WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NAF NAF v. Hostmaster Hostmaster

Case No. D2007-1175

1. The Parties

1.1 The Complainant is NAF NAF, of France, represented by Cabinet Lhermet La Bigne & Remy, France.

1.2 The Respondent is Hostmaster Hostmaster of Beaumaris, Victoria, of Australia.

2. The Domain Name and Registrar

2.1 The disputed domain name is <nafnafshop.com> (the “Domain Name”) and is currently registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Original Complaint

3.1 The Complainant filed a complaint with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2007 (the “Original Complaint”). The Original Complaint was based on the Whois search results for the Domain Name at the time that showed that:

(i) the registrant was an entity called Domain Park Limited of Level 2 Lotemau Centre, Vaea Street, Apia, Samoa, 0815 WS (“Domain Park Limited”) with email address [differet name]@trellian.com; and

(ii) the registrar was PrivacyPost, Inc.

3.2 On August 10, 2007, the Center requested registrar verification from PrivacyPost, Inc. for the Domain Name. On August 14, 2007, PrivacyPost, Inc. responded confirming that Domain Park Limited was the registrant; PrivacyPost, Inc was the registrar; and, that the Domain Name had been locked.

3.3 Accordingly, the Center verified that the Original Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”) and in accordance with the Rules, formally notified Domain Park Limited of the Complaint. Proceedings commenced on August 20, 2007 (the “Original Proceedings”).

3.4 Domain Park Limited did not submit any response by the September 9, 2007 due date. Accordingly, the Center notified Domain Park Limited’s default on September 10, 2007.

Change of Registrant and Registrar after commencement of the Original Proceedings

3.5 The Center checked the public WhoIs details for the Domain Name on September 11, 2007. The results showed that the registrar had changed from PrivacyPost, Inc to Moniker Online Services, LLC and that the registrant had changed from Domain Park Limited to an entity called “Hostmaster Hostmaster” of 6-8 East Concourse, Beaumaris, Victoria 3193, Australia.

3.6 In subsequent extensive correspondence between the Center, PrivacyPost, Inc. and Moniker Online Services, LLC , the Center attempted to ascertain if and how the Domain Name could have been transferred after the commencement of proceedings (given that such a transfer would be prima facie contrary to paragraph 8(a) of the Policy). The Center also involved ICANN in the process. As a result of its efforts the Center was satisfied that the registrar had indeed been changed to Moniker Online Services, LLC.; the registrant to Registrant [276571] Hostmaster Hostmaster; and that this transfer had occurred on August 31, 2007 i.e. after proceedings had commenced. The Center initially requested that the transfer be nullified and the original registration details be restored. However, for whatever reason, this was not done by the Registrar or Domain Park Limited. Therefore, the Center invited the Complainant to re-issue its complaint against the new registrant.

The Current Proceedings

3.7 On January 10, 2008 the Complainant duly reissued its complaint (the “Complaint”). On January 15, 2008 the Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules.

3.8 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Hostmaster Hostmaster, the Respondent, of the Complaint. Additionally, the Center sent notice of the Complaint to Domain Park Limited. The current proceedings commenced on January 15, 2008.

3.9 In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2008.

3.10 The Center appointed Matthew S. Harris as the sole panelist in this matter on February 14, 2008. 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

4.1 The Complainant is the French fashion Company, NAF NAF, which was launched in 1973. The NAF NAF brand is exploited both directly by the Complainant and through licences. In 2006, over 13 million garments were sold under the NAF NAF name in over 50 countries and its turnover amounted to €240 million.

4.2 The Complainant has registered a large number of trade marks that either comprise or incorporate the NAF NAF name. These include four French, one Japanese and various International trade mark registrations (designating in excess of 30 countries).

4.3 The Complainant is also the owner of various domain names that incorporate the words “NAF NAF”, including <naf-naf.com>, <nafnafstore.com>, and <nafnaf.org>.

4.4 The Domain Name was registered on November 10, 2006. Since as far back as January 2007 (if not earlier) the page displayed from the domain name has borne the classic hallmarks of having been generated by a domain name parking service. The webpage originally displayed click-through links predominantly on a female fashion theme under the words “NAF NAF” in a prominent, bold font. It is also clear from references on the page that the parking service in question was provided by www.sedo.com (“Sedo”). The webpage also contained a statement that the domain name might be for sale by its owner.

4.5 On April 11, 2007 the Complainant sent a cease and desist letter to Domain Park Limited (the then registrant), requiring the transfer of the Domain Name. No one responded to that letter.

4.6 From time to time thereafter the nature of the links has changed. For example, at one point the links displayed on the webpage changed to ones of a more adult theme, including links to adult “chat”, dating and lingerie web-sites. At some point the statement that the Domain Name was for sale, and the reference to Sedo was removed. As at the date of the decision a domain name parking page continues to operate from the Domain Name but the links displayed are more of a general retail nature (with references to “Best Deals” “Shopping Cart” and “Retail”).

5. Outstanding Procedural Matters

5.1 Before addressing the substance of the Complaint it is necessary to briefly comment on the transfer of the Domain Name that took place subsequent to the commencement of proceedings pursuant to the Original Complaint. Such transfer appears to have been in breach of paragraph 8(a) of the Rules. This is a serious matter. If the Policy is to be effective it is necessary that registrars fully co-operate in its implementation. For a Registrar to allow a breach of paragraph 8(a) of the Rules to take place is arguably a breach of its Registrar Accreditation Agreement with ICANN. In the circumstances, the Center (or any other relevant Provider) and parties to proceedings are at the very least entitled to expect that if a breach of paragraph 8(a) has taken place, that the relevant registrars rapidly establish how this happened and fully co-operate with the Center in resolving the matter.

5.2 There was a marked failure on the part of the relevant registrars and, in particular, PrivacyPost, Inc, to do this in this case. Indeed, at times the correspondence between the Center and PrivacyPost, Inc verged on the surreal. For example, when the Center sent an email to PrivacyPost, Inc on December 17, 2007 in relation to the matter, the Center received the following apparently pro forma response from PrivacyPost, Inc:

“Hi there

If you believe you have reason to dispute the ownership of a domain, you will need to go through the proper procedures to do so. Please see these links for more information on the Uniform Domain Name Dispute Resolution Policy. If you have any further questions about domain disputes, please contact legal@dotster.com”

5.3 In the circumstances, it is not surprising that by January 2008 the Center reached the conclusion that the most practical way of dealing with this matter was to ask the Complainant to resubmit its Complaint. However, the fact is that it not ought to have had to do so. Essentially the effective commencement of proceedings in this case was delayed by approximately 5 months. If this sort of activity is allowed to occur unchecked, it risks bringing the Policy procedure into disrepute. The Panel notes that in this case the Center sought the involvement and assistance of ICANN. It is to be hoped that ICANN take a continuing active interest in this matter, if only to ensure that what occurred in this case is not repeated.

6. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

6.1 The Complainant submits that the NAF NAF fashion brand is “one of the most worldwide known, creative and successful ready-to-wear fashion brands”. In support of this the Complainant has submitted various documents, which show the history and development of the NAF NAF company and provide some examples of its advertising campaigns and editorials in international publications.

6.2 In addition to the registered trade marks already described, the Complainant submits that “Naf Naf” is also its trade name protected in the member states of the Paris Union (by Article 8 of the Paris Convention) and all members of the World Trade Organization (by Article 2 of the TRIPs Agreement).

6.3 The Complainant claims that the Domain Name is confusingly similar to its NAF NAF trade mark and name. In particular the Complainant submits that the “Domain name consists of the letters “nafnaf”, which are identical to the trademark NAF NAF… accompanied by a non-distinctive suffix, ‘shop’” and further contends that the Domain Name “contains the Complainant’s mark in its entirety and the addition of ‘shop’ thereto is not sufficient to exclude the confusing similarity between the Domain Name and the Complainant’s trademark.”

6.4 The Complainant cites a number of previous decisions of WIPO UDRP panels under the Policy, which, according to the Complainant, have held that “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy”, including Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. Triple S. Auto Parts d/b/a Kung Fu Yea Sr., WIPO Case No. D2000-1525; and Six Continents Hotels, Inc. v. Domain Park Limited, WIPO Case No. D2007-0313. The Complainant also asserts that this “is particularly true when the registered mark is entitled to a high level of protection due to its fame and notoriety, as is the case of the NAF NAF mark”.

6.5 The Complainant submits further that the addition of the word “shop” would mislead “Internet users and consumers into believing that the domain name and web-site at issue have a connection with or authorization from the Complainant” and that “the word ‘shop’ may give the impression that www.nafnafshop.com reflects the official Internet sales department of the Complainant”. In support of this argument the Complainant cites the decision by the panel in the case of Audi AG v. Jun Suk Min, WIPO Case No. D2007-0200.

No Rights or Legitimate Interests

6.6 The Complainant’s contentions in this respect are brief and therefore, have been re-produced in full below:

“(a) the Complainant never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the NAF NAF mark;

(b) the Respondent has not used or made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services;

(c) it is unlikely that the Respondent is commonly known by the NAF NAF mark; and

(d) the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. In fact, the Respondent is using the disputed domain name to re-direct Internet users to web-sites displaying links to various third-party web-sites offering goods and services related to the Complainant’s business, including some web-sites in direct competition with the Complainant. It can even be inferred that the Respondent is benefiting commercially from these links through the accrual of click-through fees…”.

Registered and Used in Bad Faith

6.7 The Complainant alleges that the Respondent has registered and used the Domain Name in bad faith in accordance with circumstances set out in paragraphs 4(b)(i), (iii) and (iv) of the Rules.

6.8 In particular bad faith is said to be demonstrated by the following:

(i) The fact that the Domain Name was transferred during the pendency of the Original Proceedings and it seems to be alleged that this transfer was a sham. Specifically one of the emails associated with the original registration was [different name]@trellian.com, and the current contact email for the Respondent is [different name]@trellian.com. The similarity between these contact emails is said to suggest that there is a connection between the successive registrants of the Domain Name, and that the transfer was made for the purpose of avoiding the UDRP proceeding. The Complainant further contends that the web-site operating at the Domain Name has not changed since the Domain Name was transferred and the Domain Name is “still offered for sale on the same website www.sedo.com”. The Complainant provides copies of print out from various websites (including those of Sedo) in support of these contentions.

(ii) Domain Park Limited has been a respondent in a number of proceedings including Citizens Financial Group, Inc. v. Domain Park Limited NAF Case No, FA0705000975307, Commodities LLV v. Domain Park Limited, NAF Case No, FA0705000982996; and Six Continents Hotels, Inc v Domain Park Limited, WIPO Case No. D2007-0313. In all these cases Domain Park Limited was found to have registered domain names in bad faith.

(iii) The Respondent has “approximated the Complainant’s famous NAF NAF trademark”. Furthermore, the Complainant alleges that the Respondent had knowledge of the “existence or the reputation of the NAF NAF mark […] evidenced by the fact that some of the links on the Internet page under the [Domain Name] refer directly to the Complainant’s mark, NAF NAF”.

(iv) The offering for sale of the Domain Name on the web-site “www.sedo.com”. This is said to constitute bad faith pursuant to paragraph 4(b)(i) of the Policy.

(v) The use made by the Respondent of the Domain Name is said to be in order “to divert Internet users to web-sites that display links to related third-party web-sites, including various web-sites in direct competition with [the] Complainant’s business”. The Complainant alleges that the objective of this was to seek to disrupt the Complainant’s business, which thus constitutes bad faith pursuant to paragraph 4(b)(iii) of the Policy; and

(vi) The Complainant alleges that the Respondent is intentionally using the Domain Name “to earn click-through fees for diverting customers to various third-party web-sites. Therefore, [the] Respondent is profiting form the likelihood that consumers will confuse the [Domain Name] with [the] Complainant’s mark to attract them for commercial gain to this web-site” and that this constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy.

B. Respondent

6.9 The Respondent did not reply to the Complainant’s contentions.

7. Discussion and Findings

7.1 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.

7.2 The Panel does not find that there are any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.

7.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

7.4 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences there-from as it considers appropriate”.

A. Identical or Confusingly Similar

7.5 It is clear that the Complainant is the proprietor of a portfolio of registered trade marks comprising the words “NAF NAF” and/or related words and designs. Somewhat unhelpfully, the Complainant does not provide any underlying documentary evidence in respect of these marks. However, the Complainant in the body of its Complaint expressly cites five International trade mark registrations (numbers 479460, 484345, 498272, 521081, and 535641). The Panel has undertaken its own search of WIPO’s publicly available Madrid Express on-line trade mark database with respect to these five marks, and has confirmed that these five marks are registered in the name of “Naf Naf” and take the following form:

Trade mark Number	Mark	Type of Mark	Classes	Date of Registration
479460	NAF NAF	Stylized text	25	September 26, 1983
484345	NAF NAF	Stylized text	3	April 1984
498272	NAF NAF	Word	9	November 15, 1985
521081	NAF NAF	Stylized text	14,16,18,21,24	February 8, 1988
535641	NAF NAF	Word	5,10,11,12,20, 28	March 14, 1989

7.6 Two of these registrations (i.e. no.s 498272 and 535641) are simple word marks. When one disregards the “.com” TLD suffix, the only difference between the Domain Name and these two marks is the addition of the ordinary word “shop”. The Panel accepts that the addition of the word “shop” does not prevent the Domain Name from being confusingly similar to the Complainant’s mark. A shop is merely a location (whether online or in the real world) in respect of goods of the sort dealt in by the Complainant are sold. Therefore the Panel has little difficulty in finding that the Complainant has made out paragraph 4(a)(i) of the Policy.

7.7 In the circumstances, it is not necessary to consider further the Complainant’s submissions based upon its other trade marks or its allegations that it has additional rights stemming from the Paris Convention and TRIPS.

B. Rights or Legitimate Interests

7.8 The Complainant contends and the Panel accepts, that the Respondent has not been authorised to use the trade mark “NAF NAF” by the Complainant and that the Respondent is not known by the name. Further, the Panel accepts that the Respondent had no interest in the Domain Name other than to use it to generate “click-through” revenue. This is clear from the fact that at all relevant times (beforehand and in the 6 months subsequent to the apparent transfer of the Domain Name to the Respondent) the web-site operating from the Domain Name has borne the hallmarks of being generated by a domain name “parking service”.

7.9 Whilst there is nothing per se illegitimate in the use of a domain parking service, it is quite different when a domain name is chosen on the basis of the similarity to a name in which a complainant has an interest, in the expectation that internet users searching for products or services related to the complainant will instead be drawn to the domain name parking page. Such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three person panel in Express Scripts, Inc. v Windgather Investments Ltd., WIPO Case No. D2007-0267).

7.10 Essentially, therefore, this aspect of the case turns upon whether the Domain Name was registered with the Complainant’s business in mind in the hope and expectation that the similarity between the Domain Name and that business would result in internet users coming to the relevant domain name parking page. As is described under the “good faith” heading below, the Panel believes that this is indeed the case. In the circumstances, the Panel concludes that the Respondent has no right or legitimate interest in the Domain Name and that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

7.11 The Panel has little hesitation in this case in concluding that the original registrant of the Domain Name was aware of the Complainant’s business and use of the NAF NAF name at the time that the Domain Name was transferred to it.

7.12 The Panel accepts that NAF NAF is a brand of considerable repute and that at least by the time that the Domain Name was registered it had become known in many countries around the world.

7.13 Further, the Panel accepts (in the absence of any evidence to the contrary) that the words NAF NAF are exclusively referable to the Complainant’s business and the Domain Name <nafnafshop.com> has no sensible meaning other than as the word NAF NAF amalgamated with the ordinary English word “shop”. It is, therefore, highly likely that the registrant chose this particular domain name with the Complainant’s business in mind.

7.14 Whilst it is not a key factor in this case, this conclusion is also reinforced by the links to NAF NAF related products that initially appeared on the domain name parking page operating from the Domain Name. The reason why absent any evidence to the contrary a Panel can usually assume that the owner of a domain name has some control and influence over the links displayed on a domain name parking page (even if those links are automatically produced by the domain name service provider) was set out in greater detail by this Panel in Owens Corning v. NA, WIPO Case No. D2007-1143 and Shaw Industries Group Inc. v. Adminstrator, Domain, WIPO Case No. D2007-0583.

7.15 It is also now well known that when a domain name registrant takes advantage of a domain name parking service it will take a share of the click through revenue generated from the pages generated by that service (again for a more detailed description of how these services work see the Panel’s decision in Owens Corning v. NA WIPO Case No. D2007-1143).

7.16 In the circumstances, the Panel draws the inevitable inference in this case (and in the absence of contentions from the Respondent to the contrary) that the Domain Name was chosen with this domain name parking use in mind and that there was an intention on the part of the registrant to capitalize on the Complainant’s reputation in the NAF NAF brand in the hope and expectation that Internet users searching for information related to the Complainant would be directed to the Respondent’s site.

7.17 Such registration and use is in bad faith and falls within the scope of paragraph 4(b)(iv) of the Policy. This states that the following shall be evidence of bad faith registration and use:

“by using the domain name the, [the Respondent has] intentionally attempted to attract for commercial gain, Internet users to [the Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affliction, or endorsement of [the Respondent’s] web site or location or of a product or service on [the Respondent’s] web site or location.”

7.18 There is no need to go any further in this case, but further factors that point to registration and use in bad faith by the original registrant include the fact that the Domain Name was initially offered for sale. Paragraph 4(b)(i) of the Policy also gives as another example of circumstances evidencing bad faith:

“circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”

7.19 Here the nature of the Domain Name is such that it seems most likely that any entity interested in buying it would be either the Complainant (or one of its licensees) or it competitors, and the registrant must have known this at the time of registration. The Panel doubts that it was with such a sale “primarily” in mind that the Domain Name was registered, but it does not matter. Any value of the Domain Name primarily lies in its incorporation of the Complainant’s mark. This is therefore yet further evidence of the fact that the Domain Name was registered with the intention of taking advantage of the reputation that the Complainant had built up in that mark.

7.20 Of course, the above comments apply to the original registrant of the Domain Name and there is the complication in this case that the Domain Name at first sight appears to be transferred to another party. However, the Panel does not think that this matters. The reasons for this are as follows:

(i) For the reasons already described above it would appear that this transfer was contrary to paragraph 8(a) of the Policy. In the circumstances, the Panel thinks that it is legitimate to ignore this transfer for the purpose of these proceedings (even though the parties have commenced fresh proceedings under the Policy that are separate from the Original proceedings).

(ii) The Panel accepts, in the absence of any evidence from the Respondent, the Complainant’s contention that the current owner of the Domain Name is essentially the same person or entity as was behind the original registration. Factors that support that conclusion include:

(a) The fact that the webpage operating from the Domain Name did not change as at the date of transfer;

(b) The similarity in email addresses provided for the previous and current registrants as identified by the Complainant;

(c) The fact that the current registration (and possibly the original registration) does not seem to disclose the true identity of the registrant. It appears instead to be a pseudonym for the true Respondent provided by a “domain name privacy service”; and

(d) The timing of the transfer. It seems implausible that any genuine purchaser would have been interested in purchasing a domain name that was subject to ongoing proceedings.

(iii) Even if the current registrant is a different person or entity, its registration and use is independently in bad faith. The Domain Name has continued to be used in connection with a domain name parking service and also appears for at least a while to have been still offered for sale through Sedo. Accordingly, the points already made earlier on in this decision¹ regarding the knowledge by the original registrant of the Complainant’s use of the “NAF NAF” name and that registrant’s motives for registration, apply as much to the new registrant as the old.

7.21 In the circumstances, the Panel concludes that the Domain Name has been both registered and used in bad faith and that Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

8. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <nafnafshop.com> be transferred to the Complainant.

Matthew S. Harris
Sole Panelist

Date: February 28, 2008

¹ With perhaps the exception of the issue of the nature of the links displayed discussed at paragraph 7.14 above.