WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zino Davidoff SA v. SEOTools4U
Case No. D2011-0104
1. The Parties
The Complainant is Zino Davidoff SA of Fribourg, Switzerland represented by Meisser & Partners, Switzerland.
The Respondent is SEOTools4U of Shelby Township, Michigan, United States of America.
2. The Domain Name and Registrar
The disputed domain name <buydavidoff.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2011. On January 19, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On January 19, 2011, Wild West Domains, Inc. 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 January 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2011.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on February 24, 2011. 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 was established in 1980 by the late Zino Davidoff. It launched its first perfumery line in 1984 under the name DAVIDOFF with the Coty Lancaster Group as exclusive licensee. The DAVIDOFF line now includes a number of product lines sold under such names as DAVIDOFF COOL WATER, DAVIDOFF SILVER SHADOW, DAVIDOFF HOT WATER, DAVIDOFF ADVENTURE and DAVIDOFF CHAMPION. According to the official website “www.zinodavidoff.com/fragrances”, DAVIDOFF products are sold around the world. Examples of these various DAVIDOFF products are exhibited in the annexes to the Complaint, as well as in the Complaint itself (images of the DAVIDOFF Cool Water line). The Complaint goes to state that DAVIDOFF branded perfumery is now sold in many countries and continents throughout the world, including in the United States of America, The United Kingdom of Great Britain and Northern Ireland, Italy, France, Germany, Japan, Switzerland, The Republic of Cyprus, The Russian Federation, South America, Africa, The People’s Republic of China, Taiwan, The Republic of Singapore, Malaysia, etc. Samples of advertisements appearing in magazines circulating in some or all of these countries are included in the annexes to the Complaint. Sales figures demonstrated in the Complaint indicate net sales for DAVIDOFF COOL WATER products, said to be the most successful of its lines, at USD 183 million for 2004 (no later figures are given).
The Complainant also has various trade mark registrations, beginning with the word DAVIDOFF itself registered from September 1, 1981 in Switzerland (IR 467510), and now with corresponding registrations in numerous countries, including the United States if America. In addition, it has many registrations for combinations of the word DAVIDOFF with other words such as COOL WATER. These registrations are all in relation to perfumes, fragrances, and related products.
The Respondent is not known to the Complainant, but appears to operate a business at the website “www.seotools4u.com”: the owner of this domain name is identical to that of the Respondent. The various “SEO Tools” offered on this website appear to be various software packages and internet/website services. More relevant for present purposes is the registration of the disputed domain name <buydavidoff.com> on November 7, 2009. The website associated with this domain name then has a series of external links to other sites, including “Davidoff perfume resources” (which links to the Complainant’s products), “HDTV Review”, “Video Camera Reviews”, “Sony Product Reviews”, “Apple Review Online”; a prominent “Ads by Google” features such links as “Suzuki Md ab Lager”, “Anthony Kleinsmith” or “Ask a Dentist Advice Now”. The Complainant also points to the presence of a series of other links on the website to direct competitors of the Complainant, including Yves Rocher, Bulganin Rose Oil, Oriscent, Ghost Captivating. However, in the electronic file sent to the Panel these exhibits are not clearly numbered and there is some difficulty in following them. Because of this, the Panelist visited the website at the disputed domain name on March 8 2011 and saw for himself numerous advertisements and links to products of the Complainant, as well as the various links to the other non-perfume sites referred to in the Complaint. However, the Panel was unable to see any links to other perfume manufacturers, as stated in the Complaint.
On December 2, 2010, the Complainant wrote to the Respondent requesting transfer to it of the disputed domain name and offering USD 50 to defray the expenses of this transfer. No reply to this was received from the Respondent, and the Complainant then commenced the present proceedings.
5. Parties’ Contentions
As to paragraph 4(a)(i) of the Policy, the Complainant submits that the DAVIDOFF mark is a famous mark with respect to perfumery, noting here a recent UDRP decision in which the mark DAVIDOFF COOL WATER was described by the Panel as a “well known trademark”: Zino Davidoff SA v. Goodsteed Limited, WIPO Case No. D2010-1681. More relevantly, however, it points to its various registrations for the mark DAVIDOFF and the fact that these were prior to the registration of the disputed domain name. As to the question of confusing similarity, it argues that the disputed domain name incorporates the whole of its trade mark and the preffix “Buy” is merely a descriptive and non-distinctive term that does nothing to distinguish the disputed domain name from the trade mark. It notes further that the “.com” suffix is to be disregarded in making the comparison required by paragraph 4(a)(i) and therefore submits that the requirements of this sub-paragraph are made out.
As to paragraph 4(a)(ii), the Complainant submits that the Respondent has no legitimate rights or interests in the disputed domain name, pointing here to the following matters that make out a prima facie case in this regard and shift the onus to the Respondent to show the contrary:
1 The prior registration of its marks, particularly in the United States of America, which appears to be the Respondent’s place of residence, means that the Respondent must have been aware at all times of the existence of the Complainant’s marks, particularly when account is taken of their fame. Additionally, the fact that there has been no bona fide offering of goods on its website by the Respondent, but only external links both to the Complainant’s products and those of competitors and other traders shows that Respondent has no rights or legitimate interests in the disputed domain name.
2. The Respondent is not known by the disputed domain name, nor does it engage in any business under that name. This is also confirmed by the Respondent’s “official” website at “www.SEOTools4U.com”, where there is no indication that the operator of that website (the Respondent) is known as Davidoff (or Buydavidoff).
3 No license or authorization has ever been given by the Complainant to the Respondent to use the disputed domain name. There is no legitimate or fair use being made of the disputed domain name other than to re-direct users to competitors of the Complainant or to other retailers that sell the Complainant’s products.
As to paragraph 4(a)(iii), the Complainant again refers to the fame of the DAVIDOFF trade mark, and the strong inference to be drawn that the Respondent must have known of this at the time it registered the disputed domain name. It submits further that the circumstances referred to in paragraphs 4(b)(ii), (iii) and (iv) are present, and that the Respondent’s registration was therefore made and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the Complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. Additionally, paragraph 14(b) of the Rules provides that, “if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.”
Accordingly, the Panel proceeds to deal with each of the elements required to be satisfied under paragraph 4(a) of the Policy, noting that it is necessary for the Complainant to satisfy each one if it is to succeed in achieving the relief requested.
A. Identical or Confusingly Similar
Paragraph 4(a) requires that the Complainant establish that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”. There are therefore two limbs of paragraph 4(a)(i) that the Complainant must satisfy: first, that it has “rights in a trade or service mark” (this need not be a registered mark), and, secondly, that the disputed domain name is “identical or confusingly similar” to that mark.
The Panel has no difficulty in concluding that the Complainant has “rights” in a number of registered trade marks comprising both the word DAVIDOFF on its own and the word DAVIDOFF in combination with other words or phrases. These precede the registration of the disputed domain name and exist in a number of jurisdictions, including the United States of America where the Respondent resides. However, the location of the registrations – and, indeed, whether or not the mark is famous or well known – is not relevant for the purposes of the first part of paragraph 4(a)(i), so long as the Complainant can show that it has “rights” in at least one mark. This is clearly the case.
As to the question of confusing similarity between the marks and the disputed domain name, the Panel accepts the submissions of the Complainant. The domain incorporates the whole of the DAVIDOFF mark, and the Panel agrees that the addition of the prefix “Buy” and the “.com” suffix are insufficient to distinguish it from the trade marks.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) are satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is also required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) of the Policy, which provides that:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Essentially, these are matters for a respondent to put forward for the Panel’s consideration. In the present case, no response has been filed and all that the Complainant can do is to point to evidence that indicates that none of these circumstances exist. In this regard, the matters referred to by the Complainant indicate clearly that the Respondent is not making a legitimate use of the disputed domain name.
There is no evidence that the Respondent has been, or is, making a bona fide offering of goods under the
disputed domain name: as the Complainant’s exhibits and the Panel’s own inspection of the website associated with the disputed domain name reveal, it does not appear that the Respondent itself is offering any goods on the website. Rather, it provides links to retailers of the Complainant’s own products, such as eBay and Amazon, as well as to traders. Further, although the Panel was unable to confirm this on its visit on March 6, 2011, it accepts the Complainant’s submission that there are, or have been, links to competitors of the Complainant.
There is no suggestion on the website at the disputed domain name or at the Respondent’s own website that
it is known by the disputed domain name. Clearly, no license or authorization has been given by the Complainant to the Respondent to use the disputed domain name.
The prior registration of its marks, particularly in the United States of America which appears to be the Respondent’s place of residence, is evidence from which it can be inferred that the Respondent must have known of the existence of the Complainant’s marks at the time it registered the disputed domain name. This inference becomes all the easier to draw when regard is had to the choice of the prefix “Buy” and the fact that links to the Complainant’s perfume products proliferate the website.
There can be no argument that the Respondent’s use of the disputed domain name was in any way legitimate or fair.
The Panel therefore finds that the requirements of paragraph 4(a)(ii) are satisfied.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the Respondent] have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the Respondent] have 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 you have engaged in a pattern of such conduct; or
(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the disputed domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the disputed domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use.
In this regard, it is worth noting an early decision of a UDRP panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can also amount to use in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine sub-paragraphs (i)-(iii) solely to the time of registration; presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view can be found in several UDRP decisions; see, for example, Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869; and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules – and this would include responding to the Complaint - the Panel is entitled to draw from such default such inferences, as it considers appropriate.
In the present case, the Panel does not accept the Complainant’s submission that the circumstances outlined in paragraph 4(b)(ii) exist, as there is no evidence here of a “pattern of such conduct” as required by that sub-paragraph. However, the evidence does support findings that the circumstances in both paragraphs 4(b)(iii) and (iv) are preseent. Thus, the presence of links on the Respondent’s website to competitors, as well as to retailers of the Complainant’s own products, clearly diverts customers away from the Complainant’s own website(s) and is disruptive of its business, even if the Respondent itself is not selling products in competition with the Complainant. Further, the creation of a likelihood of confusion with the Complainant is high, in that the prefix “Buy” clearly suggests that this is the Complainant’s website or that is some way associated with it.
The above matters clearly go to showing bad faith in the use of the disputed domain name, but the Panel also finds that there was clear bad faith in its initial registration, as required by paragraph 4(a)(iii). Thus, there is the extensive prior registration of the Complainant’s trade marks, plus the evidence of the promotion of its trade marks globally. This points to the marks being well known in the sphere of perfume products, and, in the absence of any explanation of why it sought to register the disputed domain name, the Panel concludes that this must have been done intentionally by the Respondent, as the Complainant submits, and with the knowledge that there was no way that it could be legitimately used without carrying with it the implication of a link to, or association with, the Complainant.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) as to registration and use of the disputed domain name in bad faith are made out.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <buydavidoff.com> be transferred to the Complainant.
Dated: March 8, 2011