WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Daihatsu Indústria e Comércio de Móveis e Aparelhos Eléctricos LTDA v. Domain Privacy LTD, DNS Admin
Case No. D2010-1329
1. The Parties
The Complainant is Daihatsu Indústria e Comércio de Móveis e Aparelhos Eléctricos LTDA of São Paulo, Brazil, represented by Kirker & Co Ltd., Switzerland.
The Respondent is Domain Privacy LTD, DNS Admin of Marblehead, United States of America.
2. The Domain Name And Registrar
The disputed domain name <taiff.com> is registered with Fabulous.com Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2010. On August 6, 2010, the Center transmitted by email to Fabulous.com Pty Ltd. a request for registrar verification in connection with the disputed domain names. On August 9, 2010, Fabulous.com Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 August 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2010.
The Center appointed Ian Blackshaw as the sole panelist in this matter on September 13, 2010. 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.
4. Factual Background
The Complainant is a company incorporated in São Paulo, Brazil, on September 26, 1988.
The Complainant is widely known in Brazil and in several other countries all over the world for various kinds of apparatus and devices for use especially by professionals of cosmetology, manicure, pedicure, chiropody, hairdressing, hairstyling, etc, fields, as well as for various other products such as cosmetics, electronics, personal hygienic articles, etc.
All the products manufactured and sold by the Complainant are known under the brand name Taiff for more than ten years, and according to the Complainant, it is presently valued at USD 140 million.
The Complainant registered its own domain name in Brazil, namely <taiff.com.br> on December 7, 1998.
The Complainant is the owner of many registered trademarks for the word TAIFF and others which include the word TAIFF as mentioned below.
The disputed domain name was registered on November 15, 2002.
5. Parties’ Contentions
The Complainant makes the following contentions:
A. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
The first TAIFF trademark was filed in Brazil on August 12, 1988 and registered under No. 814366430 for goods of Brazilian Class 9.50.
Details of additional Brazilian Trademark Applications/Registrations for TAIFF presently owned by the Complainant in relation to goods of International Classes 3, 8, 9, 11, 20 and 21 have been provided to the Panel.
Furthermore, the Complainant is also the owner of several Trademarks Applications/ Registrations in more than 60 countries of the world for the mark TAIFF, intended for various kinds of products of International Classes 9 and 11, details of which have also been provided to the Panel.
More particularly, the mark TAIFF is protected in South and North America, in Asia (People’s Republic of China, Japan, Taiwan), in Russian Federation, in Switzerland and in the European Union.
It clearly results from the above statements that the Complainant has rights in the trademark TAIFF, which is widely known in Brazil and in, at least, some other countries, and that the disputed domain name of the Respondent is obviously identical to the Complainant’s domain name <taiff.com.br> and also to the various TAIFF trademarks owned and used by the Complainant.
B. The Respondent has no rights or legitimate interests in respect of the disputed domain name;
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
The Respondent is registered as the owner of more than 7000 various domain names, which means that the Respondent is not the real and effective owner of the disputed domain name.
The Respondent appears thereby to act as a proxy service for domain name registrants who do not wish to release their contact information in the publicly available WhoIs databases.
The effective and real “owner” of the disputed domain name should thus be considered as hidden under the activity of the Respondent, and could not be identified despite several attempts by the Complainant, which were unsuccessful.
The Respondent, and the hidden real “owner” of the disputed domain name, have obviously no rights nor legitimate interests in respect of the disputed domain name; more particularly, the Respondent and real “owner” are not linked with any company with the name “Taiff” nor are they the “owner” of any trademark TAIFF nor any trademark including this word.
Consequently, the Respondent, and the hidden real “owner”, have very probably taken advantage of the fact that the Complainant did not register the disputed domain name, but only one specific to Brazil, namely <taiff.com.br>, this without intention for effective commercial use but to misleadingly divert the public knowing the Complainant’s widely known trademark TAIFF to other websites having no relation to the Complainant and thereby tarnishing the image of the TAIFF trademark.
C. The disputed domain name was registered and is being used in bad faith.
(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))
The disputed domain name leads, in practice, to a first website which gives access to the public to a lot of other websites, which relate to various and different fields of business.
The related searches links referred to on this first website are further likely to be confusing for the public and especially the professionals who know the products sold by the Complainant under the trademark TAIFF, because they also relate to similar fields such as “Manicure and Pedicure”, a copy of the relevant printout evidencing this has been provided to the Panel, as an example.
Consequently, the above statement obviously worsens the Respondent’s bad faith, since Internet users, including the Complainant’s clients or business partners, are misleadingly diverted to websites, which either have nothing to do with the Complainant’s field of activity, or, which are possibly similar to that of the Complainant, or are those of its competitors.
As mentioned above, the Respondent very probably took advantage of the fact that the Complainant did not register the disputed domain name, but only one specific to Brazil, namely, <taiff.com.br>, with the intention of creating a likelihood of confusion with the Complainant’s trademarks and domain name.
The disputed domain name was thus clearly registered and is being used in bad faith, especially by creating confusion for the public and the Complainant’s clients and partners, and being likely to cause damage to the business of the Complainant, particularly to the image of its registered and widely known trademark TAIFF and its related domain name <taiff.com.br>.
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in them.
6. Discussion and Findings
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the 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 accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, a panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In this case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a disputed domain name incorporates in its entirety a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainant’s widely known registered trademark TAIFF in its entirety and without any modification.
The addition of a generic top-level domain (gTLD) “.com” to the disputed domain name does not constitute an element in the domain name so as to avoid confusing similarity. See Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In view of the above, the Panel finds that the disputed domain name registered by the Respondent is identical to the Complainant’s widely known registered trademark TAIFF, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and commercial use of the same for several years. The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether before any notice to the Respondent of the dispute, there is any evidence of 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;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-Flowers.com, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design, WIPO Case No. D2006-0977.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s widely known registered trademark TAIFF. Indeed, in the view of the Panel, the adoption by the Respondent of a domain name identical to the Complainant’s trademark TAIFF inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products (see further on this point below), and the consequential tarnishing of the Complainant’s trademark TAIFF and also the valuable goodwill that the Complainant has established in this trademark through its commercial use of the same over several years, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on its web site or location.
Based on the record in the case file, the Panel considers that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its widely known registered trademark TAIFF.
Again, by registering and using the disputed domain name incorporating the Complainant’s widely known registered trademark TAIFF, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet, WIPO Case No. D2004-0649.
Furthermore, the fact that the disputed domain name includes the Complainant’s widely known registered trademark TAIFF, held and used in commerce by the Complainant for several years prior to the date the Respondent became the registrant of the disputed domain name (and is being used to host pay-per-click links related to the trademark TAIFF), it is reasonable for the Panel to take the view that the Respondent must have known and been aware of the Complainant’s rights in this widely known mark at the time the Respondent registered the disputed domain name, which includes the Complainant’s mark in its entirety, and, as such, this is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman, WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows, supra; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. In this Panel’s view, a domain name which contains a third-party’s registered trademark would typically be used in good faith only by the owner of the respective right, by licensees, or a similar class of rights-holder, which does not appear to be the situation in the present case.
Further, see also Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 in which it was stated that “[…] consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark.” As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, is a further indication that the disputed domain name was registered and is being used in bad faith.
Furthermore, the Panel agrees with the Complainant’s contention, as stated above, that Internet users logging onto the website comprising the disputed domain name are diverted to other websites, which have nothing to do with the Complainant or its business and its products and/or promote products of competitors of the Complainant, that this constitutes bad faith on the part of the Respondent. See The Procter & Gamble Company, Tambrands Inc. v. Reserved for Customers, MustNeed.com, WIPO Case No. D2009-0944.
Also, the fact, as mentioned above by the Complainant, that the Respondent is concealing the real “owner” of the disputed domain name, as well as the fact that the disputed domain name is “for sale” and “offers are invited” as appears from logging onto the website comprising the disputed domain name and following the ”links”, as the Panel has done, are, in the view of the Panel, further indications of bad faith on the part of the Respondent and also, ipso facto, of the real “owner” of the disputed domain name. See paragraph 4(b)(i) of the Policy which covers and applies precisely to the present situation and also The Procter & Gamble Company, Tambrands Inc. v. Reserved for Customers, MustNeed.com, supra and the cases cited therein.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again in the view of the Panel, is a further indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
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 <taiff.com> be transferred to the Complainant.
Dated: September 27, 2010