WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zino Davidoff SA v. Goodsteed Limited

Case No. D2010-1681

1. The Parties

The Complainant is Zino Davidoff SA of Fribourg, Switzerland, represented by Meisser & Partners, Switzerland.

The Respondent is Goodsteed Limited of Nicosia, Cyprus.

2. The Domain Name and Registrar

The disputed domain name <davidoffcoolwater.net> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2010. On October 6, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, GoDaddy.com, Inc. 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 sent an email communication to the Complainant on October 7, 2010 requesting the Complainant to confirm that a copy of the Complaint and its Annexes had been sent to the Respondent by email. The Complainant confirmed this accordingly on October 11, 2010.

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 the Respondent of the Complaint, and the proceedings commenced on October 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2010.

The Center appointed Lone Prehn as the sole panelist in this matter on November 8, 2010. 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 following facts have been alleged by the Complainant and not refuted by the Respondent:

The Complainant owns the DAVIDOFF COOL WATER trademark for cosmetics and perfumes in a multitude of countries worldwide.

The Complainant has promoted the DAVIDOFF COOL WATER trademark extensively since the launch in 1988. Worldwide net sales figures of the DAVIDOFF COOL WATER products reached 182 million USD in 2004. The DAVIDOFF COOL WATER trademark of the Complainant has become well known throughout the world.

DAVIDOFF COOL WATER branded products are sold widely throughout the world including countries such as US, England, Italy, France, Germany, Japan, Switzerland, Cyprus, Russia, South America, Africa, China, Singapore, Malaysia, etc. In each country DAVIDOFF COOL WATER is widely known and consumers recognize it as a cachet of high quality goods. A top ranking of the trademark from Germany shows that it has become one of the top trademarks in Europe only 10 years after its launch.

The Disputed Domain Name <davidoffcoolwater.net> resolves to a website in English language which is not only used to offer products of the Complainant but also products from its competitors. The website only consists of sponsored links.

After learning of the Respondent's registration of the Disputed Domain Name, the Complainant on August 20, 2010, sent an email and a letter to the former registrant of the Disputed Domain Name, Domains by Proxy. In that communication the Complainant advised the Domains by Proxy that the registration of the Disputed Domain Name infringed its trademark rights and requested that Domains by Proxy transfer the Disputed Domain Name to the Complainant. Domains by Proxy replied that they had forwarded the letter to the real owner and that they would reveal his identity. Subsequently, Domains by Proxy relevaled the name of the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant alleges:

(a) The Disputed Domain Name is identical and confusingly similar to a trademark in which the Complainant has rights;

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides that for the purposes of paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or 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 the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) registration of a domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) registration of a domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) use of the domain name, with the intention to attract, for commercial gain, Internet users to the 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 the web site or location or of a product or service on the web site or location.

A. Identical or Confusingly Similar

The Disputed Domain Name contains the Complainant's entire DAVIDOFF COOL WATER trademark. The Complainant is the owner of numerous DAVIDOFF COOL WATER trademark registrations.

Based upon the foregoing, the Panel finds that the Disputed Domain Name is identical or confusingly similar to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

DAVIDOFF COOL WATER is a well known trademark which has no valid use other than in connection with the Complainant's trademark. The Complainant has not authorized the Respondent to use its trademark DAVIDOFF COOL WATER or to incorporate the trademark into any domain name.

Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the Disputed Domain Name.

In the present case the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and the Respondent has failed to assert any such rights.

The Panel finds the Complainant has established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the DAVIDOFF COOL WATER trademark or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show he has any rights or legitimate interests in the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the Disputed Domain Name in bad faith (Policy, paragraph 4(a)(iii)).

Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

It is suggestive of the Respondent's bad faith that the trademark of the Complainant was well known and registered long before the registration of the Disputed Domain Name. The Complainant submitted evidence, which shows that the Complainant's trademark DAVIDOOF COOL WATER is registered and is known in connection with cosmetics and perfumery and that its trademark would be recognized publicly.

A review of the website operating under the Disputed Domain Name referring directly to the Complainant’s DAVIDOFF COOL WATER products and providing information about it and about the Complainant is clear evidence that the Respondent registered the Disputed Domain Name with knowledge of the Complainant and the DAVIDOFF COOL WATER trademark and products with the intent of operating a web site offering said information and increasing the likelihood that Internet users would be confused and identify the Respondent as either the source or associated with the Complainant.

The Panel notes that the Respondent’s use of the Disputed Domain Name for advertising the DAVIDOFF COOL WATER products also amounts to bad faith use of the Disputed Domain Name. See Herbalife International, Inc v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant's trademark registration amounts to bad faith”.

As noted, the Disputed Domain Name is being used by the Respondent in connection with the offering of information regarding the Davidoof Cool Water products, and directs consumers to on-line sales of Davidoof Cool Water products. Internet users are likely to be confused as to the source of the information on the website and associate the web site and links available therein with the Complainant. Such use is in bad faith.

It is therefore the finding of the Panel that the Respondent registered and is using the Disputed Domain Name in bad faith.

7. 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, <davidoffcoolwater.net>, be transferred to the Complainant.

Lone Prehn
Sole Panelist
Dated: November 18, 2010