The Complainant is Aulbach Lizenz AG of Chur, Switzerland, represented by Cabinet Schmit-Chretien-Schihin SNC, France.
The Respondent is Victorio Naturano of Cardiff, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2010. On August 18, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On August 25, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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 August 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2010.
The Center appointed Torsten Bettinger as the sole panelist in this matter on September 24, 2010. 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 the proprietor of numerous registered trademarks comprising the words DANIEL HECHTER in many countries, including the United Kingdom, where the Respondent is located, inter alia the following trademarks (hereinafter referred to as the “DANIEL HECHTER Marks”):
- International trademark registration no. 596581A DANIEL HECHTER & design, registered on January 14, 1993; and
- French trademark registration no. 1713307 DANIEL HECHTER & design, registered on December 20, 1991.
The trademarks are registered in connection with various goods and services.
The Complainant acquired the trademarks in 1998 and uses the trademarks mainly in connection with fashion. The trademark DANIEL HECHTER has been created by the designer Daniel Hechter in 1962, when he founded his fashion house.
The Complainant and its licensees own numerous domain names containing the words “Daniel Hechter”, including , , , , and .
The disputed domain name has been registered on November 30, 2009 and is used to redirect Internet users to a domain parking website at ””.
On January 12, 2010, the Complainant sent a letter to the Respondent asking him to stop the use of the disputed domain name and to transfer the domain name to the Complainant. The Complainant did not receive any reply but the information, that the contact details provided by the Respondent in the Whois database were wrong. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name is confusingly similar to the DANIEL HECHTER Marks, as it fully includes the distinctive element of such trademarks by merely adding the gTLD “.info”.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that the Respondent:
- is not commonly known under the disputed domain name;
- has not been authorized by the Complainant to use the DANIEL HECHTER name and trademarks;
- does not use and has not made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant contends that:
- The Respondent was aware of the Complainant’s famous DANIEL HECHTER Marks when registering the disputed domain name;
- The Respondent by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website;
- there is no other plausible explanation for the Respondent’s selection of the domain name, except to exploit in an unauthorized fashion the reputation and goodwill of the Complainant and its name and marks.
The Complainant further argues that the fact that the Respondent provided false contact information in the WhoIs database is further evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah‚WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc. and British Am. Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
The disputed domain name wholly incorporates the Complainant‘s distinctive DANIEL HECHTER Marks, which are used in connection with fashion.
It is well established that the similarity between a trademark and a disputed domain name is not eliminated only by the fact that the trademark includes additional graphical elements (see Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; EFG Bank European Financial Group SA v. Jacob Foundation,WIPO Case No. D2000-0036; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems,WIPO Case No. D2001-0932).
It is also well established that the specific top level of a domain name such as “.com“, “.org“ or “.net“ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Panel thus finds that the domain name is confusingly similar to the DANIEL HECHTER Marks in which the Complainant has exclusive rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. However, it is consensus view among WIPO UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.
The Complainant asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain name as he is not commonly known by the disputed domain name or has not been authorized by the Complainant to use the DANIEL HECHTER name and trademarks, and as he does not use and has not made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services.
The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain name.
Under these circumstances and in view of the Panel’s finds below, the Panel takes the view that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
The Complainant provided evidence that the DANIEL HECHTER Marks are globally recognized and well-established in connection with fashion. It is therefore inconceivable that Respondent registered the domain name being unaware of the Complainant’s rights in its DANIEL HECHTER Marks.
Furthermore, by fully incorporating the DANIEL HECHTER marks in the disputed domain name and using the disputed domain name in connection with a parking website providing links to third parties’ websites, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihoof of confusion with the Complainant’s mark. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy.
The finding of bad faith is supported by the fact, that the Respondent has provided wrong WhoIs data with regard to the disputed domain name (see T-Nova Deutsche Telekom Innovations Gesellschaft mbH v. TechNova, NAF Claim No. FA94646; Hunton & Williams v. American Distribution Systems, Inc. et al.,WIPO Case No. D2000-0501; AUDI AG v. Emir Ulu,WIPO Case No. D2005-1030; Chanel v. 1,WIPO Case No. D2003-0218; Action Instruments, Inc. v. Technology Associates,WIPO Case No. D2003-0024).
Providing false contact information violates paragraph 2 of the Policy, which requires a registrant to represent that the statements it “made in [its] Registration Agreement are complete and accurate.” Maintaining that false contact information in the WhoIs after registration constitutes bad faith use of the domain name because it prevents a putative complainant from identifying the registrant and investigating the legitimacy of the registration (see Action Instruments, Inc. v. Technology Associates,WIPO Case No. D2003-0024).
The Panel therefore concludes that also the requirement of paragraph 4(a)(iii) of the Policy has been met. 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 be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Dated: October 5, 2010
Full & Egal Universal Law Academy