WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Graff Diamonds Limited v. Mohammad Afzali, Ravand Host, Ravand Dadeh Pardaz Co.
Case No. D2015-0148
1. The Parties
The Complainant is Graff Diamonds Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented internally.
The Respondent is Mohammad Afzali, Ravand Host, Ravand Dadeh Pardaz Co. of Toronto, Ontario, Canada.
2. The Domain Names and Registrar
The disputed domain names <graffperfume.com>, <graffperfume.net>, <grafperfume.com> and <grafperfume.net> are registered with Domain-It!, Inc. dba Domain-It! (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2015. On January 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 30, 2015, 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.
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 February 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2015.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on March 6, 2015. 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 disputed domain names <graffperfume.com> and <graffperfume.net> were each registered on May 23, 2014 and the disputed domain names <grafperfume.com> and <grafperfume.net> were each registered on May 27, 2014.
The Complainant is a United Kingdom corporation with a head office in London and offices in New York, United States of America and Hong Kong, China. It owns trademark registrations consisting of or including the word GRAFF in a number of countries and regions including the United States of America, Canada, the United Kingdom, many countries of Europe, Asia and Africa and international registrations covering goods and services in international classes 3, 9, 34 and 35. The Complainant’s website at <graffdiamonds.com> features photographs of diamonds, jewellery, watches and perfume and lists its stores in several major cities throughout Europe, Asia, Africa and the Middle East.
The website at the disputed domain names, at the time of the Complaint, replicated the Complainant’s website. It reproduced Complainant’s trademark, photographs of the Complainant’s diamonds, watches, jewellery and perfumes, and showed a picture of the Complainant’s headquarters in London in which was included a “Contact Us” link.
When the Panel attempted to access the website at the disputed domain name <grafperfume.com> it received a message:
You do not have permission to access this document.”
Attempts to access the websites at <graffperfume.com> and each of the “.net” disputed domain names met with a “look up error” message.
5. Parties’ Contentions
The Complainant asserts that the Respondent has no connection whatsoever to the Complainant nor to its business and there is no evidence that the Respondent is using or preparing to use the disputed domain names in a bona fide offering of goods or services. The Complainant contends that the disputed domain name <graffperfume.com> is actively being used in bad faith and expects that the other disputed domain names are also being used in bad faith.
The Complainant further contends that the website at the disputed domain name <graffperfume.com> constitute a blatant impersonation and passing off and is also breaching the Complainant’s asserted copyright in the form and content of the Complainant’s website. The Complainant asserts on that basis that the Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating the clear impression that it is fully part of or closely affiliated with the Complainant’s well established and internationally renowned business and promotes its products.
The Complainant contends therefore that the disputed domain names were registered primarily for the purpose of impersonating and therefore disrupting and distracting from the Complainant’s business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names each comprise either the word “Graff” or “Graf”. The addition of the word “perfume” does not serve to distinguish the disputed domain names from the Complainant’s GRAFF trademark which it has shown to be well-known across the world and for which it has registered rights in many countries.
The Panel therefore finds that the disputed domain names and each of them are substantially identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
For the reasons discussed below the Respondent’s use of the disputed domain name <graffperfume.com> is not a use in connection with a bona fide offering of goods or services. As to the remaining disputed domain names it appears that they are not in active use but are subject of “passive holding”, see Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Complainant asserts that it has not licensed or otherwise authorized the use of the disputed domain names by the Respondent and there is no other apparent basis upon which the Respondent could claim a right or legitimate interest in any of the disputed domain names.
The Respondent had an opportunity to rebut the Complainant’s contentions but it failed to do so.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names or any of them.
C. Registered and Used in Bad Faith
The disputed domain name <graffperfumes.com> was used to direct to a website which replicates the Complainant’s website and which displays the Complainant’s trademark and goods which are the same as those displayed at the Complainant’s website. The only reasonable assumption is that the Respondent has done this purely for the purpose of causing Internet users to conclude that by interacting with the Respondent’s website they are in fact interacting with a website of, or intimately associated with, the Complainant. The only conceivable reason why the Respondent would do this is to obtain some commercial advantage and/or to disrupt the business of the Complainant. Furthermore, it is apparent that at the time of registering the disputed domain names the Respondent was aware of the Complainant’s trademark and its reputation and can only have been motivated to register the disputed domain names for the purpose of appropriating the benefit of the Complainant’s reputation; something which the Respondent proceeded to do in the case of the disputed domain name <graffperfume.com>.
Regarding the remaining disputed domain names, <graffperfume.net>, <grafperfume.com> and <grafperfume.net>, whilst they are not in active use their holding, in the context of the bad faith use of the disputed domain name <graffperfume.com> constitutes passive holding and bad faith use and registration in the sense in which that expression is used in Telstra Corporation v. Nuclear Marshmallows, supra.
The Panel therefore finds that the disputed domain names and each of them have been registered and have been used in bad faith.
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 names <graffperfume.com>, <graffperfume.net>, <grafperfume.com> and <grafperfume.net> be transferred to the Complainant.
Desmond J. Ryan AM
Date: March 18, 2015