WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

INTERPARFUMS Suisse Sàrl v. David Jeffs, Communicate.com Inc.

Case No. D2020-1320

1. The Parties

The Complainant is INTERPARFUMS Suisse Sàrl, Switzerland, internally represented.

The Respondent is David Jeffs, Communicate.com Inc., Canada, self represented.

2. The Domain Name and Registrar

The disputed domain name, <lanvinperfume.com> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2020. On May 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 26, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. Apart from email exchanges set out in greater detail in Section 4 below, no formal Response was filed with the Center.

On May 28, 2020, in light of an indication from the Respondent that he consented to transfer of the Domain Name, the Center offered the parties suspension of the proceeding to enable the parties to negotiate a settlement of the dispute. On the same day, the Respondent responded that the Registrar needed to be involved, but he could not access his account with the Registrar. On June 4, 2020, no transfer of the Domain Name having taken place in the interim, the Complainant emailed the Center requesting that this administrative proceeding proceed.

The Center appointed Tony Willoughby as the sole panelist in this matter on July 15, 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

The Complainant is a manufacturer and distributor of fragrances, one of which it markets under the trade mark LANVIN. The Complainant is the proprietor of numerous trade mark registrations covering the LANVIN trade mark including by way of example United States Trademark No. 0556672 LANVIN (words, letters, and/or numbers in stylized form) registered March 25, 1952 (application filed November 7, 1950) in class 3 for perfumes and toilet water.

The Domain Name was registered on August 28, 2010, and redirects to a website at “www.fragrancex.com”, which offers for sale the products of the Complainant along with the products of a number of other well-known fragrance brands such as Versace, Calvin Klein, Davidoff and Issey Miyake. The page devoted exclusively to the Complainant’s Lanvin products (but featuring links to pages dealing with competing brands) is headed “Lanvin Perfume & Cologne” and is followed by several paragraphs of text commencing “Founded in 1889 at 22, Rue du Faubourg Saint Honoré by Jeanne Lanvin (Paris 1867-1946), Lanvin is the oldest Paris fashion house.” The text continues in the form of a history of the Lanvin brand, which could readily have been taken from an official website of the Complainant.

On May 25, 2020, following receipt of the Complaint from the Complainant, the Respondent sent an email to the Complainant in the following terms:

“Dear Sirs,
My Company is the registrant of “lanvinperfume.com”. I no longer know the password to my GoDaddy account to change the registration. But there is either money in the account to continue with the registration each year or there is a credit card on file from a previous employee of the company pre 2010 that is being charged. I have tried to get access to the account through GoDaddy but the company has changed names since the registration and I haven’t been able to come up with all of the documentation requested. The company is now called Live Current Media Inc. If I could access the account, I would transfer the domain name to Interparfums. Your [sic] welcome to contact me if you require further assistance.
Sincerely
David Jeffs, Live Current Media”

On May 27, 2020, following notification of the commencement of this proceeding by the Center, the Respondent sent an email to the Center in the following terms:

“As I’ve stated from the beginning, there is no dispute. My company makes no claim to the URL lanviperfume.com other than the fact that we are the registrant and GoDaddy won’t provide us the login information to our account to transfer the domain. Let’s forego this process and transfer the name now.
Thanks,
David Jeffs, Live Current Media”

Further correspondence ensued between the parties and the Center regarding suspension of the proceeding to enable a negotiated settlement of the dispute, but to no avail.

On July 16, 2020, following receipt of the Notice of Panel Appointment, the Respondent emailed the Center and the Complainant, in essence repeating the content of his previous emails quoted above and stating that he would not be participating further “in any mediation or arbitration”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s LANVIN trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered and is being used in bad faith.

B. Respondent

The Respondent has not formally responded to the Complainant’s contentions, but, as indicated in his emails quoted in Section 4 above, makes no claim to the Domain Name and consents to its transfer to the Complainant.

6. Discussion and Findings

A. Preliminary Issue – consent to transfer

While, as can be seen from the Respondent’s emails quoted in Section 4 above, the Respondent consents to transfer of the Domain Name, the Panel proposes to approach this case in the normal way. The alternative approach set out in Section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), indicates that some panels order the requested remedy (in this case transfer of the Domain Name to the Complainant) solely on the basis of a respondent’s consent.

However, in the view of the Panel, this is a case, which the Complainant deserves to have decided on the merits.

B. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

C. Identical or Confusingly Similar

The Complainant’s LANVIN trade mark is readily recognizable in its entirety in the Domain Name.

The Domain Name comprises, in addition to the generic “.com” Top- Level Domain identifier, the Complainant’s LANVIN trade mark and the word “perfume”. The word “perfume” aptly describes a major part of the Complainant’s LANVIN product range. Thus, there can be no doubt that the Domain Name was intended to refer to the Complainant’s LANVIN product line.

The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

D. Rights or Legitimate Interests

The Panel accepts the Complainant’s assertion that it has not authorized the Respondent’s use of the LANVIN trade mark in this or any other way. However, there are circumstances where the unauthorized use of a third party’s trade mark in a domain name may give rise to the acquisition by a respondent of rights or legitimate interests in respect of that domain name. The issue frequently falls to be considered where, as here, the respondent is using the domain name to connect to a website selling the goods of the complainant.

The issue is addressed in Section 2.8.1 of WIPO Overview 3.0:

“Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test” [a test derived from the decision in Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903], the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and

(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.

The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”

The Domain Name fails the Oki Data test in two respects. First, it redirects to a website at “fragrancex.com”, which offers for sale fragrances of a number of well-known brands (including Lanvin), but not just Lanvin products. Secondly, the page devoted exclusively to Lanvin, which is described in greater detail in Section 4 above, could readily be seen as a page authorized by the Complainant. The page does not “accurately and prominently disclose the registrant’s relationship with the trademark holder.”

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Panel notes that the Respondent does not argue the contrary in any of his emails quoted in Section 4 above.

E. Registered and Used in Bad Faith

The Respondent registered the Domain Name with knowledge of the Complainant’s Lanvin line of fragrances and for the purpose for which it has been used, namely to connect to a website offering for sale fragrances of a wide range of luxury brands. In the view of the Panel, this is a clear case of ‘bait and switch’, using the fame of the Complainant’s LANVIN trade mark to attract Internet users to the Respondent’s website for commercial gain derived not merely from the sale of the Complainant’s products, but the products of the Complainant’s competitors.

The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) 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 Domain Name, <lanvinperfume.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: July 16, 2020