WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aulbach Lizenz AG v. Privacy Protect and Milan Kovac

Case No. D2012-2306

1. The Parties

The Complainant is Aulbach Lizenz AG of Chur, Switzerland, represented by Dreyfus & associés, France.

The Respondent is Privacy Protect of Shanghai, China and Milan Kovac of Bratislava, Slovakia.

2. The Domain Name and Registrar

The disputed domain name <danielhechterlingerie.com> (the “Disputed Domain Name”) is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2012. On November 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 26, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Registrar also informed the Center that the language of the registration agreement is Slovak. The Center sent an email communication to the Complainant on November 27, 2012 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 November 28, 2012. The Center sent a second email communication to the Complainant on November 27, 2012 informing the Complainant of the language of the registration agreement and requesting the Complainant provide additional material. The Complainant responded on November 28, 2012, informing the Center that the Complaint already addressed the language of the proceedings.

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 December 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 24, 2012.

The Center appointed John Swinson as the sole panelist in this matter on January 11, 2013. 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 Aulbach Lizenz AG of Chur, Switzerland. It owns numerous registered trade marks comprising the words “Daniel Hechter” in many countries, including the following trade marks:

- International Trade Mark No. 596581A DANIEL HECHTER & design, registered on January 14, 1993;

- International Trade Mark No. 547041 DANIEL HECHTER & design, registered on November 27, 1989; and

- International Trade Mark No. 487905 DANIEL HECHTER & design, registered on September 14, 1989,

(collectively, the “Trade Mark”).

The Respondents are Privacy Protect, a privacy shield service of Shanghai, China and Milan Kovac of Bratislava, Slovakia (collectively, the “Respondent”).

The Respondent did not file a Response, and consequently little information is known about the Respondent.

The Respondent registered the Disputed Domain Name on April 5, 2012. At the time of the Complaint, the Disputed Domain Name resolved to a website that displayed links relating to lingerie and pornography. The Disputed Domain Name currently resolves to a website that displays links relating to fashion, with click through to pages displaying links relating to clothing and associated products (e.g. purses) and services (e.g. fashion designer courses).

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

1. Language of the Proceedings

The Complainant submitted that the language of the proceedings should be English for the following reasons:

- the Complaint is in English;

- English is one of the working languages of the Center and is the most widely used language in international relations;

- the use of another language would place an undue burden on the Complainant, for example, translation costs would exceed the overall cost of the proceedings; and

- translation would unduly delay the proceedings.

2. Identical or Confusingly Similar

Daniel Hechter Paris is a French fashion and lifestyle brand which was founded in 1962 by Daniel Hechter. It is now an international label which sells sports, relaxation and leisure wear, including women’s wear and lingerie.

The Complainant has owned the Trade Mark since at least1998 and products are sold under the Trade Mark in over 60 countries around the world.

The Disputed Domain Name is confusingly similar to the Trade Mark. It consists of the Trade Mark in its entirety, combined with the generic word “lingerie”. The term “lingerie” refers to the Complainant’s lingerie products, increasing the likelihood of confusion. The similarity is not eliminated by the Trade Mark’s additional graphical elements.

3. Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:

- the Respondent is not commonly known by the Disputed Domain Name;

- the Complainant has not licensed or authorized the Respondent to use the Trade Mark; and

- the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services (the Disputed Domain Name directs to a parking page which includes links relating to pornographic websites and commercial links to lingerie websites).

4. Registered and Used in Bad Faith

The Disputed Domain Name has been registered and is being used in bad faith for the following reasons:

- the Trade Mark is well-known and the Respondent must have had it in mind when registering the Disputed Domain Name (the addition of the term “lingerie” is further evidence of this knowledge);

- a trade mark search or Google search for “Daniel Hechter” would have revealed the Complainant’s products and/or the Trade Mark;

- the website that the Disputed Domain Name resolves to displays links that are likely to generate revenues. As such the Respondent is taking advantage of the Trade Mark to generate profits by creating a likelihood of confusion; and

- the use of the Trade Mark in connection with pornographic websites tarnishes the Trade Mark, given the likelihood of confusion.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.

The onus of proving these elements remains on the Complainant even though Respondent has not filed a Response.

A. Language of Proceedings

A preliminary matter to be decided is the language of the proceedings. Although the language of the registration agreement is Slovak, the Complainant has requested that the language of the proceedings should be English, and the Respondent did not contest this request.

In addition to the reasons provided by the Complainant (outlined above), the Panel finds that the proceedings should be conducted in English for the following reasons:

- the website at the Disputed Domain Name is in English; and

- the Respondent has appeared frequently as a respondent in prior UDRP proceedings, and those proceedings have been conducted in English (for example, see American Honda Motor Co., Inc. v. Milan Kovac / Bloomfieldhonda.com c/o Privacy Protect, WIPO Case No. D2012-1680).

B. Failure to File a Response

The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

C. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Complainant asserts that it owns the Trade Mark and provided evidence of ownership. The Panel accepts that the Complainant owns the Trade Mark.

It is well established that the similarity between a trade mark and a disputed domain name is not eliminated only by the fact that the trade mark includes additional graphical elements (see eg. Aulbach Lizenz AG v. Victorio Naturano, WIPO Case No. D2010-1394 and cases cited therein).

The Disputed Domain Name is a combination of the DANIEL HECHTER element of the Trade Mark with the descriptive term “lingerie” (see e.g. AB Electrolux v. Ilgaz Fatih Micik, WIPO Case No. D2009-0777 and the cases cited therein). The “.com” at the end of the Disputed Domain Name is typically irrelevant in assessing confusing similarity under the Policy and is thus ignored (see e.g. Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698).

The Panel finds that DANIEL HECHTER remains the dominant element in the Disputed Domain Name. The addition of the descriptive term “lingerie” does nothing to prevent the confusing similarity of the Disputed Domain Name with the Trade Mark.

It is therefore clear that the Disputed Domain Name is confusingly similar to the Trade Mark. As such, the Complainant succeeds on the first element of the Policy.

D. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

On the facts presented to the Panel, there does not appear to be any legitimate, fair, noncommercial or bona fide offering of goods or services through the Disputed Domain Name. This finding is based upon the following:

- the Respondent is not commonly known by the Disputed Domain Name;

- the Respondent registered and began using the Disputed Domain Name after the Complainant had established rights in the Trade Mark through registration and/or extensive use of the Trade Mark in connection with fashion-related products;

- there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which the Respondent could own or use the Disputed Domain Name;

- the Respondent has not used, and is not using, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent’s use of the Disputed Domain Name as a parking page was clearly intended under the circumstances to divert users looking for Daniel Hechter goods by trading off the reputation associated with the DANIEL HECHTER name and the Trade Mark.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

E. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith, including where a domain name is “used to intentionally attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that web site or location or of a product or service on that web site or location”.

The Complainant’s business was well established at the time the Disputed Domain Name was registered, as such, it is probable that at the time of registration the Respondent was aware of the Complainant’s trade mark rights.

The Respondent’s registration of a domain name that wholly incorporates the “Daniel Hechter” element of the Trade Mark, with the addition of the descriptive term “lingerie”, which is used in the Complainant’s line of business, indicates that the Respondent was aware of the Complainant and registered the Disputed Domain Name to mislead Internet users into thinking it is some way connected, sponsored or affiliated with the Complainant and its business/products, or that the Respondent’s activities are approved or endorsed by the Complainant.

It appears to the Panel that the Respondent is trading off the Complainant’s substantial reputation. This constitutes bad faith (see e.g. eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633; Playboy Enterprises International, Inc. v. Domain Active Pty Limited, WIPO Case No. D2002-1156 and Nicole Richie v. Sonny Ahuja, WIPO Case No. D2012-0500). The Respondent had the opportunity to make submissions to the contrary but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any evidence of good faith use of the Disputed Domain Name (see Encyclopaedia Britannica v. John Zuccarini, WIPO Case No. D2000-0330 and eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633).

The following are further evidence of bad faith:

- The provision of links to pornographic websites. This has been found in previous UDRP decisions to be evidence of bad faith (see e.g. America Online, Inc. v. Viper, WIPO Case No. D2000-1198 and cases cited therein).

- The use of a privacy service. The use of such services to avoid disclosing the details of the true registrant has been found to be consistent with an inference of bad faith in registering and using domain names under certain circumstances (see Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598 and Barclays Bank PLC v. Privacy Protect/Callum Macgregor, WIPO Case No. D2010-1988).

- The Respondent Milan Kovac’s history. There are a number of UDRP decisions involving the Respondent Milan Kovac. In a recent decision, Compagnie Générale des Etablissements Michelin v. Milan Kovac / Privacy--Protect.org, WIPO Case No. D2012-0634, the Panel stated:

“The evidence in this and fifteen prior UDRP decisions, indicates that the Respondent Milan Kovac is a serial cyber squatter and is a member of an ever-growing band of persons who register domain names which are confusingly similar to famous trademarks, with the intention of using them to generate pay-per-click royalties until such time as they are forced, like nomads, to move on to fresh pastures.”

In light of the above, the Panel finds that the Complainant has clearly succeeded on the third element of the Policy.

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 <danielhechterlingerie.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: January 24, 2013