WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ZINO Davidoff SA v. Yang Yong

Case No. D2013-0410

1. The Parties

Complainant is ZINO Davidoff SA of Fribourg, Switzerland, represented by Griffes Consulting SA., Switzerland.

Respondent is Yang Yong of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <davidoffperfumes.com> is registered with Hangzhou E-Business Services Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2013. On February 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 4, 2013, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On March 5, 2013, Complainant requested that English be the language of the proceeding. On March 6, 2013, Respondent requested that Chinese be the language of the proceeding.

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 Respondent of the Complaint, and the proceedings commenced on March 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2013. Respondent did not submit any formal response. Accordingly, the Center notified Respondent’s default on April 2, 2013.

The Center appointed Yijun Tian as the sole panelist in this matter on April 16, 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

Complainant, ZINO Davidoff SA, is a company incorporated in Fribourg, Switzerland. Davidoff is a leading producer of prestige fragrances, eyewear, cognac and café as well as exclusive timepieces, writing Instruments and leather accessories. Complainant launched its first perfumery line in 1984, and has acquired enormous reputation in its DAVIDOFF perfumes. DAVIDOFF branded perfumery are sold widely throughout the world including China (approximate sales in China in 2011 was CHF 1.7 millions).

Complainant has exclusive rights in the DAVIDOFF Marks. Complainant is the exclusive owner of famous and well-known registered trademarks globally (see Exhibits 11-15 to the Complaint), including China (since 2001; see Exhibits 13 to the Complaint). Moverover, DAVIDOFF branded perfumery are advertised and promoted on its website “www.zinodavidoff.com” accessible worldwide (Exhibits 10 to the Complaint).

Respondent is Yang Yong of Shanghai, China. The disputed domain name <davidoffperfumes.com> was registered on May 10, 2011, long after the DAVIDOFF Marks became internationally well-known.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is identical and confusingly similar to a trademark or service mark in which Compliant has rights.

Complainant is the owner of many registered trademarks DAVIDOFF including perfumes with a registration date all earlier than that of the registration of the disputed domain name, including registrations in China. The disputed domain name fully incorporates the trademark DAVIDOFF, which is distinctive element as Complainant’s well-known perfumery trademark, while the part “perfumes” is merely descriptive and non-distinctive term.

It is a well-established principle that descriptive or generic additions to a trademark, and particularly those that designate the goods and services with which the mark is used, do not avoid confusing similarity of the disputed domain name and trade mark.

It is well established that the generic top-level domain “.com” is not significant in determine whether the domain name is identical or confusingly similar to the earlier DAVIDOFF trademarks.

(b) Respondent has no rights or legitimate interests in the disputed domain name.

Complainant’s DAVIDOFF trademarks have been registered and used long time before the disputed domain name was registered.

DAVIDOFF perfumes were also well established in China, the home country of Respondent, long time before the disputed domain name was registered, and Respondent must at all time have been aware of Complainant’s DAVIDOFF trade marks for perfumes.

There is no bona fide offering of goods by Respondent since the website is only used (i) as a commercial gain, which contact only sponsored links, and (ii) for generate revenues by selling the domain name at a price which far exceeds the out-of-pocket expenses.

Complainant was approached on November 6, 2012 with an offer to sell the disputed domain name for USD 5,000. Complainant has tried twice to resolve this matter amicably by offering to purchase the disputed domain name for USD 100. Respondent refused and maintained a price which exceeds the normal cost of registering a domain name. (Exhibits 17 and 5-8 to the Complaint)

Respondent is not known by the disputed domain name. Respondent does not actually engage in any business under the name DAVIDOFF and is not commonly known by this name or the disputed domain name. Respondent very likely only registered the disputed domain name for misleadingly diverting consumers to his website.

Respondent is not a licensee of Complainant, nor has ever been authorized by Complainant to register or use the DAVIDOFF marks or the disputed domain name. He never asked Complainant for the use of a respective license.

Respondent is not making a legitimate noncommercial or fir use of the disputed domain name. By contrast, he intends to divert consumers for commercial gain misleadingly or to tarnish the trademark at issue.

(c) The disputed domain name was registered and is being used in bad faith.

Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the owner of the trademark or the competitors of the trademark owner, for a price in excess of normal cost of registering domain name. Complainant was approached with an offer to sell the disputed domain name for USD 5,000. Complainant has tried twice to resolve this matter amicably by offering to purchase the disputed domain name for USD 100. Respondent refused and maintained a price which exceeds the normal cost of registering a domain name. (Exhibits 17, 19 and 5-8 to the Complaint)

Respondent is already known in UDRP proceeding and in a similar situation where Respondent operated according to the same pattern, the panel ordered the transfer of the domain name.

Respondent has also registered many other domain names incorporating well-known trademarks. (Exhibits 19-20 to the Complaint)

Before the registration of the disputed domain name, the DAVIDOFF trademarks of Complainant have been well known worldwide, and have long been used in various markets in China. Respondent was well aware of these trademarks at the time of registration and has targeted Complainant’s trademark and products. Respondent registered and now uses the disputed domain name in order to attract Internet users for commercial gain only. Internet users accessing <davidoffperfumes.com> are not redirected to an official DAVIDOFF contract or at least a reliable or sponsored website.

B. Respondent

Respondent did not formally reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:

(a) Complainant is not familiar with Chinese and is not able to communicate in Chinese.

(b) If Complainant is to submit all documents in Chinese, this administrative proceeding will be unduly delayed and Complainant would have to incur substantial expenses for translation into Chinese.

(c) It is apparent form the written communication exchanged by the parties with respect to a possible voluntary transfer of the disputed domain name that Respondent has no difficulties in understanding English as he answered to the two cease and desist letters sent by Complainant (Exhibits 5-9).

Paragraph 11(a) allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceedings should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from Switzerland, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the websites at the disputed domain name includes Latin characters “davidoff” and English word “perfumes” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker and has requested that Chinese be the language of the proceeding, based on the fact the Registration Agreement is in Chinese, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <davidoffperfumes.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the website at the disputed domain name is an English-based website (Exhibit 16 to the Complaint); (c) the website appears to have been directed to Internet users worldwide (particularly English speakers) rather than Chinese speakers; (d) It seems that Respondent has no difficulties in understanding English as he answered to the two cease and desist letters sent by Complainant which were written in English; (e) the Center has notified Respondent of the proceedings in both Chinese and English; (f) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceedings, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the DAVIDOFF Marks acquired through registration. The DAVIDOFF Mark has been registered worldwide including in China, and Complainant has a widespread reputation in producing fragrances, eyewear, cognac and café as well as exclusive timepieces, writing Instruments and leather accessories.

The disputed domain name <davidoffperfumes.com> comprises the DAVIDOFF Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the word “perfumes” to the mark DAVIDOFF. This does not seem to eliminate the identity or at least the similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, ADNDRC Case No. HK0500065).

The mere addition of the descriptive term “perfumes” as a suffix to Complainant’s mark fails to distinguish to this Panel the disputed domain name from Complainant’s trademark. By contrast, it may increase the likelihood of confusion. Perfume is one of major products of Complainant. Internet users who visit the website at the disputed domain name <davidoffperfumes.com> are likely to be confused and may falsely believe that <davidoffperfumes.com> is operated by Complainant for selling DAVIDOFF-branded products.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the DAVIDOFF Marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to Respondent to rebut Complainant’s contentions. If Respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the DAVIDOFF Mark globally (international registration since 1981- see Exhibits 11-12 to the Complaint), including registration in China since 2001 – (see Exhibit 13 to the Complaint) which long precedes Respondent’s registration of the disputed domain name (May 10, 2011).

According to Complainant, Complainant is the world’s leading producer of prestige fragrances, eyewear, cognac and café as well as exclusive timepieces, writing Instruments and leather accessories. Complainant launched its first perfumery line in 1984, and has acquired enormous reputation in its DAVIDOFF perfumes. DAVIDOFF branded perfumery are sold widely throughout the world including China (approximate sales in China in 2011 was CHF 1.7 millions).

Moreover, Respondent is not an authorized dealer of DAVIDOFF branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “davidoff” in its business operation or the use of the DAVIDOFF Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the DAVIDOFF Mark or to apply for or use any domain name incorporating the DAVIDOFF Mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <davidoffperfumes.com> on May 10, 2011. The disputed domain name is identical or confusingly similar to Complainant’s DAVIDOFF Mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling the disputed domain name to Complainant. (Exhibits16-17 and 5-8 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(i) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the DAVIDOFF Marks with regard to its perfume products. Complainant has registered its DAVIDOFF Marks internationally, including registration in China (since 2001). It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the DAVIDOFF Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s DAVIDOFF branded products.

b) Used in Bad Faith

Complainant has adduced evidence to prove that “Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name”. Complainant has also adduced evidence to prove that by using a confusingly similar domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website”.

Complainant claimed that “the disputed domain name was registered primarily for the purpose of “selling, renting, or otherwise transferring the disputed domain name to the owner of the trademark or the competitors of the trademark owner. Complainant first learned of Respondent’s registration of the disputed domain name when it received an e-mail on November 6, 2012 with which the disputed domain name was offered for sale. (Exhibit 17 to the Complaint). Complainant has tried twice to resolve this matter amicably by offering to purchase the disputed domain name for USD 100. Respondent refused and maintained a price which exceeds the normal cost of registering a domain name. (Exhibits 17, 19 and 5-8 to the Complaint). The disputed domain name has not only been offered for sale directly to Complainant, but it is also offered for sale on the domain trading platform SEDO.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the DAVIDOFF Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved.

In other words, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the DAVIDOFF Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the webpage of the disputed domain name, potential Internet users are led to believe that the website at the disputed domain name is either Complainant’s sites or the sites of official authorized agents of Complainant, which it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

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 at <davidoffperfumes.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: May 14, 2013