WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Loris Azzaro B.V. v. “Domain Administrator” DVLPMNT MARKETING, INC.
Case No. D2014-0098
1. The Parties
1.1 The Complainant is Loris Azzaro B.V. of Apeldoorn, Netherlands, (the “Complainant”) represented by Tmark Conseils, France.
1.2 The Respondent is “Domain Administrator” DVLPMNT MARKETING, INC. of Charlestown, Nevis, Saint Kitts and Nevis (the “Respondent”).
2. The Domain Name and Registrar
2.1 The disputed domain name <chromeazzaro.com> (the “disputed Domain Name”) is registered with DNC Holdings, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2014. On January 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On January 27, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details.
3.2 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”).
3.3 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 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2014.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on March 20, 2014. 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
4.1 The Complainant in this administrative proceeding is Loris Azarro B.V. of Apeldoorn, a Dutch company incorporated in the Netherlands and is described as one of the world leaders in the perfume manufacturing industry. The Complainant owns the well-known trademark AZZARO said to have been used extensively worldwide and which said trademark the Complainant uses to market its perfumes. It is said that the first AZZARO perfume was launched in the seventies and since then well known celebrities such as the singer Enrique Iglesias have been used to promote the AZZARO perfumery goods as shown in a recent advertisement campaign conducted in Paris, France sometime in June 2012.
4.2 The Complainant owns several trademark registrations for the AZZARO trademarks worldwide some of which are listed as follows:
- French trademark registration AZZARO no. 1347241 dated June 17, 1976, and covering notably perfumes in class 3;
- American trademark registration AZZARO no. 1560359 dated October 22, 1987, covering notably perfumes in class 3; and
- Brazilian trademark registration AZZARO no. 006827900 dated November 3, 1977, in class 3 notably for perfumery products etc.
4.3 The Complainant also owns the trademark CHROME worldwide that again is also well known for the AZZARO perfume range as evidenced by a number of trademark registrations such as amongst others:
- International trademark registration CHROME no. 656351 registered on May 22, 1996, in class 3 notably for perfumes effective in territories such as: Algeria, Austria, Belarus, Bosnia and Herzegovina, Croatia, Cuba, Czech Republic, Egypt, Serbia, Montenegro, France, Germany, Hungary, Italy, Latvia, Liechtenstein, the former Yugolsav Republic of Macedonia, Moldova, Monaco, Morocco, Poland, Portugal, Romania, Russian Federation, San Marino, Slovakia, Slovenia, Spain Switzerland, Ukraine, Viet Nam;
- Canadian trademark registration CHROME AZZARO no. 513028, filed on August 19, 1996, and covering inter alia, perfumes;
- American trademark registration CHROME AZZARO no. 2207938 dated August 26,1996, covering notably perfumes in class 03; and
- Brazilian trademark registration CHROME AZZARO no. 819303046 filed on May 28 1996, in class 3 notably for perfumes etc.
4.4 The Respondent in this administrative proceeding as recorded in the WhoIs printout is “Domain Administrator” of DVLPMNT MARKETING INC. based in Charlestown, Nevis Saint Kitts and Nevis. The Respondent registered the disputed Domain Name <chromeazzaro.com> with the Registrar known as DNC Holdings Inc. on July 16, 2005, according to the WhoIs database accessed on January 21, 2014 and the Registrar confirmation.
5. Parties’ Contentions
5.1 The Complainant contends that the disputed Domain Name <chromeazzaro.com> is identical or at least confusingly similar to the Complainant’s trademarks in that the disputed Domain Name wholly incorporates the Complainant’s trademarks, namely, AZZARO, CHROME, and CHROMEAZZARO except for the addition of the suffix “.com” to the disputed Domain Name. The Complainant in support of this contention refers to a number of earlier UDRP decisions where previous panelists held that when a disputed domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish the requirement of confusing similarity for the purposes of the Policy. Those cases so referred to are: (i) Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; (ii) Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; and (iii) Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615.
5.2 The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed Domain Name as the Respondent is not affiliated in any manner to the Complainant and has never been authorized to use or register in any way the Complainant’s trademarks in the disputed Domain Name. The Complainant also submits that the Respondent has never been known commonly or otherwise, by the disputed Domain Name or by the Complainant’s trademarks or by any name corresponding to it prior to the registration of the disputed Domain Name. The Complainant states further that the Respondent is not making a noncommercial or fair use of the disputed Domain Name as the Respondent only uses it to provide Internet users with a means of browsing through sponsored links resolving to websites, offering for sale, the Complainant’s direct competitors’ goods such as HUGO BOSS and CARON etc. In support of this contention the Complainant refers to copies of web pages attached in the bundle of papers and marked Annex 7 and asserts that the Respondent is clearly misleading consumers and diverting them from the Complainant’s official website at “www.azzaroparis.com” for commercial gain. Accordingly, the Complainant submits that such use which is based on exploiting Internet users’ confusion does not constitute a bona fide commercial use sufficient to legitimize any rights or legitimate interests the Respondent may have in the disputed Domain Name.
5.3 On the question of registration and use in bad faith, firstly, it is submitted the Complainant was already extensively using the trademarks, AZZARO and CHROME well before the Respondent decided to create the disputed Domain Name on July 16, 2005. Secondly, the Complainant asserts that the Respondent is exploiting the Complainant’s trademarks in order as to gain “click through” commissions from the diversion of Internet users, which in itself, is a common example of registration and bad faith use; as decided in Edmunds.com, Inc.v. Ultimate Search, Inc, WIPO Case No. D2001-1319. Thirdly, the Complainant draws attention to the fact that the Respondent took steps to cover its identity by claiming to be “Domain Administrator” which, it is said, raises suspicions on the Respondent’s real intentions.
5.4 The Respondent did not reply to the Complainant’s contentions and is in default. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding the Complainant must prove that: (i) the disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (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.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding.
A. Identical or Confusingly Similar
6.3 The Panel finds from the undisputed facts that the disputed Domain Name <chromeazzaro.com> is confusingly similar to the Complainant’s well-known trademarks in the perfumery industry being AZZARO, CHROMEAZZARO and CHROME. Clearly, the disputed Domain Name wholly incorporates the Complainant’s trademarks and as submitted by the Complainant the only difference is the mere addition of the top-level suffix “.com”. According to a recent copy of the second edition of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), at paragraph 1.2 thereof, it is stated that the applicable top-level suffix in the domain name would usually be disregarded under the confusing similarity test except in certain cases where the applicable top-level suffix may form part of the relevant trademark. Accordingly, the Panel finds that the mere addition of the top-level suffix “.com” does nothing to preclude the finding of confusing similarity following Bayerische Motoren Werke AG v. bmwcar.com, supra among other decisions cited by the Complainant.
6.4 The Panel is therefore satisfied that the Complainant has established that the disputed Domain Name <chromeazzaro.com> is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
6.5 The Panel notes that the Respondent has failed or refused to provide any evidence of circumstances required to establish that there exists any rights or legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. Firstly, as the Complainant submits the Respondent has not been authorized, licensed or permitted by the Complainant to use the disputed Domain Name. In essence there is no evidence to suggest that the Respondent has ever been affiliated or connected to the Complainant.
6.6 Secondly, from the evidence adduced by the Complainant in the form of website printouts it is abundantly clear that the Respondent is using the disputed Domain Name to misleadingly divert Internet users and potential customers of the Complainant away from the Complainant’s website at “www.azzaroparis.com” for the purposes of commercial gain through earning “click-through” commissions. The Panel is satisfied that such unauthorized usage cannot be described as a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed Domain Name as enunciated in Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903.
6.7 In the circumstances the Panel is equally satisfied that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the disputed Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.8 The Panel finds that the Respondent registered the disputed Domain Name in bad faith and continued to engage in bad faith use. There are a number of irrefutable factors that the Panel has taken into account before arriving at this conclusion.
Firstly, the Panel finds that the Respondent must have been aware or ought to have been aware of the Complainant’s worldwide exclusive rights in the AZZARO, CHROME and CHROMEAZZARO trademarks, in the perfumery industry, since the Seventies considering that the Respondent decided to create and register the disputed Domain Name on July 16, 2005.
Secondly, the Panel finds the webpages linked to the disputed Domain Name actually display sponsored links to commercial websites offering goods identical to those goods covered by the Complainant’s trademarks, particularly, links to the Complainant’s direct competitor’s goods. On any view, the Panel finds that the use of a disputed domain name to divert potential customers and/or other Internet users to the websites of a complainant’s competitors is clear evidence of bad faith registration and use under the Policy. In this regard see Edmunds.com v. Ultimate Search, Inc., supra and Marriott International, Inc. v. Kyznetsov, NAF Claim No. 0095648 where a panel found established, bad faith registration and use where a respondent registered the disputed domain name <marriottrewards.com> and used it to route Internet traffic to another website promoting travel and hotel services similar to the services offered by the complainant in that case.
6.9 Thirdly, as indicated in paragraph 5.4 above, the Panel has drawn adverse inferences from the Respondent’s failure or refusal to rebut the evidence and contentions of the Complainant in this administrative proceeding.
6.10 Finally, the Panel notes that the Complainant contends that the Respondent took steps to cover its identity by claiming to be “Domain Administrator”. In previous UDRP cases, the use of privacy shields has been considered, in certain circumstances, as further evidence of bad faith. However, the Panel notes that the facts of this case do not appear to indicate that the Respondent is using a privacy shield. In light of the findings above, the Panel does not need to address this issue in this decision.
6.11 In the circumstances, the Panel is therefore satisfied that the Complainant has established that the Respondent registered the disputed Domain Name in bad faith and has continued to engage in bad faith use.
7.1 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 <chromeazzaro.com> be transferred to the Complainant.
Date: April 3, 2014