The Complainant is SA Designer Parfums Limited t/a Designer Parfums, United Kingdom, represented by Candy Johnson, United Kingdom.
The Respondent is Super Privacy Service Ltd c/o Dynadot, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2019. On August 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 28, 2019, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2019.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on October 1, 2019. 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 was incorporated on July 14, 2002 and produces and sells high-end perfume and cosmetics under the business name Designer Parfums. These perfumes and cosmetics are for the most part produced under license from third party licensors who hold internationally recognized brands, for example Naomi Campbell, Jennifer Lopez, Ghost, Cerruti 1881 and Playboy.
The Complainant’s annual revenue from 2014 to 2018 has totaled more than GBP 179 million.
The Complainant owns a United Kingdom Trademark registration for DESIGNER PARFUMS under registration No. UK00003379450, effective as of February 28, 2019, in association with retail services related to perfumes.
The Complainant also owns a domain name registration for which has been used in association with its retail services, promoting and selling perfumes since June 10, 2002.
The disputed domain name was registered on July 31, 2019, and reverts to a website which is a cloned copy of the Complainant’s website offering for sale a variety of perfumes. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns a registered trademark in the United Kingdom for the mark DESIGNER PARFUMS under registration No. UK00003379450. The disputed domain name replicates the Complainant’s registered trademark except that the word “parfums” has been truncated by deleting the letters “arfu”. Accordingly, the disputed domain name is alleged to be confusingly similar to the Complainant’s registered trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has extensively used and promoted the mark DESIGNER PARFUMS since 2002, more than 16 years before the Respondent registered the disputed domain name. The Complainant submits that the Respondent was clearly aware of the Complainant’s rights in the DESIGNER PARFUMS trademark when it registered the disputed domain name.
Further, the Complainant provides evidence that the Respondent is using the disputed domain name in association with a website which is a virtual clone of the Complainant’s website. The Respondent is luring Internet consumers to its website, offering merchandise purporting to be the Complainant’s, thereby committing fraud for purposes of financial gain. This conduct is not evidence of a bona fide offering of goods and services.
Lastly, the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has directed the disputed domain name to a website which is a copy of the Complainant’s website and is offering unauthorized merchandise purporting to be the Complainant’s, thereby committing fraud for financial gain. In furtherance of its scheme, the Respondent is using a fraudulent email address which uses the ending “@”, and which appears to originate from an employee of the Complainant. The sender fraudulently sought to sell unauthorized or unlicensed products to the customer. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(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
The Panel finds that the Complainant does have recognizable trademark rights in the trademark DESIGNER PARFUMS through its extensive use and promotion of the trademark since 2002 and its United Kingdom trademark registration No. UK00003379450.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, as the disputed domain name replicates the Complainant’s trademark and uses an abbreviated version of “parfums” as its final element.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Useful commentary relating to the burden of proof for rights or legitimate interests can be found at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Based on the evidence filed in this proceeding, the Panel finds that the Complainant has made out a prima facie case with respect to lack of rights and legitimate interests. The Complainant clearly owns rights in the DESIGNER PARFUMS trademark as noted in section 4 of this Decision. The evidence filed in this proceeding, which was not contested by the Respondent, clearly supports the fact that the Respondent was aware of the Complainant’s trademark and its retail services for perfumes and cosmetics, as the Respondent actually directed the disputed domain name to a website which is a virtual clone of the Complainant’s website. This is compelling evidence that the Respondent was aware of the Complainant when it registered the confusingly similar disputed domain name , as part of its fraudulent scheme. This conduct obviously does not support a finding of a bona fide offering of goods and/or services in association with the disputed domain name.
The Respondent was not authorized or licensed to use the Complainant’s trademark, and the Respondent is not commonly known by the mark DESIGNER PARFUMS.
In this situation, the burden shifts to the Respondent to bring forward evidence of rights and legitimate interests. The Respondent did not respond to the Complaint.
Accordingly, the Panel finds that the Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As set out above, the Respondent was clearly aware of the Complainant’s trademark rights in the DESIGNER PARFUMS mark when it registered the disputed domain name . This conclusion is supported by the fact that the Respondent is using a fake email address, which incorporates the Complainant’s trademark to send emails to customers of the Complainant as part of a fraudulent scheme including a link to the disputed domain name. This is compelling evidence of bad faith and abusive conduct contrary to the Policy (see Banque de Luxembourg, SA v. WhoisGuard Protected, WhoisGuard, Inc. / Antonio Diaz,WIPO Case No. D2019-0495).
The Panel is prepared to accept the claims made by the Complainant, and finds that the Respondent registered and has used the disputed domain name in bad faith.
The Complainant has therefore satisfied the requirements under paragraph 4(a)(iii) 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.
Christopher J. Pibus
Sole Panelist
Date: October 7, 2019
Full & Egal Universal Law Academy