WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Davidoff & Cie SA v. Nicaragua Tobacco Imports, Inc. / Jorge Salazar Case No. D2009-0923 1. The Parties
Complainant is Davidoff & Cie SA of Geneva, Switzerland, represented by Meisser & Partners, Switzerland.
Respondent is Nicaragua Tobacco Imports, Inc. / Jorge Salazar of Miami, Florida, United States of America. 2. The Domain Names and Registrar
The disputed domain names , and are registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2009. On July 9, 2009, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain names. On July 10, 2009, N LLC 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 5, 2009.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on August 18, 2009. 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, the Davidoff family founded Davidoff & Cie in 1940, although the original Davidoff tobacconists shop dates back to 1911. The Complainant, Davidoff & Cie SA, a continuation of the business, was registered in 1992. On February 27, 1970, Complainant registered DAVIDOFF as a class 34 trademark with the World Intellectual Property Organization (No. 265 504). This was renewed on February 27, 1990 for a period of 20 years. Complainant also registered international trademark No. 477 346 for DAVIDOFF with WIPO on May 2, 1983 as a class 34 trademark for a period of 20 years and subsequently renewed said trademark on May 2, 2003 for another 20 years. On August 3, 1989, Complainant registered international trademark DAVIDOFF No. 540 856 with WIPO (in signature underlined) as a class 34 trademark for a period of 20 years. Complainant registered on June 19, 2003 international trademark No. 808 293 DAVIDOFF (script in circle) with WIPO for a period of ten years as a class 34 trademark. Complainant also hold currently valid United States trademark Nos 1058684 (class 34), 1052564 (class 34), 2884163 (class 35) and 2881476 (class 35). All trademarks were in place before the registration of the disputed domain names on February 27, 2009. 5. Parties' Contentions A. Complainant
Complainant lists and provides copies of all relevant trademarks in its possession, all centering around the Davidoff name and symbols. It also provides a brief history of Davidoff & Cie SA and the preceding entities, chronicling the progression from a “well-know tobacconist's … shop in Geneva in 1911” into the “Davidoff name … internationally famous in relation to cigars, cigarettes and smokers' articles” (Davidoff & Cie SA v. Dario Muriel d/b/a Comercio Personal SL, NAF Claim No. FA0211000129124). Complainant also cites Davidoff & Cie SA v. Softec Ltd.,WIPO Case No. D2008-0138 quoting the decision and emphasizing respondent's (Softec Ltd.) use of “a widely known trademark for his own purposes”.
Complainant then addresses Respondent's violations. In particular the Complainant points out that the disputed domain names display links such as “Cigar Cutter” and “Humidors”, products clearly related to the business of Complainant. The links on these portals direct the users to competitors, as Complainant points out with the example of being led to . Complainant notes that various other click-oriented money making schemes are integrated into the sites.
Complainant thereupon argues and asserts that all grounds of paragraph 4(a) of the Policy are met and that the disputed domain names should be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
All three domain names incorporate Complainant's trademarked name DAVIDOFF in full and merely add generic words of products related to Complainant's industry to the domain name. All three disputed domain names are clearly confusingly similar to Complainant's registered trademarks. B. Rights or Legitimate Interests
There is no basis or evidence in the present record of any right or legitimate claim on the part of the Respondent to the Davidoff name or to its use in the disputed domain names. Thus this element of the Policy is also met. C. Registered and Used in Bad Faith
At the time of registration of the disputed domain name, February 27, 2009, Complainant and/or its successor had held trademarks for over 30 years and had existed for almost 100 years. In a decision rendered almost nine years before the registration of the disputed domain names, the Davidoff name was acknowledged as being “internationally famous” (Davidoff & Cie SA v. Dario Muriel d/b/a Comercio Personal SL, NAF Claim No. FA0211000129124), and Complainant submits evidence that the Davidoff name is very well known for tobacco products and accessories. Thus the disputed domain names can only have been registered in bad faith, and to make use of the Davidoff name to divert potential customers to other products, many of them competing with Complainant's products. Complainant's allegation of bad faith use is sustained as the site either functions as a portal to other goods, some of which are in direct competition with Complainant, or to facilitating pop-up advertising. Both the functions of the site and the use of the name of the Complainant make clear bad faith on the part of Respondent, both in registration and use. 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 domain names , and be transferred to the Complainant.
Nicolas Ulmer
Sole Panelist
Dated: August 20, 2009
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