WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
SA Designer Parfums Limited v. Arafat Bulachista
Case No. D2019-0956
1. The Parties
Complainant is SA Designer Parfums Limited, United Kingdom, internally represented.
Respondent is Arafat Bulachista, Ghana.
2. The Domain Name and Registrar
The disputed domain name <designersparfums.com> 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 April 26, 2019. On April 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 24, 2019.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on May 31, 2019. 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
Complainant, SA Designer Parfums Limited, is in the business of producing, marketing, and selling perfumes and cosmetics. Complainant was incorporated in the United Kingdom on July 14, 2002, and does business under the trading name “Designer Parfums”. Complainant produces a number of perfumes and cosmetics under license from various well-known parties such as Naomi Campbell, Jennifer Lopez, and Playboy.
Complainant registered the domain name <designerparfums.com> in 2002 and has used such in connection with a website that provides information regarding Complainant and its products. On February 28, 2019, Complainant filed an application to register the name and mark DESIGNER PARFUMS in the United Kingdom (Application No. UK00003379450). That application is currently pending.
Respondent registered the disputed domain name on May 13, 2018. The disputed domain name does not resolve to an active website or web page. The disputed domain name has been used by Respondent for emails that were sent to a potential customer of Complainant as part of what appears to be a fraudulent scheme.
5. Parties’ Contentions
Complainant asserts that it owns common law rights in the trade name and mark DESIGNER PARFUMS on account of its longstanding use of DESIGNER PARFUMS in connection with its production, marketing, and selling of high end perfumes and cosmetics since 2002.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s DESIGNER PARFUMS mark, as the disputed domain name consists of the full DESIGNER PARFUMS name and mark and merely adds the letter “s” between the words “designer” and “parfums.”
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) registered the disputed domain name nearly 16 years after Complainant set up its now
well-known and internationally recognized DESIGNER PARFUMS business, (ii) does not have a legitimate business to which the disputed domain name legitimately attaches, and (iii) has used the disputed domain name to perpetuate a financial fraud.
Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith as Respondent has used the disputed domain name for email as part of a fraudulent scheme to mislead and persuade a potential customer of Complainant into believing it was doing business with Complainant and thereafter making a payment to Respondent using a fraudulent German bank account.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Here, although Respondent has failed to respond to the Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Complainant does not have an existing trademark registration for the mark DESIGNER PARFUMS, but has a pending application in the United Kingdom for the mark that was filed on February 29, 2019. Consequently, the issue before the Panel is whether, and to what extent, Complainant owned common law or unregistered rights in DESIGNER PARFUMS prior to when Respondent registered the disputed domain name on May 13, 2018. WIPO Overview 3.0 at section 1.3.
The evidence submitted in this proceeding supports a finding that Complainant had developed some common law rights in the name and mark DESIGNER PARFUMS prior to May 13, 2018. Complainant was incorporated in the United Kingdom on July 14, 2002, and registered the domain name <designerparfums.com> in 2002, which appears to have been in use with a website regarding Complainant’s perfume and cosmetic products since as early as 2004.1 That website has featured the DESIGNER PARFUMS name and mark at the top of the pages of the website. In addition, Complainant has provided examples of (i) its use of the DESIGNER PARFUMS name and mark on various items, products and promotional materials, (ii) numerous third party articles that make reference to Complainant under the DESIGNER PARFUMS name and to the business relationship and products of Complainant under the DESIGNER name and mark with such well-known parties as Jennifer Lopez, Naomi Campbell, and Playboy, and (iii) printouts of company accounts showing that in the five years before Respondent registered the disputed domain name, Complainant’s sales had grown from GBP 27.6 million to over GBP 47 million. In the aggregate this evidence supports Complainant’s contention that Complainant had prior common law or unregistered rights in DESIGNER PARFUMS in the United Kingdom and in the fragrance industry generally.
That Complainant has some common law rights in DESIGNER PARFUMS is in fact confirmed by Respondent’s own actions in creating false invoices and other document that feature a stylized version of the DESIGNER PARFUMS mark. Such false documents confirm that DESIGNER PARFUMS refers to a source of perfume and cosmetic products that is associated with Complainant.
With Complainant’s rights in the DESIGNER PARFUMS mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain such as “.com”) is identical or confusingly similar with Complainant’s marks. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain names is confusingly similar to Complainant’s DESIGNER PARFUMS mark in its entirety. The addition of letter “s” in the middle of the disputed domain name does not distinguish the disputed domain name from Complainant’s DESIGNER PARFUMS mark that fully appears in the disputed domain name. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s DESIGNER PARFUMS mark and in showing that the disputed domain name is confusingly similar to that trademark.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the evidence submitted in this proceeding, it appears that Respondent has only used the disputed domain name for purposes of perpetuating a fraud. Respondent has used the disputed domain name for email addresses that are based on the names of Complainant’s employees and sales agent in order to mislead a potential customer of Complainant into believing it was doing business with Complainant. As part of that scheme, Respondent also used Complainant’s DESIGNER PARFUMS name and mark in fake invoices and other documents that were sent to the victim of Respondent’s fraud. Ultimately, Respondent through this subterfuge, and the use of the disputed domain name for email purposes, was able to trick the unsuspecting potential customer into making a payment to Respondent for product samples the customer believed it was buying from Complainant. Simply put, Respondent’s use of the disputed domain name for such deceitful purposes cannot in any sense of the word be seen as being legitimate or evidencing bona fide rights or legitimate interests.
Given that Complainant has established with sufficient evidence that it owns rights in the DESIGNER PARFUM mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
D. Registered and Used in Bad Faith
Given Respondent’s actions as noted above, and its failure to appear in this proceeding, it is easy to infer that Respondent’s use of the disputed domain name, which consists of Complainant’s DESIGNER PARFUMS mark, as part of a fraudulent scheme has been done in bad faith. Given that Complainant had established rights in the DESIGNER PARFUMS name and mark prior to when Respondent registered the disputed domain name, it is evident that Respondent opportunistically registered the disputed domain name for purposes of perpetuating a fraud at the expense of Complainant and its customers (actual or potential).
Accordingly, the Panel finds that Complainant succeeds under this element 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 <designersparfums.com> be transferred to Complainant.
Date: June 14, 2018
1 In support of Complainant’s claim of using its <designerparfums.com> domain name for its website, Complainant has provided pages from its website. As these are undated, the Panel in its discretion under its general powers pursuant to paragraphs 10 and 12 of the UDRP Rules has reviewed archival website pages for the <designerparfum.com> domain name which are available through the Internet Archive at <archive.org> and Domaintools.com. WIPO Overview 3.0 at section 4.8. The Panel has confirmed that since at least as early as August 4, 2004, Complainant had a website at the <designerparfums.com> domain name that featured the name and mark DESIGNER PARFUMS and provided information regarding Complainant and its fragrance and cosmetic products.