The Complainant is Christian Dior Couture of Paris, France, represented by Cabinet Marc Sabatier, France.
The Respondent is Maya A. Smith of New York, United States of America (“US”). 2. The Domain Names and Registrar
The disputed domain names and are registered with R (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2013. On February 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 11, 2013, 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.
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 February 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2013.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on March 28, 2013. 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 has submitted evidence that it is the owner of numerous DIOR trademark registrations, including:
DIOR with US trademark registration No. 1923564 and registration date October 3, 1995 for handbags in class 18.
DIOR with US trademark registration No. 3561323 and registration date January 13, 2009 for spectacles and sunglasses in class 9.
CHRISTIAN DIOR with US trademark registration No. 0543994 and registration date June 1951 for handbags in class 18.
DIOR with trademark registration No. 257902 and registration date December 24, 1993 in Thailand for handbags in class 18.
DIOR with trademark registration No. 665928 and registration date July 3, 2007 in Thailand for spectacles in class 9.
The disputed domain names and were registered by the Respondent on June 25, 2012. 5. Parties’ Contentions A. Complainant
The Complainant uses the trademark DIOR all over the world and the Complainant is well-known for handbags sold under the trademark. The Complainant has used the trademark DIOR since 1947 and the reputation of the Complainant throughout the world of fashion has been recognized in several previous UDRP decisions.
The disputed domain names and are confusingly similar to the Complainant’s trademark DIOR. The disputed domain name contains the trademark in its entirety with the addition of the geographic term “Thailand”. The Complainant has three physical stores in Thailand and 23 physical stores in the US. The disputed domain name contains the trademark with the addition of the descriptive term “outlet”. The addition of the descriptive terms “Thailand” and “outlet” do not negate the confusing similarity. The public will be misled and believe that the disputed domain names belong to the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain names. There is no relationship between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant and the Respondent has not obtained any authorization to use the Complainant’s trademark. The Respondent is not commonly known by the disputed domain names.
On January 2, 2013 the Complainant sent a cease and desist letter to the Respondent and requested that the Respondent should transfer the disputed domain names to the Complainant. Despite sending a reminder, the Respondent did not reply.
The Respondent has registered the disputed domain names in order to take advantage of the DIOR trademark and to attract the public’s attention, due to the image of luxury that the trademark carries. The Respondent is actively using the disputed domain names to sell DIOR handbags, purses, wallets and eyewear without authorization of the Complainant. Furthermore, on the websites to which the disputed domain names resolve, the Respondent reproduces the Complainant’s photographs and the Complainant’s advertising campaign for LADY DIOR with Marion Cotillard. The above mentioned elements increase the likelihood of confusion and the public may be misled believing that the disputed domain names belong to the Complainant. For all the above reasons, the Complainant maintains that the disputed domain names have been registered and used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain names; and
(iii) that the disputed domain names have been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark DIOR. The disputed domain name incorporates the Complainant’s trademark DIOR in its entirety with the addition of the geographical indicator “Thailand”. The disputed domain name incorporates the Complainant’s trademark DIOR in its entirety with the addition of the descriptive term “outlet”. The ability for a geographical indicator or a common generic word, such as “Thailand” or “outlet”, to distinguish a domain name from the trademark of the Complainant is limited. See for example Alstom v. Yulei,WIPO Case No. D2007-0424 regarding the domain name , in which the panel held that the suffix of the geographic location “china” created an increased level of confusion as Internet users could believe that the Respondent’s website was the Complainant’s official website devoted to its customers in China.
Having the above in mind, it is the opinion of the Panel that the disputed domain names are confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the disputed domain names, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the disputed domains name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registrations for DIOR predate the Respondent’s registration of the disputed domain names and . The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the trademark in any of the disputed domain names.
From the evidence in the case, it is clear that the Respondent’s commercial websites, to which the disputed domain names resolve, contain direct references to the Complainant’s products and DIOR trademark. Furthermore, the Respondent has copied and reproduced the Complainant’s photographs as well as the Complainant’s advertising material. The disputed domain names are being used by the Respondent to sell the same type of products for which the Complainant has registered its trademark. Thus, the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain names or that the Respondent is or has been commonly known by the disputed domain names.
By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or
(ii) circumstances indicating that the disputed domain names were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain names have intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The Complainant has submitted evidence demonstrating that the Respondent is offering handbags, purses, wallets and eyewear for sale via the websites to which the disputed domain names and resolve. Furthermore, the evidence in the case demonstrates that the Respondent is not only reproducing the Complainant’s trademark DIOR on the websites but also photographs and advertising material belonging to the Complainant. Considering that the Respondent is reproducing the Complainant’s trademark and advertising material without permission and that the disputed domain names are used for the same type of products for which the trademark is registered, the Panel finds, in the absence of contrary evidence, that the Respondent knew or should have known of the Complainant’s trademark at the time the Respondent registered the disputed domain names.
Thus, the evidence in the case before the Panel indicates that the disputed domain names have intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the websites.
There is no evidence in the case that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain names and have been registered and used in bad faith. 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 disputed domain names and be transferred to the Complainant.
Johan Sjöbeck
Sole Panelist
Date: April 10, 2013
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