The Complainant is Christian Dior Couture of Paris, France, represented by Marc Sabatier of Paris, France.
The Respondent is Versata Software, Inc. of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <diorwatches.com> (the “Disputed Domain Name”) is registered with Red Register, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2009. On January 27, 2009, the Center transmitted by e-mail to Red Register, Inc. a request for registrar verification in connection with the disputed domain name. After follow-up e-mails from the Center on January 29, 2009; February 2, 2009; and February 3, 2009, Red Register, Inc. on February 4, 2009, transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 17, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 10, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 11, 2009.
The Center appointed Mr. Douglas M. Isenberg as the sole panelist in this matter on March 20, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant states that it “is very well-known for its goods sold under the trademarks DIOR all over the world,” including for watches, and that it “has developed a watch collection since 1975.” In support thereof, Complainant cites and provides evidence to support numerous trademark registrations that consist solely of the mark DIOR, including the following:
- International trademark No.317,877 filed on July 28, 1966, in class 14 to designate watches.
- International trademark No. 610,601 filed on December 6, 1993, in classes 14 and 25 to designate watches and shoes/clothing.
- English trademark No. 2,000,076 filed on October 31, 1994, in classes 14 and 18 to designate horological and chronometric instruments; bags.
- U.S. Reg. No. 1,923,564 registered on October 3, 1995, in classes 14 and 18, for watches and bags.
The trademarks cited above are referred to hereafter as the “DIOR Trademark.”
The Disputed Domain Name was registered on August 27, 2007.
The Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to trademarks in which the Complainant has rights because “[t]he trademark of the Complainant and the domain name are composed by the same number of letters in the same order” and “[t]he word WATCHES is associated with the Complainant's trademark. ”
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “[n]o license, contract or other authorization was granted to it to authorize it to register and use the domain name <DIORWATCHES.COM>” and “[t]he [R]espondent is not commonly known under the domain name <DIORWATCHES.COM>.”
- The Disputed Domain Name was registered and is being used in bad faith because the Respondent did not respond to a demand letter sent by the Complainant; “[a]s the company CHRISTIAN DIOR COUTURE is very well-known all over the world, it is not possible to not know its existence and the existence of its trademarks”; “[t]he Respondent has chosen the domain name <DIORWATCHES.COM> in order to take advantage of the notoriety DIOR and to attract the public's attention, due to the image of luxury that the Complainant trademark carries”; and a web page associated with the Disputed Domain Name “proposes some links which send the net surfer towards another web sites which sell bags, shoes, sunglasses branded DIOR.”.
The Respondent did not reply to the Complainant's contentions.
Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
Based upon the trademark registrations cited by the Complainant, it is obvious that the Complainant has rights in the DIOR Trademark. Further, previous panels under the Policy have reached the same conclusion. See, e.g. Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (<christiandior.com> and <christiandior.net>); and Christian Dior Couture v. Chanel Perfume/Whois Privacy Protection Service Inc., WIPO Case No. D2007-0876 (<christandior.com>).
As to whether the Disputed Domain Name is identical or confusingly similar to the DIOR Trademark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e. ,“diorwatches”), as it is well-established that the top-level domain name (i.e.,“.com”) should be disregarded for this purpose. See, e.g. Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456 (“the relevant comparison to be made is with the second-level portion of each of the Domain Names only, as it is well-established that the top-level domain names should be disregarded for this purpose”).
Therefore, the only difference between the relevant portion of the Disputed Domain Name (“diorwatches”) and the DIOR Trademark is the addition of the word “watches” to the Disputed Domain Name. Given that the word “watches” “refers directly to one specific product of the Complainant,” the inclusion of this word in the Disputed Domain Name “does not necessarily distinguish [the] domain name from [the] trademark” and “may even add to the confusing similarity.” Christian Dior Couture v. Carl Lim, WIPO Case No. D2008-1038 (finding the domain name <dior-bag.com> confusingly similar to the DIOR Trademark).
Accordingly, the Disputed Domain Name is confusingly similar to the Complainant's DIOR Trademark, and the Panel is convinced that the Complainant has proven the first element of the Policy.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “[n]o license, contract or other authorization was granted to it to authorize it to register and use the domain name DIORWATCHES. COM” and “[t]he [R]espondent is not commonly known under the domain name DIORWATCHES. COM.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1, <http://arbiter.wipo.int/domains/search/overview/index.html>.
Accordingly, as a result of the Complainant's allegations and without any evidence of the Respondent's rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that the Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant does not specifically allege which, if any, of the four circumstances listed above exists to illustrate bad faith by the Respondent. However, the Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. In particular, the Complainant states that the Respondent is using the Disputed Domain Name in connection with a website that “proposes some links which send the net surfer towards another website which sell bags, shoes, sunglasses branded DIOR.” An exhibit provided by the Complainant supports this statement. Accordingly, the Complainant has established the presence of bad faith. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (“where the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).
Therefore, the Panel is convinced that the Complainant has proven the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <diorwatches.com> be transferred to the Complainant.
Douglas M. Isenberg
Dated: April 3, 2009