WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alfred Dunhill, Inc. v. Whois Privacy Protection Service by onamae.com / akihiro kitakata
Case No. D2016-0680
1. The Parties
The Complainant is Alfred Dunhill, Inc. of Bellevue, Switzerland, represented by Winston & Strawn LLP, United States of America.
The Respondent is Whois Privacy Protection Service by onamae.com of Tokyo, Japan / akihiro kitakata of Tokyo, Japan.
2. The Domain Name and Registrar
The disputed domain name <dunhill-premium.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 6, 2016. On April 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 8, 2016, 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 the Complainant on April 11, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 13, 2016.
On April 11, 2016, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese, and invited the Parties to comment on the language of the proceeding. On April 13, 2016, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.
The Center verified that the Complaint together with 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, in both English and Japanese, and the proceeding commenced on April 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 10, 2016.
The Center appointed Haig Oghigian as the sole panelist in this matter on May 26, 2016. 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
According to the Complainant, Alfred Dunhill, Inc. is a world famous men's luxury goods company that has been in business for over 100 years. The Complainant manufactures and sells a variety of products, including luxury leather goods, writing implements, fragrances, timepieces, and clothing.
The Complainant is the holder of numerous trademark registrations and applications comprised of or containing the term "DUNHILL" registered at least as early as April 1986.
The disputed domain name was registered on May 1, 2014, and resolves to a website including advertisements in the Japanese languages relating to products for sale.
5. Parties' Contentions
According to the Complainant, (i) the Complainant has long-standing trademark rights in and to the DUNHILL trademarks and (ii) the Complainant actively promotes its DUNHILL trademark through its website linked to the domain name <dunhill.com>.
The Complainant contends that:
(1) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, mainly because it incorporates the DUNHILL trademark in its entirety and simply adds the generic term "premium";
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent is not commonly known by the disputed domain name, it has not acquired trademark or service mark rights and the Respondent's use was not authorized by the Complainant; and
(3) the disputed domain name has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Preliminary Issue: Language of the Proceeding
The Registration Agreement is in Japanese. Pursuant to Rules, paragraph 11, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, i.e. the default language of the proceeding shall be Japanese. However, the Complainant upon receiving the Notification of Language of Proceeding from the Center submitted a supported request as to why the dispute should proceed in English.
Although the Center made a preliminary determination to accept the Complaint filed in English, pursuant to paragraph 11 of Rules, the Panel is granted discretion to determine the language of proceeding having regard to the circumstances of the case. The Panel may choose to write a decision in either language, or request translation of either party's submissions after taking into account what would be most fair to both Parties in their abilities to prepare the necessary documents and present the case.
The Panel notes that, as held by several UDRP panels, an exception to the general language requirement set forth in paragraph 11(a) of the Rules is that "in certain situations, where the respondent can clearly understand the language of the complaint, and the complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the complaint, even if it is different to the language of the registration agreement." John Holland Group Pty Ltd v. Whois Privacy Protection Service by onamae.com / Yoshio Maeda, WIPO Case No. D2015-2271.
The Panel also notes that the Respondent has failed to file any Response either to the Complaint or to a specific invitation to comment or object to the Complainant's language request despite the Center communications in both English and Japanese. Indeed, in the Panel's view, a respondent's failure to respond to these notices should, in general, be a strong factor to allow the Panel to decide to proceed in favor of the language of the Complaint.
Accordingly, pursuant to paragraph 11(a) of the Rules, the Panel determines that the language of the proceeding is English and determines that the remainder of the proceeding shall be conducted in English.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the complainant to prove that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
The disputed domain name contains the DUNHILL trademark in its entirety, and "the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249. Further, the addition of the generic term "premium" does not serve sufficiently to distinguish the disputed domain name from the Complainant's trademark.
For the above reasons, and in accordance with previous UDRP decisions, the Panel finds that the disputed domain name is confusingly similar to the Complainant's marks. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in respect of the domain name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- demonstrable preparations to use or use the domain name in connection with a bona fide offering of goods or services prior to the dispute (paragraph 4(c)(i));
- an indication that the respondent has been commonly known by the domain name even if it has acquired no trademark rights (paragraph 4(c)(ii)); or
- legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (paragraph 4(c)(iii)).
In this case, the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. It is clear on the given evidence that the disputed domain name was registered after the Complainant registered and started to use the DUNHILL marks. Further, there is no evidence that the Respondent has been or is commonly known by the disputed domain name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the disputed domain name or any trademark confusingly similar thereto, as a domain name or for any other purposes.
Further, the disputed domain name resolves to a website which also includes advertisements in Japanese relating to products for sale.
Therefore, in the absence of any Response to rebut the Complainant's prima facie case, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove that the domain name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the complainant in order to demonstrate the respondent's bad faith registration and use of the domain name. Such circumstances include:
- use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the respondent's website or location (paragraph 4(b)(iv)).
In the Panel's view, the Respondent must have had knowledge of the Complainant's rights in its marks when the Respondent registered the disputed domain name, since the Complainant's marks are unique in its field and have been used for many years, and given the use of the disputed domain name to display advertisements in the Complainant's specific field of men's luxury goods. The choice of the disputed domain name was therefore intentional and not random. "Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to use the mark is a strong indication of bad faith". Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085. The DUNHILL trademark is widely known and the Respondent has no connection to the Complainant, is not authorized to use its mark and does not have any other legitimate reason to use the Complainant's trademarks.
Finally, the Panel finds that by fully incorporating the Complainant's trademark into the disputed domain name and by using it in connection with a website which includes advertisements in Japanese relating to products for sale, the Respondent falsely creates the impression that it is associated with the Complainant, such conduct disrupts the Complainant's business, and supports a finding of bad faith. Therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by paragraph 4(a)(iii) of the Policy.
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, <dunhill-premium.com>, be transferred to the Complainant.
Date: June 9, 2016