WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Christian Dior Couture S.A. v. Domain Administrative Jeffbhav
Case No. D2002-0493
1. The Parties
The Complainant is Christian Dior Couture S.A., a joint stock company of French law, registered with the Registry of Commerce and Companies of Paris under nįB 612 035 832, having its registered office at 30 avenue Montaigne, 75008 Paris, France, represented by Mrs. S. Papin, attorney-at-law, Deprez Dian Guignot Law firm, rue Clément Marot, 21, Paris, France 75008.
According to the Shop4domain Whois databases, the Respondent is Domain Administrative Jeffbhav, Gpo Box 8558, Hong Kong, SAR of China.
2. The Domain Names and Registrar
The disputed domain name is <diore.com>.
The Registrar is Computer Data Networks DBA, Shop4domain/Netondomains, Computer Data networks, Ali Al-Salem Street, Al Fares Complex, Kuwait.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center by email on May 27, 2002, and in hardcopy on May 30, 2002.
The Complaint was acknowledged received by the Center on May 29, 2002.
On May 29, 2002, the Center made a request for Registrar verification.
On June 4, 2002, the Registrar confirmed that the disputed domain name is registered in the name of the Respondent and at the address mentioned above. The Registrar further confirmed that the language of the registration agreement is English.
On June 6, 2002, the Center satisfied itself that the Complainant complied with all formal requirements (including payment of the prescribed fee) and on the same day, the Center formally dispatched copies of the complaint by post / courier (with enclosures) to the Respondent at the address as recorded with the Registrar and by e-mail (complaint without attachements). The Center also sent copies of the material by the same methods to (i) "email@example.com"; to (ii) "firstname.lastname@example.org", an e-mail address shown on the web page to which the domain name <diore.com> resolves, but it did not send separate copies to the Respondentís administrative, billing and technical contacts at the addresses recorded by the Registrar, as those addresses were identical as the address of the registrant/Respondent. The Center included with the material dispatched to the Respondent and to those contacts a letter dated June 6, 2002, containing notification of the commencement of this administrative proceeding. The latter notification (including the complaint without attachments) was on the same date also copied to the Complainant, to the Registrar and to ICANN.
The Center received on June 6, 2002, an e-mail from "email@example.com" with the information that they were not the owner of the disputed domain name <diore.com>.
On July 1, 2002, the Center sent a Notification of Respondent Default by e-mail to the Respondent, at the e-mail address as recorded with the Registrar. The latter notification was copied on the same day to the Complainant.
The Complainant elected to have the case decided by an administrative Panel consisting of a single member. As the Respondent did not submit a response to the complaint, he obviously did not elect a three - member Panel pursuant to the Rules, Paragraph 5(c) and the Center hence appointed the Administrative Panel consisting of a single member on July 22, 2002. On the same date the Center transmitted the case file to the Panel and notified the parties of the projected decision date of August 5, 2002.
The Panel finds that the Center has adhered to the Policy and the Rules in administering this case.
4. Factual Background
Having carefully examined the evidence submitted by Complainant, the Panel finds that the following relevant facts are established:
- The Complainant is the owner of various French, International and US trademarks "DIOR" and "CHRISTIAN DIOR". Copies of the registration certificates for the relevant trademarks have been submitted by the Complainant (see annex C to the Complaint).
- The Complainant and its registered trademarks are world wide famous and well-known. As already stated in WIPO Case No. D2000-0023 quoted by the Complainant: "Complainant has for several decades successfully been using its DIOR mark primarily in the areas of fashion and cosmetics. It can be said that the Dior mark is a well-known mark in the sense of Article 6 bis of the Paris Convention".
- The Complainant provides evidence that, according to the AndcoNetís Whois database consulted on February 16, 2001, the domain name <diore.com> was first registered on November 28, 2000, with the Registrar TUCOWS.COM, INC. by a registrant called "owner" with contact details that are different from the contact details of the Respondent (see Annex E to the Complaint).
- The Complainant provides evidence that, according to the Network Solutionsí Whois database, consulted on August 29, 2001, the contact details of the registrant and the domain servers names changed. The contact details mentioned at this time are those of the Respondent. (see annex D to the Complaint).
- The Complaintant also provides evidence that, according to the Shop4domainís Whois database, consulted on May 27, 2002, the domain name <diore.com> has been renewed by the Respondent on November 3, 2001 (see Annex A to the Complaint).
- From the evidence submitted by the Complainant in Annex C, the Panel finds that the Complainantís aforementioned trademarks predate the registration of the domain name by the Respondent.
- Complainant further submits evidence that on February 16, 2001, it was possible to reach a search engine on one of the pages of the web site "www.diore.com" (www.diore.com/top.php3) with which it was possible, by introducing the relevant key words, to reach web sites, such as "store.yahoo.com", selling CHRISTIAN DIORís products (see Annex E to the Complaint).
- On August 29, 2001, counsel to Complainant apparently sent a first formal cease and desist letter to the Respondent ordering to "transfer immediately the registration of the domain name <diore.com>" to his client, as the registered domain name "clearly infringes the trademark rights" of his client. (see Annex F to the Complaint). On October 2, 2001, counsel to Complainant sent apparently another letter to the Respondent, with more or less the same content (see Annex F to the Complaint).
- The first letter remained unanswered. A second letter apparently remained unclaimed (see Annex F to the Complaint).
- On February 5, 2002, counsel to Complainant apparently tried, but did not succeed, to send an e-mail to the former administrative contact "firstname.lastname@example.org" (which e-mail address is mentioned on the print out made from the result of the consultation of AndcoNetís Whois database on February 16, 2001 [see Annex G to the Complaint]).
- The Complainant finally shows that on May 22, 2002, the web site to which the domain name <diore.com> resolves, contained a rubric "ADULTS ONLY" containing links to web sites of pornographic kind (see Annex H to the Complaint).
5. Partiesí Contentions
The Complainant requests the Panel to issue a decision that the domain name <diore.com> be transferred to the Complainant . The Complainant invokes the following legal grounds as a basis for the requested relief:
Identity or Confusing Similarity
The Complainant asserts that the domain name is confusingly similar to the trademark DIOR mainly arguing that "the domain name <diore.com> is totally confusingly similar to the registered trademark owned by the Complainant in many countries: in their visual impression, as it totally reproduces the well-known trademark ĎDIORí ". The Complainant also argues that "the final letter "e" is not determinant, so that an Internet user or consumer viewing the disputed domain name is likely to confuse it with the trademark "DIOR", (see Complaint, Paragraph 12, section 1 on p.8).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name <diore.com> because:
(i) "the Respondent is not the licensee of the Complainant and is, in no way, authorized to use Complainantís trademarks "DIOR" and "CHRISTIAN DIOR"";
(ii) "the Respondent is not authorized to market products bearing said trademarks, or to represent the Complainant, or to act on behalf of the latter";
(iii) "the Complainant is the sole owner of the above trademarks in France and all over the world";
(iv) "the Respondent, which has no links of any nature with the Complainant, does not have any legitimate interests to own and/or to use the domain name <diore.com>". (see Complaint, Paragraph 12, section 2 on p.9)
The Complainant alleges that the domain name was registered and used in bad faith, with the sole purpose of intentionally attempting to attract Internet users to his website by creating a likelihood of confusion with the Complainantís trademarks.
The Complainant thereby points out that the registration in bad faith results from:
1. the fact that the Respondent, having registered the domain name at stake, cannot be identified on the successive Whois registry databases, nor as a physical person, nor as a company and that the contact persons and the domain server names changed (see Complaint, Paragraph 12, section 3.1. on p.9 and 10).
2. the fact that the Respondent did not reply to any of the letters sent by the Complainantís counsel, that some letters remained unclaimed and some e-mails have not been delivered. (see Complaint, Paragraph 12, section 3.2. on p. 10).
3. the fact that the Respondent Ďfraudulently attemptsí to the Complainantís worldwide famous trademarks, by the fact that Ďe.g. the search engine "diore.com" contains a rubric "ADULTS ONLY": this kind of rubric is very harmful to the Complainantí (see Annex H). (see Complaint, Paragraph 12, section 3.4., p.10)
The Complainant deduces the bad faith use from the fact that the Respondent (i) did not answer the letters and emails sent by the Complainantís counsel, (ii) tried to evade the Complainantís request by changing Registrars, and (iii) renewed the domain name despite the Complainantís warning letters (see Complaint, Paragraph 12, section 3.5., p.10).
B. The Respondent
The Respondent has not submitted any response to the Complaint.
6. Discussion and Findings
Under paragraph 15(a) of the Rules, the Panel must decide this Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In the absence of the submission of a response by the Respondent and in the absence of exceptional circumstances, the Panel is to decide the dispute based on the Complaint and such in accordance to Paragraph 5(e) of the Rules.
To qualify for transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or Confusing Similarity
1. The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is usually confined to a consideration of the disputed domain name and the trademark: Banco Atlantico S.A. v. Infomax 2020 S.L., WIPO Case No. D2000-0795); AltaVista Company v. S.M.A., Inc. , WIPO Case No. D2000-0927; Porto Chico Stores, Inc. v. Otavio Zambon , WIPO Case No. D2000-1270; Gateway, Inc. v. Pixelera.com, Inc., WIPO Case No. D2000- 0109; America Online Inc. v. Anson Chan, WIPO Case No. D2001-0004; Cimcities, LLC v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2001-0491 and Playboy Enterprises International, Inc. v. Federico Concas, a.k.a John Smith, a.k.a. Orf3vsa, WIPO Case No. D2001-0745. Indeed, as held by the Panel in the case AutoNation Holding Corp. v. Rabea Alawneh, WIPO Case No. D2002-0058 "The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else. ICANN proceedings, which by their very nature are highly abbreviated with very limited fact finding, are not designed to nor should they be used as a substitute for trademark infringement actions. ICANN panels, such as this one, simply have no authority to consider issues of trademark infringement. Such issues must be left for judicial review."
2. Taking into account the particular context of alleged cybersquatting, the required confusing similarity is furthermore, in the Panelís opinion, to be upheld as soon as there exists a considerable risk that the ordinary Internet user familiar with the Complainantís products and/or services will start a search on the Internet for the Complainant by entering the domain name at stake into his/her browser followed by a very common generic top level domain (gTLD) such as ".com". (cf. Magazijn "De Bijenkorf" B.V. v. Accelerated Information B.V, WIPO Case No. D2001-0015 and College Summit, Inc. v.Yarmouth Educational Consultants, Inc., WIPO Case No. D2000-1575.
3. In the case at hand the disputed domain name indeed incorporates the word "DIOR", i.e. the Complainantís trademark. The issue is however whether there is a considerable risk that an ordinary Internet user familiar with the Complainantís products and/or services will start a search on the Internet for the Complainant by entering <diore.com> into his/her browser. The Panel is of opinion that the adjunction of the final letter "e", leading to a clear visual and pronunciation difference with the ĎDIORí trade mark, is determinant in this respect. Hence and unlike in the Guinness <smirnof.com> case referred to by the Complainant (UDV North America, Inc. v. Dallas Internet Services, WIPO Case No. D2001-1055, or in the cases Microsoft Corporation v.Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548, <microsof.com>, L.L. Bean, Inc. v. Cupcake Patrol, NAF Case No. FA0007000095105 <lllbean.com>; Calvin Klein v. Spanno Industries, NAF Case No. FA0007000095283, <kalvinkline.com>; or Dow Jones & Co. Ltd. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578, <wallstreetjounal.com> and <wallstreetjournel.com>, the Panel is not convinced that the domain name at stake is a result of "typo-piracy". Furthermore, as opposed to the evidence submitted in De Bijenkorf case [Magazijn "De Bijenkorf" B.V. v. Accelerated Information B.V., WIPO Case No. D2002-0015], the evidence submitted in the case at hand can not convince the Panel that, when taking into account the nature of the Internet and the distinctive character of the Complainantís trademark, a user when typing <diore.com> in his browser will reasonably assume that the given domain name must resolve to the Complainantís website or, at least to a website sponsored, affiliated or endorsed by the Complainant.
4. In sum, the Panel finds that the Complainant fails to prove that the disputed domain name ĎDIOREí is identical or confusingly similar to the Complainantís registered trademark ĎDIORí in the sense of Paragraph 4 (a)(i) of the Policy.
Illegitimacy and bad faith registration and use
Because the Panel has determined that the domain name at stake is nor identical nor confusingly similar in the sense of article 4 (i) of the Policy, there is no need to determine whether (a) the Respondent has no rights or legitimate interests in respect of the disputed domain name or whether (b) the domain name at stake has been registered and is being used in bad faith.
For the reasons stated above, the Panel denies the Complainantís request that the contested domain name be transferred to the Complainant.
Yves Van Couter
Dated: August 5, 2002