WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zino Davidoff SA v. Contact Privacy Inc. Customer 0154422431 / Davidoff Timepieces, Watches, Contact Privacy Inc. Customer 0155498605 / Davidoff Watches, Watches

Case No. D2020-0965

1. The Parties

Complainant is Zino Davidoff SA, Switzerland, represented by BrandIT GmbH, Switzerland.

Respondent is Contact Privacy Inc. Customer 0154422431, Canada / Davidoff Timepieces, Watches, Singapore, Contact Privacy Inc. Customer 0155498605, Canada / Davidoff Watches, Watches, Singapore.

2. The Domain Names and Registrar

The disputed domain names <davidofftimepieces.com> and <davidoffwatches.com> are registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2020. On April 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 23, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 28, 2020.

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, and the proceedings commenced on May 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on June 5, 2020.

The Center appointed Ingrīda Kariņa-Bērziņa, as the sole panelist in this matter on July 3, 2020. 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 is a company incorporated in Switzerland that produces and markets fragrances, handbags, eyewear, timepieces, writing instruments, leather accessories, and other luxury goods under the trademark DAVIDOFF (the “DAVIDOFF Mark”) to customers internationally since 1984.

Complainant is the proprietor of numerous trademark registrations, including the following, both of which are in effect in Singapore, namely:

- International Trademark Registration No. 467510 for DAVIDOFF (figurative mark), registered for goods in classes 3, 14, 15, 16, 18. 20, 21, 25, 33, and 34 on January 28, 1982;

- International Trademark Registration No. 857686 for DAVIDOFF (word mark), registered for goods in classes 9, 16, and 30 on May 24, 2005.

Complainant has registered several domain names containing the DAVIDOFF Mark, including <zinodavidoff.com> and <zinodavidoff.com.sg>.

Respondent registered the disputed domain name <davidoffwatches.com> on April 7, 2019, and the disputed domain name <davidofftimepieces.com> on August 20, 2019. The disputed domain name <davidofftimepieces.com> resolves to a website offering Rolex and other brand watches for sale by a Singapore entity calling itself “Davidoff Timepieces.” The disputed domain name <davidoffwatches.com> does not resolve to an active website.

The record contains copies of cease & desist letters sent by Complainant to Respondent beginning in September 2019.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that the disputed domain names incorporate entirely Complainant’s reputable brand DAVIDOFF, with the addition of the generic terms “watches” and “timepieces,” which are closely related to Complainant and its business activities. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not add any distinctiveness to the disputed domain names. Therefore, the disputed domain names should be considered as confusingly similar to the DAVIDOFF Mark.

Under the second element, Complainant states that it has not granted Respondent any right to use the DAVIDOFF Mark within the disputed domain names, nor is Respondent affiliated with Complainant in any form. Complainant has not found that Respondent is known by the disputed domain names. Respondent has actively promoted its website under the name “Davidoff Timepieces” on social media accounts established only in 2019. Complainant states that such accounts were “liked” or “followed” by a small number of people. In response to Complainant’s notice letter, Respondent responded by stating that the disputed domain name was registered to reflect his own name, Victor Davidoff. After Respondent refused to produce evidence of its identity, Complainant sought information from the Singapore company registry and identified a company named “V. Davidoff Timepieces” established in 2019. According to public information, the proprietor is named “Victor Tok Kai Beng” and no Google results were available for a search for the term “Victor ‘Tok Kai Beng’ Davidoff”.

Complainant states that prior UDRP decisions support the contention that Respondent cannot be considered as commonly known by the disputed domain names where Respondent has registered a company name and domain names containing someone else’s trademark. Complainant’s DAVIDOFF Mark is a reputable brand registered worldwide and in Singapore, and said registration significantly predates the registration of the disputed domain names and that of Respondent’s company. Further, Respondent is not engaging in a bona fide offering of goods and services, since it failed to respond to Complainant’s request to substantiate its allegation that its identity contained the term “Davidoff” and that it had a legitimate interest in selecting and using this term as of the date of registration of the disputed domain names. The overall look and feel of the website to which the disputed domain name resolves is confusingly similar to Complainant’s official website for Davidoff watches. Respondent’s conduct cannot be regarded as legitimate noncommercial or fair use of Complainant’s Mark.

Under the third element, Complainant states that the registration of Complainant’s trademarks significantly predates the registration date of the disputed domain names and Respondent has never been authorized by Complainant to register said disputed domain names. Complainant has an active presence in Singapore, where Respondent runs a business in the same sector. Respondent very likely knew about Complainant and the DAVIDOFF Mark when it registered the disputed domain names. The combination of the widely-known DAVIDOFF Mark and the terms “watches” and “timepieces” in the disputed domain names is very likely an attempt to improperly benefit from Complainant’s earlier rights. Complainant’s DAVIDOFF Mark is a reputable global trademark also in Singapore, and Respondent has failed to produce any evidence or legitimate interest for registering the disputed domain names.

The use of the disputed domain names has been neither bona fide nor fair. In Complainant’s view, Respondent’s intention has been to misleadingly divert consumers to Respondent’s website, demonstrating bad faith. Respondent did not provide any evidence of being named “Victor Davidoff” nor or any legitimate interests in using the name “Davidoff”. Complainant believes that Respondent’s purpose was to conceal its true identity. Complainant addressed Respondent by cease-and-desist letter, but Respondent refused its request to transfer the disputed domain names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

Noting the circumstances of the case, and despite slight differences between the pseudonyms provided in the WhoIs for the disputed domain names, the Panel considers the Respondent to be a single entity. The disputed domain names appear subject to common control, and consolidation would be fair and equitable to all Parties. Accordingly, the Panel accepts the Complainant’s request to consolidate the present proceeding pursuant to the Rules, paragraph 10(e). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 4.11.2.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the DAVIDOFF Mark through registrations in several jurisdictions, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1.

In comparing Complainant’s DAVIDOFF Mark with the disputed domain names, the Panel finds that the disputed domain names are confusingly similar with the DAVIDOFF Mark. Both disputed domain names contain the DAVIDOFF Mark in its entirety. The addition of dictionary terms “watches” and “timepieces” does not prevent a finding of confusing similarity with the DAVIDOFF Mark, which is clearly recognizable within the disputed domain names.

Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

It is the well-established view of UDRP panels that the addition of the gTLD to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain names, Respondent had no rights or legitimate interests in those domain names. The nature of the disputed domain names, which contain Complainant’s long-established Mark together with dictionary terms “watches” and “timepieces,” cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the DAVIDOFF Mark with the permission of Complainant. Respondent has not provided any evidence to support its assertion that its name is DAVIDOFF. Respondent’s Singapore entity, “V. Davidoff Timepieces,” was registered on July 25, 2019, which falls after the registration of the disputed domain name <davidoffwatches.com> on April 7, 2019, but prior to the disputed domain name <davidofftimepieces.com> on August 20, 2019.

The Panel finds, that, for paragraph 4(c) to apply, Respondent must have been commonly known by the domain name “as at the date of registration of the domain name.” (See Rothschild Bank AG, N M Rothschild & Sons Limited and Rothschild Continuation Holdings AG v. Rothchild Corporation and Rothchild Internet Development Corporation SA de CV/ Joseph Martin Rothchild, WIPO Case No. D2001-1112). Respondent registered its entity after registering the disputed domain name <davidoffwatches.com> and this condition is not satisfied in respect of this disputed domain name. In respect of the other disputed domain name, <davidofftimepieces.com>, the Panel finds that, “proof of mere registration of a company, without more, is not enough to demonstrate that the Respondent was commonly known by the domain name.” (See Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-00672). There is no evidence in the record, beyond the establishment of the entity, to show that, in the weeks preceding the registration of the disputed domain name <davidofftimepieces.com>, Respondent had become commonly known by this name.

There is no evidence of legitimate noncommercial or fair use of the disputed domain names, as the disputed domain name <davidofftimepieces.com> is used to advertise luxury watches for sale and the disputed domain name <davidoffwatches.com> does not resolve to an active website.

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent, in failing to file a response and in refusing to respond to Complainant’s requests for evidence, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain names. Considering the near identity between Complainant’s Mark and the disputed domain names and the fact that the disputed domain name <davidoffpieces.com> resolved to a website offering products similar to those for which Complainant has established trademark rights, and the lack of evidence to show that Respondent was commonly known by the disputed domain names, there can be no finding or rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the disputed domain names in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds bad faith registration under Policy, paragraph 4(b)(iv). Complainant’s rights in the DAVIDOFF Mark predate by decades the registration of both disputed domain names. The disputed domain names contain Complainant’s Mark in its entirety, with the addition of the dictionary terms “watches” and “timepieces” which do not diminish the confusing similarity and indeed strengthen the association with Complainant, which, among other goods, produces and markets watches. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.

Having established that the disputed domain names were registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain names. The Panel finds that Respondent has demonstrated bad faith use in establishing and operating a website at “www.davidofftimepieces.com” that offers for sale goods that are similar to those offered by Complainant through a website that is visually similar to Complainant’s own site. The other dispute domain name, <davidoffwatches.com>, redirected to this website, which lacks any disclaimer to the effect that Complainant is not affiliated with Respondent, despite prominently displaying a mark identical to Complainant’s

well-established DAVIDOFF Mark. Respondent shielded his identity by using a privacy service when registering the disputed domain names.

Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.

7. Decision

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, <davidofftimepieces.com> and <davidoffwatches.com>, be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: July 10, 2020