The Complainant is Jean Patou Worldwide Limited of Watford, Hertfordshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Fiona Erskine-Naylor, United Kingdom.
The Respondent is Thaminder Anand of Diamond Bar, California, United States of America (“United States”), represented by Bradley Sniderman, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2014. On January 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 7, 2014.
The Center verified that the Complaint together with the amendment to the Complaint/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”).
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 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2014. The Response was filed with the Center on February 28, 2014.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on March 25, 2014. 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 in the business of manufacturing and marketing perfume, including a range under the name JOY. The JOY brand of perfume was first released in 1931. According to the Complaint, it has subsequently generated many millions of dollars in revenue. In 1990, JOY perfume was named to the Fragrance Foundation’s Hall of Fame Scents. In 2000, it was voted “Scent of the century” at the Fragrance Foundation’s UK FiFi awards.
The Complainant acquired the rights to the brand from the previous owner, Procter & Gamble, in 2011. As a result, the Complainant is now the owner of the following registered trademarks:
- United States of America registered trademark No. 529337, JOY, in respect of perfumes and toilet waters which was first registered on August 22,1950;
- Community Trademark No 010596047, JOY, for perfumery and related products which was first registered on February 16, 1999; and
- United Kingdom registered trademark No. 00000885815, JOY, for perfumes and toilet water which was first registered on February 4, 1965.
Amongst other things, the Respondent operates a website via the domain name which offers for sale a range of garments or has links to offers for sale of a range of products. He has apparently been operating this website since 1996. According to the Response, perfume has been offered for sale from this website since 1999.
The Respondent registered the disputed domain name in 2001.
The Respondent has also registered the domain name (which is not the subject of this dispute) in 2006. The Respondent states that he also sells perfume from the website to which resolves and has been doing so since “as early as 2009”. The Respondent uses the disputed domain name “as a re-direct site”. That is, an Internet user who enters the disputed domain name into an Internet browser is redirected to the page on the “www.” site which, amongst other things, offers perfume brands for sale. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the three registered trademarks for JOY referred to in Section 4 above.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proven trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainant’s trademark only by the addition of the word “perfume” and the generic Top-Level Domain (“gTLD”), “.com”.
The gTLD component may be disregarded for the purposes of this comparison as a functional aspect of the domain name system: Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252.
The word “perfume” is an ordinary, descriptive noun which only serves to emphasise the relationship or connection between JOY and perfume, the very products for which the Complainant has registered its trademarks.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
The Complainant contends that the Respondent is not affiliated with the Complainant or authorized by it to use its trademarks. It also points out the disputed domain name is not derived from the Respondent’s name.
In rebuttal, the Respondent points to his long history going back to 1999 of offering for sale perfume from his “www.” website and, since 2009, his website at “www.”. The Respondent says he has been using the disputed domain name to re-direct to the “www.” website for about 9 years. As a result he contends that he has been using the disputed domain name in connection with a bona fide offering for goods for at least that length of time without challenge by the Complainant. The Respondent invokes the decision in Cerruti 1881 a.s.a. v. Gurpreet Johar,WIPO Case No. D2012-1574 for the propositions that longevity of use in connection with a substantial commercial enterprise constitutes rights or legitimate interests under this limb of the Policy.
The Panel accepts at once that offering goods for sale, or links to the offer for sale of goods, from a website such as “www.” can qualify as a bona fide offering of goods for the purposes of the Policy. The fact that a genuine business is being operated from a website is not sufficient in itself to qualify under this limb of the Policy. What is required is a consideration of the use of the particular domain name in dispute in all the circumstances of the case. Thus, panels have repeatedly found that the use of a domain name which confusingly resembles someone else’s trademark to sell goods or services which compete with, rather than emanate from, the trademark owner does not qualify as good faith under the Policy. Examples of this principle can be seen in the cases referred to in WIPO Overview 2.0, paragraphs 2.3 and 2.5.
In the present case, the disputed domain name does resolve to the website at “www.”. The home or landing page to which the disputed domain name resolves, “www.”, features various images of models in gowns. There are a number of links “New Arrivals”, “Perfume”, “Prom Dresses”, “Bridesmaid Dresses”, “Prom Gowns”, “Couture Gowns”, “Quinceanera Dresses”, “Formal Short Dresses”, “Flower Girl Dresses”, “Homecoming Dresses”. There is also a link to “This Week Specials” (sic) with links to various other dress promotions.
The links to pages such as “New Arrivals” and “Prom Dresses” and the like take one to other pages with images of models in different gowns or dresses. If one clicks on a particular image, it appears that one may buy that gown or dress online.
Clicking on the link for “Perfume” takes one to a page headed “Joy Perfume of California”. Neither party has indicated whether Joy Perfume of California is operated by the Complainant or authorized by it. The page in question includes an image of the Complainant’s JOY perfume. It also includes the images of seven other products; the others being Midnight Poison, Davidoff Cool Water, Davidoff Hot, Calvin Klein Obsession and Lady Gaga Fame. There are also two addresses and one telephone number. One of the addresses is in Guadalajara, Mexico; the other “Only wholesale” in California. It is not possible to buy the perfume products represented on this page online. The active links on the page only take one to various gowns and dresses.
The Panel notes that the website to which the domain name resolves has a home or landing page which appears to be identical to the “Joy Perfume of California” page described above.
The Panel is not prepared to find that the use made of the disputed domain name described above constitutes a bona fide offering of goods under the Policy. First, the “landing page” to which the disputed domain name resolves appears, as the Complainant contends, to be primarily directed to promoting the sale of dresses and gowns. One has to click on a further link to be taken to the “perfume” page. Insofar as that page can be taken to be offering goods, it is offering goods not just of the Complainant but also of other brands of perfume. That is conduct which, as outlined above, UDRP panels have repeatedly refused to find qualifies as good faith under the Policy.
Insofar as the Respondent invokes the length of his user as justification, laches or delay are not usually regarded as disentitling conduct under the Policy: WIPO Overview 2.0, paragraph 4.10.
In this case, the Panel notes that the Complainant acquired the JOY trademarks comparatively recently, in 2011. The Panel also notes the length of the Respondent’s registration. The Respondent has not brought forth, however, any prejudice he has suffered as a result of a complaint not being made until the Complaint was filed nor has the Respondent provided any evidence of any detriment. Rather, as in the case of Fisher v Brooker [2009] 1WLR 1764 at [79], the Respondent has had the advantage of whatever benefits he has been able to derive from use of the disputed domain name prior to the Complaint being filed.
Formally speaking, a panel is not bound by the decision in the Cerruti case, supra. However, predictability and consistency of decisions are plainly highly important.
In the Cerruti case, supra, the learned panel noted that the respondent had been operating a business under the name “Gino Cerruti” since 1988 (some 20 plus years) and had registered a company under that name in the United Kingdom in 2003 before the domain name was registered. Also, there were potentially complicated questions of trademark infringement involved in the assessment of whether the name “Gino Cerruti” would be confusingly similar to “Cerruti” alone or “Nino Cerruti”. The circumstances of the case are therefore very different from the present case. Accordingly, the Panel does not consider it appropriate to depart from the more general run of decisions discussed above.
Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent.
The Respondent does not claim that he did not know about the Complainant’s trademark or JOY perfume when he registered the disputed domain name. Rather, he contends that he registered it and is using it in connection with a good faith business selling perfume.
Accepting for present purposes that the Respondent is conducting a genuine business of selling dresses, gowns and perfumes at “www.” in the manner described above, however, is not a complete answer. The question is not whether the Respondent has a genuine business but rather whether the disputed domain name was registered and is being used in bad faith. That requires consideration of the disputed domain name, its motives for registration and how it is being used.
For the reasons outlined in section 5B above, the Panel has found that the disputed domain name is being used in bad faith. Given the length of user of JOY by the Complainant (and its predecessors) and the apparent fame of the trademark, including its admission into the Fragrance Foundation’s Hall of Fame and the FiFi Awards, it would seem very likely that the Respondent did appreciate the significance of JOY in relation to perfume as signifying the Complainant’s product when he registered the disputed domain name. The subsequent use made of the disputed domain name and the absence of a credible denial of such awareness reinforces that inference.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith under the Policy. 6. 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 name be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: April 8, 2014
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