Complainant is Christian Dior Couture of France, represented by Cabinet Marc Sabatier, France.
Respondent is Protected Domain Services of United States of America and , gaoyu liu of China. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2011. On December 16, 2011, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain name. On December 16, 2011, N LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 23, 2011 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 December 26, 2011.
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”).
The Center sent an email communication to the parties and the registrar on December 29, 2011 requesting payment of the registration renewal fees to ensure that the disputed domain name remains active so that the administrative procedure could continue as required under the UDRP. On December 29, 2011 the Registrar advised that it had renewed the disputed domain name to prevent its deletion during the UDRP proceeding. On January 2, 2012 Complainant sent an email communication whereby Complainant agreed to pay the renewal fees. On January 4, 2012 the Registrar advised that it had reached out to the registrant regarding payment for the renewal of the disputed domain name and on January 8, 2012 it informed that the problem had been resolved.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 19, 2012.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on January 26, 2012. 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 trademark upon which the Complaint is based is DIOR. According to the documentary evidence and contentions submitted, Complainant owns a number of registrations for the DIOR trademark in different countries, including the International Registrations Nos. 610601 issued on December 6, 1993, and 313176 issued on May 13, 1966, and the United States Registration No. 1923564 issued on October 3, 1995, all of which to distinguish jewelry.
Complainant, Christian Dior Couture, is a French company in the luxury fashion industry. The Panel notes that previous UDRP panels have recognized that Dior is a famous trademark. See, e.g., Christian Dior Couture v. Mumbai Domains,WIPO Case No. D2010-2274; CHRISTIAN DIOR COUTURE v. Erynn Brown,WIPO Case No. D2009-0351; Christian Dior Couture v. Zbigniew Czapiga,WIPO Case No. D2007-0780.
Complainant sent Respondent a cease and desist letter on September 23, 2010, which was reiterated on April 27, 2011 and apparently were never responded.
The disputed domain name was registered with the Registrar on December 24, 2009. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark because (i) it incorporates the DIOR trademark with the addition of generic word “jewelry”, which creates a high likelihood of confusion with Complainant’s trademark; (ii) Complainant is also the owner of domain names which are composed in the same way as the disputed domain name, such as , , , , and ; (iii) the reputation of Complainant throughout the world of fashion was recognized in several UDRP decisions, and (iv) Respondent sells on its website jewels which infringe Complainant’s rights since the trademark DIOR is also affixed on the necklaces, earrings, and bracelets offered for sale in Respondent’s website.
Complainant further contends that Respondent does not have legitimate rights or interests regarding the disputed domain name because no license, contract or other authorization was granted to Respondent to authorize it to register and use the disputed domain name nor to use it for goods which infringe Complainant’s rights.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith because (i) the DIOR trademark is well-known; (ii) the primary reason for Respondent to register the disputed domain name was to take advantage of the notoriety of the DIOR trademark and to attract the public’s attention; and (iii) Respondent was sent a warning letter and a reminder which were never answered, though Respondent continued to use the disputed domain name after receipt of such letters. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Status of Respondent
When the Complaint was filed, the disputed domain names were registered in the name of “Protected Domain services”, which is a protection service to enable “real” owners of domain names to conceal their identities. By the time the Center transmitted to Registrar a request for registrar verification in connection with the disputed domain name, the identity of the actual registrant was disclosed. Both the protection service and the actual registrant have been served with copies of the Complaint and neither has responded. The Panel sees no reason to distinguish between the two. The practice of having more than one respondent to a proceeding under the Policy, where one is a protection service and the other is the beneficial party which was later disclosed by the registrar, is well-recognized in UDRP cases. See Microsoft Corporation v. Whois Privacy Protection Service / Lee Xongwei,WIPO Case No. D2005-0642. B. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant based on these facts. See Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether the Complaint fulfills them. C. Identical or Confusing Similarity
The Panel concurs with the opinion of other UDRP panels that when a domain name wholly incorporates a complainant’s registered trademark, that may be sufficient to establish confusing similarity for purposes of the Policy. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Hitachi, Ltd. v. Arthur Wrangle, supra. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Bayerische Motoren Werke AG v. ,WIPO Case No. D2002-0615; adidas-Salomon v. Mti Networks Ltd.,WIPO Case No. D2005-0258; AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758.
That is particularly true where the trademark is highly recognizable and famous, as in the instant case. The disputed domain name incorporates the whole of the famous DIOR trademark, and that fact may lead the public to think that the disputed domain name is somehow connected to the owner of the registered trademark. Utensilerie Associate S.p.A. v. C & M,WIPO Case No. D2003-0159.
In addition, it has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark. See V&S Vin&Sprit AhB v. Giovanni Pastore,WIPO Case No. D2002-0926; Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo,WIPO Case No. D2004-0746; Sanofi-Aventis v. US-M, WIPO Case No. D2004-0809; F.Hoffman-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049.
The word “jewelry” is purely descriptive of a type of product distinguished by Complainant’s trademark and does not generally affect a finding of similarity where a registered trademark is incorporated into a domain name. As a matter of fact, the combination of “dior” with “jewelry” creates an immediate potential for false association with the DIOR trademark and brand name, and a high degree of initial confusion. See adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson,WIPO Case No. D2006-0748.
The Panel notes that in similar situations some UDRP panels have reached the same conclusion. See Christian Dior Couture v. Versata Software, Inc.,WIPO Case No. D2009-0102; Christian Dior Couture v. Carl Lim,WIPO Case No. D2008-1038 (finding confusing similarity in the domain name .
Finally, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the disputed domain name. See RX America, LLC. v. Matthew Smith,WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies,WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met. D. Rights or Legitimate Interests
The consensus view in many URDP decisions is that a complainant is required to make out an initial prima facie case, which shifts to a respondent the burden of demonstrating rights or legitimate interests in the domain name. If a respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).
The Panel finds that Complainant has established a prima facie case. In fact, Respondent has no connection or affiliation with Complainant, which has not licensed or otherwise authorized Respondent to use or register any domain name incorporating Complainant’s trademark.
The Panel also finds that Respondent’s use of the disputed domain name does not satisfy the test for bona fide use as established in prior UDRP decisions. In fact, the Panel sees no plausible explanation for Respondent’s adoption and use of the terms “dior”, and “jewelry” in the disputed domain name other than to take advantage of the notoriety associated with the DIOR trademark with the intent to attract Internet users for commercial gain. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847.
The Panel notes that the website to which the disputed domain name resolves displays a variety of products bearing the DIOR trademark as if Respondent was either a licensed or an authorized dealer. Therefore, this fact reinforces the conclusion that Respondent is intentionally using the DIOR trademark to attract consumers, who might be seeking original DIOR products.
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has rights or legitimate interests in the disputed domain name. See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met. E. Registration and Use in Bad Faith
The Panel accepts Complainant’s contentions that the disputed domain name has been registered and used in bad faith.
In fact, the Panel finds that the DIOR trademark is well-known and that Respondent was probably aware of the existence of Complainant. The fact that Respondent has chosen as the key part of its domain name the word “dior”, which is identical to Complainant’s trademark and domain names, is an indication that registration of the disputed domain name was made in bad faith.
The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. See PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435.
In addition, as previously mentioned, the Panel notes that the disputed domain name was selected by Respondent with the intent to attract Internet users for commercial gain. This is a clear use of the disputed domain name in bad faith. Paragraph 4(c)(iv) of the Policy provides that if, by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, that circumstance shall be evidence of the registration and use of a domain name in bad faith.
Respondent’s lack of response to Complainant’s warning letters and to the notification of the Complaint is a further evidence that Respondent is acting in bad faith.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met. 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 be transferred to Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: February 5, 2012
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