WIPO Domain Name Dispute: Case No.D2011-0104 by PFH5n3

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									ARBITRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION
Zino Davidoff SA v. SEOTools4U
Case No. D2011-0104



1. The Parties

The Complainant is Zino Davidoff SA of Fribourg, Switzerland represented by Meisser & Partners,
Switzerland.

The Respondent is SEOTools4U of Shelby Township, Michigan, United States of America.


2. The Domain Name and Registrar

The disputed domain name <buydavidoff.com> is registered with Wild West Domains, Inc.


3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2011.
On January 19, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar
verification in connection with the disputed domain name. On January 19, 2011, Wild West Domains, Inc.
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 January 26, 2011. In accordance with the Rules, paragraph
5(a), the due date for Response was February 15, 2011. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 17, 2011.

The Center appointed Staniforth Ricketson as the sole panelist in this matter on February 24, 2011. 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.
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4. Factual Background

The Complainant was established in 1980 by the late Zino Davidoff. It launched its first perfumery line in
1984 under the name DAVIDOFF with the Coty Lancaster Group as exclusive licensee. The DAVIDOFF line
now includes a number of product lines sold under such names as DAVIDOFF COOL WATER, DAVIDOFF
SILVER SHADOW, DAVIDOFF HOT WATER, DAVIDOFF ADVENTURE and DAVIDOFF CHAMPION.
According to the official website “www.zinodavidoff.com/fragrances”, DAVIDOFF products are sold around
the world. Examples of these various DAVIDOFF products are exhibited in the annexes to the Complaint, as
well as in the Complaint itself (images of the DAVIDOFF Cool Water line). The Complaint goes to state that
DAVIDOFF branded perfumery is now sold in many countries and continents throughout the world, including
in the United States of America, The United Kingdom of Great Britain and Northern Ireland, Italy, France,
Germany, Japan, Switzerland, The Republic of Cyprus, The Russian Federation, South America, Africa, The
People’s Republic of China, Taiwan, The Republic of Singapore, Malaysia, etc. Samples of advertisements
appearing in magazines circulating in some or all of these countries are included in the annexes to the
Complaint. Sales figures demonstrated in the Complaint indicate net sales for DAVIDOFF COOL WATER
products, said to be the most successful of its lines, at USD 183 million for 2004 (no later figures are given).

The Complainant also has various trade mark registrations, beginning with the word DAVIDOFF itself
registered from September 1, 1981 in Switzerland (IR 467510), and now with corresponding registrations in
numerous countries, including the United States if America. In addition, it has many registrations for
combinations of the word DAVIDOFF with other words such as COOL WATER. These registrations are all in
relation to perfumes, fragrances, and related products.

The Respondent is not known to the Complainant, but appears to operate a business at the website
“www.seotools4u.com”: the owner of this domain name is identical to that of the Respondent. The various
“SEO Tools” offered on this website appear to be various software packages and internet/website services.
More relevant for present purposes is the registration of the disputed domain name <buydavidoff.com> on
November 7, 2009. The website associated with this domain name then has a series of external links to
other sites, including “Davidoff perfume resources” (which links to the Complainant’s products), “HDTV
Review”, “Video Camera Reviews”, “Sony Product Reviews”, “Apple Review Online”; a prominent “Ads by
Google” features such links as “Suzuki Md ab Lager”, “Anthony Kleinsmith” or “Ask a Dentist Advice Now”.
The Complainant also points to the presence of a series of other links on the website to direct competitors of
the Complainant, including Yves Rocher, Bulganin Rose Oil, Oriscent, Ghost Captivating. However, in the
electronic file sent to the Panel these exhibits are not clearly numbered and there is some difficulty in
following them. Because of this, the Panelist visited the website at the disputed domain name on March 8
2011 and saw for himself numerous advertisements and links to products of the Complainant, as well as the
various links to the other non-perfume sites referred to in the Complaint. However, the Panel was unable to
see any links to other perfume manufacturers, as stated in the Complaint.

On December 2, 2010, the Complainant wrote to the Respondent requesting transfer to it of the disputed
domain name and offering USD 50 to defray the expenses of this transfer. No reply to this was received
from the Respondent, and the Complainant then commenced the present proceedings.


5. Parties’ Contentions

A. Complainant

As to paragraph 4(a)(i) of the Policy, the Complainant submits that the DAVIDOFF mark is a famous mark
with respect to perfumery, noting here a recent UDRP decision in which the mark DAVIDOFF COOL WATER
was described by the Panel as a “well known trademark”: Zino Davidoff SA v. Goodsteed Limited, WIPO
Case No. D2010-1681. More relevantly, however, it points to its various registrations for the mark
DAVIDOFF and the fact that these were prior to the registration of the disputed domain name. As to the
question of confusing similarity, it argues that the disputed domain name incorporates the whole of its trade
mark and the preffix “Buy” is merely a descriptive and non-distinctive term that does nothing to distinguish
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the disputed domain name from the trade mark. It notes further that the “.com” suffix is to be disregarded in
making the comparison required by paragraph 4(a)(i) and therefore submits that the requirements of this
sub-paragraph are made out.

As to paragraph 4(a)(ii), the Complainant submits that the Respondent has no legitimate rights or interests in
the disputed domain name, pointing here to the following matters that make out a prima facie case in this
regard and shift the onus to the Respondent to show the contrary:

1     The prior registration of its marks, particularly in the United States of America, which appears to be the
      Respondent’s place of residence, means that the Respondent must have been aware at all times of
      the existence of the Complainant’s marks, particularly when account is taken of their fame.
      Additionally, the fact that there has been no bona fide offering of goods on its website by the
      Respondent, but only external links both to the Complainant’s products and those of competitors and
      other traders shows that Respondent has no rights or legitimate interests in the disputed domain
      name.

2.    The Respondent is not known by the disputed domain name, nor does it engage in any business
      under that name. This is also confirmed by the Respondent’s “official” website at
      “www.SEOTools4U.com”, where there is no indication that the operator of that website (the
      Respondent) is known as Davidoff (or Buydavidoff).

3     No license or authorization has ever been given by the Complainant to the Respondent to use the
      disputed domain name. There is no legitimate or fair use being made of the disputed domain name
      other than to re-direct users to competitors of the Complainant or to other retailers that sell the
      Complainant’s products.

As to paragraph 4(a)(iii), the Complainant again refers to the fame of the DAVIDOFF trade mark, and the
strong inference to be drawn that the Respondent must have known of this at the time it registered the
disputed domain name. It submits further that the circumstances referred to in paragraphs 4(b)(ii), (iii) and
(iv) are present, and that the Respondent’s registration was therefore made and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.


6. Discussion and Findings

Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional
circumstances, the Panel is to decide the dispute based upon the Complaint. Such default on the part of the
Respondent does not relieve the Complainant from being required to establish that each of the requirements
of the Policy, in particular those under paragraph 4(a), is established. Additionally, paragraph 14(b) of the
Rules provides that, “if a Party, in the absence of exceptional circumstances, does not comply with any
provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such
inferences there from as it considers appropriate.”

Accordingly, the Panel proceeds to deal with each of the elements required to be satisfied under paragraph
4(a) of the Policy, noting that it is necessary for the Complainant to satisfy each one if it is to succeed in
achieving the relief requested.

A. Identical or Confusingly Similar

Paragraph 4(a) requires that the Complainant establish that the disputed domain name is “identical or
confusingly similar to a trademark or service mark in which the complainant has rights”. There are therefore
two limbs of paragraph 4(a)(i) that the Complainant must satisfy: first, that it has “rights in a trade or service
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mark” (this need not be a registered mark), and, secondly, that the disputed domain name is “identical or
confusingly similar” to that mark.

The Panel has no difficulty in concluding that the Complainant has “rights” in a number of registered trade
marks comprising both the word DAVIDOFF on its own and the word DAVIDOFF in combination with other
words or phrases. These precede the registration of the disputed domain name and exist in a number of
jurisdictions, including the United States of America where the Respondent resides. However, the location of
the registrations – and, indeed, whether or not the mark is famous or well known – is not relevant for the
purposes of the first part of paragraph 4(a)(i), so long as the Complainant can show that it has “rights” in at
least one mark. This is clearly the case.

As to the question of confusing similarity between the marks and the disputed domain name, the Panel
accepts the submissions of the Complainant. The domain incorporates the whole of the DAVIDOFF mark,
and the Panel agrees that the addition of the prefix “Buy” and the “.com” suffix are insufficient to distinguish it
from the trade marks.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) are satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant is also required to show that the Respondent has “no
rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this
requirement is given in paragraph 4(c) of the Policy, which provides that:

      “Any of the following circumstances, in particular but without limitation, if found by the Panel to be
      proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent’s]
      rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

      (i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain
      name, even if you have acquired no trademark or service mark rights; or

      (iii) you are 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.”

Essentially, these are matters for a respondent to put forward for the Panel’s consideration. In the present
case, no response has been filed and all that the Complainant can do is to point to evidence that indicates
that none of these circumstances exist. In this regard, the matters referred to by the Complainant indicate
clearly that the Respondent is not making a legitimate use of the disputed domain name.

There is no evidence that the Respondent has been, or is, making a bona fide offering of goods under the
disputed domain name: as the Complainant’s exhibits and the Panel’s own inspection of the website
associated with the disputed domain name reveal, it does not appear that the Respondent itself is offering
any goods on the website. Rather, it provides links to retailers of the Complainant’s own products, such as
eBay and Amazon, as well as to traders. Further, although the Panel was unable to confirm this on its visit
on March 6, 2011, it accepts the Complainant’s submission that there are, or have been, links to competitors
of the Complainant.

There is no suggestion on the website at the disputed domain name or at the Respondent’s own website that
it is known by the disputed domain name. Clearly, no license or authorization has been given by the
Complainant to the Respondent to use the disputed domain name.
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The prior registration of its marks, particularly in the United States of America which appears to be the
Respondent’s place of residence, is evidence from which it can be inferred that the Respondent must have
known of the existence of the Complainant’s marks at the time it registered the disputed domain name. This
inference becomes all the easier to draw when regard is had to the choice of the prefix “Buy” and the fact
that links to the Complainant’s perfume products proliferate the website.

There can be no argument that the Respondent’s use of the disputed domain name was in any way
legitimate or fair.

The Panel therefore finds that the requirements of paragraph 4(a)(ii) are satisfied.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name has been
registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following
circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of
the registration and use of a domain name in bad faith:

“(i)    circumstances indicating that you [the Respondent] have registered or you have acquired the domain
        name primarily for the purpose of selling, renting, or otherwise transferring the domain name
        registration to the complainant who is the owner of the trademark or service mark or to a competitor of
        that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly
        related to the domain name; or

(ii)    you [the Respondent] have registered the 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
        you have engaged in a pattern of such conduct; or

(iii)   you [the Respondent] have registered the domain name primarily for the purpose of disrupting the
        business of a competitor; or

(iv)    by using the domain name, you [the Respondent] have intentionally attempted to attract, for
        commercial gain, Internet users to your website or other on-line location, by creating a likelihood of
        confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of
        your website or location or of a product or service on your website or location.”

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the disputed domain
name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to
registration of the disputed domain name, while (iv) relates to use following registration. However, in view of
the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be
relied upon to point to bad faith, both in registration and in use.

In this regard, it is worth noting an early decision of a UDRP panel to the effect that registration in bad faith,
followed by a passive holding of a domain name when there is no way in which it could be used legitimately,
can also amount to use in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.
D2000-0003. In addition, it would be both mistaken and artificial to confine sub-paragraphs (i)-(iii) solely to
the time of registration; presumably, it would also be a use of a disputed domain name in bad faith to do so,
after registration, with one of the purposes outlined in those paragraphs. Support for this view can be found
in several UDRP decisions; see, for example, Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff
Hanna, WIPO Case No. D2000-0869; and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No.
D2000-0615.

In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any
Response or provided any evidence as to its intentions in registering and maintaining the disputed domain
name. As noted above, under paragraph 14(b) of the Rules, where a party defaults in complying with any
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requirement of the Rules – and this would include responding to the Complaint - the Panel is entitled to draw
from such default such inferences, as it considers appropriate.

In the present case, the Panel does not accept the Complainant’s submission that the circumstances
outlined in paragraph 4(b)(ii) exist, as there is no evidence here of a “pattern of such conduct” as required by
that sub-paragraph. However, the evidence does support findings that the circumstances in both paragraphs
4(b)(iii) and (iv) are preseent. Thus, the presence of links on the Respondent’s website to competitors, as
well as to retailers of the Complainant’s own products, clearly diverts customers away from the
Complainant’s own website(s) and is disruptive of its business, even if the Respondent itself is not selling
products in competition with the Complainant. Further, the creation of a likelihood of confusion with the
Complainant is high, in that the prefix “Buy” clearly suggests that this is the Complainant’s website or that is
some way associated with it.

The above matters clearly go to showing bad faith in the use of the disputed domain name, but the Panel
also finds that there was clear bad faith in its initial registration, as required by paragraph 4(a)(iii). Thus,
there is the extensive prior registration of the Complainant’s trade marks, plus the evidence of the promotion
of its trade marks globally. This points to the marks being well known in the sphere of perfume products,
and, in the absence of any explanation of why it sought to register the disputed domain name, the Panel
concludes that this must have been done intentionally by the Respondent, as the Complainant submits, and
with the knowledge that there was no way that it could be legitimately used without carrying with it the
implication of a link to, or association with, the Complainant.

Accordingly, the Panel finds that the requirements of paragraph 4(a)(iii) as to registration and use of the
disputed domain name in bad faith are made out.


7. Decision

For all 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 <buydavidoff.com> be transferred to the Complainant.




Staniforth Ricketson
Sole Panelist
Dated: March 8, 2011

								
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