WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Davidoff & Cie SA v. IT SYS
Case No. D2008-0241
1. The Parties
The Complainant is Davidoff & Cie SA, Geneva, Switzerland, represented by Meisser & Partners, Switzerland.
The Respondent is IT SYS, Milton, United States of America.
2. The Domain Name and Registrar
The disputed domain name <davidoff-cigarette.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2008. On February 18, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On February 19, 2008, Tucows 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”), 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 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2008.
The Center appointed Frank R. Schoneveld as the sole panelist in this matter on March 26, 2008. 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 Complaint includes copies of registration by the Complainant of the trademark DAVIDOFF in the United States of America (in 1975) and evidence of registration of the DAVIDOFF word mark related to cigarettes in more than 100 countries as well as international registrations with WIPO under the Madrid System (as early as 1969). These registrations of the trademark DAVIDOFF are for Class 34 of the Nice International Classification of Goods and Services for the Purposes of the Registration of Marks, namely for “Raw or manufactured tobacco, including cigars, cigarillos, cigars with pre-cut ends and cigarettes […]”.
The Complainant also provides a print out of January 17, 2008 showing registration by the Complainant of the domain name <davidoff-cigarettes.com>, and states that the Complainant and its licensees are using several domain names such as <davidoff-cigarettes.com.ua>.
As the Respondent does not contest any of this documentation, the Panel accepts the evidence set out in this documentation as fact.
The disputed domain name was first created on September 1, 2007.
5. Parties’ Contentions
The Complainant submits that the domain name is the same as or confusingly similar to its registered trademarks, and that the Respondent has no rights or legitimate interests in respect of the domain name because:
- the trademark DAVIDOFF was registered and therefore known to the Respondent in the United States of America at least since 1976, over twenty years before registration of the domain name by the Respondent;
- the name is internationally famous in regard to cigarettes and smokers articles and has been so for many years;
- the use of the DAVIDOFF trademark at the website is an infringement of the Complainant’s trademark rights;
- the Respondent was using the website to publicize competing manufacturers of cigarettes including those of the Marlboro brand (Annexes 11 and 12);
- Until modification of the website, the Respondent was using the domain name website to divert customers to other websites selling cigarettes in competition with the Complainant;
- the Respondent is not commonly known by the domain name, has no relation to the Complainant, has no authorization from the Complainant to use the trademark, and has no right or legitimate interest in respect of the disputed domain name;
- the Respondent was using the domain name to exploit the goodwill of the Complainant’s registered mark DAVIDOFF for commercial gain by diverting users of the website to its online shop which sells competing cigarettes.
The Complainant alleges the Respondent has registered and is using the disputed domain name in bad faith, as shown by the Respondent’s conduct in that:
- The Respondent has registered and used the domain name to attract internet users to its website and indirectly to its online shop.
- The Respondent competed unfairly with the Complainant’s business by redirecting visitors to the domain name website so as to gain new customers for its online shop selling competing cigarette brands.
- Internet users expect the website using the domain name to link to an official Davidoff store or at least a reliable product source or sponsored website of the owners of the Davidoff trademark when it is none of these.
- The Respondent has internationally and without authorization used the goodwill of the Complainant’s trademark to create traffic to its website using the domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 5(e) of the Rules provides that:
“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
Paragraph 15(a) of the Rules states that:
“A Panel shall decide a 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”.
Given that no response has been submitted by the Respondent, and there being no exceptional circumstances, the Panel proceeds to decide the dispute based upon the Complaint and the statements and documents submitted by the Complainant.
A. Identical or Confusingly Similar
The registered trademarks of the Complainant are identical to the first word in the disputed domain name - Davidoff. The second word “cigarette” is one of the main products in the class for which the trademarks of the Complainant are registered. It is also a description of one of the main products for which the trademark is widely known. The Complainant submits that the “Davidoff cigarettes” brand has acquired over the last decades a secondary meaning because Davidoff cigarettes are sold in billions per year in more than 100 countries, and it is well-known because of the long standing and considerable advertising and publicity that surround the brand.
Given the circumstances mentioned in the preceding paragraph, and the failure of the Respondent to reply to any of the assertions of the Complainant, the Panel finds that the domain name is confusingly similar to a trademark in which the Complainant has rights. Consequently, the terms of paragraph 4(a)(i) of the Policy are satisfied.
B. Rights or Legitimate Interests
The Complainant asserts there is no apparent connection between the domain name and the Respondent’s own name or any business he is operating. Nor is there apparent any use of the disputed domain name by the Respondent anywhere, either as a trademark or in any context, other than at the disputed domain name and at the website linked to the domain name where the Respondent has an online shop that sells cigarettes of brands competing with those of the Complainant’s Davidoff brand.
The Complainant asserts the Respondent has no legitimate interest in respect of the domain name. The only interest of the Respondent in the domain name was to use it to sell cigarettes competing with the Complainant’s DAVIDOFF trademark included in the domain name, and to re-direct internet users to an online shop where different and competing cigarettes to those of the DAVIDOFF brand are sold. The Complainant says the linked website with the online shop has no relationship to the Complainant or those authorized to use the DAVIDOFF trademark. The Complainant asserts that by using the term “Davidoff” in the domain name associated with the website, the Respondent is seeking to wrongly convey an impression of association with the Complainant’s well- known trademark.
The Complainant says that use of the Davidoff trademark at the disputed domain name website is in breach of Complainant’s trademark rights and thus illegal. The Complainant asserts that such conduct is an illegitimate exploitation of the goodwill of the Complainant’s trademark and a non-bona fide offering of goods and services using the disputed domain name.
The Complainant also submits there is no legitimate noncommercial or fair use of the domain name and the use being made (as indicated above) is, in effect, illegitimate and unfair.
The Respondent has not presented any defense against these assertions of the Complainant. Having reviewed these assertions in the context of paragraph 4(a)(ii) of the Policy, the Panel finds on the present record no other use or registration of the name by the Respondent in any context, either as a trademark or otherwise, and no bona fide or legitimate use of the domain name (whether commercial, fair or otherwise). The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant submits, in effect, that the Respondent has set up the website at the domain name to attract internet users for commercial gain. This is done, according to the Complainant, by earning money through re-directing visitors to the domain name website to another website so as to gain new customers for the Respondent’s online shop selling cigarettes. The Complainant asserts, and the Respondent does not deny, that the Respondent does so without any authorization to use, for the Respondent’s own purposes, the Complainant’s trademark DAVIDOFF.
The use of the Complainant’s mark in the domain name and at the Respondent’s website creates a strong likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. The confusion arises since anyone visiting the disputed domain name website would consider that it was the website not of the Respondent but that of the Complainant or it was sponsored, affiliated or endorsed by the Complainant when clearly it is not.
In the absence of any Response to the Complainant’s assertions, the Panel finds that the Respondent, by using the domain name as set out in the preceding paragraphs, has intentionally attempted to attract, for commercial gain, internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, as set out in paragraph 4(b)(iv) of the Policy.
Pursuant to paragraph 4(b) of the Policy, the Panel therefore finds that there is evidence of registration and use of the domain name in bad faith. In the absence of any response by the Respondent, the Panel accordingly finds that the domain name has been registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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 <davidoff-cigarette.com> be transferred to the Complainant.
Frank R. Schoneveld
Dated: April 10, 2008