WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Loris Azzaro B.V. v. Domain Admin, PrivacyProtect.org and William Cortes de Sousa, REJ Comercio de Perfumes Ltda.
Case No. D2013-2243
1. The Parties
Complainant is Loris Azzaro B.V. of Apeldoorn, the Netherlands, represented by Tmark Conseils, France.
Respondents are Domain Admin, PrivacyProtect.org of Queensland, Australia and William Cortes de Sousa, REJ Comercio de Perfumes Ltda. of Rio de Janeiro, Brazil.
2. The Domain Name and Registrar
The disputed domain name is <perfumeazzaro.com> which is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 26, 2013. On December 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2013, 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 Center sent an email communication to Complainant on January 3, 2014 providing the registrant and contact information disclosed by the Registrar and invited Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 3, 2014.
The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondents of the Complaint, and the proceedings commenced on January 6, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was January 26, 2014. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on January 27, 2014.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on February 7, 2014. This Panel finds that it was properly constituted. This Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
Complainant has rights over the AZZARO trademark for which it holds several trademark registrations, such as: registration No. 431801 with the World Intellectual Property Organization, registered on August 9, 1977 in class 3; registration No. 006827900 with the National Institute of Industrial Property of Brasil, registered on December 25, 1978 in classes 3 and 20; and registration No. 1560359 with the United States Patent and Trademark Office, registered on October 17, 1989 in class 3.
The disputed domain name was created on June 11, 2013.
5. Parties’ Contentions
Complainant’s assertions may be summarized as follows.
Complainant is one of the world’s leaders in the field of perfumes. The trademark AZZARO has been intensively used worldwide and is well-known. The first AZZARO perfume was launched in the seventies, and since then well-known celebrities have been used to promote the AZZARO perfumery goods.
Complainant owns many AZZARO trademark registrations worldwide, including in Brasil where Respondent seems to be established.
Apart from the word “perfume” which is completely descriptive for perfumery and the “.com” generic extension, inherent to the operation of the domain name system, the disputed domain name is identical or at least confusingly similar to the above-cited trademark. Numerous earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish confusing similarity for purposes of the Policy.
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Respondent is not affiliated in any manner to Complainant and has never been authorized to use or register in any way the name Azzaro, including as a domain name. Respondent has never been known, commonly or otherwise, by the disputed domain name, the AZZARO trademark or any name corresponding to it.
Respondent is not making a noncommercial or a fair use of the disputed domain name, since it is used in relation with an unauthorized website, offering to sell cosmetics and perfumes under Complainant’s trademark but also direct competitors’ goods such as Ralph Lauren, Paco Rabanne, Guerlain etc. When clicking on the link corresponding to Ralph Lauren a webpage, offering for sale Ralph Lauren perfumes, is displayed.
Respondent clearly misleads the consumers and diverts them from the real and official Complainant’s website “www.azzaroparis.com” in order to create a commercial gain for himself. Such use, which relies on exploiting user confusion, does not constitute bona fide commercial use.
The disputed domain name was registered and is being used in bad faith.
The disputed domain name was created recently, i.e., on June 11, 2013. AZZARO has a well-known character in different countries, among others France and Brazil where Respondent seems to be operating. The website associated with the disputed domain name is in Portuguese with prices displayed in Real, the Brazilian currency.
The website associated with the disputed domain name enables the sale of Complainant’s goods as well as other goods identical to those covered by Complainant’s trademarks, and more particularly, Complainant’s direct competitors’ goods.
It is hard to believe that the registration of the disputed domain name was a mere coincidence, and the circumstances clearly indicate that Respondent registered and uses the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to the sponsorship of or affiliation of Complainant with Respondent’s website.
Respondent has initially taken steps to cover his identity, which raises suspicions on Respondent’s real intentions. Indeed, if Respondent would have the will to make a genuine use of the disputed domain name, he would have had no need to hide his identity.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As regards who is the proper Respondent in this case, pursuant to paragraph 1 of the Rules “Respondent means the holder of a domain-name registration against which a complaint is initiated”. The Complaint filed with the Center on December 26, 2013, named Domain Admin/PrivacyProtect.org as Respondent. A printout of the corresponding WhoIs attached to the Complaint showed Domain Admin, PrivacyProtect.org as the registrant of the disputed domain name. At the Center’s request, the Registrar sent its registrar verification on December 28, 2013, disclosing William Cortes de Sousa, REJ Comercio de Perfumes Ltda. as the registrant of the disputed domain name, and thus on January 3, 2014, Complainant filed an amended Complaint adding William Cortes de Sousa, REJ Comercio de Perfumes Ltda. as Respondent. Due to the above, this Panel decides to have William Cortes de Sousa, REJ Comercio de Perfumes Ltda. as the proper respondent and thus further references to Respondent herein shall be understood to William Cortes de Sousa, REJ Comercio de Perfumes Ltda.1
The lack of response from Respondent does not automatically result in a favorable decision for Complainant.2 The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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. Identical or Confusingly Similar
It is undisputed that Complainant has rights in the AZZARO trademark.
The disputed domain name entirely incorporates such trademark, adding the term “perfume”, which is descriptive of a product that Complainant sells. The addition of such descriptive term is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior UDRP panel decisions support this Panel’s view (Revlon Consumer Products Corporation v. Easy Weight Loss Info, Augustinus Ferry Yonatan, WIPO Case No. D2010-0936; Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809; GA MODEFINE SA v. AES OPTICS, WIPO Case No. D2000-0306).
Thus this Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is undisputed that Complainant’s AZZARO trademark is well-known internationally, and that it is has been in commerce for more than 30 years.
Complainant asserts that Respondent is not affiliated in any manner to it, that it has never authorized Respondent to use or register the name Azzaro and that Respondent has never been known by the disputed domain name or the AZZARO trademark.
Respondent is using the website associated to the disputed domain name to offer Complainant’s products and products competing with those of Complainant (printouts of the website associated to the disputed domain name attached as exhibits to the Complaint). As established in prior cases, such use is not a bona fide offering of products or services.3
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name.4 In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
The overall evidence in the file indicates that Respondent’s choice of the disputed domain name was deliberate with the intention to benefit from the reputation and goodwill of Complainant’s trademark, which denotes bad faith. In this Panel’s view, the lack of Response is also indicative that Respondent either has no interest in the disputed domain name or lacks arguments and evidence to support its holding of the disputed domain name.
This Panel considers that the use of the disputed domain name for a website that is used to advertise or market products of Complainant’s competitors constitutes an improper use of Complainant’s trademark and is evidence of Respondent’s bad faith.5
In light of the above, this Panel concludes that the registration of the disputed domain name was in bad faith, and the disputed domain name is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <perfumeazzaro.com> be transferred to Complainant.
Date: February 20, 2014
1 The use of privacy service providers, the disclosure of underlying registrants and the determination of the proper respondent have been dealt with in several UDRP panel decisions. For instance, see The iFranchise Group v Jay Bean / MDNH, Inc. / Moniker Privacy Services , WIPO Case No. D2007-1438; and Costco Wholesale Corporation and Costco Wholesale Membership, Inc., v Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638.
2 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
4 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given[...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
5 See Bartercard Ltd & Bartercard International Pty Ltd . v Ashton-Hall Computer Services, WIPO Case No. D2000-0177: “the Domain Name has been used to host a website offering competing products to those offered by the Complainant [...] this suggests that the Respondent registered the Domain Name with the primary intention of disrupting the business of a competitor [...] It also indicates that the Respondent has used the Domain Name to attract Internet users to its website for commercial gain by virtue of confusion with the Complainant’s mark [...] Under the Policy, both of these are sufficient to show registration and use of the Domain Name in bad faith”. See also Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946; and Medco Health Solutions, Inc. v. Digi Real Estate Foundation; WIPO Case No. D2005-0216.