WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alfred Dunhill, Ltd. v. Steve Hutchins

Case No. DCO2017-0003

1. The Parties

The Complainant is Alfred Dunhill, Ltd. of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Winston & Strawn LLP, United States of America (“US”).

The Respondent is Steve Hutchins of Limassol, Cyprus.

2. The Domain Name and Registrar

The disputed domain name <dunhilllighters.co> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2017. On January 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2017. The Center received email communications from the Respondent on February 7, 2017, February 8, 2017, and on February 8, 2017. On February 24, 2017, the Center notified the Parties of commencement of panel appointment process. The Center received a fourth email communication from the Respondent on March 2, 2017.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on March 9, 2017. 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 Alfred Dunhill, Ltd., a division of Richemont International S.A., is a world famous men’s luxury goods company that has been in business for over 100 years. The Complainant manufactures and sells a variety of products, including luxury leather goods, writing implements, fragrances, timepieces, clothing, and smoking accessories. The Complainant sells its products in more than 100 retail stores and authorized retailers in 53 countries, throughout six continents. The Complainant’s distribution channel includes The Homes of Alfred Dunhill retail emporiums, Dunhill Stores, and Dunhill Authorized Retailers.

The Complainant operates its website featuring an online store and information about its worldwide activities at “www.dunhill.com”.

The Complainant is the owner of the DUNHILL trademark, registered in many jurisdictions, including the US (US trademark registration number 1,172,665, registered on October 6, 1981).

The disputed domain name was registered on March 18, 2013. The disputed domain name resolves to a registrar parking page displaying various sponsored links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- It holds rights in DUNHILL marks, which due to their extensive use and registration of the DUNHILL marks in several jurisdictions, have become famous under the laws of Cyprus, the UK, and the US. The Complainant is also confident that the DUNHILL marks would have obtained the status of notorious marks and therefore would enjoy liberal protection under the Paris Convention.

- The disputed domain name is confusingly similar to the DUNHILL marks because it fully incorporates the dominant element of the DUNHILL marks, “Dunhill”, and merely adds the generic,
product-specific term “lighters“ and the country code Top-Level Domain (“ccTLD”) “.co”.

- The Respondent lacks rights or legitimate interests in the dipsuted domain name. The Respondent, who refers to himself in the WhoIs as “Steve Hutchins,” has never been commonly known by any of the DUNHILL marks nor any variations of them, and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known, other than the infringing use noted here.

- the Respondent has never operated any bona fide or legitimate business under the dipsuted domain name, and is not making a protected noncommercial or fair use of the disputed domain name. The Respondent is using the disputed domain name to resolve to a parked hosting page.

- The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registrations that are confusingly similar to any of the DUNHILL marks.

- The Respondent registered the disputed domain name with either actual or constructive knowledge of Complainant’s rights in the DUNHILL marks by virtue of the Complainant’s prior registration of those marks with the trademark office of Cyprus, where the Respondent is located.

- The Respondent is currently using the disputed domain name to passively hold the domain name, thereby preventing the Complainant from registering the disputed domain name containing the DUNHILL marks and there is no reason for the Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of the Complainant’s DUNHILL marks.

- Even if the Respondent were to argue he was unaware of the Complainant’s rights in the DUNHILL marks, had the Respondent conducted even a preliminary trademark search or Internet search, he would have found the Complainant’s various trademark registrations in the DUNHILL marks and the websites associated with the marks, and numerous additional references in commerce, on the Internet, and in publications evidencing the Complainant’s use of its marks in connection with its goods and services.

B. Respondent

Although properly notified of the Complaint, the Respondent did not file any formal Response.

On February 7, 2017, the Respondent sent an email to the Center by which he stated as following “I was not aware of any infringement of copyrights. The domain has not been used by myself. Please feel free to remove/transfer the site to the lawful owner.”

Later, on February 8, 2017, the Respondent sent a new email to the Center by which it stated the following: “I have received correspondence from yourselves. I have a file number 1832973 I attempted to release the website to you but it is now locked in Go-Daddy? However go-daddy confirmed it was released Please explain why you will not allow me to transfer the domain to yourselves without contest? Please explain the procedure to unlock Apart from being weary that this is a scam to extract money. I would also like to understand why you would take this course of action if i agreed to release the domain immediately?”

Further in a new email on the same date, the Respondent declares: “In respect of the below correspondence in relation to the domain name dunhilllighters.co, I am an individual and not a company and am in no financial position to be able to pay any legal fees to enter into any legal proceedings. Also I don’t wish to have any claim to the domain name itself therefore I would like to put this matter to bed by formally confirming my following statement for your kind consideration: I Steven Hutchins, on registering the domain name dunhilllighters.co had no intention of, nor have I, infringed any copyright or presented myself in any way whatsoever at any time of acting on behalf of Dunhill company or subsidiaries. I have not used the domain name in any way, not even created a website for the domain, nor have I traded whatsoever in Dunhill products or any products using the Dunhill name. Furthermore I am willing to release the domain immediately in order for you to obtain same and in this regard, I have already attempted to do so however, this action was blocked because of the proceedings lodged against me. (print screen attached) I apologise for any inconvenience caused by this registration which is completely unintentional and I would be grateful if you could withdraw the proceedings. If you require the above statement by letter with my signature in the mail for legal purposes then I would be happy to do so. Your early response regarding your next action would also be appreciated as I have other financial and personal issues to deal with and would like to relieve the stress of this matter as soon as possible.”

On March 2, 2017, the Respondent, submitted a Standard Settlement Form, signed by the Respondent.

6. Discussion and Findings

6.1. Preliminary Procedural Matter – Continuation of these Proceedings

With a view to the correspondence intiated by the Respondent, on February 7, 2017, the Center invited both Parties to explore settlement options.

On March 2, 2017, the Center informed both Parties that the Complainant had not requested suspension of the proceedings.

Considering the correspondence initiated by the Respondent regarding its desire to settle this case and the absence of the any similar request from the Complainant together with a the absence of a formal Response from the Respondent, this Panel remains seized with the Complaint and according to paragraph 14(b) of the Rules, shall draw such inferences therefrom as it considers appropriate. In this regard, the Panel will, in its discretion, issue a decision on the merits, noting that the Complainant is entitled to the decision for which it has paid in filing its Complaint, see paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)

A. Identical or Confusingly Similar

The Policy requires that the Complainant show that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

Based on the assertions of the Complainant and the evidence presented supporting these assertions, the Panel finds that the Complainant holds rights in the DUNHILL marks.

This Panel also finds that the disputed domain name is confusingly similar to the Complainant’s registered DUNHILL marks because it fully incorporates the dominant element of the DUNHILL marks, “Dunhill”, and merely adds the term “lighters” and the ccTLD “.co”.

For all the reasons above, the Panel finds that the disputed domain name is confusingly similar to the DUNHILL mark and that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under this element of the Policy, the Complainant has to make at least a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent, see WIPO Overview 2.0, paragraph 2.1.

This Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent. Moreover, in the several emails sent by the Respondent to the Center, the Respondent has not contested in any way its lack of rights and interests in the disputed domain name and has agreed to the transfer of the disputed domain name to the Complainant.

Accordingly, the Complainant has demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name and therefore, the second element of paragraph 4(a) of the Policy is established.

C. Registered and Used in Bad Faith

The Complainant asserts several circumstances which, in the opinion of the Panel, evidence the bad faith of the Respondent in registering and using the disputed domain name.

This Panel finds that it is apparent from the evidence provided by the Complainant, and despite the assertions of the Respodent in its emails to the Center, that:

- The Respondent is not making any active use of the disputed domain name. The Respondent’s registration of the disputed domain name has prevented the Complainant from registering the domain name containing the DUNHILL marks, which represents evidence of bad faith registration and use under the UDRP. See in this sense Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

- Had the Respondent conducted even a preliminary trademark search or Internet search, he would have found the Complainant’s various trademark registrations in the DUNHILL marks and the websites associated with the marks, and numerous additional references in commerce, on the Internet, and in publications evidencing the Complainant’s use of its marks in connection with the its goods and services. See, e.g., Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384.

- In this regard, the Panel cannot conceive of any future use to which the disputed domain name could be put that would not be illegitimate for the purposes of the Policy.

In the light of the findings above, the Panel concludes that the disputed domain name was registered and has been used in bad faith.

7. Decision

For 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 <dunhilllighters.co> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist
Date: March 23, 2017