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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Loris Azzaro B.V. v. Domain Admin, PrivacyProtect.org / Domain Admin, Private Registrations Aktien Gesellschaft

Case No. D2013-2247

1. The Parties

The Complainant is Loris Azzaro B.V. of Apeldoorn, Netherlands, represented by Tmark Conseils, France.

The Respondent is Domain Admin, PrivacyProtect.org of Queensland, Australia / Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.

2. The Domain Name and Registrar

The disputed domain name <azzaronow.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2013. On December 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 28, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 8, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 8, 2014.

The Center verified that the Complaint together with the amended 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 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2014.

The Center appointed Steven A. Maier as the sole panelist in this matter on February 4, 2014. 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 corporation domiciled in the Netherlands. It is a supplier of perfumes and fragrances.

The Complainant is the owner of various registrations for the trademark AZZARO, including the following:

(1) French trademark number 1347241 for AZZARO, registered with effect from June 17, 1976 in International Class 3 for goods including perfumery.

(2) International trademark number 431801 for AZZARO, registered with effect from August 9, 1977 with effect in 46 territories in Europe, Africa and Asia in International Class 3 for goods including perfumery and beauty articles.

(3) US trademark number 1560359 for AZZARO, registered with effect from October 22, 1987 in International Class 3 for perfumes and related goods.

The Domain Name was registered on August 25, 2006.

At the date of the Center’s formal compliance check, January 9, 2014, the Domain Name resolved to a website at “www.azzaronow.com” which appeared to offer a variety of perfumes, fragrances and colognes for sale online.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is a world leader in the field of perfumes and has supplied such products since the 1970s. It states that it has used well-known celebrities in connection with its advertising, including the singer Enrique Iglesias. It exhibits evidence of magazine and poster advertisements that it has used to promote its brand. It also exhibits evidence of marketing and sales online under the AZZARO brand as well as a Wikipedia entry concerning its founder, Loris Azzaro.

The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).

The Complainant relies on its trademark registrations referred to above. It submits that the Domain Name wholly incorporates its mark AZZARO and that the additional term “now” should be disregarded as it is not distinctive.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy).

The Complainant states that the Respondent is not affiliated with the Complainant and has not been authorized to use the Complainant’s AZZARO mark. Nor has the Respondent been commonly known by the Domain Name or by any similar name corresponding with the Complainant’s trademark. Furthermore, the Respondent is not making any legitimate noncommercial or fair use of the Domain Name. On the contrary, the Respondent is using the Domain Name to mislead and divert Internet users to a website that offers products that are competitive with those of the Complainant. The Complainant exhibits screen shots of pages of the Respondent’s website which include links to various suppliers of perfumes. The Complainant submits that these suppliers, including “Perfumdo.com”, offer multi-brand cosmetics including those of the Complainant’s competitors, including Jean Paul Gaultier, Cartier, Issey Mayake, Dolce & Gabbana and others (Annex 7 to the Complaint). The Complainant submits that use of this nature is not bona fide for the purposes of the Policy.

The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).

The Complainant states that the Respondent registered the Domain Name in 2006 and that the Complainant had been making extensive use of its well-known trademark prior to that date. The Respondent is using the Domain Name to divert Internet users to websites offering goods which are directly competitive with those of the Complainant and to obtain click-through revenue from those websites. This clearly constitutes use of the Domain Name in bad faith. Furthermore, the Respondent has taken steps to cover its identity, which it would have no need to do if it were a legitimate business.

The Complainant requests a transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of trademark registrations for the mark AZZARO in numerous territories. The Domain Name consists of the term “azzaro” together with the suffix “now” and the generic Top-Level Domain (“gTLD”) “.com”. The Panel accepts the Complainant’s contention that the term “now” does nothing to distinguish the Domain Name from the Complainant’s trademark, as it is no more than a generic term that suggests immediate access to goods or services connected with the “azzaro” part of the name.

Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel accepts that the contentions made by the Complainant give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name. While it was open to the Respondent to answer this case, it has not replied to the Complainant’s contentions. Nor is there any other evidence before the Panel that the Respondent has any rights or legitimate interests in respect of the Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

The Panel accepts the Complainant’s contentions that the Respondent is using the Domain Name to link to websites that offer perfumes and fragrances that are competitive with those of the Complainant.

The Panel also accepts the Complainant’s evidence that it had been trading as a supplier of perfumes and fragrances under its AZZARO mark for many years prior to the date of registration of the Domain Name.

The Respondent has not participated in this proceeding and has not therefore provided any explanation for its choice of the Domain Name or its use for a website linking to other websites that offer goods competitive with those of the Complainant. In the circumstances, the Panel infers that the Respondent was aware of the Complainant’s trademark at the date of registration of the Domain Name, and that it registered and has used the Domain Name with the intention of using the Complainant’s trademark to divert Internet users to the websites of other suppliers offering goods including those competitive with the Complainant’s goods.

The Panel finds in the circumstances that, by using the Domain Name, the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).

Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Domain Name <azzaronow.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: February 11, 2014

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