The Complainant is Christian Dior Couture of Paris, France, represented by Cabinet Marc Sabatier, France.
The Respondent is Chen Takong of Shanghai, China.
The disputed domain name <dioronline.org> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2013. On January 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 10, 2013, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2013.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on February 20, 2013. 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 Complainant is the owner, amongst others, of the following international trademark registrations:
Registration No. | Trademark | Country | Class | Registration Date |
|
611499 |
DIOR |
FRANCE |
18 |
24/12/1993 |
|
587746 |
DIOR |
FRANCE |
9,14,18 and 25 |
05/06/1992 |
|
1158166 |
DIOR |
CHINA |
14 |
14/03/1998 |
The disputed domain name <dioronline.org> was registered on June 23, 2012.
The Complainant argues the following:
That the disputed domain name <dioronline.org> is composed of the Complainant’s trademark DIOR, which has been registered by the Complainant all over the world.
That the Complainant’s trademark is well-known for its products all over the world, handbags in particular.
That advertisements have been made for the Complainant’s handbags with famous actresses.
That in the present case, the sign DIOR in the first part of the disputed domain name constitutes the dominant element, identical to the Complainant’s trademarks.
That no license, contract or other authorization was granted to authorize the Respondent to register and use the disputed domain name <dioronline.org>.
That the Respondent is not commonly known under the disputed domain name <dioronline.org>.
That the Complainant sent a warming letter to the Respondent, in order to request the voluntary transfer of the disputed domain name, but that the Complainant obtained no answer from the Respondent.
That the company “Christian Dior Couture” is well-known all over the world; that it is not possible to not know its existence and the existence of its trademarks, since the Complainant uses the trademark DIOR since its creation in 1947.
That the disputed domain name is active. That the Respondent offers on his website handbags, purses and wallets for sale, with important discount, without authorization of the Complainant.
That the Respondent uses the same names of the collections for the handbags, like the names used on the Official DIOR’s website (such as Panarea, Gaucho, Granville).
That the Respondent features the trademark CHRISTIAN DIOR on the top of his website, increasing the likelihood of confusion for the relevant public.
The Respondent did not reply to the Complainant’s contentions.
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and used in bad faith.
As the Respondent has failed to submit a Response to the Complainant’s contentions, the Panel may choose to accept as true all of the reasonable allegations of the Complaint, (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).
The disputed domain name <dioronline.org> is confusingly similar to the Complainant’s trademark DIOR because said domain name entirely incorporates said Complainant’s trademark. The only variations are the addition of the term “online”, and the genric top-level domain (gTLD) “.org”.
The addition of a descriptive term like “online” does not confer a distinctive character to the disputed domain name, in relation to Complainant’s trademark. See America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; MoneyGram Payment Systems Inc. v. Elizabeth Muriel Hernández, WIPO Case No. D2006-1506.
Incorporating a complete trademark in a domain name can be sufficient to establish that said domain name is identical or confusingly similar to a registered trademark. (See Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504).
The addition of the generic top-level domain “.org” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel must not take into account the generic top-level domain (gTLD) “.org”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035).
Therefore, the first element of the Policy has been met.
The following are examples of circumstances where a Respondent may have rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. (Policy, paragraph 4(c)).
The Panel takes into consideration the pricing of the goods at the website. The Complainant’s products are exclusive. They are normally sold through specific boutiques and other authorized channels. These products are being offered in a non-authorized venue. They do not seem to constitute gray goods, i.e., legitimate products that were placed in the market by the Complainant or with the Complainant’s authorization. The Respondent’s website offers discounts which range from 55% to 70%, according to the Respondent’s own affirmations. When prices are too good to be true, this mere fact may constitute a symptom that the products being sold are not legitimate (see, e.g. Skorpio Limited v. Ma Lian, WIPO Case No. D2012-2045, and Moncler S.r.l. v. linhuiming, WIPO Case No. D2011-0172).
According to the Complainant, the Respondent is not an authorized sales agent of the DIOR goods. Therefore, the Panel considers Oki Data is not applicable (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). Frankly, after an inspection of the Respondent’s site, it can be confirmed that the Respondent is not an authorized seller of authentic products manufactured by the Complainant.
This offer of likely counterfeits that imitate the Complainant’s products, conspicuously depicting the Complainant’s trademarks throughout the Respondent’s website, cannot be considered to be in good faith, or to constitute a legitimate non commercial or fair use of the disputed domain name.
The fact that the Respondent is not disclosing to the public that the products sold on his website are imitations, or even the relationship between the Complainant and the Respondent, in addition to the fact that the Respondent’s website notoriously features the trademarks CHRISTIAN DIOR, DIOR, GAUCHO, PANAREA, GRANVILLE and others, shows that the Respondent has the intent of misleadingly diverting consumers to its website.
Therefore, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name. The second element of the Policy has been met.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) 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; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.
The Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s products and trademarks as to the source, legitimacy, sponsorship, affiliation and endorsement of the Respondent’s products and website. Internet users are likely to be mislead as to thinking that the website to which the disputed domain name resolves is that of the Complainant, or that the products sold in the Respondent’s website are originated in the Complainant’s company. There is an evident risk of association between the Respondent and the Complainant, and their products. It may seem that the Complainant endorses or sponsors the Respondent’s products, when this is not the case. See Beckman Coulter, Inc. v. Suzan Wilson, WIPO Case No. D2010-1163, MasterCard International Incorporated v. Dhe Jonathan Firm, WIPO Case No. D2007-0831).
The Respondent’s website, just like the products offered therein, is designed to look like the Complainant’s, and to mislead consumers into believing that they are interacting with the legitimate Dior site and the authentic Dior products, when they are not. See Skorpio and Moncler, supra.
This conduct constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. The third element of the Policy has been met.
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 <dioronline.org> be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Date: March 6, 2013