WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Davidoff & Cie SA v. Gerard Butler
Case No. D2013-0429
1. The Parties
The Complainant is Davidoff & Cie SA of Geneva, Switzerland, represented by Meisser & Partners, Switzerland.
The Respondent is Gerard Butler of Nicosia, Cyprus.
2. The Domain Name and Registrar
The disputed domain name <davidoffcigarettes.info> is registered with Online SAS (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2013. On March 1 and 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2013, 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.
On March 11, 2013 the Center notified the Parties that the Complaint was filed in English but that according to the information received from the Registrar the language of the Registration Agreement is French. Accordingly, the Complainant submitted a request for English to be the language of the proceedings on March 12, 2013. The Respondent did not reply. The Center thus informed the Parties that it would send all case-related communications in both English and French, that it would accept a Response filed in either language, and that the language of the proceeding would be decided by the Panel once appointed.
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 the Respondent of the Complaint, and the proceedings commenced on March 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2013. On March 21, 2013, a third party sent an email communication to the Center.
The Center appointed J. Nelson Landry as the sole panelist in this matter on April 19, 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 Davidoff history started more than a century ago when, in 1911, the Davidoff-family opened a tobacconist’s store in Geneva, Switzerland, the son Zino, and then the company Davidoff & Cie SA, the Complainant, took over and developed the business in successfully marketing Cuban cigars starting in the 1940 decade and then invented the first desktop cigar humidor to preserve cigars. There has been an involvement of Zino Davidoff in the development of the Complainant’s Cuban cigar promoting and selling activities even after he sold his successful tobacco shop in Geneva in 1970 and stayed on as Davidoff’s ambassador until his death in 1994.
The Complainant and its licensees produce and distribute their “Davidoff” cigarettes worldwide including in Cyprus and in France as held by UDRP panel in earlier decisions involving the same Complainant. See Davidoff & Cie SA v. Paul Darnell o/b/o Cuban Cigars International, NAF Claim No. 0097331 and Davidoff & Cie SA v. Dario Muriel d/b/a Comercio Personal SL, and NAF Claim No. 0129124.
The Complainant is the registered owner of several registrations of the trademark DAVIDOFF in international class 34 for cigarettes. According to the evidence, which includes several of these registrations, some disclosing a priority, namely December 18, 1969, December 22, 1982, another being a Swiss basic registration in the same class and several other for DAVIDOFF trademarks where there is a further element associated with the word “Davidoff” than such as a signature underlined, a script in circle and various cigarettes boxes of different shapes and colors (herein the “DAVIDOFF Trademark” or collectively the “DAVIDOFF Trademarks”). Finally within those registrations of the DAVIDOFF Trademarks for cigarettes in over 111 countries, there are registrations in Cyprus and in France where the Respondent and the Registrar are respectively located.
According to the Complainant, their cigarettes are currently sold in more than hundred countries under these DAVIDOFF Trademarks and in 2011, pursuant to a 6% volume increase, 18 billion cigarettes were sold.
According to the WhoIs, the disputed domain name was created in June 2010. According to the Registrar Verification, the disputed domain name was created on June 11, 2012, and at the time of filing of the Complaint was associated with a portal site where the Respondent redirected Internet visitors to a shop address at “www.tax-free-cigarettes.info” where there are offered competing products namely Benson & Hedges, Camel, Dunhill, Kent, Salem, Lucky Strike, Marlboro, etc.
On November 4, 2010, the Complainant sent a letter to the Respondent expressing its disagreement with the use of the disputed domain name and asked the Respondent to delete said domain name. The Respondent did not answer this request since the letter sent to the Respondent was returned undelivered. However, the Complainant, on January 30, 2013, sent again the same letter attached to an email to the Respondent, mentioning the earlier letter which had come back, unclaimed (Exhibit 11A to the Complaint). The communications sent by the Center to the Respondent and his administrative and technical contact at the email address disclosed in the domain name registration were all delivered but there has never been any reply or answer from the Respondent or his administrative and technical contact.
On March 21, 2013, the Center received an email from Ph. Poitiou & Associates, a law firm in Cyprus, acknowledging receipt of a package for Gerard Butler, the Respondent herein, informing the Center that there is no such person in their office nor as a client and further mentioning their area code, a four digit number, differed significantly from the one used by the Center, 55321, located within the information available on the WhoIs search document. The address provided by the Respondent to the Registrar was that of the law firm except for the area code.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the DAVIDOFF Trademarks in which it has rights.
- pursuant to the century long and substantial use of the DAVIDOFF Trademarks registered in more than one hundred countries and their promotion initially by members of the Davidoff family and subsequently by the Complainant, the DAVIDOFF Trademarks have become famous in association with cigarettes as already held in earlier UDRP decisions. See Davidoff & Cie SA v. Dario Muriel d/b/a Comercio Personal SL, NAF Claim No. 0129124 and Davidoff & Cie SA v. Charles Collins, WIPO Case No. D2012-1321.
- the disputed domain name incorporates entirely the DAVIDOFF Trademark and the combination of the descriptive term “cigarettes” does not affect the confusing similarity, since, as held in earlier UDRP decisions, the incorporation of the DAVIDOFF Trademark in its entirety is sufficient to establish that the disputed domain name is identical or confusingly similar. See AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.
- the DAVIDOFF Trademark in use for a century, including its registration in Cyprus in 1979, the home country of the Respondent, has priority over the disputed domain name which was registered in 2010.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name:
- according to the Complainant, the famous status of the DAVIDOFF Trademark and its registration and use in Cyprus, support the Complainant’s representations that the Respondent must have been aware of the Complainant’s DAVIDOFF Trademark, when he registered the disputed domain name in view of the combination of the descriptive term “cigarettes” with the Trademark DAVIDOFF.
- since the Respondent’s website redirects Internet visitors to a shop where cigarettes brands of competitors are offered side by side with the DAVIDOFF products of the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name nor is engaged in a bona fide offering of goods and services.
- according to the Complainant, the association of the word “cigarettes” with the DAVIDOFF Trademark would not be have been made or chosen unless one was seeking to convey an impression of association with the Complainant’s well-known products, but was rather seeking to exploit the goodwill of the Complainant’s DAVIDOFF Trademark. See McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353.
- according to the Complainant, there is a presumption that the Respondent has not been commonly known by the disputed domain name and there is no business relation of the Respondent with the Complainant, the disputed domain name was primarily registered to participate in an affiliate program and thus allow the Respondent to gain considerable commissions.
- considering the name DAVIDOFF which is not a common one and having no descriptive meaning, its selection with regard to cigarettes is seeking to create an impression of association with the Complainant. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001.
- the Complainant has not authorized the Respondent to use any of the DAVIDOFF Trademarks in any way, to register the disputed domain name and represents that, furthermore, the Respondent has never been an official dealer and there is no business relationship between the Complainant and the Respondent.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith.
- the registration of the disputed domain name prevents the Complainant from using the said domain name corresponding to its world famous DAVIDOFF Trademark and such action amounts to bad faith according to paragraph 4(b)(ii) of the Policy. See J. Crew International, Inc. v. crew.com, WIPO No. D2000-0054.
- by its links to the website of the Complainant’s competitors which are selling similar goods, the Respondent uses the DAVIDOFF Trademark to promote competition to the Complainant and the said use is primarily for the purpose of disrupting the business of a competitor pursuant to paragraph 4(b)(iii) of the Policy. This diversion of Internet users to competitors shop sites and gain of revenues or commissions for the subsequent sales is an exploitation of the Complainant’s DAVIDOFF Trademark and as held in earlier UDRP decisions, such registrations of the disputed domain name was done in bad faith. See Big Dog Holdings, Inc. d/b/a Big Dog Sportswear v Red River Farms, Inc., NAF Claim No. 0093554.
- in using the disputed domain name and a related website in such a way to attract Internet users, said users may expect an official Davidoff store or a sponsored website but they rather see the exploitation of a well-known brand used for the Respondent’s purposes namely to gain revenues from directing website traffic to various websites, such use of the disputed domain name is one made in bad faith as already held in earlier UDRP decisions; see Snowboard-for-sale.com, Inc. v. Name Administration Inc., WIPO Case No. D2002-1167 and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name registered by the respondent is identical or confusingly similar to a trademark 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.
A. Language of proceedings
The disputed domain name is registered with the registrar Online SAS located in France and according to the Registrar the language of the registration agreement is French. However, the website at the address of the disputed domain name is in the English language and Internet visitors to this website are redirected to another website “Online Tobacco - Cigarettes at discount prices!” which is completely in English. Furthermore, the affiliate program of <directnetpartners.com/cigarettes.php> is only available in English.
On the basis of this evidence, the Complainant submits that the Respondent certainly has a good understanding of the English language and that conducting this proceeding in the English language has no detrimental effects to the Respondent’s rights. The Complainant cites earlier UDRP decisions which allowed a respondent to submit its response in French or that a proceeding involving the same registrar, as in this case, was conducted in the English language. See General Electric Company, GE Osmonics Inc. v. Optima di Federico Papi, WIPO Case No. D2007-0645 and Walgreen Company v. Jon Reegy, WIPO Case No. D2011-1621.
The Panel is satisfied that the Respondent has a good understanding of English since he conducts his website operations in the English language and although he was offered the opportunity to file a Response in the French language, he elected to remain silent in not providing any response or communication with the Center email communications which were delivered to his email address disclosed in his domain name registration. In agreement with the panel in a recent decision involving the same Complainant, Davidoff & Cie SA v. Charles Collins, WIPO Case No. D2012-1321, the Panel concludes that the proceedings shall be held in English because of the clear evidence that the Respondent has adequate knowledge of English to understand these proceedings.
B. Identical or Confusingly Similar
With the elaborate and detailed evidence of eight international trademark registrations, a national registration in Switzerland and another in Cyprus (Exhibits 12 to 21 to the Complaint) for the DAVIDOFF Trademarks, whether the term is alone, in a particular script or in association with a cigarettes box of a different color, on the first hand, and the century old use of these famous and highly distinctive Trademarks on the other hand, the Panel finds that the Complainant has rights in the DAVIDOFF Trademarks.
It is well established that, as in the present case, when the disputed domain name incorporates the whole of the DAVIDOFF Trademark, there is confusing similarity which is not diminished in any way by the addition of the descriptive term “cigarettes” and the gTLD suffix “.info”. The addition of the term “cigarettes” rather confirms the association with the Trademark of the Complainant. The Panel adopts the conclusion and findings to that effect in the earlier UDRP decisions cited by the Complainant.
The Panel finds that the disputed domain name is confusingly similar with the DAVIDOFF Trademark of the Complainant.
The first criterion of the Policy has been met.
C. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore, the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant states that it has not found any trademark registration or trade name corresponding to the disputed domain name or any other facts or information suggesting any use of the term “Davidoff” by the Respondent.
The Respondent has not challenged nor denied the Complainant’s allegations that the Respondent is not commonly known by the name “Davidoff” or the disputed domain name.
The Complainant has clearly stated that it has given no authorization to the Respondent to register or use the disputed domain name, the Respondent has never been and is not an official dealer of its products nor the Complainant has authorized or licensed the Respondent to use its tradename or any DAVIDOFF Trademarks.
The Panel agrees with the representations of the Complainant and finds that under the present circumstances, the disputed domain name was registered for commercial gain in order to misleadingly divert Internet visitors to websites not affiliated with the Complainant and to participate in an affiliate program and gain commission.
On the basis of these facts and activities, the Panel finds that the Respondent is not engaged in any bona fide offering of goods and that the Respondent has no rights or legitimate interests in respect of the disputed domain name in accordance with paragraphs 4(a)(ii) and 4(c)(i) of the Policy.
The second criterion of the Policy has been met.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
It should be noted that circumstances evidencing bad faith registration and use are not limited to the above.
Upon considering the nature of the special term “Davidoff”, not being a common or descriptive term, the fame associated with the worldwide centennial use of the DAVIDOFF Trademark and the addition of the term “cigarettes” to the disputed domain name, the Panel considers that it is unconceivable that the Respondent has registered the disputed domain name without the knowledge of the famous DAVIDOFF Trademark. Moreover, the Panel notes that there was no relationship with the Complainant nor any authorization or license to register the disputed domain name. The bad faith that the Panel sees in this registration is further corroborated by the deliberate mistake made by the Respondent in providing the Registrar with a wrong address, namely that of a law firm in Cyprus as shown by the email communication received by the Center from said law firm.
The Panel finds that the disputed domain name was registered in bad faith.
The Complainant is well founded in submitting that the registration of the disputed domain name prevents the Complainant from using the same domain name which corresponds to its worldwide well-known Trademark and this supports a finding of activity in bad faith. Furthermore, such bad faith is confirmed when the Panel observes how the disputed domain name and the website associated therewith are used to direct Internet consumers to links towards several other websites where even though there are apparently genuine “Davidoff” cigarettes or products offered for sale, there are several other cigarette brands of the Complainant’s competitors as shown in the evidence adduced by the Complainant, in particular the heading “Davidoff Cigarettes Brands” namely Camel, Newport and other competitors’ brands (Exhibit 6 to the Complaint).
Furthermore, as put in evidence by the Complainant in said Exhibit 6, the Internet visitor, upon clicking on “buy davidoff cigarettes”, is redirected to “www.tax-free-cigarettes.info” and there are several offering of the Complainant’s competitors’ trademarks namely Marlboro, Camel, Pall Mall, Winston, Parliament, to mention only some of the 14 brands listed therein with the brand represented in its specific trademark dressing or script and furthermore where each illustration has associated therewith the mention “View All Products” underneath and adjacent to said illustrations, another segment is headed by the trademark such as Camel with a listing underneath of eight different categories such as Camel Blue, Camel Filters, Camel Silver, to mention only three of the many segments associated with a competitor’s trademark.
The revenues that are presumably gained by the Respondent from these Internet visitors redirections are clearly activities primarily involving the use of the disputed domain name in bad faith as it has been held in earlier UDRP decisions. See Snowboard-for-sale.com, Inc. v. Name Administration Inc., supra and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, supra.
Therefore, the Panel finds that the disputed domain name was registered in bad faith and used in bad faith notwithstanding the early communications and complaints of the Complaint in 2010 and January 2013.
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 <davidoffcigarettes.info> be transferred to the Complainant.
J. Nelson Landry
Date: April 30, 2013