The Complainant is Zino Davidoff SA of Fribourg, Switzerland, represented by BrandIT GmbH, Switzerland.
The Respondent is Guan Rang Guang of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 23, 2016. On May 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2016, 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 May 26, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On May 27, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint in Chinese and English, and the proceedings commenced on June 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 24, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on July 1, 2016. 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 a Swiss company that manufactures luxury goods, including fragrances, watches and leather goods, and markets them in many countries around the world, including China. It is the proprietor of various trademark registrations including International Registration No. 876874 (DAVIDOFF in a particular script) registered on November 11, 2005 in multiple jurisdictions including China; International Registration No. 1065394 (DAVIDOFF) registered on January 7, 2011 in multiple jurisdictions including China; and Chinese Registration No. G467510 (DAVIDOFF) registered on January 27, 2012. These registrations are still in effect and specify multiple classes of goods and services variously including perfumery, watches, handbags, purses and retail sale.
The Respondent is an individual and the registrant of the disputed domain name. The disputed domain name was created on October 8, 2015 and at the time of the Complaint resolved to a fashion shopping website displaying products including fragrances, handbags and leather goods of various luxury brands. At the time of this decision, the website at the disputed domain name is inactive. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its DAVIDOFF trademark. It directly and entirely incorporates the Complainant's trademark. The addition of the descriptive word "shore" and a generic Top-Level Domain ("gTLD") does not distinguish the disputed domain name from the Complainant's trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent has made no effort to use the disputed domain name for any purpose that might be consistent with any rights or legitimate interests in the Complainant's trademark. The top results for the term "Davidoff" in the Baidu search engine point to the Complainant and its products. The disputed domain name resolves to a website that offers for sale the Complainant's competitors' products, which are presumably counterfeit.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant has sent cease-and-desist letters to which the Respondent failed to reply. It cannot be a coincidence that the Respondent chose to add the word "shore" to the Complainant's trademark in the disputed domain name because the Complainant's advertising often uses that word in connection with its fragrances. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Respondent did not respond to the cease-and-desist letters or indicate that it did not understand them; that the disputed domain name is made up of letters in Latin script including the English word "shore"; that the Respondent's website uses certain English words and that use of Chinese in this proceeding would cause unnecessary trouble and delay. The Respondent did not comment on the language request.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. The Respondent having had notice of the Complaint in Chinese has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered these circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of or including the word DAVIDOFF.
The disputed domain name incorporates the Complainant's DAVIDOFF trademark in its entirety. The Complainant's DAVIDOFF trademark is the initial element of the disputed domain name, followed by the additional elements "shore" and ".date".
The word "shore" is an English dictionary word. Dictionary words do not normally have the capacity to distinguish a domain name from a trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110.
The element ".date" is a gTLD suffix. A gTLD suffix generally has no capacity to distinguish a domain name from a trademark either. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
The Panel notes that the disputed domain name can also be read as a combination of the personal name "David" followed by the word "offshore" and the gTLD. However, the Complainant's trademark remains recognizable in a visual comparison with the disputed domain name (see Forest Laboratories, Inc. v. Natural Products Solutions LLC,WIPO Case No. D2011-1032; Philipp Plein v. Kimberly Webb,WIPO Case No. D2014-0778).
Accordingly, the Panel's view is that the disputed domain name is confusingly similar to the Complainant's DAVIDOFF trademark.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant's trademark. As regards the first circumstance above, the disputed domain name has been used with a website that offers for sale what are alleged to be the Complainant's competitors' products. This shows that the Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services for the purpose of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent's use falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent's name is "Guan Rang Guang", not "davidoffshore" or "Davidoff" or even "David". There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a website that offers goods for commercial sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden of production now shifts to the Respondent to show that it does have some rights or legitimate interests, but the Respondent did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
"(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] 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 [the Respondent's] website or location or of a product or service on [the Respondent's] website or location."
The Respondent registered the disputed domain name in 2015, years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The initial element of the disputed domain name is identical to the Complainant's trademark. The disputed domain name resolved to a website offering for sale fragrances, handbags and other leather goods, which are all types of products manufactured and marketed by the Complainant. Further, the products displayed are all luxury brands that compete with the Complainant's products. Nothing on the website is related to any alternative reading of the disputed domain name, for instance, "David" followed by "offshore". This all gives the Panel reason to believe that the Respondent was aware of the Complainant's trademark at the time the Respondent registered the disputed domain name and that the Respondent deliberately chose to register it as part of the disputed domain name.
The Respondent has used the disputed domain name, which wholly incorporates the Complainant's trademark, with a website to offer for sale what are alleged to be the Complainant's competitors' products. The website may or may not offer for sale the Complainant's own products as well. The Panel considers that the Respondent's use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the products on that website.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 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 name be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: July 5, 2016
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