000.
On July 7, 2000, the Center transmitted via email to Network Solutions Inc. a request for registrar verification in connection with this case. On July 14, 2000, Network Solutions Inc. transmitted via email to the Center, Network Solutions’ Verification Response, confirming that the registrant is Asterix, that the administrative and billing contact is De Vasconcellos Jr, Joao Jose, and that the technical and zone contact is DNS, DOMAIN Eduardo, TUCOWS International Corps.
Having verified that the amended complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on July 19, 2000, to the Respondents and to Network Solutions, Notification of Complaint and Commencement of the Administrative Proceeding, via post/courier, facsimile and e-mail, in accordance with the following contact details:
Av Sernambetiba 3600 Bl 5 1602
Rio de Janeiro, RJ 22630-010
De Vasconcellos Jr, Joao Jose Personnal
Av Sernambetiba 3600 Bl 5 Apto 1602
Rio de Janeiro, RJ 22630-010
Phone: 55 21 491 7035
Fax: 55 21 491 7035
DNS, DOMAIN Eduardo
Tucows International Corp
96 Mowat Avenue
ON M6K 3M1
Phone: 416 535-0123
Fax: 416 531-2516
The Center advised that the Response was due by August 7, 2000. However, no Response was submitted. Accordingly, the Center issued a Notification of Respondent Default on August 9, 2000.
On August 17, 2000, in view of the Complainant’s designation of a single panelist, the Center invited Mr. Geert Glas to serve as a panelist.
Having received on August 18, 2000, Mr. Geert Glas’ Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Geert Glas was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on the amended complaint, the evidence presented, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
Complainant is the owner of numerous trademark registrations in various countries for the term "Azzaro" or for trademarks which include, among others, the term "Azzaro". Copies of those trademark registrations are attached to the complaint. These are:
Complainant has acquired these trademarks from the companies PARFAC Parfums Accessoires GmbH & Co.KG and LORIS AZZARO SA by agreements signed on October 17, 1996 and November 12, 1996.
Complainant has acquired these trademarks from the company LORIS AZZARO SA by agreement signed on September 17, 1999.
The Complainant has acquired these trademarks from the company PARFAC Parfums Accessoires GmbH & Co. KG by agreement signed on December 9, 1997.
Complainant has acquired these trademarks from the company PARFAC Parfums Accessoires GmbH by agreement registered in France at the National Register of Trademarks (Registre National des Marques) on March 24, 1999 under n° 274413.
There is no relation between Respondents and Complainant, and Respondents are not licensees of Complainant, nor have they otherwise obtained an authorization to use Complainant’s trademarks.
The Domain Name resolves to an "under construction" web page.
The Domain Name was registered on September 6, 1999.
5. Parties Contentions
Complainant contends that Respondents have registered the Domain Name which is identical to Complainant’s "Azzaro" trademarks, that Respondents have no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith.
According to Complainant, Complainants’ clients, who look for information about its activity and its products, are systematically orientated towards a web site that is currently under construction and that has, in any event, no relation whatsoever with the Complainants’ activity.
Still according to Complainant, the products sold under the "Azzaro" trademarks are worldwide notorious and have a reputation of excellence as a brand for luxury goods with French and International clients, which could not be ignored by Respondents.
The domain name registrant has no trademark rights for "Azzaro" and has no relation to the activity or/and the products of Complainant.
The Complainant believes that its trademark was registered by the Respondents in order to prevent him from reflecting the "Azzaro" trademark in a corresponding domain name and with the purpose of disrupting its business.
The Complainant further asserts that, by using the Domain Name, the Respondents intentionally attempted to attract for financial gain Internet users to its web site, by creating a confusion with the Complainant’s trademark.
Consequently, Complainant requires the transfer of the Domain Name registration.
No response has been submitted.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Administrative Panel as to the principles the Administrative 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."
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the Domain Name registered by the Respondent is identical to the trademark in which the Complainant has right; and,
(2) that the Respondent has no legitimate interests in respect of the Domain Name; and,
(3) that the Domain Name has been registered and used in bad faith.
The Domain Name is "azzaro.com".
"Azzaro" is a registered trademark of Complainant.
In view of the above, the Administrative Panel finds that the Domain Name is identical to the trademark "Azzaro" of Complainant.
b. Rights or Legitimate Interests
Complainant has not licensed or otherwise permitted Respondents to use any of its trademarks or to apply for any domain name incorporating any of those marks.
By not submitting a response, Respondents have failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4, c of the Policy, any rights or legitimate interests in the Domain Name. In addition to that, the fact that the Domain Name resolves to an "under construction" web page establishes that before any notice to Respondents of the dispute, Respondents have not made any 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.
The Administrative Panel therefore finds that Respondents have no legitimate right or interest in the Domain Name.
c. Registration and Use in Bad Faith
Several facts have to be taken into consideration when assessing the absence/presence of bad faith in this matter:
(1) "Azzaro" is the trademark from Complainant.
(2) The Domain Name resolves to an "under construction" web page.
(3) Respondents’ web site does not contain any banners by which Respondents would collect banner advertising or "click through" revenues.
(4) Respondent did not file any Response, failing thereby to invoke any circumstance which could demonstrate his good faith in the registration or use of the Domain Name.
No assumption may be made as to the Respondents’ activities and more specifically as to the Respondents’ intended use of the Domain Name, since the latter resolves to an "under construction" web page.
It is unclear whether Respondents knew of Complainant’s "Azzaro" trademark when registering the Domain Name. In any case, Complainant asserts that the Respondents have registered the Domain Name for the purpose of disrupting Complainant’s business. However, no evidence whatsoever has been submitted to sustain this assertion.
In some cases, the existence of such knowledge can, and has been deduced from the fact that the domain name owner is domiciled in the country where the trademark owner is established or has his core market (e.g. Telstra Corporatoin Limited v Nuclear Marshmallows, WIPO, Case No. D2000-0003, Spadel S.A. v Peter Kisters, WIPO, Case No. D200-0526).
In this case the facts as presented by Complainant however, do not allow us to state with the same degree of assurance as in the Telstra decision that "it is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration".
In the same way, Complainant argues that the Respondents have registered the Domain Name in order to prevent Complainant from reflecting its "Azzaro" trademark in a corresponding domain name. This argument requires that Respondents have engaged in a pattern of such conduct, pursuant to Paragraph 4, b, (ii) of the Policy. However, Complainant fails to prove that Respondent’s have engaged in such a pattern.
As to the last argument invoked by Complainant, it is unclear to the Panel how Respondents have intentionally attempted to attract, for commercial gain, Internet users to their web site or other on-line location, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of their web site or location or of a product or service on their web site or location, since Respondent’s are still not commercially exploiting the Domain Name.
Therefore, in consideration of, and weighing up the facts above stated, the Administrative Panel finds that there is insufficient evidence to clearly establish that Respondents have registered and are using the Domain Name in bad faith. Mere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence.
In light of the foregoing, the Administrative Panel decides that the Domain Name "azzaro.com" registered by Respondents is identical to the trademark of Complainant, that Respondents have no right or legitimate interest in respect of the Domain Name, but that Respondents’ Domain Name may not have been registered and may not be being used in bad faith.
Accordingly, pursuant to Paragraph 4, i of the Policy, the Administrative Panel denies the request that the registration of the Domain Name "azzaro.com" be transferred to Complainant.
Dated: September 4, 2000