Complainant is Christian Dior Couture of Paris, France, represented by Cabinet Marc Sabatier, France.
Respondent is Chen Dior of Ningbo, China.
The disputed domain name <diorjewelry.biz> is registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2011. On December 15, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On December 15, 2011, GoDaddy.com, LLC. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on December 28, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 18, 2012.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on January 27, 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.
The trademark upon which the Complaint is based is DIOR. According to the documentary evidence and contentions submitted, Complainant owns a number of registrations for the DIOR trademark in different countries, including the International Registrations Nos. 610601 issued on December 6, 1993, and 313176 issued on May 13, 1966, and the United States Registration No. 1923564 issued on October 3, 1995, all of which to distinguish jewelry.
Complainant, Christian Dior Couture, is a French company in the luxury fashion industry. The Panel notes that previous UDRP panels have recognized that DIOR is a famous trademark. See, e.g., Christian Dior Couture v. Mumbai Domains, WIPO Case No. D2010-2274; CHRISTIAN DIOR COUTURE v. Erynn Brown; WIPO Case No. D2009-0351; Christian Dior Couture v. Zbigniew Czapiga, WIPO Case No. D2007-0780.
Complainant sent Respondent a cease and desist letter on April 27, 2011, which apparently was never responded.
The disputed domain name was registered with the GoDaddy.com, LLC on March 19, 2010.
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark because (i) it incorporates the DIOR trademark with the addition of generic word “jewelry”, which creates a high likelihood of confusion with Complainant’s trademark; (ii) Complainant is also the owner of domain names which are composed in the same way as the disputed domain name, such as <diorwatches.com>, <watches-dior.com>, <dior-watches.com>, <diorbags.com>, and <dior-bag.com>; (iii) the reputation of Complainant throughout the world of fashion was recognized in several UDRP decisions; and (iv) Respondent sells on its website jewels which infringe Complainant’s rights since the trademark DIOR is also affixed on the necklaces, earrings, and bracelets offered for sale on Respondent’s website.
Complainant further contends that Respondent does not have any rights or legitimate interests regarding the disputed domain name because (i) no license, contract or other authorization was granted to Respondent to authorize it to register and use the disputed domain name nor to use it for goods which infringe the Complainant’s rights; and (ii) even if the real family name of Respondent is Dior, as mentioned in the Whois, he is not entitled to use its family name to act in the same field than the Complainant, due to the high likelihood of confusion for the public.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith because (i) the DIOR trademark is well known; (ii) the primary reason for Respondent to register the disputed domain name was to take advantage of the notoriety of the DIOR trademark and to attract the public’s attention; and (iii) Respondent was sent a warning letter and a reminder which were never answered and Respondent continued to use the disputed domain name after receipt of such letters.
Respondent did not reply to the Complainant’s contentions.
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084. Ross-Simons, Inc. v. Domain.Contac. WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra. RX America, LLC v. Matthew Smith. WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has established each of the three elements required therein.
The Panel concurs with the opinion of several prior UDRP panels which have held that, in certain circumstances, the fact that a domain name wholly incorporates a complainant’s registered trademark, may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; adidas-Salomon v. Mti Networks Ltd., WIPO Case No. D2005-0258; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.
That is particularly true where the trademark is highly recognizable and famous, as in the instant case. The domain name at issue incorporates the whole of the famous DIOR trademark, and that fact may lead the public to think that the disputed domain name is somehow connected to the owner of the registered trademark. Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159.
In addition, it has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark name is to be considered confusingly similar to the registered trademark. V&S Vin&Sprit AhB v. Giovanni Pastore, WIPO Case No. D2002-0926; Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746; Sanofi-Aventis v. US-Meds.com, WIPO Case No. D2004-0809; F. Hoffman La Roche AG v.Pinetree Development, Ltd., WIPO Case No. D2006-0049.
The word “jewelry” is purely descriptive of a type of product distinguished by Complainant’s trademark and does not generally affect a finding of similarity where a registered trademark is incorporated into a domain name. As a matter of fact, the combination of “dior” with “jewelry” creates an immediate potential for false association with the DIOR trademark and brand name, and a high degree of initial confusion. adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson, Case No. D2006-0748.
The Panel notes that in similar situations a UDRP panel has reached the same conclusion. See Christian Dior Couture v. Carl Lim, WIPO Case No. D2008-1038; Christian Dior Couture v. Versata Software, Inc., WIPO Case No. D2009-0102 (quoting Christian Dior Couture v. Carl Lim, supra, and finding that, as “the word ‘watches’ ‘refers directly to one specific product of the Complainant,’ the inclusion of this word in the Disputed Domain Name ‘does not necessarily distinguish [the] domain name from [the] trademark’ and ‘may even add to the confusing similarity.’”).
Finally, the addition of the suffix “.biz” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
The Panel accepts Complainant’s contentions that Respondent is not associated in any way to Complainant.
Paragraphs 4(c)(ii) and (iii) of the Policy require the Respondent to submit evidence that he or his business have been commonly known by the domain name or that he is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to divert consumers or to tarnish the trademark. Pursuant to paragraph 4(c) of the Policy, any of such circumstances, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii).
Complainant questioned whether the actual family name of Respondent is “Dior”, as mentioned in the WhoIs. The Panel also finds doubtful that Respondent has been commonly known by the name “Dior”. In light of the circumstances of the case, it would be pertinent for Respondent to produce adequate evidence that he is commonly known by the name “Dior”. In the absence of such evidence, the Panel finds that the weight of the probabilities is in favor of Complainant.
Complainant also argues that Respondent is using the disputed domain name in order to sell infringing products. The Panel notes that the website to which the disputed domain name resolves displays a variety of products similar to Complainant’s original Dior products. Further, the website displays the DIOR trademark as if they were either licensed or authorized dealers. Therefore, it is clear that Respondent is intentionally using the DIOR trademark to attract Internet users, who might be seeking products similar to Complainant’s original Dior products. The Panel finds that, even if “Dior” were actually Respondent’s name, he would not be entitled to use the disputed domain name to resolve to a website which infringes on Complainant’s trademark. Therefore, the Panel concludes that paragraphs 4(c)(ii) and (iii) of the Policy are not applicable to demonstrate that Respondent has rights or legitimate interests in the disputed domain name.
In short, Complainant has satisfied its burden of providing sufficient evidence to make a prima facie case showing that Respondent lacks rights to or legitimate interests in the disputed domain name, and Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
All of Complainant’s contentions to support the proposition that the disputed domain name has been registered and used in bad faith are accepted by the Panel.
In fact, the Panel has found that the DIOR trademark is well-known. The Panel also finds that Respondent was probably aware of the existence of Complainant as Respondent is using the disputed domain name in order to sell infringing products. The fact that Respondent has chosen as the key part of the disputed domain name the word “dior”, which is identical to Complainant’s trademark and domain names, is an indication that registration of the disputed domain name was made in bad faith.
The Panel concurs with previous UDRP panels holding that in certain circumstances registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. See Pepsico, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.
In addition, the Panel has already found that that the disputed domain name was selected by Respondent with the intent to attract for commercial gain Internet users. This is clearly use of a domain name in bad faith. In fact, paragraph 4(c)(iv) of the Policy provides that if, by using the domain name respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent’s web site or location or of a product or service on respondent’s web site or location, that circumstance shall be evidence of the registration and use of a domain name in bad faith.
Respondent’s lack of response to Complainant’s warning letter and to the Complaint is a further evidence that Respondent is acting in bad faith.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 <diorjewelry.biz> be transferred to Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: February 5, 2012