The Complainant is Davidoff & Cie SA of Geneva, Switzerland, represented by Meisser & Partners, Switzerland.
The Respondent is Charles Collins of Chicago, Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Center of Ukrainian Internet Names (UKRNAMES) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2012. On June 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 29, 2012, 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. On July 3, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Russian. On July 3, 2012, the Complainant requested English to be the language of the proceedings. The Respondent did not submit its comments.
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 July 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2012.
The Center appointed Ladislav Jakl as the sole panelist in this matter on August 9, 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 Complainant introduces that the history of DAVIDOFF goes back to 1911 when the Davidoff-Family opened a tobacconist’s store in Geneva, Switzerland. Zino Davidoff, born on March 11, 1906, was the oldest of four children of the Davidoff-Family and took over his parents’ shop in 1930. In 1940, the Davidoff-Family founded a company called Davidoff & Cie SA in Geneva, which was succeeded by the Complainant. Zino Davidoff was particularly successful in marketing a series of Cuban cigars created in the 1940s and is also credited by many as having invented the first desktop cigar humidor, in order to preserve cigars at the same conditions of humidity and temperature under which they were rolled in Havana. Zino Davidoff also had success writing several books on cigar smoking and Cuban cigar brands and, after he sold his successful tobacco shop in Geneva to the Max Oettinger Company in 1970, stayed on as Davidoff’s ambassador until his death in 1994. There is no doubt that DAVIDOFF stands for fine smoker’s products and became synonymous of well-crafted cigars, cigarettes, cigarillos and accessories. In the past decades, DAVIDOFF became internationally famous in relation to cigars, cigarettes and smokers articles. Previous NAF UDRP panels held that the products of the Complainant include some of the most famous cigars worldwide (Davidoff & Cie SA v. Paul Darnell o/b/o Cuban Cigars International, NAF Claim No. 97331 and Davidoff & Cie SA v Dario Muriel d/b/a Comercio Personal SL, NAF Claim No. 129124). In the Paul Darnell decision, the panel held: “Complainant produces and sells tobacco products internationally. Complainant’s products include some of the most famous cigars worldwide. Complainant has held numerous trademarks with respect to the production, promotion and distribution of its various tobacco products since as early as 1970”.
The Complainant asserts and provids evidence in support of the following facts, which the Panel finds established:
The Complainant is the owner of the following certified registrations of the trademark DAVIDOFF:
- International trademark registration No. 365,504 with priority date of December 18, 1969 in Class 34 (comprising cigarettes) registered in the following countries: AT, BX, CZ, DE, EG, ES, FR, HR, HU, IT, LI, MA, MC,ME, MK, PT, RO, RS, SI, SK (designations under the Madrid Agreement) and BH, GR, JP (designations under the Madrid Protocol);
- International trademark registration No. 477,346 with priority date of December 22, 1982, registered in the following countries: AL, AM, AT, AZ, BA, BG, BX, BY, CN, CU, CY, CZ, DE, DZ, EG, ES, FR, HR, HU, IR, IT, KE, KG, KP, KZ, LI, LR, LS, LV, MA, MC, MD, ME, MK, MN, MZ, NA, PL, PT, RO, RS, RU, SD, SI, SK, SL, SM, SY, SZ, TJ, UA,UZ, VN (designations under the Madrid Agreement) and AG, AN, AU, BH, DK, EE, EM, FI, GB, GE, GR, IE, IS, JP, KR, LT, NO, OM, SE, SG, TM, TR, US, ZM (designations under the Madrid Protocol);
- Swiss basic registration No. 322,901 of December 22, 1982 for cigarettes and other goods in Class 34;
Furthermore, the Complainant is the proprietor of several other DAVIDOFF trademarks, namely:
- International trademark registration No. 540,856 registered on August 3, 1989;
- International trademark registration No. 808,293 registered on June 19, 2003,
and various DAVIDOFF cigarette box trademarks, such as International trademark registration No. 932,082 registered on June 25, 2007; International trademark registration No. 804,274 registered on May 21, 2003, etc. Lastly, the Complainant owns the DAVIDOFF trademark No. 1,058,684 registered on February 8, 1977 with the Unites States Patent and Trademarks Office (homecountry of the Respondent).
The disputed domain name was registered on September 29, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark DAVIDOFF, that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
The Complainant argues that the disputed domain name is identical to the trademark DAVIDOFF. The disputed domain name contains in its entirety the Complainant’s well-known DAVIDOFF mark and it is therefore confusingly similar to the Complainant’s mark. The combination of the Complainant’s trademark with the generic word “discount” for offering “less expensive” products, does not affect the confusing similarity holding (Davidoff & Cie SA v. Paul Darnell o/b/o Cuban Cigars International, NAF Claim No. 97331). The Complainant argues that numerous courts and prior WIPO UDRP panels have already recognized that the incorporation of a trademark in its entirety usually is sufficient to establish that a domain name is identical or confusingly similar to said mark (AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758). Therefore, the Complainant submits that the standard of paragraph 3(b)(viii) and paragraph 3(b)(ix)(1) of the Rules is met, that the disputed domain name is identical and confusingly similar to the mentioned trademarks in which the Complainant has rights.
As to rights or legitimate interests in respect of the disputed domain name, the Complainant essentially contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Complainant’s trademark DAVIDOFF is also registered in the alleged home country of the Respondent, namely the United States. This was long before the former domain name proprietor applied for the domain name. Therefore, the Respondent must at all time has been aware of the Complainant’s trademark DAVIDOFF, especially when the fame of DAVIDOFF is taken into consideration for smoker’s articles and the Respondent additionally chose the generic term “discount” to sell, amongst others, cigarettes of the Complainant. According to the certificate of the International trademark registration No. 365,504 DAVIDOFF the priority date is 1969. The disputed domain name was only registered on September 29, 2011.
Futhermore, the Complainant introduces that there is no bona fide use of the disputed domain name by the Respondent since the website to which resolves the disputed domain name merely offers a link to a shop where also other brands are offered, side by side with the Complainants’ products. Even more, many other products from competitors are highlighted as advertisements. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. Furthermore, participating at the affiliate program, the Respondent gains up to 5% commissions on all orders generated from his website. With reference to earlier jurisprudence, the Complainant holds that the use is not bona fide offering of goods and services under Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii). The word “discount” may be a generic plain English word. Nonetheless, in conjunction with “davidoff”, the term is not such that people would ordinarily choose unless they were seeking to convey an impression of association with the Complainant’s well-known goods. The only reason why the Respondent has chosen the disputed domain name is to exploit the goodwill of the Complainant’s trademark (McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353). Therefore, the Complainant submits that the offered goods on the domain name which is linked with the disputed domain name are not used in connection with a bona fide offering of goods and services related to the well-known DAVIDOFF brand.
The Comlainant likewise states that it can be presumed that the Respondent has not been commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy. He has absolutely no relation to the Complainant and only registered the disputed domain name for commercial gain in order to misleadingly divert consumers to websites not affiliated with the Complainant. It is obvious that he primarily registered the disputed domain name in order to participate at the affiliate program and gain 5% commissions. With just linking the website to the shop no one would ever know the Respondent by the disputed domain name; therefore he has no legitimate use in this website. Moreover, the WhoIs information does also not indicate that the Respondent has ever been or is commonly known by the disputed domain name. The Complainant has not authorized the Respondent to use the disputed domain name. The disputed domain name has no apparent connection at all with the Respondent’s own name or any business it is operating. The Respondent has never been an official dealer of the Complainant’s goods and the indications are that the Respondent is not seriously offering these goods for sale. The Respondent was neither authorized nor licensed by the Complainant to utilize the Complainant’s trade name or trademark and there is no business relationship between the Complainant and the Respondent. Moreover, the fact that the name “davidoff” (the last name of Zino Davidoff) is not a common one on the one hand, and has no descriptive meaning on the other hand, and as such is not one traders would legitimately choose with regard to cigarettes and similar products unless seeking to create an impression of an association with the Complainant, shows that the Respondent is not known by the disputed domain name. The Complainant respectfully finds that the Respondent has no rights or legitimate interests in the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001).
Furthermore, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant submits that the preconditions of paragraph 4(b)(ii) of the Policy are fulfilled. The Respondent’s registration prevents the Complainant from using the disputed domain name corresponding to Complainant’s registered trademark (with the additional generic term for products generally, namely “discount”). As the trademark is well-known all over the world, it shows hat the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name. Thereby, and according to the findings in J. Crew International, Inc. v. ,WIPO Case No. D2000-0054, the Complainant submits that the Respondents conduct amounts to bad faith according to paragraph 4(b)(ii) of the Policy.
Furthermore, the Complainant argues that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor pursuant to paragraph 4(b)(iii) of the Policy. At first sight, the Respondent may not be a direct competitor to the Complainant’s enterprise and business. However, it is also possible to act as an indirect competitor without selling competing goods or services on his own, but instead diverting Internet users to other websites than affiliated ones (KPMG International v. Manila Industries,Inc.,WIPO Case No. D2006-0597). The sole purpose of this conduct is to divert Internet users to the shop site and to gain revenues/commissions for the subsequent sales. The Respondent does this by exploiting the Internet users’ association of the Complainant’s trademarks with Complainant’s business. Therefore, it is to be found that the registration of the disputed domain name by the Respondent was in bad faith.
Lastly, the Complainant submits that Respondent registered and used the disputed domain name in order to attract Internet users to the sales website. Internet users accessing the disputed website may expect an official DAVIDOFF store or at least a reliable product source or sponsored website. This is not the case since the Respondent uses the disputed domain name for purposes of attracting Internet users to another shop offering also competitors’ products. The revenues gained by the Respondent, based on the sales must be described as significant, since he is exploiting a well-known brand name for his own purposes. The Respondent in fact gains revenues from directing website traffic to advertisers to the relevant websites as conduct of bad faith (S, Inc. v. Name Administration Inc.,WIPO Case No. D2002-1167; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). In light of this, the Complainant submits that the Respondent’s acting also amounts under paragraph 4(b)(iii) of the Policy to bad faith.
In accordance with paragraph 4(i) of the Policy, the Complainant requests the Administrative Panel appointed in this administrative proceeding to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
On the question of the language of the proceedings, the Registrar confirmed that the language of registration agreement is Russian. The Respondent did not express to the question of the language of the proceedings. The Complainant argues that the conduct of this proceeding in English language has no detrimental effect to the Respondent’s rights as he appears to perfectly understand it. Therefore, the Complainant requests the Panel to decide that the language of the administrative proceedings in this case be English. In the case the Respondent can clearly understand the language of the Complaint, and the Complainant would be disadvantaged by being forced to translate the Complaint to another language, the language of proceedings can remain the language of the Complaint, even if it is different from the language of the registration agreement (L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585; Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679). According to paragraph 11(a) of the Rules the Panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of the administrative proceeding. The Panel, taking into account the circumstances of this case and a number of recent UDRP proceedings and the reasons cited therein (BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836), decides that the language of the administrative proceedings be English.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
The Panel accepts the Complainant’s assertion that the disputed domain name is confusingly similar to the Complainant’s trademark DAVIDOFF and that the disputed domain name contains in its entirety the Complainant’s well-known DAVIDOFF mark and it is therefore confusingly similar to the Complainant’s mark and that the combination with the generic term “discount” for offering “less expensive” products, does not affect the confusing similarity holding (Davidoff & Cie SA v. Paul Darnell o/b/o Cuban Cigars International, NAF Claim No. 97331). Mere addition of the element “discount” to the Complainant’s mark does not adequately distinguish the disputed domain name from the Complainant’s mark, pursuant to the Policy, paragraph 4(a)(i) (Wal-Mart Stores, Inc. v. Gerry Senker,WIPO Case No. D2006-0211; HSBC Holdings Plc v. David H. Gold,WIPO Case No. D2001-0343; F.Hoffmann-La Roche AG v. Whois Defender, Inc.,WIPO Case No. D2006-0717). Moreover, the addition of the generic top-level domain (gTLD) “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and such suffix is therefore irrelevant to determining the confusing similarity between the trademark DAVIDOFF and the disputed domain name. The Panel accepts the general principle that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone: Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-aventis v. Brad Hedlund,WIPO Case No. D2007-1310).
For all the above cited reasons, the Panel concludes that disputed domain name is identical or confusingly similar to the Complainant’s trademark in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Panel accepts the Complainant’s assertion that the Respondent must at all time has been aware of the Complainant’s trademarks DAVIDOFF, especially of the International trademark registration No. 365,504, enjoying priority as of December 18, 1969. The disputed domain name was only registered on September 29, 2011. There is no doubt that the Respondent has chosen the disputed domain name to exploit the goodwill of the Complainant’s trademark (McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353). The Respondent has no relation to the Complainant and only registered the disputed domain name for commercial gain in order to misleadingly divert consumers to sites non affiliated with the Complainant. It is obvious that he primarily registered the disputed domain name in order to participate at the affiliate program and gain commissions. Moreover, the WhoIs information does also not indicate that Respondent has ever been or is commonly known by the disputed domain name. The Complainant has not authorized the Respondent to use the disputed domain name. The Respondent is not a licensee of the Complainant and did not obtain any authorization to use the trademark of the Complainant. The Respondent is also not making a legitimate noncommercial or fair use of the disputed domain name, without the intent, for commercial gain, to mislead the consumers or to tarnish the Complainant’s trademark. The Respondent is using the disputed domain name to attract Internet users seeking a website linked to the Complainant and to its mark DAVIDOFF to the Respondent’s own website, without the Respondent being in a position to legitimately offer services under the mark DAVIDOFF. There is a consensus view by previous UDRP panels that such use cannot be considered a bona fide offering of goods or services, or a noncommercial or fair use in circumstances as the ones that are present in this case (Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Deutsche Telekom AG v. Dong Wang,WIPO Case No. D2005-0819; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001).
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Panel accepts the arguments of the Complainant that the Respondent’s registration prevents the Complainant from using the disputed domain name corresponding to the Complainant’s registered trademark and as the trademark DAVIDOFF is well-known all over the world, it shows hat the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name and that the Respondent’s conduct amounts to bad faith according to paragraph 4(b)(ii) of the Policy (J. Crew International, Inc. v. ,WIPO Case No. D2000-0054).
There is no doubt that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor, that the Respondent may not be a direct competitor to the Complainant’s enterprise and business and it is also possible to act as an indirect competitor without selling competing goods or services on his own, but instead diverting Internet users to other websites than affiliated ones (KPMG International v. Manila Industries, Inc.,WIPO Case No. D2006-0597). The sole purpose of this conduct is to divert Internet users to the shop site and to gain revenues/commissions for the subsequent sales. The Respondent does this by exploiting the Internet users’ association of the Complainant’s trademarks with the Complainant’s business. Therefore, it is to be found that the registration of the disputed domain name by the Respondent was in bad faith. Moreover, the Respondent registered and used the disputed domain name in order to attract Internet users to the sales website and uses the disputed domain name for purposes of attracting Internet users to another shop offering also competitors’ products and in such a way gains revenues from directing website traffic to advertisers to the relevant websites as conduct of bad faith (Six Continents Hotels, Inc. v. Ramada Inn,WIPO Case No. D2003-0658; S, Inc. v, Name Administration Inc., WIPO Case No. D2002-1167; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 the Complainant.
Ladislav Jakl
Sole Panelist
Dated: August 23, 2012
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